IP Tech Knowledgy

Obtaining a state trademark registration is not a common strategy, often for good reason. Federal trademark registration, or common law rights based on mere usage, provide substantial rights to a trademark owner, significantly reducing the need for a state registration. Despite its shortcomings, a state trademark registration has some benefits in certain situations. A state registration would appear on a thorough trademark search of a diligent potential competitor looking to clear a name and would discourage that competitor’s otherwise infringing use. A state registration provides an additional cause of action in an infringement case. Having a registration number and an official state grant can help a person or business list assets.

When a business is only operating locally in one state, it cannot meet the “interstate commerce” requirement to attain a federal registration, and a state registration is the only option. Also, state examination procedures are less expensive, less exacting and quicker than a federal registration, which may make a state grant worthwhile. Most state registrations provide little added benefit if the owner also owns a federal registration.

The issue is relevant for Maryland businesses, as Governor Larry Hogan recently signed Senate Bill 23 that changes certain aspects of Maryland’s trademark registration laws (Md. Code, Bus. Reg. §1-401 et seq.), which will take effect October 1, 2020. The bill was generally housekeeping matters to clarify what constitutes a trademark and to modify various classes of services used for state registration. The new law will also have more stringent requirements in filing specimens of use with an application.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com