If you use a slogan or a logo that identifies your company to your customers, you should protect your rights to that slogan or logo. If you don’t have the thousands of dollars that a federal trademark registration might require, the Tennessee Trademark Act (TTMA) might provide you with the protection you need at a cost you can afford.
Registering your slogan or logo under the TTMA, which only applies to marks that are in actual use in your business, likely will give you the remedies you may need against infringements in Tennessee, such as injunctive relief, infringer’s profits, and attorney’s fees if the infringement is knowing or occurs in bad faith. Registration also gives you the ability to prove your ownership and use of the mark to any other entity in Tennessee.
Registration under the TTMA is a streamlined process through the Tennessee Secretary of State’s Office. The application fee is only $20 per class within which you want your mark registered. The review process – the time from filing of your application to issuance of a registration certificate – can be as short as three business days. While involvement of an attorney may be needed or advisable, it is not required.
Quick reference to the Secretary of State’s website will provide you with information and the needed forms and offer you a review the Trademark Guide.
The application will require a copy of the mark for which registration is sought and the protection afforded only applies to the use of the mark and/or infringement of the mark in Tennessee. The registration is good for five years and can be renewed for successive five-year periods as long as the mark is used in your business.
The application also requires you to verify that, to your knowledge, no one else has registered the mark either federally or in Tennessee, and that no one has rights to use a mark identical or confusingly similar to your mark. Submitting a false application is considered a Class A misdemeanor and can subject you to civil damages in cases filed to set aside a falsely registered mark.
There are recourses available to you regarding whether the mark you seek to register has been registered previously. The Tennessee Secretary of State provides a trademark search database regarding all active Tennessee-registered marks. That database, however, is very literal and is not nuanced regarding spelling or phonetic variations that could be confusingly similar to your mark.
Whether a mark already has been federally registered can be investigated at either the Memphis and Shelby County Public Library and Information Center or at the Stevenson Science Library at Vanderbilt University. Both libraries are designated as Patent and Trademark Depository Libraries in Tennessee.
If you have a mark that identifies your company with your customers, it should be protected. It can be debated whether a state trademark registration is sufficient compared to federal registration. However, it cannot be debated that state registration is less expensive and quicker to achieve.
*This article first appeared in the April 27th issue of the Memphis Daily News.