While a business may gain some state-level rights in a trademark simply through its use of the trademark in its regular business, there are reasons why for some businesses it will be in their best interest to seek additional federal trademark protection, while for other businesses they may either not qualify for a federal trademark or it may not be worth the time and expense to seek federal trademark protection.  What follows are some factors that a business may consider when facing this question:

1. A trademark is only eligible for federal trademark protection if it is being used (or there are plans to use it) in interstate commerce (i.e., if goods or services are being sold or transported between more than one state or U.S. territory), or if it is being used (or there are plans to use it) for goods or services sold or transported between the United States and a foreign country. If your business’ goods or services do not meet this criteria and your business does not have plans that would involve either interstate or foreign commerce, then the business’ trademark may not be eligible for federal trademark registration and it may not be worth the time and expense to seek federal trademark registration.  If your business is strictly active in one state, you may wish to consider seeking trademark registration in the state in which your business is active.  [Consultation with a local attorney may help you determine the value to your business of a state-based trademark registration.]
2. Is there a likelihood of confusion between a business’ proposed trademark and a trademark already registered with the United States Patent and Trademark Office? The United States Patent and Trademark Office will not register a trademark if there exists this likelihood of confusion with an existing federal trademark.  [I would recommend consulting with an attorney if you believe your business may face this situation to better understand whether the United States Patent and Trademark Office would be likely to make this finding based on: (a) the current standard that has been developed for a finding of “likelihood of confusion”; and (b) the application of this standard to your specific situation.]
3. Is the proposed trademark a strong or a weak trademark? The United States Patent and Trademark Office generally breaks trademarks into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic.  [This is again an issue where I would recommend consulting with an attorney.  It can be particularly valuable to consult legal counsel when initially developing a trademark.  A strong trademark will be easier to protect in court and will likely face fewer issues when seeking federal trademark registration.]
4. A federal trademark registration creates a legal presumption (if your business ever needs to go to court to protect its trademark) of your business’ ownership of the trademark and its exclusive right to use the trademark nationwide related to the goods and/or services for which the trademark was granted.
5. Registration of a trademark with the United States Patent and Trademark Office provides public notice of your ownership of the trademark through the Trademark Electronic Search System maintained by the Trademark Office.
6. A business may record its federal trademark registration with the U.S. Customs and Border Protection in order to preclude the importation of foreign products that violate the trademark.
7. A federal trademark registration can serve as the basis to register the trademark in foreign countries in which your company does business.
8. A federal trademark registration permits your business to bring a court action in federal court regarding enforcement of your trademark rights.
9. Finally, a federal trademark registration permits your business to thereafter use the federal trademark registration symbol ®.