December 5, 2019
Federal vs. State Trademark Registration (19-12.1)
As we have previously discussed, there are common law rights in trademarks, but some states have also supplemented the common law rights with their own registration structures. This means that state registrations do not necessarily replace the common law rights, but give more secure holding on those rights than the common law allows. The main way a state registration could be advantageous is for brands that specifically do not use their trademark across state lines.
At the same time, having a federal registration does not mean that you automatically don’t need a state registration, though if the mark can qualify for federal registration it wouldn’t be prudent to only apply for the state protection. The rights of either can generally be enforced alongside each other.
State trademark law can sometimes have differences from the federal law, for example different requirements for infringement, and you it is possible for someone to succeed under the state law and fail under federal law or vice-versa. BUT, one major caveat is that if enforcement of the state rights would interfere with federal rights, then the federal law will prevail - this is known as Federal Preemption.
So, at the end of the day, carefully considering state trademark rights might be helpful in certain circumstances, but the federal law will almost always trump the state law.
LEARN MORE: What Every Brand Owner Needs To Know About Filing a Trademark Application & Four Reasons Why Not Having a Registered Trademark Can Cost You Big Money
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About the Author
Randal Robinson is an intellectual property lawyer. Randal focuses his practice on the prosecution and litigation of trademarks.