Common law, Georgia, or federal trademark: which protection do you need?

Founders, artists and production companies in Atlanta often ask whether they should register a name with the State of Georgia, with the U.S. Patent and Trademark Office, or at all. The three layers of protection work differently, and the right answer depends mostly on where you sell, stream, tour or ship. This page compares them using the Georgia Secretary of State's rules and the federal Lanham Act. Our main copyright and trademark law page covers clearance and the federal process in more depth. Our post on copyright, trademarks, patents and trade secrets explains where trademarks fit among the other kinds of IP.

How each route works, step by step

1. Clear the name first. The Georgia office does not search federal or other states' records, and a USPTO examining attorney looks for conflicting marks only after you have filed and paid (15 U.S.C. 1052(d)). Searching before you print packaging or signs can save a rebrand.
2. Common law rights begin with use. Nothing is filed. Rights arise when the name is used to sell goods or services and reach where it is actually used and known.
3. Georgia filing comes after Georgia sales. You file online or on the state's forms: one mark and one class per application, $15 each, with three specimens and a drawing page. The certificate lasts ten years and can be renewed for ten more.
4. A federal application can come first. It costs $350 per class and can rest on current use or on a bona fide intent to use (15 U.S.C. 1051). An examining attorney reviews it, and an office action must be answered within three months, with one three-month extension for $125 (37 CFR 2.62(a)).
5. Publication opens a 30-day window. Anyone who believes they would be damaged can oppose within thirty days after publication or ask for more time (15 U.S.C. 1063(a)). Our page on the TTAB opposition process explains what happens if someone does.
6. Registration, or proof of use first. A use-based application registers. An intent-to-use application gets a notice of allowance, and the statement of use is due within six months after it, at $150 per class, with six-month extensions at $125 per class (37 CFR 2.88, 2.89). Our post on how to register a trademark in 8 steps walks through each stage.
7. Upkeep. A federal registration needs a declaration of use between the fifth and sixth years and every ten years after; a Georgia registration is renewed at ten years.

What protection do you get just by using the name?

Trademark rights in the United States come from use. A business that uses a name to sell goods or services has rights in it without filing anything, and those rights can matter a great deal in a dispute over who was first. Their weakness is reach. Federal law gives a registrant nationwide priority as of its filing date, with exceptions that include anyone who was already using the mark before that date (15 U.S.C. 1057(c)). And once a federal registration becomes incontestable, a prior user's defense is limited to the area where it proves continuous prior use (15 U.S.C. 1115(b)(5)). In practice, an unregistered owner has to prove where its reputation actually reached, area by area.

What does a Georgia registration do, and what does it require?

Any person who uses a trademark or service mark in Georgia may apply to register it with the Georgia Secretary of State's Corporations Division. The state's instructions set out the key requirements:

• The mark must already be in use in Georgia. Goods must already be offered for sale or distributed in the state, and services must already be rendered there, citing O.C.G.A. 10-1-440. A mark that is not yet in use cannot be registered.
• Each application covers one mark and one class of goods or services; a mark used in several classes needs a separate application for each.
• A non-refundable $15 filing fee accompanies each application, along with three specimens of the mark as used and a drawing page.
• A registration lasts ten years and may be renewed for another ten-year term.

Two limits are worth knowing. The Secretary of State does not search federal or other states' trademark records and cannot guarantee that a mark is available, so a Georgia certificate is not a clearance opinion. And the office notes that a state trademark registration does not stop someone else from registering the same name as a trade name with a county clerk or forming a company under it. Applications can be filed online or on the state's forms; the Corporations Division is at 2 MLK Jr. Drive, Suite 313, Floyd West Tower, Atlanta, and answers application questions at (404) 656-2817.

What does a federal registration add?

A registration on the USPTO's Principal Register brings several legal advantages that a state registration cannot:

• Nationwide priority from the application's filing date, once the mark registers (15 U.S.C. 1057(c)).
• Constructive notice to everyone of your claim of ownership (15 U.S.C. 1072).
• A certificate that is prima facie evidence of validity, of your ownership and of your exclusive right to use the mark for the listed goods or services (15 U.S.C. 1057(b)).
• The right to use the ® symbol. Federal law ties the symbol to marks registered in the USPTO, and the USPTO's manual lists the mistaken belief that a state registration permits it among common misuses (15 U.S.C. 1111; TMEP 906.02). Without proper notice, a registrant generally cannot recover profits or damages from an infringer who lacked actual notice.
• The ability to file before launch on an intent-to-use basis, which Georgia does not allow (15 U.S.C. 1051(b)).
• A path to incontestable status after five years of continuous use (15 U.S.C. 1065), and a base for protection abroad, covered in protecting a U.S. trademark in other countries.

The USPTO's base application fee is $350 per class. Surcharges apply for applications with insufficient information ($100 per class), for using a free-form description instead of the USPTO's ID Manual ($200 per class), and for each extra 1,000 characters of free-form text ($200 per class).

