Yes, you can register a trademark in your state. Indeed, even if you register a trademark at the federal level, there are some advantages to registering your trademark in states where you do business. In this article, the skilled and top-rated Trademark Attorneys at Revision Legal discuss some of the advantages of registering a trademark at the state level. If you are searching for the “best Trademark lawyers near me,” call us at 231-714-0100 or 855-473-8474.

In the U.S., for the first 150 years or so of the nation, trademark rights were protected by state laws. Federal trademark protection only began in the early 1900s. Despite the new federal trademark laws, many states retained their old laws, and most states have a mechanism for registering trademarks that apply to companies doing business within their state. Registering a trademark at the state level is not without cost and expense. Thus, if you can obtain a federal trademark registration, it is probably not cost-effective to register the same trademark in 50 states. However, there are some circumstances where a strategy of state-level registration is important.

First, some trademarks cannot be immediately placed on the federal Principal Register. These trademarks will be placed on the Supplemental Register. It takes about two years for a trademark on the Supplemental Register to be eligible for an upgrade to the Principal Register. During that time, there is value in registering such a trademark at the state level, particularly in those states where the company does substantial business. The combination of having your trademark on the Supplemental Register and registered at the state level provides the maximum legal protection for your trademark.

Second, some trademarks cannot be registered at the federal level because the company only operates locally within a state. In those circumstances, registering a trademark at the state level is essential to establish priority of use against competitors. Further, time is afforded while your company makes efforts to operate in interstate commerce.

Third, some trademarks cannot be registered at the federal level for legal reasons. Currently, the main examples are cannabis businesses. Since cannabis remains unlawful at the federal level, such businesses cannot register federal trademarks. Thus, state-level registration is crucial. Such registration protects cannabis-related trademarks and creates priority-of-use for an eventual attempt at federal registration (assuming a future change in federal law).

Finally, even if you have a fully-protected federal trademark registration, there is value in having trademark registrations in at least a few states. For example, any competitor seeking to cancel your trademark will need to seek cancellation at the federal and state level. Further, if, for whatever reason, your federal registration lapses, your trademark is still legally protected by state-level registrations.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

How State Trademark Registration Works

Every state with a trademark registration system operates its own application process through a designated state office, typically the Secretary of State. While procedural requirements vary, the general steps are consistent: the applicant submits an application identifying the mark, the class of goods or services, a specimen showing the mark in use, and pays the applicable fee. Most states process applications within a few weeks to a few months, far faster than the USPTO’s typical twelve-to-eighteen month timeline for federal registration.

State registration fees are modest compared to federal registration. Many states charge between $50 and $150 per class. By contrast, USPTO filing fees for a TEAS Plus application start at $250 per class. For a business registering in just one or two states as a supplement to federal protection, the cost burden is manageable.

Priority of Use and the Concurrent Use Doctrine

One of the most important doctrines in trademark law is the concurrent use doctrine. Under federal law, a later filer on the Principal Register does not automatically defeat a senior common law user in the geographic area where the common law user was using the mark first. But the concurrent use doctrine has limits: the common law user’s rights are geographically frozen as of the date the federal application was filed.

State registration can help document and formalize geographic priority within a state. A Michigan state registration, for example, creates a public record of that use and the priority date associated with it. This record can be valuable evidence in a concurrent use proceeding before the USPTO’s Trademark Trial and Appeal Board (TTAB).

Cannabis Businesses and the Federal Registration Bar

Federal trademark protection is unavailable for cannabis businesses because the Controlled Substances Act, 21 U.S.C. section 812, classifies cannabis as a Schedule I substance. The USPTO refuses registration of marks used on goods or services whose lawful existence depends on federal law when that federal law prohibits the underlying activity. See In re JJ206, LLC, 120 U.S.P.Q.2d 1568 (T.T.A.B. 2016). State registration in states where cannabis is legal therefore provides the only formal trademark protection available for cannabis brands.

Maintaining State Trademark Registrations

State trademark registrations must be maintained and renewed, just like federal registrations. Most states issue registrations for a term of five or ten years. Renewal requires a new filing and demonstration of continued use. Importantly, state registrations can lapse if not renewed or if use is discontinued. Businesses that rely on state registrations must build renewal dates into their IP calendar just as they would for federal registrations.

When to Prioritize State Registration

There are four scenarios where state registration deserves serious consideration:

• Supplemental Register marks: While awaiting eligibility for the Principal Register, state registration fills the protection gap
• Local-only businesses: A restaurant, law firm, or contractor operating entirely within one state may not satisfy the interstate commerce requirement for federal registration
• Cannabis and hemp businesses: State registration is currently the only formal trademark protection available
• Defense in depth: Even federally registered mark owners benefit from state registration as a backup layer of protection against cancellation proceedings

The Trademark Attorneys at Revision Legal handle state registration filings across all fifty states. We can develop a tailored registration strategy that combines federal and state-level protection to provide comprehensive coverage for your brand. Contact us today at (855) 473-8474 to discuss your options.