Common Law Trademark Rights Made Through Use In Commerce

By Eric Misterovich

Clients often ask, do I have a trademark even if I did not file for trademark registration? Though each situation is fact-dependent, often the answer is, “Yes.” Common law trademark rights may arise out of the use of a mark in commerce. Common law trademark rights are typically limited by case law to the area in which the trademark was actually used or advertised. If the trademark is inherently distinctive, one may obtain common law trademark rights within a specific geographic area within a short period of time. If the trademark is not inherently distinctive, meaning, it is descriptive of the goods or services sold under the trademark, common law trademark rights may be obtained once the mark has acquired secondary meaning, which occurs once the mark has become known by the general public as an indicator of origin or source.

 

Though one may rely on common law trademark rights in a trademark infringement lawsuit, trademark registration provides the mark owner with a presumption of a nationwide right to use the mark. Additionally, trademark registration provides the owner with the ability to obtain up to $2,000,000 in statutory damages for the infringing use of a counterfeit mark, treble damages, and the potential to obtain attorneys’ fees in a trademark infringement lawsuit. Trademark registration also allows the owner of a registered mark to use the ® to put others on notice of his or her claim of rights. Consequently, though one may rely on common law rights, the benefits of trademark registration often far outweigh the costs and registration is almost always recommend over relying on common law trademark rights.

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