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To avoid being sued for trademark infringement, before creating and using a new trademark, you must conduct a trademark search. This search will determine if there are any existing trademarks being used that are the same as — or confusingly similar — to the trademark you are planning to use. Further, if you want to register your new trademark at the federal or State level, you will need to conduct a trademark search. Under both federal and State trademark laws, you cannot register a trademark that is already in existence and being used.
Thus, to avoid being sued and to lawfully register a trademark, you will need to make sure your trademark is unique.
A search for common law trademarks is the most comprehensive type of trademark search available. In conducting a common law trademark, your search will automatically “pick up” all the registered trademarks. In very simple terms, a common law trademark is one that is NOT registered at any level and, very likely, is a small-use trademark for a limited amount of products used in a limited geographical area. Why? Trademarks have commercial value, and when a person or business has something of value, they obtain the maximum legal protection for that asset. In other words, the owner of the trademark will get the trademark registered. There are only a few reasons why an owner would not get a trademark registered. Those reasons are a limited quantity of products being sold or services being provided and/or the trademark being used in a very limited geographical area.
What Does a Common Law Trademark Search Involve?
A standard trademark clearance search generally involves searching the public databases operated by the federal and State trademark offices. Then, general internet and public databases searches are done for the words being used in a proposed trademark, along with image searches for logo and design trademarks.
A common law trademark clearance search will add additional database searches of existing and historical news, business, legal, and financial records. For example, states have databases for any corporate entity that is created. Common law trademarks could be found among those records. Likewise, if a company has a “doing-business-as-name,” many states require that the doing-business-as-name be registered and recorded in the local county recorder’s office. Common law trademarks might be uncovered by searching those records.
What Happens if a Common Law Trademark is Uncovered?
It depends. If you register your new trademark at the federal level, your trademark has national coverage and could extinguish the common law trademark. Alternatively, the common law trademark might be allowed to continue being used in its limited geographical area. The Burger King trademark is a famous example of that situation. The national restaurant chain has the national trademark, but there is a 20-mile geographical carve out for a locally-used Burger King trademark for a restaurant in down-State Illinois.
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
The trademark registration system is visible and searchable, but it does not capture the complete landscape of trademark rights in the United States. Common law trademark rights — rights that arise from use in commerce, without any registration — exist alongside the federal and state registration systems and can present real legal obstacles for businesses that rely solely on database searches. A comprehensive common law trademark search is the standard of care in trademark clearance, and understanding why helps clarify the legal stakes of getting it wrong.
The United States follows a “use-based” trademark system. Under the Lanham Act, 15 U.S.C. § 1051 et seq., rights in a trademark arise from actual use in commerce — the first user of a mark in a given market acquires priority rights in that market regardless of registration. Federal registration does not create trademark rights; it recognizes and enhances them. This means a business that has been using a mark in commerce since 1985, without ever filing a registration application, has enforceable common law trademark rights in the geographic areas where it operates.
The scope of common law trademark rights is geographically limited to the areas where the mark has actually been used and is recognized by consumers. This geographic limitation is both their weakness and their legal significance. Because common law rights are local, they do not appear on the USPTO’s Trademark Electronic Search System (TESS), on most state trademark databases, or in standard internet searches unless the business has an established web presence. A startup that conducts only a TESS search and concludes its mark is clear may be building a brand directly on top of a common law mark held by a regional competitor — and will not discover the problem until a cease-and-desist letter arrives.
However, a party who was using a common law mark in commerce before the filing date of a federal application has protected rights in the geographic territory where they used the mark prior to that filing date. They cannot be forced to stop using their mark in that territory — but their rights are frozen to that territory. They cannot expand geographically without infringing the federal registrant’s nationwide rights. The Burger King example is precisely this: a small restaurant in Mattoon, Illinois has operated as “Burger King” since before the national chain’s federal registration, and courts have upheld its right to continue using the name within a limited geographic zone.
A common law trademark search goes beyond the USPTO TESS database and state trademark office databases to examine the broader commercial landscape. A thorough search should include:
A business that adopts a mark without conducting a common law search and is later found to have infringed a common law mark faces significant legal exposure. Under 15 U.S.C. § 1117, a successful trademark plaintiff can recover the defendant’s profits, actual damages, and costs of the action. For willful infringement, courts can award enhanced damages up to three times the actual damages and attorney’s fees. Even if the infringement was innocent — the business simply did not know about the common law mark — it may still be required to rebrand, destroy existing inventory and marketing materials, and potentially pay damages for the period of infringement.
Rebranding a business after it has been operating under a mark for even one or two years is expensive and damaging. Domain names, social media accounts, advertising materials, product packaging, signage, and customer recognition all have to be rebuilt. The cost of a thorough common law search at the outset is a fraction of the cost of a forced rebrand.
The trademark clearance attorneys at Revision Legal conduct comprehensive trademark searches — including common law searches — as the first step in any trademark adoption. If you are developing a new brand or need to clear an existing mark before expanding, contact us before you invest further in a mark you may not be able to keep.
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