Clients often inquire whether they should register their trademarks at the State or Federal level. Starting with the assumption that even small local businesses may encounter a challenge to their trademark in the future, I generally try to impress upon them the advantages of federal registration. After all, many of my clients end up being very successful and seek to expand outside of Indiana’s borders. With the exponential growth of “e-commerce,” the Internet is providing opportunities for national and global expansion, even for the smallest Indiana businesses. It is therefore important for businesses of all types and sizes to choose and protect their trademarks with care…often this can mean protection at BOTH the State and Federal level.
Here’s a quick primer on registration of a trademark in Indiana:
Trademarks are registered with the Indiana Secretary of State.
Registration of a trademark with the Indiana Secretary of State creates a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in Indiana commerce in connection with the goods or services described in the application. (A federal registration would protect your trademark in all 50 states.)
The Indiana Trademark Act (IC 24-2) protects words, phrases, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Indiana, but not against corporate, fictitious, or assumed names.
Indiana trademark rights arise from actual use of the mark in commerce, i.e. no “intent-to-use” applications.
A mark cannot be registered until it has been used in Indiana. Indiana defines a mark being “used” when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto, or when it is used to identify the services of one person and distinguish them from the services of others, and such goods or services are sold, otherwise distributed, or rendered in this state.
So what are some of the main benefits of state registration over federal registration? It’s cheaper (State: $10/class vs. Federal $325/class) and quicker. I’ve seen turnaround of weeks, not years as with the USPTO. It can be a good remedy for a purely local entity. State registration provides an increased level of trademark protection…at least you can claim protection on your “home turf.” However, in the long run, I’d recommend that any entity which anticipates expanding outside of Indiana, particularly via Internet “e-commerce,” should seek federal trademark registration to best protect their valuable trademark rights.
I look forward to hearing from proponents of State registration…how has an Indiana State registration uniquely benefitted either you or your clients?