The short answer is, yes. Even if a business owner intends to use their trademark solely within the State of Illinois (intrastate), it is still advisable to conduct both federal and state trademark searches for several reasons:
Future Expansion: The business may expand to other states beyond Illinois in the future, and conducting a thorough search beforehand can help identify potential conflicts and reduce the risk of infringement issues as the business grows.
Preventing Infringement Claims: Even if the trademark is only used in Illinois, there may be a federally registered trademark with a similar name or design. A federal trademark registration issued by the United States Patent & Trademark Office (
USPTO) provides the owner with nationwide rights in the trademark. As such, infringing upon a federally registered trademark can lead to costly legal disputes, even if the infringement is unintentional.
Online Presence: With the prevalence of e-commerce and digital marketing, a business’s online presence can easily reach customers in other states or even countries. A trademark that may initially be intended for intrastate use can quickly become involved in interstate commerce, making it essential to ensure that the trademark is clear for use on a wider scale.
State Registration Benefits: State registration can provide some additional protection within Illinois, such as preventing other businesses from registering a confusingly similar mark. Conducting a state trademark search can help ensure that the trademark is clear for use and registration within Illinois.
Due Diligence: Conducting both federal and state trademark searches demonstrates a responsible approach to trademark protection and can help avoid potential legal challenges down the line. This due diligence can be essential in building a strong brand and protecting the business’s reputation.
In summary, even if a trademark is initially intended for use only in Illinois (or only in Chicago), conducting both federal and state trademark searches and clearance is crucial for mitigating potential infringement risks, preparing for future expansion, and establishing a solid brand identity.
