Cecily Zamora
In the United States, common law trademark rights are acquired automatically when a business uses a name, logo, or mark in commerce. These rights are enforceable in state courts and provide protection within the geographic region where the trademark is used. Unlike registered trademarks, common law trademarks are not listed in a central database, and their protection can be limited to specific areas within a state. While there is no requirement for registration, it is recommended as it grants substantial additional rights, such as the ability to file a lawsuit in federal court and increased ease in applying for foreign trademark registrations. This raises the question: how long do common law trademark rights last, and what factors influence their duration?
| Characteristics | Values |
|---|---|
| Definition | Common law trademark rights are automatic protections that arise from actually using a trademark in commerce. |
| Registration | Common law trademark rights are unregistered trademarks. |
| Protection | Common law trademark rights are protected under common law and have less protection than registered trademarks. |
| Geographic reach | Common law trademark rights are limited to the geographic area in which the mark is used. |
| Enforceability | Common law trademark rights are enforceable in state courts. |
| Ownership | Common law trademark rights go to the business that uses the trademark first. |
| Usage | Common law trademark rights can be used as a defense against infringement claims. |
| Symbol | Common law trademark owners can append the mark with the letters "TM" (trademark symbol ™). |
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What You'll Learn
Common law trademark rights are automatic
In the United States, common law trademark rights are automatic protections that arise from using a trademark in commerce. This means that if a business name, product name, tagline, or logo is used regularly, common law trademark rights are granted, even without registration with a governmental agency. Trademarks are words, phrases, symbols, or sounds that distinguish a business or its products or services.
Common law trademark rights are limited to the geographic area in which the mark is used. For example, if a coffee blend is sold under the name "BLASTER" in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name, there would be no trademark infringement. However, the New York company would not be able to sell its product in California, as that is where the original trademark rights exist.
Common law trademark rights are based on the actual use of the mark, and the first user is generally considered the rightful trademark owner. These rights can be strengthened by registering the trademark with the U.S. Patent and Trademark Office (USPTO). Registering a trademark provides additional protections, such as the ability to use the ® symbol, and the right to bring a lawsuit concerning the trademark in federal court. It also allows for easier enforcement and expansion across state lines.
While common law trademark rights are automatic, they have certain limitations. For example, it can be difficult to enforce these rights due to the lack of a public record of the trademark and its usage history. Additionally, unregistered trademarks may face challenges in seeking legal remedies for infringement, as they are generally provided with weaker protections than registered trademarks.
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Rights are limited to the geographic area
In the United States, trademark rights are generally given to the first user of a mark. This is known as "common law" rights. These rights are based on the actual use of a trademark in commerce within a particular geographic area.
Common law trademark rights are limited to the geographic area in which the mark is used. For example, if a coffee blend is sold under the name "Blaster" in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market 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 find that the California company's common law rights to the mark would prevent them from entering that market.
Similarly, if you sell a product only in southern California, your common law trademark may prevent another business from selling the same type of product under a similar name in Los Angeles. However, you will not be able to prevent a competitor from setting up shop with your name in San Francisco or elsewhere in northern California. If your competitor is the first to use the trademark in San Francisco, its common law trademark rights may prevent you from expanding into that market.
Common law trademark rights can be difficult to enforce because there is no public record of the trademark or when its use began. Unlike registered trademarks, common law trademarks are usually enforceable only within the geographic region where the trademark owner is using it in business. When an infringement occurs, an unregistered trademark owner may not be able to sue and collect damages or recover attorney's fees, unlike registered trademark owners.
Therefore, it is generally recommended to register a trademark with the USPTO, which gives trademark owners substantial additional rights not available under common law. Registering a trademark with the USPTO creates rights throughout the entire United States and its territories and includes the registration in a publicly accessible database of registered trademarks.
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Registration is not required
In the US, trademark rights are generally given to the first user of a mark. This is known as "common law" and trademark rights are acquired automatically when a business uses a name or logo in commerce. Federal registration is not required to establish common law rights in a mark, nor is it required to begin using a mark. Common law trademark rights are limited to the geographic area in which the mark is used. For example, if a coffee blend is sold under the name "BLASTER" in California only, the trademark rights to that name exist only in California.
There are some advantages to common law trademarks. Firstly, an owner of an unregistered mark can still sue others for trademark infringement, but with certain geographical limitations. Secondly, a common law trademark owner can oppose a trademark application or cancel a registration less than 5 years old. There is no requirement that a mark be registered before it can be used to block or cancel the trademark filings of others.
