Cameron Miranda
Common law trademark rights are automatic protections that arise from using a trademark in commerce. They can help protect your brand name, logo, symbol, and more within the territorial scope of your business without formal registration. However, common law trademark rights can be more difficult to enforce compared to registered trademarks, and the protections provided are significantly limited. While federal registration of a trademark is not required to sue for infringement, it provides greater protection and additional rights, such as the right to recover profits, sue for statutory damages, and receive triple damages for willful infringement. To establish a violation under the Lanham Act, the plaintiff must demonstrate that the defendant's use of a similar mark causes a likelihood of confusion among consumers regarding the source or origin of goods. Before using a trademark, it is important to conduct a thorough trademark search to avoid potential infringement of another's mark and to ensure your rights are fully defended.
| Characteristics | Values |
|---|---|
| Common law trademark rights | Help protect your brand name, logo, symbol, etc. within the territorial scope of your business without formal registration |
| How to get common law trademark rights | Be the first to use your trademark for commercial purposes and use it consistently |
| Common law trademark search | Search for existing trademarks that are similar to your own |
| Common law trademark infringement | Using a trademark that is already registered or in use |
| Can one sue for common law trademark infringement? | Yes, but it can be more difficult to enforce compared to registered trademarks |
| How to sue for common law trademark infringement? | File a civil suit with the relevant state court |
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What You'll Learn
Common law trademark rights
The term "common law" indicates that the trademark rights are developed through use and not through registration with the United States Patent and Trademark Office (USPTO). Common law trademark rights are limited to the geographic area in which the mark is used. For example, if a company sells a coffee blend under the name "BLASTER" in California only, the trademark rights to that name exist only in California. If another company starts selling a different blend in New York under the same name, there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend in California, they would be prevented from doing so due to the California company's common law rights to the mark in that state.
To declare ownership of a common law trademark, one can add a superscript "TM" to it. It is important to note that common law trademark rights are limited in scope compared to federally registered trademarks. Federal registration provides additional protections, including the right to sue for damages if someone infringes on your trademark. In contrast, there is no right to common law trademark infringement damages. However, the Lanham Act allows for lawsuits based on unregistered trademarks, and it may be possible to recover financial compensation and obtain a trademark injunction to prevent the infringer from continuing their activities.
To establish common law trademark rights, it is essential to be the first to use the mark in commerce in a particular geographic area and to use it consistently. One must also ensure that no one else is already using the mark to avoid potential trademark infringement claims. Policing the trademark is crucial, which means keeping track of whether anyone else is using a confusingly similar mark. Failure to police a common law trademark may result in losing infringement protection.
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Likelihood of confusion
To establish trademark infringement, the plaintiff must demonstrate that the defendant's use of the mark to identify goods or services causes a likelihood of confusion. This means that the similarity between the two marks is such that consumers are likely to be confused into thinking that the respective products originate from the same source.
The two most important factors in determining the likelihood of confusion are the similarity of the marks and the relatedness of the goods and services. Similarity involves the spelling, appearance, and meaning of each mark. For instance, the court found similarity between "Dutch Masters" and "Little Dutchman" for cigars because of the common use of the dominant term "Dutch". In another case, the court determined that the marks "Magnavox" and "Multivox" were likely to confuse customers due to similarities in sight and sound.
The relatedness of the goods and services refers to whether the goods or services associated with each trademark are related. Goods or services could be related if they are identical, similar, or competitive; used together; used by the same purchasers; advertised together; or sold by the same manufacturer or dealer. For example, "Dove" soap and "Dove" ice cream bars can have separate trademarks because they are distinct enough that consumers are unlikely to confuse the two.
It is important to note that proof of actual confusion is not required to establish trademark infringement. However, evidence of actual confusion can be powerful evidence in an infringement case. Companies may conduct surveys to determine actual confusion, but these surveys can be expensive and may harm the plaintiff's case if improperly performed.
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Registered vs. unregistered trademarks
A trademark is any word, slogan, symbol, design, or combination of these that identifies the source of goods and services and distinguishes them from other products and services. Trademarks can exist with or without registration. In the United States, trademarks are registered with the United States Patent and Trademark Office (USPTO) or are left unregistered.
An unregistered trademark is the brand that a business has as soon as it opens and starts offering products and services that its customers identify under that brand. Unregistered trademarks are protected in the United States under "common law" rights. Simply using a mark in US commerce automatically establishes these rights. Common law trademark rights help protect a brand name, logo, symbol, and more within the territorial scope of a business without formal registration. All that is needed is to be the first to use the trademark for commercial purposes (and use it consistently). A common law trademark gives the exclusive right to use a name, symbol, logo, or phrase in connection with products or services without registering with the USPTO.
