Federal and State Trademark Regulations in the U.S.

The US, with its strong economy and diverse consumer market, has always been an attractive destination for businesses looking to build and grow their brands. The U.S. is one of the world’s largest technology hubs, with demand for technology products and services always high. Fields such as artificial intelligence, blockchain, Internet of Things (IoT) are having great growth potential. In addition, the vibrant startup ecosystem, along with support from investors and the government, creates favorable conditions for startups to develop. The US is a potential market for businesses that want to grow their brands. However, to be successful, you need to have a clear business strategy, understand your market and competitors, and build a strong and differentiated brand. Depending on your business strategy, you can choose the form of federal trademark registration or state trademark, Viet An Law would like to guide customers in detail about these two types of trademarks through the article below.

What is a state trademark?

The Concept of State Trademarks

A state trademark is a form of legal protection granted by the government of a state to a word, phrase, symbol, or design to identify and distinguish the origin of goods or services. In other words, it’s like a “seal” that allows a business to protect its brand within a specific state.

Main characteristics of state trademarks

• Limited coverage:
  • A state trademark is legally valid only in the state in which it is registered.
  • If you want to protect your trademark in multiple states, you need to register a trademark in each of those states.
• Simple and fast application process:
  • The process of registering a state trademark is typically simpler and faster than registering a federal trademark.
  • The procedures and requirements are usually less complicated.
• Low cost: The fee for registering a state trademark is usually lower than for a federal trademark registration of only about $50 to $75 for a trademark registered with a group of products or services
• Narrow coverage: A state trademark provides protection for your brand within that state.
• Not a long-term solution for large businesses:
  • If you plan to expand your business out of state, state branding is not a long-term solution.
  • A federal trademark will give you greater protection across the country.

For example, a bakery in California can register the name “Golden Gate Bread” as a state trademark to protect its brand within California.

State Trademark Registration Process

The process of registering a state trademark may vary slightly depending on each state in the US. However, in general, this process consists of the steps as below.

• Trademark Research and Selection:
  • Trademark Search: Use that state’s trademark search engine to make sure the trademark you choose hasn’t been previously registered by anyone.
  • Feasibility assessment: Make sure your brand is unique, memorable, and relevant to your product or service.
• Preparation of registration documents:
  • Complete the application: Fill out the application form using the state form, including the name of the trademark, description of the goods or services, information about the business, and more.
  • Pay the application fee: Pay the application fee according to state regulations.
  • Trademark Sample Preparation: Provide high-quality trademark samples.
• Submit Application:
  • File online or by mail: You can file your application online or by mail to your state’s trademark registration office.
  • Application Tracking: After submitting your application, you will receive an application registration number and can track the progress of the application processing through the online system.
• Appraisal and announcement:
  • Formal due diligence: The Registry will check that your application is well-informed and compliant with regulations.
  • Publication: If your application is valid, the trademark will be published to let the public know. During this time, anyone can file an opposition if they believe that your trademark infringes their rights.
• Issuance of certificates:
  • No opposition: If no one objects, the registry will issue you a trademark registration certificate.
  • Objection: If there is an objection, you will have to resolve the dispute before being issued a certificate.

What is a federal trademark?

The concept of federal trademarks

A federal trademark is a form of legal protection granted by the United States Intellectual Property Office (USPTO) for an identifying sign, which may be a word, phrase, logo, image, or combination thereof, to distinguish one business’s goods or services from those of other businesses. When a trademark is granted federal protection, it is valid throughout the United States.

Main characteristics of federal trademarks

• Wide coverage: Federal trademarks are valid throughout the United States, helping businesses protect their brands comprehensively.
• Strong Protection: Federal trademarks provide strong legal protection against infringements such as counterfeiting, copying, or unauthorized use.
• Increased brand credibility: Federal trademarks help strengthen brand credibility and credibility, setting them apart from competitors.
• Increase brand value: Federal trademarks can increase the value of a business, facilitating the transfer or licensing.
• Strict registration process: The process of registering a federal trademark is typically more complex than registering a state trademark and requires more formalities.
• Higher registration fees: Federal trademark registration fees are typically higher than state trademark registrations.

Federal Trademark Registration Process

• Trademark Research and Selection:
  • Trademark Search: Use the U.S. National Intellectual Property Office (USPTO) trademark search tool to check if the trademark you want to register has been used by someone. This helps to avoid duplication and disputes later.
  • Assess feasibility: Make sure your brand is unique, memorable, and relevant to the product or service you offer. At the same time, it should be easy to pronounce, write, and remember.
• Preparation of registration documents
  • Complete the application: Fill out the application form completely and accurately according to the USPTO’s prescribed form. This information includes: The name and address of the applicant (which can be an individual or organization); Detailed description of the trademark (wording, logo, image,…); The category of goods or services to which the trademark will be used.
  • Pay the registration fee: Pay the registration fee as prescribed by the USPTO. This fee usually varies depending on the type of brand and additional services you require.
  • Prepare trademark samples: Provide clear, high-quality trademark samples for the registry to evaluate.
• Submit Application:
  • Filing online or by mail: You can file online or by mail to the USPTO.
  • Application Tracking: After you file your application, you will receive a registration number and can track the progress of processing your application through the USPTO’s online system.
• Appraisal:
  • Formal Examination: The USPTO will check that your application is well-informed, compliant with regulations, and that the application form is valid.
  • Content Appraisal: The USPTO will consider whether your trademark is unique, not confusing with previously registered trademarks.
• Publication: If your application is valid: The trademark will be published in the USPTO gazette. During this time, anyone can file an opposition if they believe that your trademark infringes their intellectual property rights.
• Issuance of certificates:
  • If there is no objection: the USPTO will issue you a trademark registration certificate.
  • If there is an objection: You will have to participate in the dispute resolution process to protect your rights.

Overview of State and Federal Trademark Registration

The decision to register a state trademark or a federal trademark depends a lot on the size of the business, the goals and development strategy of the business. Each type of subscription has its own pros and cons.

When to register a state trademark?

• Start-up business: If your business is just starting out and only focuses on a single-state market, registering a state trademark is a cost-effective option.
• Limited budget: If your budget is limited, registering a state trademark is a temporary solution.
• Small Business: If your business is small and you don’t plan to expand to other states, registering a state trademark is enough to protect your brand.

When to register a federal trademark?

• Business plans to expand the market: If your business plans to expand its business nationwide or export products, federal trademarks are essential.
• Businesses want comprehensive brand protection: Federal trademarks provide the strongest protection for your brand.
• Businesses want to increase brand credibility: Federal trademarks help strengthen brand credibility and credibility.
• Businesses want to create a competitive advantage: Federal trademarks help businesses build a solid position in the market and increase competitiveness.

In summary, choosing between a state trademark and a federal trademark depends on a variety of factors, including:

• Business size and goals: If your business plans to expand the market, federal trademarks are a better option.
• Budget: If your budget is limited, you can start by registering a state trademark and then upgrade to a federal trademark when conditions allow.
• Competition: If your market has many competitors, federal trademarks will help you better protect your brand.

Any inquiries related to intellectual property in Vietnam, please contact with Viet An Law, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for the best support!