Westchester Women's Bar Association

State Trademark Registration

The United States' trademark system has two tiers, federal and state. A federal trademark registration provides protection throughout the entire country, and its territories and possessions. While a state trademark registration will grant rights only within the territory of the state. A federal registrant is entitled to use the ® symbol while a state trademark registration does not confer the right to use the ® symbol, only the ™ symbol. Determining whether your trademark application should be filed with your state's trademark authority or with the United States Patent & Trademark Office is not always an easy question to answer. However, examining the appropriate basis for federal trademark filings will lead to a better understanding of when a state trademark application should be filed.

To legally qualify to file a federal trademark application with the United States Patent & Trademark Office, an applicant among other requirements, must be using the proposed trademark in commerce. Commerce has a legal definition that includes the following types of commerce: (1) interstate; (2) territorial (commerce within a territory of the United States, Guam, Puerto Rico, American Samoa or the U.S. Virgin Islands or between the U.S. and a territory of the U.S.); and (3) between the United States and a foreign country. However, purely intrastate commerce does not provide a basis for federal registration, unless it directly affects a type of commerce that Congress can regulate.

For example, it has been held that hotels or restaurant services are rendered in commerce because frequently patrons will come across state lines to use the services and often the business owners advertise in more than one state. Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience that must use interstate telephone lines to access a website. See Planned Parenthood Fed'n of Am. Inc. v. Bucci 42 USPQ2d 1430 (S.D.N.Y. 1997), aff'd 152 F.3d 920 (2d Cir. 1998).

In the state of New York, trademark applications are filed in the office of the secretary of state. The following information is required for a New York State filing, applicant's name and business address, if a business entity then the state where it was formed, a description of the mark (including any design features), a listing of the goods or services, the international class, and the mode or manner in which the mark is used, and the dates of first use by the applicant or a predecessor in interest.

In addition, the applicant must include a statement that the applicant is the owner of the trademark, the mark is in use, and that to the knowledge of the applicant no other person or entity has registered the mark, either federally or in the state or has the right to use the trademark in the identical form or in a form that when applying the mark to the goods or services would cause confusion, mistake or could deceive consumers. The state application must be signed and verified by oath, affirmation or declaration subject to perjury laws by the applicant or the applicant's representative. The applicant must provide three specimens showing the mark as used in commerce. The New York State fee must accompany the application and the fee is $50.00 per each classification of goods or services.

Unlike federal trademark applications that can be filed online electronically, NY State applications are completed the old fashion way on paper and mailed to the New York State Department of State. If a trademark application is refused on the state level, the applicant will have an opportunity to reply or amend its application and have it reexamined. This procedure can be repeated until the secretary refuses registration of the mark or the applicant fails to reply or amend within the specified period of time. On the state level, there are procedures in place to challenge the refusal or to attempt to cancel another registration based on superior rights in the mark. A New York State trademark registration is valid for a period of ten years from the date of registration and may be renewed for additional ten year terms as long as the mark is still in use, the applicant completes the requisite form and pays the renewal fee.

If you have questions regarding trademark registration either on the federal or state level, please feel free to contact our office for a courtesy consultation.

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Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs