Clients often inquire whether they should register their trademarks at the State or Federal level. Starting with the assumption that even small local businesses may encounter a challenge to their trademark in the future, I generally try to impress upon them the advantages of federal registration. After all, many of my clients end up being successful and seek to expand outside of Oregon’s borders. The Internet provides opportunities for national and global expansion, even for the smallest Oregon businesses. It is therefore important for businesses of all types and sizes to choose and protect their trademarks with care…often this can mean protection at BOTH the State and Federal level.
Here’s a quick primer on registration of a trademark in Oregon:
Trademarks are registered with the Oregon Secretary of State. There is a non-refundable fee of $50 for filing a trademark application, and the registration must be renewed every 5 years. The Secretary of State website provides access to trademark registration forms and a searchable database of active trademark registrations.
Registration of a trademark with the Oregon Secretary of State creates a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in Oregon commerce in connection with the goods or services described in the application. (A federal registration would protect your trademark in all states where it is used.)
The Oregon Trademark Act (ORS 647) protects words, names, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Oregon, but not against corporate, fictitious, or assumed names.
Oregon trademark rights arise from actual use of the mark in commerce, i.e. there are no “intent-to-use” applications.
A mark cannot be registered until it has been used in Oregon. Oregon defines a mark being “used” when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto, or when it is used to identify the services of one person and distinguish them from the services of others, and such goods or services are sold, distributed, or rendered in Oregon.
So what are some of the main benefits of state registration over federal registration? It’s cheaper (State – $50/class vs. Federal – $275/class) and quicker. I’ve seen turnaround of weeks, not months or years as with the USPTO. State registration can be a good remedy for a purely local entity. State registration provides an increased level of trademark protection…at least you can claim protection on your “home turf.” However, in the long run, I’d recommend that any entity which anticipates expanding outside of Oregon, particularly via Internet “e-commerce,” should seek federal trademark registration to best protect their valuable trademark rights.
Oregon trademark registrations must be renewed every 5 years.
A trademark registered under Oregon law:
- Has a term of five years from the date of the registration.
- May be renewed for successive five-year periods if statutory renewal requirements are met.
An Oregon trademark registrant may renew a registration for successive five-year periods by filing an application for renewal within 180 days before the expiration of the registration. The renewal application must include:
- A renewal fee.
- A verified statement that the mark has been and is still in use.
- A specimen showing actual use of the mark on or in connection with the relevant goods or services.
I look forward to hearing from proponents of State registration…how has an Oregon State registration uniquely benefitted either you or your clients?