How to Register a Trademark in Arizona

Arizona boasts a bustling commercial landscape; as such, businesses must possess unique identities to thrive. Trademarks are never legally required to operate a business, but having one provides legal protection.

In this article, we'll walk you through the step-by-step process of trademark registration. It's a straightforward process, but keep in mind your mark must be in use before you apply.

Understanding trademarks

Arizona offers protection for various types of trademarks to secure brands. This include trade names and trademarks.

A trade name refers to the name under which an individual or an entity conducts business. Filing a trade name registers a business name for public record. A trade name doesn't grant exclusive rights to a business name, nor is it similar to a corporation.

A trademark is a word, name, symbol, design, or any combination of these items that a person or company uses to distinguish its goods or services from those of competitors. Filing a trademark registers it to be displayed on goods or services for public record. Trademarks may also be referred to as service marks when filed for services only.

Why register a trademark in Arizona

Registering a trademark in Arizona offers numerous advantages. This is distinct from federal trademark registration.

State-level protection: Registering a trademark in Arizona ensures protection of the mark within the state. This prevents competitors from infringing on your trademark and diluting your brand.
Public notification: Registering your trademark puts the general public on notice of your ownership of the mark. This discourages any potential infringement.
Legal recourse: Registration sets the ground for you to seek legal action against any potential violation. The threat of it also wades off potential infringement.
Asset value: A registered trademark enhances brand identity and establishes market credibility. This also boosts investor confidence in your business.

The process of registering a trademark in Arizona

How to file a trademark or trade name in Arizona is a simple process. However, individuals and businesses must watch out for critical steps such as the timing for renewing service marks. The state also provides forms for changing trademarks or trade names and assigning them to different entities.

1. Trademark search

Conducting a trademark search is key in establishing the uniqueness of your brand. This also ensures that your mark doesn't bear any resemblance to an already existing intellectual property (IP). Search the Arizona Secretary of State database and the federal USPTO database.

The Arizona Secretary of State Office advises individuals and businesses to perform extensive, independent research before registering a trade name. This is because it cannot guarantee that chosen names won't conflict with already existing ones. Therefore, your mark must be distinguishable from those already in the listing.

If the name registered is similar to a name already protected by a US Patent and Trademark Office trademark filing, consequences such as being forced to stop using the name, among other legal implications, could occur. In fact, the owner of the state-registered trade name may be ordered to stop its use even if the name isn't federally registered by another entity or if a similar name is already being used in a related field.

The Secretary of State's search website doesn't provide electronic images of what has been previously processed. Copies of received applications can be requested with a public record request form. Plain copies of applications on file cost $0.10 per page. It includes an extra $3 per request if you require certified copies. A microfiche of every application is kept on file after it has been filed, cancelled, or revoked.

2. Application preparation

To register a trademark, file an application for registration of the mark with the Arizona Secretary of State. The form must contain your name and the goods or services offered. It must also indicate when the trademark was first used.

3. Application filing

After preparing the application, submit it together with the sample to the Secretary of State's Office online. Follow the instructions on the portal on how to fill out the forms provided.

The registration process requires that you provide an image/logo of your trademark. You must provide a full written description that accurately describes the trademark you are registering. If your trademark consists of only text/words, please indicate this in the description field of the online application and provide an image of only the words you wish to trademark.

4. Evaluation

The office of the Secretary of State will examine your application for completeness and compliance with Arizona laws. The review period usually takes between two to three weeks. You can ask the state office to expedite the evaluation process.

Expediting the process costs $25 paid to the state after approval. The process usually has a turnaround time of 2 to 3 days, however, the duration can still vary depending on workload and application complexity.

5. Pay the registration fees

After filing your application, wait for approval or rejection via email. If accepted, you will be required to pay a registration fee. Trademarks cost roughly $15, whereas trade names cost $10.

6. Registration

If your registration of a trademark is uncontested or a settlement is ruled in your favor, you'll be issued a certificate of registration. It'll serve as legal proof you own the trademark in the State of Arizona.

After the registration, existing trademark owners can challenge your ownership of the mark in court. This is if they believe it infringes on their already existing rights. While the State Office can register a mark, disputes of infringement can only be resolved in legal courts.

7. Filing for amendments or cancellations

Should you want to change or cancel a trademark, visit the state's online portal. The website has amendment forms you can fill out. This can be a result of a change in the business name or nature of the business. It can also be due to a change in the contact information associated with the trademark.

