1.6 U.S. State Trademarks
State trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. In case Complainants rely on state TM registrations, unless there is proof that such state registrations go through substantive examination procedure, Complainants are expected to provide evidence of common law trademark rights.
Additional Information
Relevant Decisions
RENU MEDISPA, L.L.C. v. Angela Sattler / Aesthetics, Forum FA2503002143814 <renewcda. com>, 3-Member, Denied, RDNH
Here, Complainant has submitted copies of its state trademark registrations from Idaho, Oregon, Montana, and Washington. There is no information supplied by Complainant to demonstrate that these registrations were obtained through substantive examination of its applications through which the states considered whether the applied-for mark was distinctive and the Panel is not aware of any such process.1 As such, the Panel declines to accept the proffered state registration certificates as sufficient proof of Complainant’s rights in the claimed RENU MEDISPA trademark.
Boxford Chimney Sweep, LLC v. Keren Leve / Magnetic Services LLC, Forum FA2411002124552, <boxfordchimneysweep.us>, Denied
Even if the State of Massachusetts did engage in some level of scrutiny in connection [with] the prosecution process, as asserted by Complainant, Complainant would need to demonstrate that the process employed by the state was functionally equivalent to that employed by the United States Patent and trademark Office. If this was the case, Complainant has not made this clear.
Erase Technologies, LLC v. Web Presence LLC, NetReputation.com, WIPO D2022-3797 <GuaranteedRemoval.com>, 3-member, Denied, RDNH
The Panel finds that Complainant’s New York State service mark registration establishes that it has rights in the GUARANTEED REMOVALS mark. However, state trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2. This does not appear to be the case in New York where the New York State trademark registration statute and related regulations provide on their face for substantive review, including consideration of descriptiveness.
Peymon Mottahedeh v. AbdulBasit Makrani, Forum FA2010001918379, <FreedomChurch.org>, 3-member, Denied
Under Policy ¶ 4(a)(i), Complainant must also establish that he owns rights to a FREEDOM CHURCH service mark. To that end, Complainant has submitted a mark registration document issued by the state of Florida. But, because such registrations are not subjected to the rigorous examinations required under the United States Patent and Trademark Office, or other national or regional trademark authorities throughout the world, prior Policy panels have not generally recognized state issued mark registrations as probative of mark ownership. The Panel agrees with that reasoning and determines that Complainant’s Florida registration is insufficient to sustain Complainant’s claim to rights in a FREEDOM CHURCH service mark.