What Are Common Law Trademark Rights?

Common Law Trademark Rights

Common law trademark rights may be available to you if your business name, product name, or tagline is used regularly. This applies even if you have not registered your trademarks with any government agency.

Trademarks can be words, phrases, or symbols that are used to identify your company. Some of the most well-known trademarks include McDonald’s golden arches, Nike’s “Just Do It!” slogan, and Amazon.com. Trademarks can be used to stop other businesses from using confusing marks like yours.

You can acquire common law trademark rights by simply using your trademark in connection with your business. Registering your trademarks with U.S. Patent and Trademark Office can help strengthen these rights.

Common Law Trademark Rights

The business that first uses the trademark is entitled to common law trademark rights. You can only enforce a common-law trademark in the area where it is used.

If you are selling a product in California only, your common law trademark could prevent another company from selling the exact same product in Los Angeles. However, you cannot stop a competitor from setting up a shop in San Francisco or anywhere else in northern California with your name. If your competitor is the first one to use your trademark in San Francisco it may be possible for you to stop them from expanding into this market.

Common law rights can protect your right to use your trademark within your locality if you are the first person to use it. This is even if another company gets a federal registration nationwide for the same mark. Common law trademark rights are difficult to enforce, as there is no public record of the trademark or when it was used.

Federal Trademark Registration

You must submit a USPTO application to register a federal trademark. Once approved, you can file it with other agencies. Registering your trademark with USPTO will give you the legal right to use the mark nationwide and prohibit others from using it for similar goods or services.

A California business with a federal trademark registration can prevent a new company from using its trademark on similar goods and services in San Francisco, New York, or elsewhere in the country.

Federally registered trademarks are included in the USPTO database. This can deter others from using a similar mark. A federal trademark registration gives trademark owners the right to sue federal courts to enforce their rights. Federal registration makes it easy to apply for foreign trademark registrations and to stop infringing on products being imported.

Common Law Trademarks and Trademark Searches

It is important to do a thorough trademark search before you use a trademark, or apply for federal trademark registration. A trademark search will reveal whether your mark is infringing on another’s common, state, or federal trademarks. A comprehensive trademark search must include at least three components. These are:

  • A search of the USPTO database. If your mark is confusingly similar or identical to another registered trademark, federal registration will not be granted. If your mark is confusingly similar to another registered trademark, it will be denied federal registration.
  • Common law trademark search. Common law trademark searches can help you identify businesses in your area that have common law rights superior to yours. You can also find out-of-town companies whose common-law trademarks could limit or prevent you from expanding your rights if you choose to register your mark with the USPTO. Common law trademark searches might include searching phone directories, business directories, and the Internet generally.
  • State trademarks search. This is a search of databases for one or more states to locate marks that have been registered with them as trade names, trademarks, or business names. You may not be able to use your trademark in a state that has a preexisting trademark registration.

A trademark search can be used to identify barriers to your name, logo, or trademark being used. It increases the chances of your trademark registration being approved by the USPTO.

Protecting Common Law Trademarks

The symbol TM indicates that you are claiming common law or state trademark rights, or that there is a pending federal trademark registration application. You notify others about your trademark rights by putting a TM on your trademarks. This will deter competitors and copiers from using your trademarks for their products or services.

Registered trademark symbols Ⓡ are reserved for trademarks registered with the USPTO.

Common law trademark enforcement, like all trademarks, is the responsibility of the trademark owner. You could lose your trademark rights if you fail to take action to stop others from using your marks. If you discover that another company in your area uses your trademark, enforcement means that you take action. A trademark lawyer will be able to advise you on the best steps to take.

The protection of common law trademarks is not sufficient to protect your business name, product names, and taglines.

Federal Registration Vs Common Law Trademarks

The term “common law” refers to the trademark rights that have been established through usage and are not subject to statutory regulation. Common law trademark rights were conceived within a framework of rights crafted by the judiciary and are governed by state law. 

Unlike federal registration, which is established through federal statutes, common law trademark rights do not require registration. In addition, registration is not a prerequisite for the use of a trademark. 

Nevertheless, it is highly recommended that trademark owners pursue federal registration if possible, as it confers certain advantages that are not available under common law. For more detailed information on the advantages of federal registration, please refer to the BitLaw discussion on this topic.

Common Law Marks Are Not Limited Geographically

Common law trademark rights are limited to the geographical area in which the mark is used. For instance, suppose a local bakery in Florida starts using the name “Sunrise” for its brand of croissants. In that case, the trademark rights for that name would apply only to the geographic area where the bakery operates. Another bakery in New York could sell a different type of croissant under the same name, as long as it did not infringe on the Florida bakery’s trademark rights. 

However, if the New York bakery attempted to sell its “Sunrise” croissants in Florida, it would be barred from doing so due to the common law trademark rights established by the Florida bakery.

Common Law Marks Have an Effect on Trademark Searches

The establishment of common law trademark rights does not necessitate registration, which can complicate the determination of trademark ownership. Consequently, conducting a trademark clearance search to ensure that a proposed mark is available for use can be a cumbersome and costly process. This is because such searches would be rendered superfluous if registration were a mandatory prerequisite for the establishment of trademark rights. Nevertheless, U.S. law mandates the discovery of such rights.

Protect Your Brand Identity Today: Contact Us for Expert Trademark Law Services

With years of experience in the legal industry, The Black Law Company is dedicated to providing our clients with the highest level of expertise and professionalism. Our team of legal experts has a wealth of knowledge in a wide range of legal services, including trademark law. We understand that protecting your intellectual property is essential to the success of your business, which is why we offer comprehensive trademark law solutions tailored to meet your specific needs.

When you choose The Black Law Company for your legal needs, you can rest assured that you are in good hands. Our team of legal professionals is committed to providing you with personalized attention and top-quality service to help you achieve the best possible outcome. So, whether you need assistance with trademark registration, protection, or enforcement, we are here to help.

Don’t wait any longer to protect your intellectual property. Contact The Black Law Company today and let us help you safeguard your business and reputation with our expert trademark law services.

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