Do I Need To Trademark Under State Law?

by Revision Legal

Many are familiar with trademark registration under federal law. Some may not know that trademark registration is also available under state laws. In general, registering a trademark under state law is unnecessary, but there are some circumstances in which state trademark registration has value – when federal registration is not allowed and when your trademark might not be famous enough for protection under the anti-dilution provisions of federal law.

Why is State Trademark Registration Mostly Unnecessary? The Story of Burger King

The main reason why trademark registration under state law is generally unnecessary is that state registration does not give you priority in the whole state and state registration does not have priority.

The case of Burger King of Florida, Inc. v. Gene Hoots and Betty Hoots, D/b/a Burger King, 403 F.2d 904 (7th Cir. 1968) is a famous example. The plaintiff was the now-very-famous Burger King that is a national chain of fast food restaurants. The national chain began operating in Florida in 1953. As the court tells us, the national Burger King expanded quickly, with 15 restaurants by 1955 operating in Florida, Georgia, and Tennessee; another 14 restaurants within the next year in Alabama, Kentucky, and Virginia; another nine restaurants opened in the next year. In 1961, the national chain opened its first Illinois Burger King restaurant in Skokie. In 1961, the national chain registered the trademark “Burger King” under the Lanham Act. By 1967, the national chain operated more than 50 restaurants in Illinois.

By contrast, Gene and Betty Hoots operated only one Burger King restaurant that they opened 1957 in Mattoon, Illinois. They registered their trademark to the name “Burger King” in 1959 under Illinois law without knowledge of the national “Burger King’s” prior use of the same mark in Florida and the southeast.

Initially, the Hootses sued in state court for infringement of their state trademark. The national chain sued in federal court for infringement of their federal trademark. In the end, the federal court held that the federal trademark took priority over the state trademark. As such, the Hootses were prevented from using the “Burger King” mark outside of Mattoon, Illinois.

However, the Lanham Act, 15 U.S. Code § 1115 (b) (5), provides a so-called “limited area defense” to infringement if the users of the “junior mark” (like the Hootses) were continually using a mark in a local area, without knowledge of the “senior mark.” Because of this provision, the federal court ruled that the Hootses could continue to use the name “Burger King” for their local restaurant and that the national chain could not open one of their “Burger King” stores within a 20-mile radius. As reported a few years ago, that remains the status quo in Mattoon, Illinois.

As can be seen, having a trademark registered under Illinois law did not provide much protection against a litigant holding a trademark under federal law.

State Law Trademark Registration Where Federal Registration is Not Allowed

That being said, there are a couple of circumstances where state trademarks are needed. The first involves situations where federal registration is not allowed. At the moment, the most well-known example involves the cannabis industry. Recreational use of marijuana is fully legal in eight states and the District of Columbia. Those states:

  • Alaska
  • California
  • Colorado
  • Maine
  • Massachusetts
  • Nevada
  • Oregon
  • Washington

However, because recreational use of marijuana is prohibited by federal law, federal trademark registration cannot be obtained under the Lanham Act. This is the “unlawful use doctrine” under which the USPTO will deny registration for trademarks sought in connection with unlawful sale of products or services.

Under these circumstances, registration of a trademark under state law is essential. Thus, marijuana growers and retailers would be wise to have an aggressive registration plan to obtain registration under all of the state regimes where marijuana use is legal in some manner.

Growers and retailers would also be wise to use their marks in cross-state sales and distribution. And to be creative. As most know, a “trademark” is a word, phrase, symbol, design, or combination thereof, which identifies and distinguishes your goods/products (or services) from other goods/products. Do not forget that trademarks cover scents, the shape of a product’s packaging, and short musical “phrases” or unique sounds.

Dilution of Trademark Under State Law

There is a second reason why having a trademark under state law might be useful – dilution of trademark claims involving only locally or regionally famous marks. Under the Lanham Act, the owner of a trademark can sue for dilution. To do this, a plaintiff must show that the plaintiff’s trademark is famous and that the defendant’s use of the same mark (or a confusingly similar mark) causes a likelihood of dilution by blurring or tarnishing.

Note that under the Lanham Act, the senior mark must be “famous;” that is, “famous” nationally.

However, not all trademarks will be “famous” nationally and, as such, they will not support a dilution claim under the Lanham Act. A recent example is AEGIS Software, Inc., d/b/a San Diego Spirits Festival v. 22nd District Agricultural Ass’n, Case No. 15cv2956 BTM (BLM) (U.S. Dist. S.D. Cal. 2017). In that case, the court held that the “San Diego Spirits Festival” (“SDSF”) was not a “famous” mark as that term is used by the Lanham Act. The SDSF was/is a relatively new yearly festival in San Diego which offers specialty cocktails and liquors to the attendees. A competing festival called “Distilled: San Diego Spirit & Cocktail Festival” was started and SDSF sued under many theories including trademark dilution. However, since the plaintiff’s mark was not famous, the federal dilution claim was dismissed.

If your trademark is not “famous” nationally, then state trademark statutes can be used to protect your mark from dilution. A good example is Wedgewood Homes Inc v. Lund, 659 P.2d 377 (Ore. 1983). In that case, under the Oregon trademark statute, a home builder had used the mark “Wedgwood” for 25 years and it had become locally “famous.” The home builder successfully sued retirement apartment complexes for using the names “Wedgwood Downs” and “Wedgwood Place” which were not built or associated in any way with the homebuilder.  See also Florida International Univ. v. Florida National Univ., 830 F. 3d 1242 (11th Cir. 2016) (discussing “famous” in Florida under the Florida trademark statute; holding “FIU” was “famous” but that no confusion or dilution existed by defendant’s use of “FNU”).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Revision Legal | Attorney Advertising

Written by:

Revision Legal

Revision Legal on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.