Most businesses serious about protecting a brand seek federal trademark registration. But there is another form of registration that is often overlooked – registering the trademark with the state where the business operates.
Why bother with a state registration when you already have, or plan to obtain, a federal registration?
The answer is surprisingly practical.
In Minnesota, a trademark or service mark can be registered with the Secretary of State. While this registration does not provide the nationwide rights associated with a federal trademark registration — and it should never be viewed as a substitute for federal registration — it does officially list the mark in a strategically important location: the same state filing system that other businesses must use when attempting to register their marks or names.
Minnesota law prohibits registration of a state trademark that resembles an existing registered mark, certain registered business names, or a previously used mark or trade name in a way that is likely to cause confusion, mistake, or deception.
But how similar is too similar?
Trademark lawyers spend considerable time navigating that question. Two marks do not need to be identical to create a “likelihood of confusion.” Similarities in appearance, sound, or meaning can matter, as can the relationship between those marks’ respective goods and services.
There is, however, an important distinction between the examination processes for federal and state trademark registrations.
At the United States Patent and Trademark Office, attorneys examine trademark applications — professionals with law degrees, bar memberships, and extensive training in trademark examination.
Minnesota is different. Although Minnesota law requires the Secretary of State to make what amounts to a likelihood of confusion evaluation during examination, there is no requirement that the individual performing that review be an attorney or have specialized training in trademark law.
That difference matters. The level of scrutiny involved in a Minnesota state trademark examination is well below that of a federal trademark review. A Minnesota trademark registration should not be viewed as an authoritative legal determination that the registrant has superior trademark rights (in Minnesota, or anywhere).
So why bother with state registration?
Minnesota generally will not accept a corporate, LLC, or other protected business name (or an assumed name) when the proposed name conflicts with names or state trademarks already listed in the Secretary of State’s records. Registering a company’s primary brand as a Minnesota trademark can therefore create a meaningful barrier for anyone later attempting to establish a Minnesota business using that brand as its name.
From a practical standpoint, anyone forming a Minnesota business, such as an LLC, is directed to search the Secretary of State’s records for existing names. That search identifies not only already registered business entities but also assumed name registrations and state trademark registrations. A state trademark registration thus places prospective entrants on notice that a similar mark is already in use.
Preventing a conflicting filing is almost always easier — and far less expensive — than discovering the problem after another business has opened its doors, erected signage, launched a website, and begun advertising.
For the same reason, if a company’s primary trademark is also the name under which it conducts business, we generally recommend filing an assumed name certificate as well. While a state trademark registration and an assumed name filing serve different purposes, together they create a public record connecting the brand, the business name, and the owner.
Other States
Other states handle these matters differently. Iowa has a relatively substantive statutory examination procedure that allows objections, responses, amendments, reexamination, and ultimately judicial review of a refusal. North Dakota also expressly reviews trademark applications against existing trademarks, trade names, and business names. Wisconsin’s system is structured differently and does not provide the same interaction between trademark registration and entity name records.
None of these state systems should be confused with federal trademark registration. Importantly, never consider acceptance of a name by a Secretary of State as a legal opinion that the name is safe to use.
State trademark registration can accomplish something quite valuable for relatively little expense: it can place your client’s brand in the state’s records before someone else does. Often, the best trademark dispute is the one that never begins.
