Federal vs. State Trademarks: What’s Right for My Photography Business?
As discussed previous articles on the site, you get common law trademark rights by just using a mark in commerce. The first use of your mark establishes your priority date and you can sue people for trademark infringement if they start using the same mark (for the same or similar goods or services) after the priority date.
Since you get rights without having to pay anything, just by using a mark, why would you pay to register one?
Registering a mark at the state or federal level gets you additional benefits. The biggest benefit is when other people are thinking of using that mark they can search the state and/or federal trademark databases and see that you are already using the mark! That should discourage them from using it as well.
Yes, they might be able to also find out about your mark doing a search on the internet, but the deterrent is stronger if they find your mark is already a registered trademark. (As in previous articles, I am using the terms trademark and service mark interchangeably.)
According to the U.S. Patent and Trademark Office (“USPTO”), federal trademark benefits include:
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used)
- Public notice of your claim of ownership of the mark
- Listing in the USPTO’s online databases
- The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods
- The right to use the federal registration symbol “®”
- The ability to bring an action concerning the mark in federal court
- The use of the U.S. registration as a basis to obtain registration in foreign countries.
Some of these may not be important to photographers, whose “brand” typically doesn’t extend to foreign countries. What is important, however, is if you have a federal registration, the public is deemed to have constructive knowledge of the existence of your mark.
This means that even though they might not have actual knowledge, there’s a place they can go (the USPTO) to search and find it, so they can’t use lack of actual knowledge as an excuse. It’s the same legal principle that is behind recording liens or mortgages—the public is deemed to know about it because it’s been recorded with the county registrar and anyone can go and search and find it.
Model State Trademark Bill
Many states have adopted the Model State Trademark Bill which gives some uniformity to the laws. In many states, a state registration is helpful if you are involved in an infringement lawsuit (either infringement of your mark by another, or someone else claims you are using their mark). It also helps to prevent others from gaining common law rights in that state.
With state trademarks you can only use ™ or ℠ after the mark, whereas with a federal registration you can use ®. Also, you can file a federal application based on intent to use a mark as well as actual use, whereas state applications generally require actual use.
State versus Federal In Scope
One big difference between state and federal registrations is their scope. For a service mark to be legally used “in commerce”, it must be used in the advertising or sale of the services and the services must actually be performed or rendered. Federal registrations cover use in interstate commerce or commerce between the US and another country. State registrations, on the other hand, cover only use in commerce within a state.
So that’s something to think about: do you ever do photography work out of your home state? Do you advertise out of your state? (If you have a website, the answer is probably yes!) Before you say no, also think about these questions: Do you live near a state border? Have you actually performed photography services outside of your home state? If you photograph weddings have the bride or groom come back “home” for their ceremony or party? Even one out of state connection is probably enough for a federal application.
Cost is another consideration. As I wrote in a previous post, a state trademark registration can be fairly inexpensive ($70 to register and $30 for renewal in California). A federal trademark registration is more expensive ($225-275 to register and $300-400 to renew at different stages in the life of the mark).
With the exception of famous marks, you really only have trademark rights in the country in which you operate. This is because trademark rights protect your use of the mark as a source identifier for goods and/or services. The more famous and global your mark becomes though (think Apple, Coca Cola, McDonald’s, etc.), the more protections you have even if you don’t obtain a trademark registration in a certain country.
Through the Madrid Protocol, you can file a single application that will then be sent to as many countries (that are signatories to the Madrid Agreement) as you specify and pay fees for, and your applications will be separately processed in each of those countries. There is no such thing is an internationally effective registration though, just this clearinghouse approach. Within the EU you can apply for a Community Trademark (CTM) that would cover all EU countries, but if your mark isn’t clear for use in even one of the EU countries, the entire CTM application will be rejected and you’ll have to apply to each country separately.
If you have a federal trademark in this country, and you find someone infringing it internationally (and the goods are being imported into the U.S.), with your federal registration you can work with U.S. Customs to stop the goods at the border. In general, unless you’re a famous/global mark or are actually doing business in another country, your U.S. registration cannot be used to stop someone else from using the same mark in another country.
However, use and/or registration here can stop someone else from coming in from another country and shutting you down (the the possible exception of them having prior use).
So what’s right for you? My personal recommendation is to go for a federal registration (although you should contact an attorney to discuss your specific situation). That way you will protect your mark within the entire United States.
However, if you simply can’t afford that and are only a local business, you can always pursue a state registration, realizing that it does have some limitations over a federal registration.