Keith Mack
A common law trademark is established through the use of a mark in commerce, rather than by formal federal trademark registration. In other words, common law trademark rights are established by opening a business and providing goods and services to consumers under a business name or brand. Common law trademark rights are applicable to most brands, especially those that want to maintain their goodwill but do not want or need to register their mark. However, there are several advantages to registering a trademark, particularly if you plan on using a mark for several years. Trademark rights can be assigned in whole or in part and licensed on an exclusive or non-exclusive basis.
| Characteristics | Values |
|---|---|
| Registration | Common law trademark rights do not require registration. |
| Protection | Common law trademarks are protected against unfair competition. |
| Use | Common law trademark rights are gained through use in commerce. |
| Ownership | Common law trademark ownership is established by being the first user. |
| Geographic scope | Common law trademark rights are limited to a certain geographic area. |
| Enforceability | Common law trademark rights must be enforced to be maintained. |
| Evidence | Common law trademark ownership can be rebutted by evidence of prior use. |
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What You'll Learn
- Common law trademark rights are acquired by being the first to use the mark
- Common law trademark rights are established by opening a business and providing goods and services to consumers
- Common law trademark rights are especially important for brands that want to maintain their goodwill but don't want or need to register their mark
- Common law trademark rights are not nearly as powerful as a federally registered trademark
- Common law trademark rights can be protected under the federal Lanham Act
Common law trademark rights are acquired by being the first to use the mark
In the United States, common law trademark rights are acquired by being the first to use the mark in connection with goods or services in a particular geographic area. These are unregistered trademarks that still carry rights recognised by state and federal courts.
The key factors in establishing these rights are distinctiveness, use, and recognition in the marketplace. The mark must be actively used in the sale or advertising of goods or services. This use must be bona fide and not merely token or for the purpose of reserving a right to the mark. Proof of use, such as sales receipts, advertisements, and other business documents, can support a claim of common law rights.
When a trademark owner is the first to use a mark, they are referred to as the "senior user". Anyone who starts using a confusingly similar mark thereafter is called the "junior user". A senior user of a common law trademark can sue a junior user if the junior user is operating in the same geographic area and using the mark in connection with the same or related goods and/or services.
Common law trademark rights grant the holder exclusive rights to use the mark within the geographic area where the trademark is being used and has acquired distinctiveness among consumers. This means the trademark holder can prevent others from using a confusingly similar mark within that specific market area.
Common law trademark rights, while not nearly as powerful as a federally registered trademark, will confer certain rights and will carve out limitations should another owner ultimately register the same or similar mark.
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Common law trademark rights are established by opening a business and providing goods and services to consumers
In the United States, common law trademark rights are acquired by using a trademark in commerce or business. These rights are established automatically when a business opens and provides goods and services to consumers under a particular trademark. This means that a business name, product name, tagline, or logo that is used regularly may qualify for common law trademark protection. Importantly, these rights are not dependent on registration with a governmental agency.
However, common law trademark rights are limited to the geographic area where the trademark is used. For example, a business with common law trademark rights in Southern California may prevent another business from using a similar name in Los Angeles, but not in San Francisco or Northern California. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) provides nationwide protection and makes it easier to enforce these rights.
Common law trademark rights give the owner the exclusive right to use the trademark and prevent others from using an identical or confusingly similar mark. These rights also provide protection against unfair competition, making it illegal for others to take advantage of or tarnish the goodwill associated with the trademark.
To maintain common law trademark rights, it is essential to actively enforce them. Failure to do so can result in the trademark becoming diluted and weakened, as competitors may begin to use similar marks, reducing the distinctiveness of the trademark. Additionally, there is no single database of common law trademarks, making it challenging to prove earlier trademark use and ownership in the event of infringement claims.
Overall, common law trademark rights are established by using a trademark in commerce and providing goods and services to consumers. While registration is not required, it offers stronger protection and makes enforcement easier.
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Common law trademark rights are especially important for brands that want to maintain their goodwill but don't want or need to register their mark
Common law trademark rights are applicable to most brands, but they are especially beneficial for brands that want to maintain their goodwill without registering their mark. Goodwill refers to the inherent value of a trademark, encompassing consumer recognition and the additional earning power it generates. In other words, consumers are more inclined to purchase from a brand because they recognise its name and offerings.
