Anaya Nolan
A common law trademark is obtained by using the trademark in association with your business or product, and it provides basic local protection for your business. However, it has regional restrictions and is difficult to enforce, making it inadequate as a long-term solution. Common law trademark rights help protect your brand name, logo, symbol, and more within the territorial scope of your business without formal registration. As the owner of a common law trademark, you can stop local competitors from using your mark, but you cannot sue them for infringement damages. For that, you need a registered trademark. While federal registration of a trademark is more robust, common law trademark owners can still sue others for trademark infringement with certain geographical limitations.
| Characteristics | Values |
|---|---|
| Protection | Common law trademark rights offer protection based on usage. |
| Registration | Common law trademarks are unregistered, so they are not listed in the USPTO database. |
| Geographic scope | Common law trademark rights are limited to the territory where the services or goods have been sold. |
| Rights | Common law trademark rights help protect your brand name, logo, symbol, etc. within the territorial scope of your business. |
| Enforceability | Common law trademarks are harder to enforce compared to registered trademarks. |
| Symbol | A common law trademark allows you to use the ™ symbol after your mark. |
| Ownership | Common law trademarks do not come with a legal presumption of ownership. |
| Litigation | Federal lawsuits regarding unregistered brand identifiers are rare, but they do exist. |
| Policing | It is your responsibility to police your common law trademark for potential infringements. |
| Injunction | A judge may issue a trademark injunction that prevents the infringer from continuing its activities. |
| Monitoring | There are trademark monitoring services available even if your branding isn’t registered. |
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What You'll Learn
Common law trademark rights: what they are and how to get them
Common law trademark rights are automatic protections that arise from using a trademark in commerce. This means that you can obtain a common law trademark simply by using the trademark in association with your business or product. There is no application process or fees associated with attaining a common law mark.
A common law trademark allows you to use the ™ symbol after your mark. It gives you the exclusive right to use a name, symbol, logo, or phrase in connection with your products or services within the territorial scope of your business. This means that you can stop local competitors from using your mark. However, your right to infringement protection will only last as long as you continue to use the mark, and you do not have the right to sue for infringement damages. For that, you will need a registered trademark.
To obtain federal trademark registration, you must file an application with the United States Patent and Trademark Office (USPTO) and have it approved. Registering a trademark with the USPTO gives you a legal presumption that you have the right to use the trademark nationwide and prevents others from using a similar mark for the same types of goods or services. It also gives trademark holders the right to file a lawsuit in federal court to enforce their rights.
There are several advantages to registering a trademark. Firstly, it provides nationwide protection, whereas common law trademarks are limited to the geographic area where the trademark is used. Secondly, federal registration makes it easier to apply for foreign trademark registrations or to stop the importation of infringing goods. Thirdly, registered trademarks are listed in the USPTO database, potentially deterring others from adopting a similar mark.
While common law trademark rights offer certain protections based on usage, they can be more difficult to enforce compared to registered trademarks. This is because there is no public record of your trademark or when your trademark use began, and it takes a lot more than a quick database search to ensure that your trademark is not already taken.
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Common law trademark rights vs. federal trademark registration
Common law trademark rights are automatically granted based on usage of the mark, whereas federal trademark registration is attained through the process of registration with the United States Patent and Trademark Office (USPTO). Common law trademarks are limited to the territorial scope of the business and can be difficult to enforce, whereas federal trademarks offer nationwide protection and stronger legal rights.
Common law trademark rights are automatically granted to the owner of a trademark based on their usage of the mark. This means that a business can obtain a common law trademark simply by using a name, logo, or symbol in association with their business or product. The rights associated with common law trademarks are limited to the geographical area where the business operates and can be difficult to enforce outside of this region. While common law trademarks can be obtained without any registration or associated fees, they may not provide the same level of protection as a federal trademark.
Federal trademark registration, on the other hand, is attained through the process of registering a trademark with the United States Patent and Trademark Office (USPTO). Registering a trademark with the USPTO provides nationwide protection, as it creates rights throughout the United States and its territories. Federal trademarks are also associated with stronger legal rights, including the right to sue infringers and recover fees if litigation occurs. Additionally, federal registration puts others on notice and can help deter potential infringers.
While common law trademark rights provide basic protection for a business, they have several limitations. Common law trademarks are not listed in the USPTO's register, making it less likely that others will be aware of their existence. Additionally, common law trademarks cannot use the registered trademark symbol (®), which conveys a higher level of protection. Common law trademark owners also do not have a legal presumption of ownership, and their rights may be limited to the areas in which they do business.
In contrast, federal trademark registration provides stronger protection and more extensive rights. Federal trademark registration allows the use of the ® symbol, which can deter potential infringers. It also provides a legal presumption of ownership and gives the right to sue infringers in federal court. Additionally, federal registration puts the trademark in the USPTO's publicly accessible database, making it easier for others to be aware of the trademark's existence.
In conclusion, while common law trademark rights provide basic protection for a business, federal trademark registration offers stronger protection and more extensive rights. Common law trademarks are limited in scope and can be difficult to enforce, whereas federal trademarks provide nationwide protection and are associated with stronger legal rights. Therefore, for businesses looking to protect their trademarks effectively, federal trademark registration is often the preferred option.
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Can you sue for infringement with a common law trademark?
