Common Law Trademark
For more information on common law and federal trademark protection, please see our trademark registration page. Our legal team has helped numerous trademark owners protect their trademark rights and we have extensive experience helping trademark owners obtain federal protection with the USPTO as well.
What is a Common Law Trademark?
In the United States, while it is strongly advised that businesses and individuals register their trademarks with the U.S. Patent and Trademark Office (USPTO), it is not required in order to have trademark rights. Under Common Law, simply being the first to use a trademark automatically confers certain rights within the region that the trademark is being used.
Common Law Rights
One of the most important distinctions between common law rights and federal registration of a trademark is that any common law protection is limited to the geographic area in which the trademark is continuously being used. For example, if a business markets and sells its products under an unregistered trademark in Los Angeles, that business may only have rights in Los Angeles. Thus, another business could potentially use the trademark in New York and even register the trademark with the USPTO to gain rights throughout the entire country. Common law rights are also denoted with a different trademark symbol.
Common Law Infringement
One of the disadvantages of not federally registering your trademark is that it is difficult for someone to find your use when another party performs a trademark search. Therefore a subsequent user could perform a search and gain superior rights in most of the country without even knowing about the prior use.
On the other hand, having a federally registered trademark with the USPTO gives a trademark owner considerably more protection. Registration creates a presumption of ownership and lets the public know that the registrant owns the trademark and has exclusive right to use the trademark throughout the U.S. and in connection with the goods or services listed in the registration. Registrants may also take action against infringement, obtain foreign registration, and prevent importation of potentially infringing foreign goods. If you have an infringement issue a typical first step is a cease and desist letter, or responding to one. For more information please see our trademark cease and desist letter page.
Common Law Protection
Essentially, if a product or service is sold under a particular brand name that is not already in use or under trademark protection, the trademark owner may have protection under common law. Additional requirements include:
- The trademark owner has used the name as a trademark
- The trademark has acquired distinctiveness
- The trademark owner exercises control over the quality of goods
If you need assistance with protecting your trademark rights, whether common law, federal or otherwise, please contact us.