Seattle Trademark Lawyer

One thing many trademark owners forget about, or don’t know about, is they don’t need a federal trademark registration to expand the automatic rights they acquire by using their mark.

They can get a state trademark registration.

State registration can be a good alternative to getting a federal registration. Here’s why:

• It’s cheaper. In Washington, it costs $55 to apply for state registration, compared with $275 or more to apply for federal registration. (These are the government filing fees only.)
• It’s quicker. You can expect your registration to issue in a few weeks instead of nine months or more.
• It’s easier. I think California is the only state that employs examiners to review applications for state trademark registration. By contrast, every application for federal registration is examined by an attorney. Hint: if you can’t get a federal registration, you probably still can get a state registration.
• You may have a better shot at attorney’s fees. In Washington, it’s within the court’s discretion to award attorney’s fees to a state registrant that succeeds in an action to enforce its trademark rights. In federal court, it’s a higher standard: courts only award attorney’s fees in “exceptional” cases. That means it’s rare. I tell clients not to expect such an award even if they’re proved right.
• You may qualify for protection against dilution. If your mark is famous within a state — or perhaps even in a niche market within a state — a state anti-dilution statute may protect against use that blurs or tarnishes a mark even if such use isn’t likely to confuse consumers. Not so on the federal level, where a mark needs to be “widely recognized by the general consuming public of the United States,” meaning a nationally-known household word. That’s a tough standard to meet.
• You can combine state registrations for regional protection. Only do business in Alaska, Washington, and Oregon? For the reasons stated above, you might do better forgoing a federal registration and simply get state registrations in Alaska, Washington, and Oregon.

The moral of the story is that trademark owners should think beyond the PTO when looking to expand their rights. It’s not always the best option. But sometimes state trademark registration provides a better fit.