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An Overview of Federal and State Registrations for Service Marks and Trademarks: Considerations

June 26, 2018

Registering a trademark, or service mark (for services) is of the utmost importance to a company offering goods or services in the United States. Federal registration, which is the most well-known option, provides protection for trademarks and service marks used in interstate commerce. See 15 U.S.C. §§ 1051(a), 1053. The Lanham Act defines interstate commerce as commerce that occurs between different states. See 15 U.S.C. §§ 1051(a), 1053.

Accordingly, there are many instances wherein a mark may not be eligible for federal trademark or service mark protection, but wherein state registra- tion is appropriate. If the mark or service mark is not being used in interstate commerce, state regis- tration will be appropriate to protect the mark within that state. However, there are some types of in- trastate services that may qualify under the federal statute as offering services in interstate commerce and can still be eligible for both state and federal protection. See e.g., Larry Harmon Pictures Corp. v. Williams Restaurant Corp, 929 F.2d 662 (Fed. Cir. 1991) (service mark used to identify restaurant ser- vices at a single location qualified as use in com- merce because services were rendered to interstate travelers); In re Gastown, Inc., 326 F.2d780 (C.C.P.A. 1964) (automotive service station in one state was found to render services in interstate commerce because services were available to customers trav- eling between states on federal highways); United States Shoe Corp. v. J. Riggs West Inc., 221 U.S.P.Q. 1020 (T.T.A.B. 1984) (billiard parlor services satisfied interstate commerce requirement because services for parlor were advertised out of state).

As an example, if a restaurant serves customers from more than two states, even if that number is minimal, it may still qualify a having used its mark in interstate commerce and be eligible for federal regis- tration. See Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662 (Fed. Cir. 1991) (holding that the services from a single restaurant to out-of-state customers may still qualify as use in commerce as required by the Lanham Act). It is important to note that if a single-location restaurant only sells food in a single state, does not ship food across state lines, or take orders from customers in another state, then this would likely not allow the restaurant’s mark to be eligible for federal registration. See e.g., Doctor’s Assoc. Inc. v. Janco, LLC, Opposition No. 91217243 (T.T.A.B. Jan. 7, 2016). Although Janco is not a prec- edential decision of the Trademark Trial and Appeal Board, it still demonstrates an example of where a single location restaurant failed to satisfy the use in commerce requirement of the Lanham Act and can face being deemed void ab initio for failure to use the mark in commerce prior to filing for a feder- al trademark application.

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