If You Get a Trademark – Should It Be In Maine or Throughout The United States (Part II)

If you decide to trademark your company’s name, logo, slogan, or all of the above, one of the first questions you need to ask yourself is whether you’d like to register your mark just in Maine or on the national level. One of the benefits of registering just in Maine is that registration is less costly and generally takes less time. But, Mainer beware: a federal registration carries with it more protection and can trump a trademark that is only registered in one specific state.

Courtesy of the Supremacy Clause in the U.S. Constitution, a federal registration will always trump a state registration if there is any conflict between the two. This means that a person or business that owns a registered trademark will have the right to use that mark throughout U.S., including in states where another same or similar mark is registered.

This means that if your mark is only registered in Maine, and a federally-registered mark that is the same (or confusingly similarly) enters the market here in Maine, then you (the “junior mark”) would have to stop using your name, logo, slogan, etc.!

However, as is usually the case in law, there’s an exception. The exception is when the state mark was registered prior to the federal mark. If the state mark was in use before the date of the federally registered mark, the prior state mark holder may have some rights to continue to use their mark. However, those rights would still be limited to a certain geographical area, usually the state where the mark is registered and used.

The best thing you can do before you make this decision is to conduct a search for where the same or similar names, logos, slogans etc. are currently being used in commerce. The more “common” or “pervasive” your mark, the more I would recommend going federal.

Points to remember about registering a state trademark:

  • State trademark registration only protects your trademark in the state where you register it.
  • Registering a trademark with the state is less expensive than registering with the federal register.
  • A state trademark registration can usually be processed and approved more quickly than a federal one.
  • *State trademark registration does not give you the right to use the symbol ®. You may use either TM for a trademark or SM for a service mark.

Points to remember about registering a federal trademark: 

  • You have the right to use your trademark nationwide for the class of goods or services identified in your registration.
  • Federal registration is superior to state registration. If a federally registered trademark was in use before a state registered trademark, the federal registrant can stop the state trademark owner from using the mark. If the state mark was in use first, the mark’s use may be restricted to the state where it was registered.
  • You can notify others of your trademark rights by using the ® symbol.
  • You can file a trademark infringement lawsuit in federal court.
  • You can register a trademark with the U.S. Customs and Border Protection Service to prevent infringing products from being imported.
  • You can use your trademark registration as a basis for obtaining foreign trademark registrations.
  • Your trademark will be listed in the USPTO’s database. This creates a public record of your mark and may help deter others from using it.

For more information on the trademark process, please contact Jordan Payne Hay, Esq., Ted Small, Esq. or Bryan M. Dench, Esq., who work in intellectual property at ST&A.

This article is not legal advice but should be considered as general guidance in the area of employment and corporate law.  Bryan Dench, Amy Dieterich, Jordan Payne Hay, and Rebecca Webber are employment and labor law attorneys; others at the firm handle business and other matters.  You can contact us at 207.784.3200.  Skelton Taintor & Abbott is a full service law firm providing legal services to individuals , companies, and municipalities throughout Maine.  It has been in operation since its founding in 1853.