What Are Common Law Trademark Rights?
Many folks wonder if they need to trademark their logo, business name, product, or tagline. Is it actually necessary? Or, do you already have some form of protection without registering your trademark? The question of whether to register or not depends on what level of protection you want for your intellectual property. And, yes, you are protected even without trademark registration. What are we talking about exactly? Common Law Trademark.
Common law rights are granted to the first user of the trademark within a specific area. So, whatever symbols, phrases, words, or sounds you deploy as part of your business identity are all protected. That is, as long as it’s in use. The main difference between an unregistered and a registered trademark is the scope of the protection.
Limitations of Common Law Trademark
Let’s consider the following example. If you are the first to offer a product for sale in New York City, common law may keep a competitor from selling a similar product with the same name in that city and the nearby metropolitan area. However, this level of protection is limited. If your competitor uses the same name and sells a similar product in upstate New York, they can. Also, if a competing business with similar intellectual property to you is the first to use a given trademark in a different market, you can’t expand to that market.
What about if a competitor successfully registers the same mark with the United States Patent and Trademark Office (USPTO)? Interestingly, common law rights may still give first-users the right to use that trademark in their particular area. One thing to note. It may also prove difficult to enforce common law trademark rights due to the lack of a public record.
Do I Need Federal Trademark Registration or is Common Law Trademark Enough?
Common law refers to the fact that trademark rights are established via use, as opposed to governance by statute. The rights of common law trademark are covered under state law. You are not required in any legal way to federally register your trademark prior to using it. Common law exists for precisely this reason – you get protection without federal registration. Overall, it may be advisable to obtain federal registration of your trademark because of the limitations of common law trademark. When you register your trademark with the USPTO, you’ll get a broader scope of rights and protection. This additional level of protection is especially useful when it comes to infringement and infringement lawsuits. Namely, with common law rights, you are not entitled to collect on any trademark infringement damages.
There is no need to register your mark to access common law rights. As a result of this, it may prove difficult to find out if the mark you are using or wish to use is already in use. Therefore, when you conduct a search of existing registered trademarks, you can only see what marks have been registered or pending registration approval. Even so, to access common law trademark rights, you’ll have to try to find out if any such mark is already in use in your particular area. Remember, the first person to use the mark owns the common law rights!
Research and Due Diligence is Crucial!
Do your due diligence! Do your absolute best to engage in an exhaustive search of existing marks that might be protected by common law rights. At all costs, you’ll want to avoid discovering that the mark you’re using is infringing on a competitor’s common law trademark. Going forward with using a mark without doing your research can lead to an infringement lawsuit by the trademark owner. Not only this, you will also likely pay large amounts of money for renaming and rebranding of your business. Totally avoidable! Another thing to consider is consumer confusion. If a potential customer is confused about which brand sells what, that’s not great for your business! Research, research, research!
The absence of a common law trademark database can make your search very time consuming. Examine a range of sources, such as newspapers, public records, and the internet, as well as registered trademarks in the USPTO trademark database.
When Do You Use the “TM” Superscript?
When declaring ownership of your common law trademark, be sure to include the “™” superscript alongside the intellectual property. Your common law rights are in effect as long as you are using the mark in question. The first and continued usage of the mark prevents others in your geographic region from using the same or similar mark if that could potentially confuse consumers.
Once you are acting as the first-use owner of a common law trademark, you’ll need to do your own policing of the mark. This means, you are responsible for monitoring the marketplace to find out if any competitors are using the same mark. If you don’t police your own trademark, you might lose your common law trademark protection, which can affect your ability to claim trademark infringement. If and/or when you find a competitor who might be infringing on your mark, reach out to them and inform them of your common law rights. From there, you can proceed with a cease-and-desist letter if necessary, in which you’ll ask them to stop usage immediately.
Stockman & Poropat, PLLC Can Answer Your Questions
If you are confused about trademark registration, common law rights, and/or which you should rely on for protection of your intellectual property, contact us for a free consultation today! Our team at Stockman & Poropat, PLLC can help answer all questions related to common law rights and trademark registration. If you are interested in applying for trademark registration, fill out and submit our File My Trademark form. Let us get to work and protect your intellectual property!
Up next we will be discussing How to Trademark a Color.
