There are a number of benefits offered to applicants considering a CA Trademark registration which, some may argue, go above and beyond the benefits of a Federal Trademark registration.
First, state registrations are not subject to cancellation proceeding as with the USPTO or any other administrative proceeding. This constitutes an additional layer of protection not available at the Federal level.
Second, of importance to many applicants is the fact that a California trademark registration is typically faster and less expensive to obtain than a comparable federal registration. This increased efficiency is partially a function of resources; individual states generally do not have the resources available as with the federal level to search for conflicting marks, and filing fees are significantly lower.
Perhaps the most important benefit to applicants in California is that, once submitted to the state trademark databank, other potential applicants are placed on notice of the mark. This presumes that the applicant in California is using the mark and qualifies for trademark protection.
However, there are some limits to the advantages of California trademark registrations. For example, the state registration process generally only offers protection within California. In addition, the mark must actually be in use before a California application may be filed and approved. If approved, a “certificate of registration” is awarded, which has a five-year term.
In general, where a Federal trademark already exists, it is not necessarily advisable to file for a CA trademark. However, especially if a mark is used exclusively in the state, an applicant will benefit from filing a CA Trademark because an applicant would not qualify for a Federal Trademark application, which requires interstate usage of the mark.
Note:
California trademarks are filed with the California Secretary of State. The application must include an exemplar of the mark itself in addition to specifying the goods and services with which the mark is used. In addition, 3 original specimens and the accompanying filing fee are required.
