Do I have to register my Oklahoma trademark to own it?

The short answer is NO, registration in Oklahoma or with the United States Patent and Trademark Office (“USPTO”) is not required to stake a claim to ownership. You establish your rights in the trademark based on the first and prior legitimate use of the mark. However, registration, as they say, has its advantages.

For the State of Oklahoma, trademark registration is a “no-brainer.” It is a bit more complicated with the USPTO but the level of protection is much greater. The USPTO provides some solid reasons why you would want to federally register your mark:

1. constructive notice to the public of the registrant’s claim of ownership of the mark;
2. a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
3. the ability to bring an action concerning the mark in federal court;
4. the use of the U.S registration as a basis to obtain registration in foreign countries; and
5. the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

The take away here is: (a) register your Oklahoma trademark with the Oklahoma Secretary of State immediately or sooner; (b) consider whether you need federal protection for trademark.

Posted by Shawn Roberts

On this blog, I write about and try to answer practical Oklahoma legal questions. My focus and most experience is in estate planning and business issues including Oklahoma non-compete law. I make a living as an attorney in the law firm I founded, Shawn J. Roberts, P.C. in Oklahoma City. I live in Edmond with my wife Amy and my two children, Sam (19) and David (11). We live precisely in the path of where the "wind comes sweeping down the plains."