How to File a California State Trademark Application
Although most businesses opt to file a federal trademark application with the U.S. Patent and Trademark Office (“USPTO”), not every trademark owner qualifies for federal registration. The trademark owner may not be making use of its mark in interstate commerce. There may be an existing federal registration preventing the trademark owner from registering at the federal level. Or maybe the trademark owner wants to take a belt and suspenders approach to its trademark portfolio and support its federal registration with a California state trademark registration. Whatever the reason—how do you file a trademark application in California?
California Trademarks Are Governed By the Model State Trademark Law
Registration of trademarks in California is governed by the Model State Trademark Law, which is codified at California Business and Professions Code §§ 14200 et seq. In this regard, § 14205 lists many of the grounds that California can use to reject an application, many of the similar to the grounds for refusing a registration at the federal level. If you want a more detailed understanding of California trademark law, just read through the Model State Trademark Law. It’s not that long.
California Trademark Applications Are Filed With the Secretary of State
A California trademark application is filed with the California Secretary of State. The process is relatively simple, but there are a few differences between a California trademark application and a federal trademark application.
The Trademark Must Be in Use in California
At the federal level, you can file a trademark application based on your intent to use a mark in commerce. You don’t have that option when filing a California trademark application. The mark must be in use in California. There is no intent to use option.
Can’t Register a Trademark and Service Mark With One Form
When you file at the federal level, you can include both goods and services in a single federal trademark application. California does not let you do that. You can have a trademark application covering either goods (a trademark) or services (a service mark). If you want both, you’ll need to file two California trademark applications.
California Uses the Same Classification System for Goods and Services as the USPTO
California uses the same classification for goods and services that the USPTO uses. Although as I previously wrote about, California will be adding a classification for cannabis in January 2018.
A California Trademark Application is Substantially Cheaper Than a Federal Trademark Application
The USPTO charges between $225 – $400 per class for a trademark application, depending on whether you use one of the USPTO’s acceptable identifications and depending on, among other things, whether you file online or in paper. A California trademark application is only $70 per class. It’s for one state, not fifty, so it makes sense that it is substantially cheaper.
You Must Disclose If Your Trademark Was Rejected by the USPTO
One of the questions on the California trademark application form is whether you have filed a federal trademark application for your mark with the USPTO and whether it was rejected by the USPTO and why. Accordingly, you may want to file your California trademark application before or at the same time as your application with the USPTO so that you do not have to disclose any refusal by the USPTO.
The Trademark Application Must Be Filed By Mail in Hard Copy
Unlike a federal trademark application, there is no way to file a California trademark application online. You’ll need to fill out the form and mail it in. But they do have fillable pdfs so it’s not so bad. You can find the form here: California trademark application. The application is pretty straightforward and contains instructions on the last two pages of the form. Once you’re done, send the completed form along with your check to Trademarks and Service Marks, P.O. Box 942870, Sacramento, California 94277-2870.
There Is a Trademark Examination Process
No, California does not rubber stamp your trademark application. California will examine your application and can issue refusals just like the USPTO. If California issues a refusal, you will have six weeks—NOT six months—to respond to the refusal.
The Registration Lasts Five Years and Must Be Renewed Every Five Years
A California trademark registration lasts five years and must be renewed every five years. You must file the renewal within the six months before the expiration of the registration. The current renewal fee is $30.
Golden State Trademark Registration
If you’re principal place of business (or your client’s principal place of business) is California, consider filing a trademark application and obtaining a registration for California separate and apart from a federal registration. Among other things, owning a California trademark registration will provide your client with additional remedies if it has to sue for trademark infringement under California law (which will probably be added to the federal claims in a federal trademark infringement lawsuit as a matter of practice).