Common law trademark rights are important for brands that want to maintain their distinctiveness and protect their reputation. Without registering a trademark, businesses can still enforce their common law trademark rights against competitors to prevent them from stealing goodwill in instances where the mark has already been used. This is crucial because the more others use a similar mark, the less a brand's mark can distinguish itself, leading to a dilution of its trademark and a negative impact on its goodwill and branding.
However, common law trademarks have their limitations. They cannot be recorded with US Customs, and due to the absence of a centralised database, it can be challenging to notify others of these rights, particularly if they have not purchased the associated goods or services. Consequently, competing businesses may unknowingly use similar marks. While common law trademarks can serve as a defence against infringement claims, the burden of proof may be higher, requiring evidence of earlier trademark use and ownership.
For brands with no expansion plans, federal registration may be less crucial. However, registering a trademark provides nationwide rights and a broader geographical scope of protection. After five years, a trademark registration may become incontestable, making it more challenging for others to dispute it based on earlier usage or the descriptiveness of the mark. Therefore, while common law trademark rights offer some protection, registering a trademark with the USPTO provides stronger and more extensive legal rights and presumptions.
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Common law trademark rights are not nearly as powerful as a federally registered trademark
Common law trademark rights are acquired by simply using a trademark in the regular course of business. No registration or application is required. Common law trademark rights are geographically limited to the region where the trademark is used. For example, a company that has been selling a product in Southern California may have common law trademark rights that prevent another business from selling the same type of product under a similar name in Los Angeles. However, the company will not be able to prevent a competitor from setting up shop with the same name in San Francisco or elsewhere in Northern California.
Common law trademark rights are more difficult to enforce than federally registered trademark rights. This is because there is no public record of a common law trademark or when its use began. This can result in a greater burden of proof in showing earlier trademark use and ownership of the mark. Additionally, common law trademark rights are limited in that they cannot be recorded with US Customs.
Federally registered trademarks, on the other hand, are listed in the USPTO database, potentially deterring others from adopting a similar mark. Federal registration also gives trademark holders the right to file a lawsuit in federal court to enforce their rights and makes it easier to apply for foreign trademark registrations or to stop the importation of infringing goods. After five years, a trademark registration may become incontestable, with fewer grounds for challenging it.
While there are some cases in which a common law trademark may prevail over a federal registration, such as when the common law trademark has an earlier, proven first-use date, the only way to truly strengthen and protect common law trademark rights is by attaining a federal registration.
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Common law trademark rights can be protected under the federal Lanham Act
In the United States, trademark rights are given to the first user, which is different from many foreign countries, where trademark rights are given to the first filer. Even without a registered trademark, a common law trademark owner can have significant rights. For example, an owner of an unregistered mark can sue others for trademark infringement, albeit with certain geographical limitations. Additionally, a common law trademark owner can oppose a trademark application or cancel a registration less than five years old.
Common law trademark rights are acquired automatically when a business uses a name or logo in commerce and are enforceable in state courts. However, common law trademark rights have their limitations. For example, a common law trademark cannot be recorded with US Customs, and since there is no single database of common law trademarks, it may be challenging to notify others of your rights.
To protect your trademark rights more robustly, you can register your trademark under the Lanham Act, which was enacted by Congress in 1946. The Lanham Act provides a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks if it is likely to result in consumer confusion or dilution of a famous mark. To be eligible for trademark protection under the Lanham Act, a mark must be in use in commerce, be distinctive, and not be essential to a product's function.
By registering a trademark under the Lanham Act, trademark owners can gain nationwide rights and a greater geographical scope of protection. After five years, a trademark registration may become incontestable, making it more challenging for others to challenge the registration. Therefore, registering a trademark under the Lanham Act can provide stronger protection for common law trademark rights and make it easier to enforce those rights against potential infringers.
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Frequently asked questions
No, you can acquire common-law ownership rights to a mark by simply using it in commerce in connection with relevant goods or services. However, common law trademark rights have their limits. For example, you cannot record a common-law trademark with US Customs.
Even without a registered trademark, 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.
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 have no knowledge of your unregistered trademark.
You need to enforce your trademark against possible infringement. You should understand that you have an alternative to federally registering when it makes sense for your business. Even if you don't federally register, you can still have common-law trademark rights that you can enforce against competitors to keep them from stealing goodwill where you've already used your mark.
You might have some rights, but they may not be very strong. You would still have to show some consumer recognition.
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