Common Law Trademark: Can You File A Lawsuit?

Common law trademarks are unregistered trademarks. In the US, trademark rights go to the first user, not the first filer. Common law trademark owners can still sue others for trademark infringement, but there are geographical limitations. A common law trademark may also protect you if someone later files a federal registration. However, there are drawbacks to choosing common law trademark rights over federal protection, including no national protection and not being listed in the register.

Common law trademark rights and federal protection

Common law trademark rights are based on the first use of a mark, rather than the first to file. This means that even without a registered trademark, a common law trademark owner can still have significant rights and sue others for trademark infringement. However, there are geographical limitations to this, and common law trademark rights do not provide national protection.

One of the drawbacks of choosing common law trademark rights over federal protection is the lack of national protection. Your rights will only extend to the areas in which you do business, and you will not be listed in the Principal or Supplemental Register, making it less likely that others will know your trademark exists.

Another drawback is that common law trademarks cannot be recorded with US Customs, and there is no single database of common law trademarks. This can make it difficult to provide notice of your common law rights to others who have never purchased your goods or services. Competing businesses may begin to use similar marks simply because they have no knowledge of your unregistered trademark.

Despite these drawbacks, common law trademark rights can still provide some protection. If you are sued for infringement by a company listed in the USPTO's register, proving that you have established commercial use may allow you to keep your trademark. Additionally, common law trademark owners can oppose a trademark application or cancel a registration less than five years old.

Common law trademark as a defence against infringement claims

Common law trademark rights can be used as a defence against infringement claims. However, there are certain burdens of proof in showing your earlier trademark use and ownership of the mark, which could have been eased with a registration. For example, if someone files a federal registration, proving that you've established commercial use may allow you to keep your trademark.

Common law trademark rights have their limits. For example, you cannot record a common law trademark with US Customs. Since there is no single database of common law trademarks, it may be difficult to provide notice of your common law rights to others who have never purchased your goods or services. Competing businesses may begin to use similar marks because they simply have no knowledge of your unregistered trademark.

Despite this, a common law trademark owner can still have significant rights. For example, an owner of an unregistered mark can still sue others for trademark infringement, but with certain geographical limitations. They can also oppose a trademark application or cancel a registration less than five years old.

There are several common defences to claims of common law trademark infringement. These include: the defendant's use of the trademark predates that of the complainant; the plaintiff has waited too long to take action (laches); abandonment through disuse has occurred; and the trademark is merely descriptive.

Common law trademark and geographical limitations

Common law trademark rights are limited to the geographic area in which the mark is used. For example, if you own a chain of coffee shops in New York and New Jersey, your common law rights to your mark are likely limited to this geographical area. Your common law rights would not extend to the West Coast or the Southern United States. However, if your coffee shops are located across the United States, your common law rights may extend to all geographic areas in the country.

The onus is on the trademark holder to prove ownership through consistent commercial use, lacking the support of a formal registration dossier. Enforcement of common law rights is limited to regions where the trademark has established recognition, complicating legal actions against potential infringers in uncharted territories. The absence of a public registration record can lead to inadvertent infringements, as third parties may be unaware of the trademark's existence.

Common law trademark owners bear the onus of demonstrating the mark's distinctiveness and market reach, as well as the potential for consumer confusion—each requiring substantial evidence and legal acumen. Businesses relying on common law protections must be aware that their expansion could be hindered if a similar mark is already in use in a new market, regardless of prior knowledge.

Despite the geographical limitations, common law trademark owners can still sue others for trademark infringement. If you are on the receiving end of a cease-and-desist letter or a trademark lawsuit, your common law trademark can serve as a defence against infringement claims. However, you may have certain burdens of proof in showing your earlier trademark use and ownership of the mark, which could have been eased with a registration.

Common law trademark and trademark applications

Common law trademark rights are unregistered trademark rights. In the US, trademark rights go to the first user, not the first filer. This means that even without a registered trademark, a common law trademark owner can still have significant rights.

Common law trademark owners can still sue others for trademark infringement, but with certain geographical limitations. For example, a common law trademark may protect you if someone later files a federal registration. However, you may be blocked from expanding outside of your current region.

Common law trademark owners can also oppose a trademark application or cancel a registration less than five years old. If you are on the receiving end of a trademark lawsuit, your common law trademark can serve as a defence against infringement claims. However, you may have certain burdens of proof in showing your earlier trademark use and ownership of the mark, which could have been eased with a registration.

Common law trademark and Google Ads

A common law trademark is an unregistered trademark. In the US, trademark rights go to the first user, not the first filer. This means that even without a registered trademark, a common law trademark owner can still have significant rights.

A common law trademark owner can still sue others for trademark infringement, but with certain geographical limitations. For example, if someone files a federal registration, a common law trademark may protect you. Proving that you've established commercial use may allow you to keep your trademark, but you may be blocked from expanding outside of your current region.

A common law trademark can also serve as a defence against infringement claims. However, you may have certain burdens of proof in showing your earlier trademark use and ownership of the mark, which could have been eased with a registration.

Google Ads: Competitors can target potential clients by using your trademark in Google Ads. Once instances of trademark infringement are identified, it's important to take immediate legal action to preserve your rights. This typically includes sending a trademark cease and desist letter or filing a lawsuit.

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