Legal Question in Business Law in California
I have a question about state trademarks. Since the federal trademark process takes so long, and is so expensive, we are limiting our filing at that level to our primary (nationally marketed) domain name and it's variations. But we also utilize various city-specific domain names, which target customers in those cities. So we are going to file state trademarks for those in order to expedite the process and keep costs down. My question is this: If we are operating out of California, and have domain names that target customers, for example in Chicago, is it correct to file the state trademark with Illinois or California? My assumption is Illinois, but since we do not have offices in Illinois or file taxes there, it's causing me some confusion. These domain names contain the city name, for example XXXXChicago.com, and then we call the service XXXX Chicago, without the .com. So "XXXX Chicago" is what is being trademarked. We have this situation is several states. Thank you.
4 Answers from Attorneys
I would seriously consider filing a federal trademark application with the USPTO since you apparently are already engaging in interstate commerce. As you may not know, federal trademarks trump state trademarks so you run the risk of developing your brand in Illinois and have a copycat use your mark in another state. Trying to protect your brand with a state trademark is likely going to cost way more than just applying for a federal trademark. Also, even though the trademark registration process is long, your protection starts on the file date. As long as nothing goes wrong you are protected immediately. We file federal trademarks and it is not that costly when compared to what you may be risking.
With that said, you also may need to have a presence in Illinois before being able to apply for a state trademark. Check with the Illinois Secretary of State.
States do not have the power to grant an effective and enforceable trademark that would prevail against a competitor with a national trademark. There was a small operation in Illinois called "Burger King" with an Illinois-only trademark, Guess what. No protection against the national chain when in moved into Illinois.
The other attorneys are right on point. Don't waste time and money trying to get multiple state registrations that usually only provide limited rights. Go for the federal registration, which is really not that costly and affords national protection (and even international if you use the Madrid Protocol, along with your federal filing). Consult with an attorney in your area for specifics.
Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise
Franchise Attorney
As a follow up to my answer, you should consult with a trademark attorney. A lot of people attempt to do the federal application through the U.S. Patent and Trademark office themselves, which is a mistake. Again, consult with a trademark attorney in your area.
Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise
Franchise Attorney
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