State of the state

Originally posted 2011-01-26 11:52:53. Republished by Blog Post Promoter

Licensing of Confusion

State of Confusion

The Actual Confusion blog reports something that, well,  I think is at least likely to cause confusion:

This morning I was pleasantly suprised to find out that the Puerto Rico Trademark Office (PRTO) launched its online registration portal. Practitioners can now file TM registrations online, easing up their schedules, paper costs and painful trips to the Department of State.

Si, pero… ¡no!

You can’t talk about state trademark “registration” without reminding people–including “practitioners,” some of whom could use a lot more practice–what a state (um, sorry Puerto Rico… but you get my point)–trademark “registration” is, and isn’t!  I think good old Mark Law does a good job explaining it:

[T]he process for registering a mark federally is more extensive, rigorous and time-consuming than it is for state registrations. Some companies that can’t afford federal trademark protection, and may find they are sufficiently served with a state trademark registration if they operate solely within one state and have no plans for expansion. With the growth of the Internet and the rise in nationwide commerce, many businesses find they are better off with federal, as opposed to state, trademark registrations. However, you should speak with an attorney licensed to practice law in your individual state to determine whether or not a state trademark registration makes sense for your particular business.

“However,” indeed.

I have been saying this for years:  With the possible exception of helping you make some sort of “record” of the assertion, at least, of some sort of claim, and the more likely exception of the benefit of one state’s trademark statute in rare cases, state trademark registration is mainly a fund raiser for your local state or commonwealth.  For the registrant, however, it is more often than not a waste of time and money.  Or it’s something worse, because businesses that are poorly advised, and those that don’t remember the advice they were given, often believe they have something in terms of trademark protection when they pretty much have very, very little.

If you’re reading this on the Intertubes right now, a state trademark registration isn’t enough for you.

UPDATE: Not that I’m saying trademark registration is itself the be-all and end-all, and all.

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Author:Ron Coleman

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9 Responses to “State of the state”

  1. January 26, 2011 at 1:28 pm #

    First of all, I need to express that I am very honored to know that you came across my humble blog. One whose title was inspired by your blog. So first and foremost, thanks.

    I did want to touch on one of your last comments, namely “If you’re reading this on the Intertubes right now, a state trademark registration isn’t enough for you.”

    I absolutely agree with you on this one, and I always advise clients on the benefits of going to the USPTO as well as a state registration. However, maybe it’s the warm climate or the fact that we are an island, but many small business owners here are somewhat hesitant to go for federal registration. Many of them will never expand outside the island, so for them, the possibility of someone else using it in Newark isn’t that much of a worry.

    Still, I agree with you. State registration is nice, but federal registration is sweeter.

    Keep up the good work!

    Jean

    • January 26, 2011 at 5:02 pm #

      I appreciate the point, and what you say is right as far as it goes. I didn’t really write to criticize you but used your post as a launching pad for a little rant about the misunderstandings clients have about state “registration” (like the scare quotes?) of trademarks, or “reservations” of business names. They often come to understand the very slight value of these registrations too late.

      I’ll say one more thing: The main reason most state registrations are of such limited value is, as the post says, because so little that matters these days in trademark law stays within the border of one state. That may not be the case, however, regarding the Commonwealth of Puerto Rico, because many trademarks your clients register are for the Latino market — though I imagine there are relevant mainland sales opportunities too. You would be in a better position to know, of course.

  2. January 26, 2011 at 11:45 pm #

    There’s another time a state trademark registration may come in handy, which is when there is a state law-based cause of action that is more robust than what is available under federal law. One that jumps to mind is dilution. It’s a fairly difficult standard under federal law, but can be much easier to prove under some states’ law. The cause of action might only be available for state registered marks, though.

  3. January 27, 2011 at 8:18 am #

    That’s true Pam. In Puerto Rico’s case, our new trademark law provides for a mandatory TRO for the holder of a registered (state) mark.

    It’s pretty novel (I think) given that the law requires the Court to issue the ex-parte injunction if the plaintiff has a registered trademark.

  4. January 28, 2011 at 11:00 am #

    You’re right, Pam and Jean. That is one of the possibilities I had in mind when I wrote, “the more likely exception of the benefit of one state’s trademark statute in rare cases.” Likely, rare — okay, more confusion, but I have a head full of ideas, as is well known, that are driving me insane.

    Jean, that law is very troubling! Have you written about it? Would you consider doing so?

  5. January 29, 2011 at 3:58 pm #

    Hey Ron, well I hadn’t written about that prior to this exchange, but I dusted off an english translation of our trademark law and wrote about it here.

    I was very used to speaking about the mandatory injunction clause as a reason to convince clients to register locally (as well as federally) but I hadn’t stopped to think what a loaded weapon this section can be turned into, particularly since it isn’t limited to counterfeit items. Presumably, the injunction could be issued against a “confusingly similar” trademark. Let’s hope those trial courts have the Polaroid Factors posted on their wall.

Trackbacks/Pingbacks

  1. wellbornlaw - January 26, 2011

    Federal v state registration RT @roncoleman: The sorry (and confusing) state of state #trademark "registration" http://bit.ly/gLiddP

  2. Actual Confusion - January 26, 2011

    RT @roncoleman State of the state http://bit.ly/hhN9jz – Ron Coleman, of @LikelihoodOfConfusion on a post from @actualconfusion ! Yay!

  3. Actual Confusion - January 26, 2011

    RT @RonColeman: The sorry (and confusing) state of state #trademark "registration" http://bit.ly/gLiddP | LIKELIHOOD OF CONFUSION®

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