Federal Trademark Registration

Trademark-RegistrationTrademark protection in the United States can come from a combination of sources. The protection can be found in federal law, state law, and common law. Each legal source has its own requirements and levels of protection, however, a federally registered trademark provides the most legal protection to a trademark owner.

A federal trademark or service mark must be used in interstate commerce in order to be properly registered.  In other words, the trademark or service mark must be used, advertised, promoted, or sold across states lines (like with e-commerce retail business or a restaurant or famous bar/nightclub in a popular destination that caters to interstate or international consumers). If a trademark is used solely in one state, such as Illinois, then depending on the requirements of that specific state, the trademark can only be registered in that state. Illinois registered trademarks can protect your trademark within the state of Illinois, whereas a trademark registration on the federal level (Principal Register) allows a trademark owner the benefit of nationwide trademark protections. Thus, to enjoy the maximum protection under the law, a trademark owner should seek to register its trademark or service mark with the United States Patent and Trademark Office it the trademark owner is using, advertising, promoting its goods, products or services in interstate commerce.

A trademark must be used in interstate commerce to properly be federally registered. If a trademark is used solely in one state, it can only be registered in that state and protection will only cover that state, whereas a federally registered trademark allows the owner to benefit from nationwide trademark protections.

Illinois Trademark Registration

Illinois has adopted trademark laws for trademarks used within the state (intrastate commerce). These Illinois trademark registration laws are uniform and 45 other states that have adopted the Model State Trademark Bill. State trademark laws allow for state trademark registration of trademarks for individuals, entrepreneurs and businesses who are local and do not use, sell, offer, advertise or promote the goods, products and/or services beyond a state’s borders. Any enforcement action for state trademarks occurs in state courts according to state laws.

Having an Illinois trademark registration allows the owner of the trademark the right to use that trademark for the products and/or services identified in the trademark registration. When registering an Illinois trademark, as opposed to registering a federal trademark, the trademark application process does not require a trademark search for conflicting trademarks in: 1) other state registrations, 2) federal registrations, 3) recognized common law trademarks. Therefore, any rights granted to use the trademark in Illinois can and may be affected or preempted by other registered trademarks in different jurisdictions. This is why it is still important to conduct a federal trademark search to uncover any potential federal trademarks that could effect your rights.

Common Law Trademarks

Common Law trademarks may or may not be registrable under federal or Illinois trademark law. However, typically, the trademark owner, whether an individual, entrepreneur or company, has made an executive decision not to officially prosecute and register its trademark under Illinois or federal law. Thus, under common law, the trademark owner may develop certain enforceable rights in a limited geographic area in which the trademark is used and/or advertised. It should be noted, however, that because the trademark owner does not hold a federal or Illinois trademark registration, it is not entitled to certain legal presumptions of validity and enforceability enjoyed by Illinois and federal registered trademark owners. Common law trademarks, which have not been prosecuted or officially registered, are often very difficult to enforce.