A common law trademark provides local protection to the trademark owner, but it does not offer the same protections as a federally registered trademark. Common law trademarks are unregistered trademarks that are not listed in the USPTO database. They are established by simply using the mark in commerce within a certain geographical area.
As the owner of a common law trademark, you can stop others from using your mark, or a confusingly similar one. However, you do not have the right to sue for infringement damages; this right is reserved for federally registered trademarks. If you discover that another person or company is infringing on your mark, the first step is usually to send a cease-and-desist letter. This letter informs the infringer that they must stop using your mark within a certain period, typically five business days. If this letter is ignored, you may use it as evidence of good faith in a lawsuit.
To prevail in a common law trademark lawsuit, the plaintiff must establish three issues: proof of ownership, federal trademark rights, and damages. Proof of ownership is much easier to establish with a registered trademark, as significant legal declarations of ownership and use are made during the trademark application process. Federal trademark rights are also limited to a single geographical region with common law trademarks. Finally, your ability to seek damages is limited with a common law trademark, as plaintiffs can only seek actual damages.
Federal lawsuits regarding unregistered brand identifiers are rare, but they do exist. The Lanham Act allows for lawsuits based on unregistered trademarks. If you proceed with trademark litigation under this federal law, you may be eligible to recover financial compensation, and the judge may issue a trademark injunction that prevents the infringer from continuing their activities.
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How to enforce a common law trademark
A common law trademark provides protection for a symbol, logo, product name, or other words or marks that identify the source of goods or services before it is registered with the state or federal government. Common law trademark rights help protect your brand name, logo, symbol, and more within the territorial scope of your business without formal registration. All you need to do is be the first one to use your trademark for commercial purposes (and use it consistently).
To declare your ownership of a common law trademark, you should add a superscript "TM" to it. Once you start looking for the TM, you will probably notice many common law trademark examples with this symbol. Your right to infringement protection will last as long as you continue to use the mark. However, it is your responsibility to "police" the trademark, which means keeping track of whether anyone else is using it. Failing to police your common law trademark may lead to losing your rights to infringement protection.
Accordingly, you should keep an eye out for competitors in your area that use a confusingly similar mark and, if you come across a potential infringer, contact them to make them aware of your common law trademark. You may choose to do this through a cease-and-desist letter to ask them to stop using the mark.
Even without a registered trademark, a common law trademark owner can still have significant rights. First, an owner of an unregistered mark can still sue others for trademark infringement, but with certain geographical limitations. Unlike patent litigation, there is no requirement that a mark first be registered before it can be enforced in trademark litigation. Second, a common law trademark owner can oppose a trademark application or cancel a registration less than five years old. However, it is important to note that common law trademark rights offer certain protections based on usage, and they can be more difficult to enforce compared to registered trademarks.
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Drawbacks of common law trademarks
Common law trademark rights offer protection based on usage, but they have some drawbacks compared to registered trademarks. Here are some of the disadvantages of relying solely on common law trademark rights:
- Limited Geographical Protection: Common law trademark rights are restricted to the geographical area in which the mark is used. This means that if a product is sold under a specific brand name in one state or region, the common law trademark rights for that name are limited to that area. If another business starts using the same or similar trademark in a different geographical location, there may be no trademark infringement, and the original trademark owner cannot prevent them from using the mark in that location.
- No National Protection: With common law trademarks, your rights are confined to the areas where you conduct business. In contrast, registering a trademark with the USPTO provides nationwide protection, allowing you to prevent others from using your mark across the entire United States.
- Lack of Official Recognition: Common law trademarks are not listed in the Principal or Supplemental Register of the USPTO. This makes it less likely that others will be aware of your trademark, increasing the chances of unintentional infringement.
- Inability to Use the Registered Trademark Symbol: Registered trademarks with the USPTO can use the ® symbol, conveying a higher level of protection to potential infringers. Common law trademarks can only use the ™ symbol, which may not carry the same weight in deterring infringement.
- No Legal Presumption of Ownership: Without federal trademark registration, you lack a legal presumption of ownership. This means that in the event of trademark disputes, you may face challenges in proving your ownership and prior use of the mark.
- Difficulty in Providing Notice: Since there is no centralized database of common law trademarks, it can be challenging to notify others of your common law rights, especially those who have never purchased your goods or services. This increases the risk of unintentional infringement by competing businesses.
- Limited Enforcement Options: While you can still sue for trademark infringement under common law, your options for legal recourse are more limited compared to federal trademark registration. For example, you cannot record a common law trademark with US Customs, and you may face geographical limitations in pursuing legal action.
- Inability to Recover Damages: With a common law trademark, you can prevent local competitors from using your mark, but you cannot sue them for infringement damages. To seek monetary compensation for trademark infringement, you typically need a registered trademark.
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Frequently asked questions
Yes, you can sue for common law trademark infringement, but only within the geographical area where the trademark is used.
Suing for common law trademark infringement can help you stop local competitors from using your mark and protect your brand identity.
There are several drawbacks to suing for common law trademark infringement, including the limited geographical scope of protection, the lack of a legal presumption of ownership, and the difficulty of enforcing your rights due to the absence of a public record of your trademark.
To prove common law trademark infringement in court, you must show that you have used the trademark long and publicly enough to indicate an intention to adopt it and that you have policed your trademark for potential infringements.
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