However, there are also disadvantages to common law trademarks. Common law trademark rights can be hard to enforce because there is no public record of your trademark or when your trademark use began. Unlike registered trademarks, common law trademarks are usually enforceable only within the geographic region or locale where the trademark owner is using it in business. When an infringement occurs, an unregistered trademark owner may not be able to sue and collect damages or recover attorney's fees.
In addition, some countries have no legal protections for unregistered trademarks. For example, the trademark law of China has no clear provisions for the protection of unregistered trademarks. There is also no legal protection for unregistered trademarks in the trademark law of the European Union.
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Rights are based on use in commerce
In the United States, common law trademark rights are acquired automatically when a business uses a name, logo, tagline, or slogan in commerce. These rights are based on the use of the trademark in commerce within a particular geographic area. If a product is sold under a brand name, common law trademark rights have been created, especially when consumers view the brand name as an indicator of the product's source.
For example, if a coffee blend is sold under the name "BLASTER" in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market 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 nationwide, they would find that the California company's common law rights to the mark would prevent them from entering the California market.
Common law trademark rights can be strengthened by registering the trademark with the U.S. Patent and Trademark Office (USPTO). Registering a trademark with the USPTO creates rights throughout the entire United States and its territories and includes the registration in a publicly accessible database of registered trademarks. It also allows the use of the ® symbol, which can help deter others from using the trademark or a similar one.
It is important to note that common law trademark rights have their limitations. They are generally limited to the geographic area in which the mark is used, and it can be difficult to enforce these rights due to the lack of a public record of the trademark and its usage history. Additionally, in cases of trademark infringement, an unregistered trademark owner may not be able to sue and collect damages or recover attorney's fees, unlike registered trademarks.
While there is no such thing as a "worldwide trademark," it is possible to register a trademark in multiple countries through the Madrid Protocol. This international treaty simplifies the process of applying for trademark registration in different countries, but it does not guarantee that the trademark will be registered in each country. Each country's trademark office will review the application and make a decision.
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Registered trademarks have more protection
In the United States, trademark rights are generally given to the first user of a mark. Common law trademark rights are protections that arise automatically from using a trademark in commerce. They are not governed by statute but are instead developed under a judicially created scheme of rights governed by state law.
Common law trademark rights are limited to the geographic area in which the mark is used. For example, if a coffee blend is sold under the name "Blaster" in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market 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 nationwide, the California company's common law rights to the mark would prevent them from entering the California market.
Registered trademarks, on the other hand, provide more comprehensive protection. Registering a trademark with the USPTO creates rights throughout the United States and its territories and includes your registration in a publicly accessible database of registered trademarks. This means that you can generally rely on these rights to protect your trademark as you expand your business across state lines. The registered trademark symbol, ®, is reserved for trademarks that are registered with the USPTO.
Additionally, federal registration gives trademark holders the right to file a lawsuit in federal court to enforce their rights. It also makes it easier to apply for foreign trademark registrations or to stop the importation of infringing goods. Before using a trademark or applying for federal registration, it is important to conduct a thorough trademark search to ensure that your mark does not infringe on someone else's trademark.
While common law trademark owners can still sue others for trademark infringement, their rights are geographically limited. They may also face challenges in proving their earlier trademark use and ownership of the mark, as there is no public record of their trademark or when their trademark use began. Therefore, registering a trademark is recommended as it provides substantial additional rights not available under common law.
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Frequently asked questions
A common law trademark is an enforceable mark created by a business or individual to signify or distinguish a product or service. It is legally different from a registered trademark granted by statute. Common law trademark rights are acquired automatically when a business uses a name or logo in commerce.
A common law trademark lasts as long as the trademark is in use in commerce.
Common law trademark rights can be acquired without registration, simply by using the trademark in commerce. This gives trademark rights to the first user of the mark. Common law trademark rights can also be strengthened by registering the trademark with the U.S. Patent and Trademark Office (USPTO).
Common law trademark rights are limited to the geographic area in which the mark is used. This means that another business can use the same or similar trademark in a different geographic area without infringing on the common law trademark rights of the original user. Common law trademarks also have weaker legal protections than registered trademarks, and it can be difficult to enforce these rights due to the lack of a public record of the trademark.