Registered trademarks offer valuable protections for businesses, though the level and scope of trademark protection vary depending on the circumstances. Registering a trademark can be a lengthy and potentially costly process, but it provides great benefits. The registration of a mark provides proof of ownership and validity, making it easier to enforce one's trademark rights. Registered marks are also presumed to have the exclusive right to use the mark nationally, making it easier to prove infringement. If the plaintiff is able to prove an infringement action, there are several remedies available, including an injunction, monetary relief, and the defendant's profits.
While common law trademark rights offer certain protections based on usage, they can be more difficult to enforce compared to registered trademarks. Unregistered marks are not afforded the presumption of validity and ownership given to registered marks, which can make an infringement action more difficult for the unregistered mark owner. If the owner of an unregistered mark is successful in an infringement action, the owner may be limited to an injunction against the infringer. Unregistered marks can only be enforced within the geographic area where they are used in commerce.
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Federal vs. state protection
Federal trademark registration offers more extensive protection than common law trademarks. While common law trademarks are established through use in commerce in a specific geographical area, federal trademarks provide nationwide protection. Common law trademarks are limited to the regions where the trademark is used, whereas federal trademarks have the right to prevent new businesses in other states from operating under the same name.
The Lanham Act, a federal statute, governs trademarks and allows for lawsuits based on unregistered trademarks. However, federal registration provides additional benefits, such as the right to bring a lawsuit against an infringer in federal court, incontestable status after five years, presumption of ownership, and enhanced remedies. It is important to note that federal registration also conveys a higher level of protection against potential infringers.
To establish priority of use for a common law trademark, one must prove prior and continuous use in intrastate commerce. This can be demonstrated through various scenarios, including prior registration, prior use of a mark, prior use as a trade name, or other uses sufficient to establish proprietary rights. On the other hand, federal trademarks require proof of use in interstate commerce, which can include advertising in more than one state, interstate movement of goods bearing the infringing mark, or advertising in newspapers with interstate distribution.
While common law trademarks offer protection based on usage, they can be more challenging to enforce compared to registered trademarks. Common law trademarks are not listed in the USPTO database, making it more difficult to ensure that the trademark is not already taken. Additionally, the lack of federal registration means there is no legal presumption of ownership for common law trademarks.
In summary, federal trademark registration provides stronger protection, enforceability, and nationwide coverage compared to common law trademarks, which are limited to specific geographical areas and may be more difficult to defend in court.
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Trademark infringement claims
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that its rights in the mark(s) are "senior" to the defendant's, and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered. The court will consider various factors to determine whether there is a likelihood of confusion among consumers, including the degree of similarity between the marks and whether the goods and services provided by the accused item directly compete with the trademarked item.
In addition to claiming likelihood of confusion, a trademark owner may also claim trademark "dilution," asserting that the use of the infringing mark diminishes the strength or value of the trademark owner's mark by "blurring" its distinctiveness or "tarnishing" its image. This claim can be made even if there is no likelihood of confusion, as long as the trademark is famous, distinctive, and recognizable.
It is important to note that trademark infringement claims can be made for both registered and unregistered trademarks. Unregistered trademarks, also known as common law trademarks, are trademarks that are used without being registered with the United States Patent and Trademark Office (USPTO). Common law trademarks offer certain protections based on usage, but they can be more difficult to enforce compared to registered trademarks. One drawback of common law trademarks is that they do not provide national protection, and the rights only extend to the areas in which the business operates. Additionally, common law trademarks do not allow the holder to collect damages in the case of infringement.
To establish an unregistered trademark infringement, one must show that they have common law trademark rights in the mark and that the infringer used a mark that was either the same or confusingly similar. In the case of infringement, it is important to take immediate legal action to preserve your rights. This can include sending a trademark cease and desist letter or filing a lawsuit.
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Frequently asked questions
Common law trademark rights are automatic protections that arise from using a trademark in commerce. They protect your brand name, logo, symbol, and more within the territorial scope of your business without formal registration.
Yes, one can sue for common law trademark infringement. However, it is important to note that common law trademark rights have limited benefits compared to federally registered trademarks.
Federally registered trademarks are listed in the USPTO database, potentially deterring others from adopting a similar mark. They also give trademark holders the right to file a lawsuit in federal court to enforce their rights.
In "first to use" countries like the US, brands are granted protection over marks without registration as long as they can prove receipt of currency in exchange for products or services. On the other hand, "first to file" countries require you to get approval before using a mark.
One way to protect your brand is to conduct a thorough trademark search to ensure that your trademark is not already in use. You can also use technology-assisted trademark software like NameCheck™ to assess the likelihood of common law trademark infringement.
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