Protecting an unused trademark that does not qualify for federal registration

| May 20, 2021 | Trademarks |

Using your trademark in commerce provides a level of protection in case another business begins using a similar mark. For enhanced protection, you can seek federal registration for your trademark, but not every trademark qualifies.

Review the possible alternative methods of trademark protection beyond use in commerce or federal registration when you need a solution that fits your intellectual property needs.

State trademark protection

If you want protection for your mark only within your own state, consider applying for state trademark registration. Usually, this offers a more cost-effective and time-efficient alternative to federal registration, as well as another avenue of protection for marks that do not meet the federal registration standards.

The process of trademark registration at the state level is different in every state. In Florida, for example, you can fill out a simple form requesting trademark protection and pay a fee of $87.50 per class. In New York, the fee is $50.00 for each classification claimed for registration. Some businesses might also want to invest in international trademark registration. This process makes sense for companies engaged in global e-commerce.

Comprehensive trademark search

If you want to protect a specific mark but have not comprehensively searched for similar marks, you run the risk of an infringement lawsuit even with federal registration. Investing in a professional search improves the odds of avoiding this type of issue. Professional trademark and patent searchers look in every relevant class and subclass of documents available from the U.S. Patent and Trademark Office. They also review patent systems in other countries, academic publications, books, magazine articles and other forms of media.

Taking every possible route to protect your trademark in the absence of use and federal registration helps shield your IP investment.