Editor’s Note: This article is intended for information purposes only. Because state and municipal laws vary greatly, as do the circumstances of individual cases, readers are advised to contact an attorney for specific legal advice. © Scott C. Tips 2022

Note: The views and opinions expressed here are those of the author(s) and contributor(s) and do not necessarily reflect those of the publisher and editors of WholeFoods Magazine.

It would take at least a slim volume to provide you with all of the necessary nuances of preparing your ownU.S. Federaltrademark application, which would be valid in all 50 States and Territories. The form is involved and contains some unintentional traps for the unwary. However, the United States Patent and Trademark Office (USPTO atuspto.gov) has done its best to simplify the form; yet, it is still not an easy or obvious form for a layman to complete. And for my retail clients who do business primarily within a single State, Federal trademark applications are not always necessary to protect one’s trademark or service mark. State registrations can be an easier, cheaper, and more viable alternative for such persons to consider using to obtain a statutory trademark registration for the protection of a mark.

Keep in mind that if you want to protect your trademark but feel uncomfortable about doing it yourself, then it would be best to consult with an attorney qualified in trademark matters and have that attorney prepare and file your application. If, on the other hand, you want to protect a trademark you created by filing for a State trademark registration—which will help offer statutory trademark rights in that State only—and feel that you could handle an online form, then here is your brief guide.

  1. Determine What You Want to Protect and Whether You Can Protect It
If you have a product (good) or service with a snappy anduniquename (or “mark”) that no one else has already used and is still using, then you can somewhat protect your mark or name by making sure the “TM” symbol is printed next to the mark when you use it. That’s common law protection.

But it’s not as effective if you have an individual or company with a bigger budget and more market presence,who is not aware of your lesser usageand who then spends bundles of dollars to market their own product with its infringing mark. Once they become aware of your mark, or you of theirs, they will generally fight you tooth and nail before they give up on their investment. Better to actuallyregisteryour mark with either the State or Federal trademark office first so that when a trademark search is made, yours will show up on that search and discourage any of your competitors from ever making that investment in the first place. Instead, they’ll go to the next name on their list.

Also, once you’ve decided upon your mark,use it. Start putting it on your goods, or in connection with your services, and document its usage so that you geta first date of useas soon as possible. If it is a bottle of vitamins with the new mark on it, package it up and ship it to a customer across State lines so that you can honestly document and keep a record of your “first use in interstate commerce.” Of course, these days you can also file a trademark registration application simply on the basis of “intent to use”; but, frankly, I’ve found it much easier to just have a documented “first use” and file on that basis, avoiding all sorts of possible complications. And in the case of simple State registration, you do not have to have any interstate use to justify your State registration.

  1. Conduct Your Own Trademark Search
Because you should already be generally aware of what is happening with your market and competitors, you may know if there is someone else using your mark. To be certain, you could hire a trademark-search service, such as Corsearch (www.corsearch.com) or Government Liaison Services (www.trademarkinfo.com), to do a comprehensive search of their databases for conflicting marks.

Or, to save money, you could just search the United States Patent and Trademark Office’s (USPTO’s) online database, called the Trademark Electronic Search System (TESS), athttps://tmsearch.uspto.gov/and see if anyone else has already registered or applied for registration of your mark nationwide.

You should also search the trademark and service mark database in the State you intend to file your State application. In California, this search would be conducted online at:https://tmbizfile.sos.ca.gov/Search. In New Jersey, you would search through the New Jersey database at:https://www.njportal.com/DOR/businessrecords/TradeSearch/TradeStatus.aspx. In Florida, as yet another example, you would search for possible conflicting marks at:https://dos.myflorida.com/sunbiz/search/.

No State that I am aware of has a trademark search engine that will also search assumed name records, the legal names of corporations or other filing entities, or search the USPTO database. Nor do these search engines include marks that might only appear in telephone books, on the internet, or any other “common law” usage of marks in commerce. It is your job, as the person seeking to register a mark, to be responsible for a more comprehensive search so as to avoid infringing on the marks of others.

Regardless, you will want to conduct a search first to avoid the expense, time loss, and disappointment of the State refusing to register a mark that it has already registered. Just keep in mind that by using this cheaper approach of searching online State and Federal databases you willonly be checking for actual registrations and applications. I recommend that if you go the self-check route, you always search both the Federal database and the database of the State in which you want to actually register your mark.

  1. Get Prepared
Before you go online to register your new (or old) trademark, be sure to collect and have at hand all of your necessary information about the mark and have a digital image of your label (or other material) showing actual current use of the mark in a .jpeg-format file on your computer. In particular, make sure you have ready all of the following: (1) The trademark name (of course); (2) The name, address, telephone number, fax number, and e-mail address of the owner of the mark; (3) The date of first useanywhereof your mark and the date of first usein the State of intended registration(note, the two dates may be the same); (4) An idea of what kind of goods or services (or both) you are using your mark on or with; (5) The Class of Goods your mark is to be registered in (every State will use the USPTO system of classification); (6) A decision as to whom the signatory of the application will be and his or her title or position, if a company officer; and (7) An image of the label or other usage of your mark saved in .jpeg (or pdf) format and not exceeding 5 MB in size. On the last item, you can usually just take a good, clear photograph of the label on the bottle or package, being certain to capture the complete mark in the photograph.

Your hardest task may be deciding what Class or Classes your goods or services fit in. Some of you may want to register a trademark for dietary supplements, in which case I’ll make your job easy for you. That’s Class 005. Realize too, that you can register the mark in as many classes as it is being used in; but, typically, your mark, once registered, will only be protected for the Class(es) in which it is registered by you. For example, registration of the mark “Soleil” for supplements in Class 005 will not generally protect that mark from being used by others for goods in Classes that cover cosmetics or auto polishes. So, carefully decide in advance the full extent of protection that you both want and can afford.

  1. Now Go Online
Log on the internet, do a Google or other search for your State’s trademark website, and then go to that site for completing and filing your State trademark application. Obviously, this will vary by State, but is typically found within the Secretary of State portion of the State government website. States also let you print out a form, fill it in, attach or enclose proof of your use of your trademark, and then mail it all to the Secretary of State along with a check in payment of the filing fee. Either way, State trademark forms are not difficult to complete, taking very little of your time to finish. With State forms, you will find that you can quickly—and very easily—register your mark.

Once accepted, the duration of your State registration depends upon the State, but will typically be for five years (CA, NJ, and TN) to 10 years (NY). Before the initial registration term expires, you will need to file a declaration and pay another fee to keep your trademark registration in force.

  1. Advantages of State Registration
In a nutshell, State trademark registrations are simpler, faster, and cheaper to accomplish than a Federal registration. Easy enough for most people to do themselves, State registrations typically cost from $20 (Tennessee) and $50 (New York and New Jersey) to $70 (California) per classification. You can also save on legal fees by not having an attorney prepare and file the application for you. Personally, I find most attorneys charge too much for what is essentially form work.

State registrations can also be obtained much more quickly than Federal registrations, with the time from State application to registration being measured in weeks instead of months and years as happens with Federal applications. Where speed is important, you may want to consider filing a State application, even if you also intend to file for a U.S. registration of your trademark. Your registration in one jurisdiction does not per se exclude the other.

To their credit, each State has made the online application process for trademark registration as easy as possible; but some States may still have a few potholes in the application process simply because of the nature of trademark law and its classification system. If in the least doubt, do not hesitate to consult a qualified trademark attorney to help you pursue registration and properly protect your mark. Your good name and the marks that go with it are key assets of your business and can add significant value to your company. They deserve to be well protected.WF


References are available and linked on the web version of this article, at www.WholeFoodsMagazine.com