Which one fits an Atlanta business or creator?

Start with where the name will do business. A brand that sells only in person in Georgia, with no plans to grow, gets inexpensive public notice from a state registration. A brand that sells online, streams, tours, ships out of state or plans to license merchandise is operating in a national market, and federal registration is the tool built for that market. Federal registration is also what the USPTO's own processes recognize: a letter of protest against someone else's application, for example, can rely on a federal registration or earlier federal application, but not on a state registration (TMEP 1715.01(b)). If you already face a conflicting filing, see what to do when someone files for your brand name.

Whatever the route, keep the maintenance dates in mind. Georgia registrations run in ten-year terms, and federal registrations need the filings described in when to renew a federal trademark. For the state and federal offices an Atlanta business deals with, see our page on intellectual property and entertainment law in Atlanta.

Does registering a company name give you trademark rights?

No. Forming an LLC or corporation, or registering a trade name with the county, is a separate system from trademark registration, and the Secretary of State says plainly that a trademark registration does not block those other filings. The reverse is also true: having your company name on file does not register a trademark or clear the name for use as a brand.

What changes the answer

• Where you sell. Georgia registration needs use in Georgia. Federal registration rests on use in commerce, which the Lanham Act defines as all commerce Congress may lawfully regulate (15 U.S.C. 1127).
• Whether you have launched. Only the federal system accepts a filing before the first sale, on an intent-to-use basis (15 U.S.C. 1051(b)). One federal application can even use different bases for different goods (37 CFR 2.34(b)).
• Who used the name first. A federal registrant's nationwide priority does not reach a person who used the mark before the registrant's filing date (15 U.S.C. 1057(c)). Even incontestability yields to valid state-law rights from use continuing since before registration (15 U.S.C. 1065).
• Two businesses in different regions. Where earlier lawful use overlaps, the USPTO can issue concurrent registrations limited by place or manner of use (15 U.S.C. 1052(d)).
• How many product lines you have. Georgia charges per application and each covers one class; the USPTO charges per class.
• A dispute. Federal law gives a civil action against confusing use to any person likely to be damaged, and the text of that provision is not limited to registered marks (15 U.S.C. 1125(a)). Federal district courts hear Lanham Act cases regardless of the amount in controversy (15 U.S.C. 1121). For how such a case moves in Atlanta, see a trademark lawsuit in Atlanta federal court.

A worked example

Common mistakes

• Treating a Georgia certificate as clearance. The office does not search federal or other states' records and cannot guarantee availability.
• Using ® after a state registration. The USPTO's manual says a state registration does not permit the federal registration notice (TMEP 906.02).
• Filing in Georgia before any Georgia sales. A mark not yet in use in the state cannot be registered there.
• Putting several classes in one Georgia application. Each class needs its own application and fee.
• Waiting to file federally until expansion. Someone else's earlier federal filing date can become nationwide priority over a later filer (15 U.S.C. 1057(c)).
• Assuming the LLC filing protects the brand. Company and trade name filings are a separate system.

What to do this week

1. Write down where you sell today and where you expect to sell, stream, tour or ship within a year.
2. Search the USPTO's records and Georgia's for similar names in your field.
3. Gather dated proof of your first sale, show or service under the name.
4. List your goods and services and group them by class to estimate fees.
5. Decide whether each item will be filed on current use or on intent to use.
6. Put the renewal and declaration dates on a calendar the day a certificate arrives.

Frequently asked questions

Can I use TM before my mark is registered?

Yes. The TMEP says terms such as "trademark," "TM" and "SM" can be used whether or not a mark is registered, because they are not official symbols of federal registration (TMEP 906). The ® symbol is reserved for marks registered in the USPTO.

Will the USPTO block a confusingly similar name after I register?

Examining attorneys refuse later applications for marks likely to cause confusion with a registered mark (15 U.S.C. 1052(d)). If you are on the other side of that refusal, see responding to a likelihood-of-confusion refusal.

Do I need a lawyer to file with the USPTO?

An applicant based in the United States may file without one. An applicant whose domicile is outside the United States must be represented by a U.S. attorney (37 CFR 2.11), as our page on foreign companies filing U.S. trademarks explains.

Does a Georgia registration protect a band name on tour?

It gives public notice of your claim in Georgia only. Shows and releases in other states are a national market, which is where federal registration helps; see trademarking a band or artist name.

I build my brand online. Which route fits a creator?

Followers, streams and merchandise sales often cross state lines, which points to the federal route. Our post on trademark protection for content creators covers the brand questions creators raise most.

Zala IP Law is based at 303 Perimeter Center North in Atlanta, and Shreepal J. Zala is licensed in Georgia. Federal trademark work before the USPTO is handled for clients across the country. To talk through which protection fits your name, request a consultation or call 404-313-1701.