If your trademark is unique in the state that you are filing, you may be entitled to protection in your state if you have filed a state registration. Unfortunately, this protection is valid in your state only and will not afford you all of the legal protections that accompany a federal trademark registration. Your trademark can still legally be used in other states, so state-only trademark registrations are appropriate only for small entities which do not wish to expand into other states and who will not make substantial investments in marketing the trademark.

If you are selling a product or service and operate in multiple states or if you have made or plan to make substantial investments in marketing your trademark, then you should seek federal trademark registration.

To determine whether a trademark is available for use, it is essential to have a professional trademark search performed.

Trademark rights come from using a trademark, not from registration. (Registration provides the registrant with additional protections, rights, and remedies with respect to the registered trademark.)

Therefore, your trademark may be infringing even if there is not a conflicting trademark on state or federal trademark registers.

Best practice is to conduct a nationwide or international trademark search covering state and federal registration databases as well as “common law” (unregistered) trademarks before attempting to register or use your trademark.

Performing a professional trademark search before you begin using or attempt to register a trademark is essential to help you avoid spending money on marketing that may end up useless and from incurring legal liability for trademark infringement.

The Madrid System is an international system for registering trademarks in multiple countries. It allows users to submit trademark applications in multiple countries through one application.

“Likelihood of confusion” is a bar to trademark registration that applies when an applied-for trademark is:

“likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” 15 U.S.C. §1125.

When the USPTO examines a trademark application, they will look through their records to determine if the applied-for trademark would likely be confused with an existing trademark registration. If the applied-for mark is likely to be confused with an existing trademark registration, the application will be refused.

“Likelihood of confusion” is one of the most common reasons for the USPTO to refuse trademark applications. To avoid a refusal for “likelihood of confusion” you can have a professional trademark search performed to identify potentially confusing marks and work with a licensed US trademark attorney to craft your application to reduce the odds of refusal.

Traditionally, a trademark had to be in use in “interstate commerce” to be eligible for federal trademark registration but today, you can file an “intent-to-use” trademark application before you begin using the trademark.

If you have not used your trademark in commerce yet, but have a good faith intention to do so in the future, you can file an application with the USPTO to register your trademark with an “intent-to-use” filing basis.

If your “intent-to-use” application is eventually granted, your filing will have priority in time over later applicants, even if their actual use date precedes yours.

Although you don’t need to use your mark in commerce before filing an application, you must show actual use of your mark by filing a “Statement of Use” within six months and by paying an extra USPTO fee.

 Not ready after six months? You can request up to five additional six-month extensions, but each will require payment of an additional USPTO fee.