Gavin Howe
Common law trademark infringement refers to the unauthorised use of a trademark that is protected under common law. In the United States, common law trademark rights are acquired automatically when a business uses a name, logo, or phrase in commerce within a specific geographic area. These rights are limited to the geographic area in which the mark is used and are based on actual use rather than registration. While federal registration provides stronger protection and additional rights, common law trademarks can still be enforced in state courts and may serve as a defence against infringement claims. However, there are challenges in enforcing common law trademarks due to the lack of a centralised database and the need to prove earlier trademark use and ownership.
| Characteristics | Values |
|---|---|
| Registration | Common law trademark rights are acquired automatically when a business uses a name or logo in commerce and do not require registration. |
| Geographic restrictions | Common law trademark rights are limited to the geographic area in which the mark is used. |
| Enforcement | Common law trademark rights can be enforced in state courts. |
| Protection | Common law trademarks are not as easily enforced as federal trademarks and are regionally limited. |
| Symbol | Common law marks are permitted to use the ™ symbol. |
| Search | A trademark search can identify businesses with superior common law rights in your locality or out-of-town businesses whose trademarks may hinder expansion. |
| Litigation | Common law trademark owners can sue for trademark infringement, oppose a trademark application, or cancel a registration less than 5 years old. |
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What You'll Learn
Common law trademark rights are automatic
In the United States, common law trademark rights are acquired automatically when a business uses a name, logo, or phrase in commerce within a specific geographic area. This means that if a product is sold under a brand name, common law trademark rights have been created, especially once consumers view the brand name as an indicator of the product's source. These 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.
Common law trademark rights are not governed by statute but have been developed under a judicially created scheme of rights governed by state law. There is no registration or application process required to establish common law rights to a trademark, and there are no fees associated with attaining these rights. Instead, common law rights are established and enforced through use in commerce. This means that a business can simply obtain a common law trademark by using the trademark in association with its business or product.
However, it is important to note that common law trademarks are regionally limited and not as easily enforced as federal trademarks. While a common law trademark can prevent local businesses from using similar marks, it does not have the same nationwide range. For example, a common law trademark in California may prevent another business from using a similar name in Los Angeles but not in San Francisco or other parts of Northern California. Additionally, a common law trademark owner cannot record their trademark with US Customs, and it may be difficult to provide notice of their rights to others who have never purchased their goods or services.
While federal registration is not required, it is almost always recommended as it 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 allows the use of the ® symbol to deter others from using the trademark or a similar one. Federal trademarks also have a higher degree of protection in federal courts than unregistered marks. Therefore, it is important to conduct a thorough trademark search before using a trademark or applying for federal registration to ensure that your mark does not infringe on someone else's federal, state, or common law trademarks.
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Geographic limitations
Common law trademark rights are territorial and only apply to the geographic area in which the mark is used. These rights are obtained by simply using the trademark in association with a business or product and are not governed by statute. 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 be prevented from entering the California market due to the California company's common law rights to the mark.
Common law trademark rights are limited to the specific areas where the trademark is used. This means that a business with a common law trademark in one state may be unable to prevent a competitor from using the same or similar trademark in another state. For instance, a business with a common law trademark in Southern California may not be able to stop a competitor from using the same trademark in San Francisco or elsewhere in Northern California.
The territorial nature of common law trademark rights can create challenges for businesses, especially in the online marketplace. While a common law trademark may prevent local competitors from using similar trademarks, it does not provide protection against businesses in other states using the same or similar trademarks. This could lead to confusion among consumers and negatively impact a business's social media presence or online retail services.
To overcome the geographic limitations of common law trademark rights, businesses may consider registering their trademark with the USPTO. Federal registration provides trademark rights throughout the United States and its territories and includes the right to use the ® symbol. It also allows for the recording of the registration with U.S. Customs and Border Protection (CBP), enabling them to stop the importation of goods with an infringing trademark. While federal registration is not required to establish trademark rights, it offers additional protection and makes enforcement easier.
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Common law trademark search
In the United States, common law trademark rights are granted based on the actual use of a mark, without the need for registration. These rights are limited to the geographic area where the mark is used. For example, if a coffee blend is sold under the name "BLASTER" only in California, the trademark rights exist solely within that state. This means another company selling a different blend in New York under the same name would not be infringing on the trademark, but they would be unable to sell their product in California.
