What is a Common Law Trademark?
Although federal registration for a trademark can be applied through the United States Patent and Trademark Office (USPTO), common law protection applies under certain circumstances.
A common law trademark protects a symbol utilized by a business for commercial purposes before it is registered. Names, logos, slogans, specific names of products, and other design elements can all be protected in common law.
What Does a Common Law Trademark Protect?
This common law trademark protection is triggered by a business’s first use of a symbol in commerce within a geographic area. These trademarks prevent other businesses in your region from using the same or similar marks that could result in consumer confusion. Having rights under common law allows a business owner to pursue legal action against competing companies who infringe by using the same mark.
Read – Should I Trademark My Business Name?
What are the Limits of a Common Law Trademark?
Common law trademark rights are limited to the geographic region where the mark is utilized and areas where it could reasonably be used in connection with that business. Different companies across the country can use the same trademark without infringement issues if their activities are conducted in different locales.
Could I Lose My Common Law Trademark?
To assert common law trademark rights, being first to use the trademark is of utmost importance. This means if you started using your common law trademark before a competing business registered it, you would need to have evidence that you used the mark first in commerce to keep your common law rights. In such a determination, the courts will weigh various factors, including frequency and reach of each party’s use and the mark’s distinctiveness.
Losing a trademark infringement case and discontinuing the commercial use of your mark can jeopardize your trademark rights. Your common law or registered trademark will expire if you do not use the mark for three years or more in commerce.
What is the Difference Between a Registered Trademark and Common Law Trademark?
Common law trademarks aren’t governed by statute but are created by state law. You don’t need to register your trademark with the USPTO to have common law trademark rights or start using the trademark symbol.
The symbol TM indicates common law or state law trademark rights while the federal trademark registration symbol, ®, is reserved for trademarks that are registered with the USPTO. When you use the TM symbol, you are notifying others of your trademark rights which can deter copycats and competitors from using your trademarks.
Federally registered trademarks can provide an advantage to businesses who want to apply for a foreign trademark to prevent foreign entities from selling their products in the U.S. If you register a federal trademark, the protection for the exclusive right to use your trademark is easier to enforce nationally. It isn’t limited to your geographic area. Your trademark will also be listed in the USPTO database and put others on notice of your rights and use. There are many other benefits to registering your trademark, but it is important to note that it doesn’t allow priority over existing common law trademark holders.
Perhaps the most important difference is that there is no entitlement to damages for trademark infringement against your intellectual property without trademark registration.
Related: What is the difference between a trademark, patent, and copyright?
How to Establish a Common Law Trademark
Before using a symbol for your business, you should conduct a trademark search to ensure that no one already has a claim to the same or similar mark. Common law trademarks are not recorded anywhere officially, but the search must be thorough and extensive. A common law trademark search can be primarily conducted by general online research of your region through search engines like Google and public records and newspapers.
A search of federally registered trademarks will also need to be conducted by visiting the USPTO website. You will also need to search your state’s official trademark website for marks that have been registered with the state.
You can conduct your own trademark search. However, a trademark attorney will be better equipped, especially if you have concerns that your potential mark is already in use. It is essential to act quickly once you’re confident that a mark is available under a common law trademark or registering the trademark. If you don’t start using the trademark or apply for federal registration within two or three months from your initial research, your search results will likely be considered irrelevant, and you will need to conduct your research again.
USPTO Trademark Search: https://www.uspto.gov/trademarks-application-process/search-trademark-database