Use the assignment form to assign the trademark to someone else. There is also a form to fill out if you want to cancel a trademark. You are required to print the cancellation, amendment, and assignment forms from the online portal. To complete the process, sign, notarize, and mail them back to the office of the Arizona Secretary of State.

It costs $3 and $10 to amend and assign a trademark, respectively. Cancellations are free.

8. Seek legal counsel

Working with an attorney from the onset of your business or as it grows is important. What happens if someone registers your trademark in another state? What if someone else registers your mark with the federal government? These are serious questions that need to be addressed by legal professionals.

A similar trademark registered in another state or with the federal government may hinder the expansion of your business. This may result in legal battles that may stagnate or even cripple your business. Intellectual property attorneys can advise you on how best to protect your business. They can also advise you on the intricacies of intellectual property protection.

Maintaining your trademark registration

Arizona trademark registrations are valid for 10 years from the date of receipt. Trade names last for a period of 5 years from the date of registration. You have six months to renew your trademark or trade name before expiration. Failure to do so in time means someone else can register your trademark or trade name. Renewal must be filed within 6 months before expiration, and failure to renew may result in losing rights.

The processing time for applications requiring review is two to three weeks.

When renewing your trademark or trade name, ensure you match what is currently on file with the secretary of state. The owner cannot be updated on a renewal. Conduct a search of your trade name or trademark if you don't remember how your filing is recorded. The office of the Arizona Secretary of State will return any renewal if the owner doesn't match the information on file.

In the event of a trademark or trade name conflict, you're advised to seek legal counsel. The Arizona Secretary of State is a filing agency and isn't authorized to resolve legal matters involving trade name conflicts.

Limitations of state trademark registration

The different limitations of state trademark registration

Limited geographical protection: This is the most significant limitation. The trademark is only protected in the state it was registered. This is unlike a federal registration, which provides nationwide protection. If you intend to do business in other states, you'll have to register the trademark in multiple states individually or obtain federal protection.
Potential conflicts with federal registrations: A state-registered trademark is less significant compared to a federal registration, regardless of whether the former is older. This means that the federal trademark owner could potentially prevent you from using your state-registered trademark.
Limited enforcement scope: State registrations are typically limited to the state they're registered in. This is a major challenge if the infringement occurs in a different jurisdiction. State trademark registrations also lack the right to sue in federal courts, which have better resources in intellectual property protection.
Inconsistent state laws: Trademark registration laws may vary from state to state. This complicates the business landscape for entities with operations in multiple states. The level of protection can also vary depending on the state.
Vulnerability to imported infringing products: State registrations are only limited to the borders of respective states. This leaves businesses exposed to competition from infringing goods imported from other states or countries. This is a major issue for businesses trading in physical goods.
Limited access to benefits of federal registration: State registrations cannot register their trademarks with the US Customs and Border Control. Thus, they cannot prevent the importation of infringing goods. You also cannot use the federal trademark symbol on state registrations.
Limited value for internet commerce: Federal registration is more appropriate for online businesses. State trademark registration offers limited value since the internet is not bound by geographical location.

State trademark registration is perfect for a business seeking to operate strictly within a certain geographical area. It's also advisable for entities seeking faster registration. However, there are multiple limitations to consider when settling on a state trademark.

Federal trademark registration is perfect if your business has potential for future expansion. This ensures better IP protection and smooth transition into nationwide business operation.

Ensuring successful trademark registration

Select a unique mark: Choose a trademark that is distinctive of the product or service you intend to sell. It shouldn't be vague or merely descriptive of your goods or services.
Thorough search: Invest time and resources into ensuring your trademark is unique and doesn't infringe upon the rights of others.
Proper application: Ensure your application is accurate and complete to avoid rejection or delays. Timely submission and expedited approval may prevent competitors from registering the trademark ahead of you.
Professional assistance: Consider employing the services of a trademark attorney to ensure a smooth registration process and protection of your trademark.

Ready to get started?

Trademark registration in Arizona is a critical step if you're looking to secure your brand and maintain a competitive advantage in the market. By understanding the process and taking the necessary steps, you can secure your trademarks and benefit from strong brand identity and legal protection.

Additional resources

Glossary of legal terms

Intellectual property (IP): Refers to creations of the mind. These can be innovations, inventions, creative works, logos, names, images, and symbols used in commerce.
Trademark assignment: The transfer of trademark ownership from one party to another.
Federal trademark registration: Refers to the process of registering a trademark with the United States Patents and Trademarks Office (USPTO). This secures your rights nationally.

Trademarking in Arizona: A Step-by-Step Guide