Given the geographical nature of common law trademark rights, it is crucial to conduct a thorough trademark search before using a trademark or applying for federal registration. This search should include both registered trademarks and common law sources, as unregistered trademarks are still protected and can be enforced in trademark litigation. A common law trademark search can help identify businesses with superior common law rights in your locality or out-of-town businesses whose trademarks may hinder your expansion plans or limit your rights if you register your mark.
A common law trademark search can involve searching business directories, phone directories, the internet, and various databases. There are trademark searching companies and individual trademark attorneys that can perform these searches, although it is also possible to conduct a rudimentary search using general search engines such as Google or Bing. The USPTO recommends searching for third-party references to your trademark (and similar trademarks) used with related goods or services. This comprehensive clearance search should include multiple search engines and databases to identify any potential conflicts.
While trademark searches are common and necessary, they have limitations due to the dynamic nature of trademark rights and the absence of a central database for common law trademarks. As a result, common law searching can be challenging and time-consuming, and even thorough searches may not uncover all potential conflicts. Nonetheless, a trademark search is an important tool for identifying barriers to using your trademark and increasing the likelihood of a successful registration.
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Advantages of trademark registration
Common law trademark rights are automatic protections that arise from the use of a trademark in commerce. These 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. Common law trademark rights can complicate the path to trademark registration, and it may be difficult to enforce these rights due to the lack of a single database.
Legal presumption of ownership
Trademark registration establishes a legal presumption that you own the trademark and have the right to use it. In federal court, your registration certificate serves as proof of ownership, eliminating the need for extensive evidence. This can simplify any potential trademark litigation processes.
Deterrence of trademark infringement
Registering your trademark with the USPTO provides public notice of your trademark rights. The federal trademark registration symbol, ®, can be used to indicate federal registration, adding prestige to your company and deterring others from using your trademark or a similar one. The USPTO acts as your ally, potentially blocking applications for similar marks without your knowledge.
Ability to file for foreign trademark protection
Federal trademark registration in the United States can serve as a basis for filing for trademark protection in foreign countries. The Madrid Protocol allows you to file a single application that can be applied to over 100 member countries, simplifying the process of seeking international trademark protection.
Enhanced distinguishability from competitors
A trademark, such as a unique and memorable name or emblem, helps customers identify your business among competitors. Registering your trademark can reinforce this distinction and make it easier for customers to recognize and choose your products or services.
Protection across state lines
Registering your trademark with the USPTO creates rights throughout the United States and its territories. This protection extends across state lines, ensuring that your trademark is protected as you expand your business. State-level registration may not provide this level of protection, as it is limited to the specific state in which the trademark is registered.
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Common law trademark rights are limited to the geographic area
Common law trademark rights are acquired automatically when a business uses a name or logo in commerce and are enforceable in state courts. These 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.
Common law trademark rights go to the business that uses the trademark first. You can only enforce a common law trademark in the geographic area where the trademark is used. For instance, 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 cannot prevent a competitor from setting up shop with your name in San Francisco or elsewhere in northern California.
The term "common law" indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration is not required to establish common law rights in a mark, nor is it required to begin using a mark. However, federal registration, if available, is almost always recommended and gives a trademark owner substantial additional rights not available under common law.
While common law marks are effortless to obtain, enforcing them is much trickier. Although the trademark owner can prevent those in their locale from using similar marks, that authority does not have the same nationwide range. Registering your trademark with the USPTO creates rights throughout the entire United States and its territories, and includes your registration in a publicly accessible database of registered trademarks.
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Frequently asked questions
A common law trademark is a trademark established solely through the use of a mark in commerce in a specific geographical area. Common law trademark rights are automatic protections that arise from the actual use of a trademark in commerce.
Common law trademark infringement occurs when a business uses a name or logo in commerce that is similar to another business's trademark within the same geographical area. This can lead to unfair competition and consumer confusion.
The owner of an unregistered mark can sue for common law trademark infringement, but with certain geographical limitations. Common law trademark rights are limited to the geographic area in which the mark is used. The owner can also oppose a trademark application or cancel a registration less than five years old.
Before using a trademark or applying for registration, it is important to conduct a thorough trademark search. This includes searching business directories, phone directories, the internet, state trademark databases, and business name databases. A trademark attorney can also be hired to conduct a clearance search to ensure accuracy.
