When do I need to get a federal trademark instead of simply an Oklahoma trademark?

I have said that getting an Oklahoma trademark from the Oklahoma Secretary of State is a no-brainer. This is absolutely true but to understand the complete picture you need to understand why in some cases you would want to move on and get federal trademark protection.

It is easiest to understand why you would want to get a federal trademark from the United States Patent and Trademark Office (USPTO) by understanding the differences between a federal trademark in a trademark given by the Oklahoma Secretary of State.

What is a trademark?

The USPTO describes a trademark like this:

A trademark typically protects brand names and logos used on goods and services. A patent protects an invention. A copyright protects an original artistic or literary work. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.

Oklahoma trademark protection

  • The Oklahoma Secretary of State will provide you with the certificate of trademark if it searches its database and finds nothing that conflicts with your mark. However, that is the extent of the search done by the Oklahoma Secretary of State’s office.
  • An Oklahoma trademark provides you with the right to use your mark in Oklahoma and to prevent other people from infringing on your mark in the state of Oklahoma.
  • An Oklahoma trademark is not an indication that you own the mark outside of Oklahoma.
    An Oklahoma trademark is a very thin level of protection even within the state of Oklahoma. This is because of the limited search done by the Oklahoma Secretary of State. It is possible and it’s happened on more than a few occasions that the Oklahoma Secretary of State issues a trademark certificate to a person and someone else comes along and is able to prove that they are actually the owner of the mark.
  • The cost of securing a trademark from the Oklahoma Secretary of State is the $50 registration fee and whatever you pay someone else to file.

Federal trademark

If you get a federal trademark you can have a high level of confidence that you have the right to use the mark throughout the entire United States.

As part of the process of securing the federal trademark you will have to search throughout the United States to determine if anyone else already has the mark.

You will also have to publish notice of your proposed trademark in places where people who normally search for that type of thing would look.
With the much higher level of protection, the cost of securing a federal trademark is also substantially higher. The cost can run anywhere between $2000.00-$3,500.00 depending on whether your registration has opposition.

Benefits of Federal Trademark protection

Below are a few of the benefits you have when you secure a federal trademark:

  1. Protection in working with resellers and distributors. If you have a product or service for which you will need resellers or distributors having a federal trademark provides them with confidence that you own the mark and also prevents them from registering the mark themselves and taking it right away from you.
  2. Facilitating domain name registration. Having a federal trademark gives you a better chance of winning in a dispute with another person who is registered a domain name which is the same as your mark
  3. Increased chances of worldwide protection. With the federal trademark you can register your mark with the United States customs and border protection service. This means that frequently when the service sees a product coming into the United States with a name the same as your mark it may get flagged and held up.better chance of winning in a lawsuit. If you have to file a lawsuit to stop infringement or defend a lawsuit, having a federal trademark gives you a better chance of winning. You will not need to establish that you are the owner of the mark.
  4. More damages. If you have a registered federal trademark you have a basis to recover substantially more damages from someone who is infringing on your mark than if you have a mark without a federal registration.

Factors to consider in deciding if a federal mark is necessary

  1. Scope of your business.  Is your business going to be simply local, within your own town?  Do you plan to market throughout your state and perhaps the United States?  Will you be selling your product or service online.  The broader the scope of your business, the more likely it is you need a federal trademark.
  2. Level of commitment to the business.  Is your a business a “hobby’?  Do you plan to run the business for a few years and then move onto to something else?
  3. Amount of resources.  Do you have enough money to pay for the federal registration process?  Does the value you expect to recive with a federal trademark exceed the cost you will incur?

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."