How Can I Obtain An Illinois State Trademark Registration?
Trademark rights in the United States are based on use in the United States (this is not limited to Federal, as State trademarks exist, and “common law” use can qualify as a “poor-man's” trademark). To be eligible to seek a federal trademark registration, you have to be using your trademark or service mark with respect to interstate commerce. While often there is a low threshold to prove interstate usage in commerce, it is also sometimes the case that your business simply does not extend beyond your home state. In those instances, it is perfectly fine to seek a state trademark registration, so long as you are aware of the limitations of the same. Each individual state in the United States has its own trademark register. This article will focus on and deal with state trademark registration in Illinois, as that is where our office is located.
Limitations of a State Trademark
Among the many reasons why a federal trademark registration is favored and more often sought after than a state trademark registration - state trademark registrations are rather weak, as compared to a federal trademark registration. State trademark registrations are only enforceable in that state, and they are outranked or trumped by a federal registration. A notable court case involving state trademarks (in Illinois) relates to "BURGER KING." The owners of a rural Illinois restaurant in Mattoon, Illinois, attained a state trademark registration for the name of their restaurant - "BURGER KING," in 1959. Ironically, around the same time, in Florida, another restaurant enterprise was starting up, called "BURGER KING" - which grew into a nationwide franchise chain of fast-food restaurants that most readers would instantly recognize. While the Illinois "BURGER KING" held a state trademark registration (in Illinois), the Florida enterprise attained a federal trademark registration, and began expanding all over the country, including in Illinois. A lawsuit was initiated between the two. The end result of the lawsuit was that the "smaller" Mattoon-based "Burger King" (with a State of Illinois trademark) was granted exclusive rights to the name in a small geographic region around Mattoon, Illinois. The "bigger" "Burger King" (with a federal trademark registration) was granted rights to the name in the rest of the State of Illinois...but NOT within a certain mile radius of Mattoon.
Both sides could claim victory (since the Mattoon restaurant had no dreams of expansion). However, from the perspective of a state trademark, the Illinois state trademark had promised exclusive rights in the entire state, and yet the Mattoon-based "BURGER KING." ended up with less than that.
Who is Eligible for a State Trademark Registration in Illinois
At the state level in Illinois, trademark registration is governed by the Illinois Trademark Registration and Protection Act (765 ILCS 1036). According to that Act - a state trademark application can be made by "any individual, firm, partnership, limited liability partnership, limited liability company, corporation, association, union or other organization owning the mark."
Generally speaking, a mark will be registered in Illinois unless:
- it is immoral, deceptive, or scandalous in nature;
- disparages or falsely suggests a connection with real persons (living or dead);
- contains the flag or coat of arms of the US or any state;
- is merely descriptive in nature of the good/service; or
- is too similar to an existing trademark or tradename so as to cause confusion among the public.
How do You Apply for a State Trademark Registration in Illinois
The process for applying for a state trademark registration in Illinois is similar to the federal process, it just costs less and takes a much shorter time period. First of all, you need to already be using your mark in commerce, in Illinois. The application itself is filed at the Illinois Secretary of State's Office (just like filing for a corporation or limited liability company). You need to fill out a form identifying yourself (or your company) as the owner, identifying the mark (as well as the specific good/services to be covered by the trademark), list the date you first started use anywhere and also in Illinois. Then you have to affirm via declaration the truth of your submission, and provide three (3) acceptable specimens of use, with the filing fee, and send that to the Illinois Secretary of State in Springfield, Illinois.
Unlike the federal trademark registration process - the Illinois process does not charge per class. Rather, the application for a state trademark in Illinois is (currently) only $10 per application. Also, unlike the federal process, the Illinois process for seeking registration of a state trademark takes a few weeks.
While the Process is Easier than the USPTO - you Still May Want Professional Assistance
Determining what class or classes are applicable to your line of work can be challenging. Also, like the federal trademark registration process, the state process often will reject specimens that are not acceptable. The requirement is to provide 3 specimens.
An experienced trademark practitioner attorney can help with these and other issues that may arise. In fact, an experienced trademark practitioner attorney can make the process quick and stress-free. Our office has experience with state trademark registrations in Illinois. If you have a question about the process - feel free to reach out to us!
