Trademark registrations under state law
By now, most people generally know that a business can register its trademark(s) with the United States Patent and Trademark Office (USPTO). Some know that doing so will help them achieve nationwide protection for their trademark(s). Most do not know that it is also possible to register their trademark under state law. In North Carolina, for instance, the Secretary of State Trademarks Division maintains a database of state-registered trademarks.
A state registration, however, does not have the teeth of a federal registration (which allows nationwide priority of use, even if you are not using your trademark in most other states, and also offers treble damages for you against willful infringers). A state registration usually will only protect your trademark from infringement within the borders of the state, and most do not offer additional punitive damages for willful infringers. And as between two similar marks, the mark that is registered federally with the USPTO will usually trump the mark that has only been registered under state law. For a great example of this, enjoy this read about Burger King (not that Burger King) in Illinois, where the small mom and pop Burger King has continued to operate one local restaurant and the national chain cannot open a franchise within a 20 mile radius (however, the small Burger King cannot expand at all, either).
There are, however, some instances where seeking a state registration may be necessary. As of this writing, there are sixteen (16) states, plus the District of Columbia that have legalized recreational use of marijuana: Alaska, Arizona, California, Colorado, Illinois, Maine, Massachusetts, Michigan, Montana, Nevada, New Jersey, New Mexico, New York, Nevada, Oregon, Vermont, Washington. Plus, there are several more that will legalize later this year and/or have decriminalized recreational use. The advent of legal recreational marijuana has led to the commercial sales of the product, which, of course, leads to an increase in associated branding and desire to protect that branding. The problem: recreational marijuana use is still illegal according to the laws of the federal government and therefore, federal registration for trademarks associated with marijuana cannot be registered under the Lanham Act. The USPTO will deny such applications due to “unlawful use.” There are some limited exceptions for things secondarily related to cannabis: informational websites about marijuana (but not how to grow it, and not advertisements for the sale of it), some branded merchandise (apparel related things), and some items that may not qualify as marijuana (hemp stalks, etc.).
So, since federal protection is not possible, the best way to protect marijuana-related trademarks (in states where recreational marijuana use has been legalized) is to register that trademark with that state. The good news is that the fees to apply for trademark registration at the state level tend to be much lower than at the federal level. The bad news is that, at least in North Carolina, there is no “intent-to-use” basis (so you have to already be using the trademark in commerce—selling goods/services) and you have to send in a physical application (no online submission) with physical specimens of use (not photocopies). This can make the process a bit more tedious at times. Additionally, processing times at the USPTO are extremely drawn out (around 9 months) and, instead, it may be possible and beneficial to obtain a state registration within a few months. It can be helpful to have a licensed attorney experienced with this process help you through it.
For more information: Scott K. Burger
Updated: February 13, 2023
