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common law trademark

What is a Common Law Trademark?

By John DiGiacomo

Trademarks are any sort of logo, word, phrase, design, mark, or another thing (such as a color) that identifies a unique manufacturer of a product or provider of a service. These identifying marks, words, logos, or designs become legally protected property once they begin being used in commerce. Trademarks are legally protected from being used by a person or business that does not own the trademark. Over time and through consistent use on products, trademarks become famous in a local community, across the nation, or even internationally.

A common law trademark is one that has these legal protections that come into being by use in commerce. A common law trademark is considered different from a trademark that is registered with either the federal government or with State governments. Federal trademarks have national reach and are registered by the U.S. Patent & Trademark Office (“USPTO”). Trademarks registered at the State level will have a State or local reach. There is currently no international registration of trademarks, but various international treaties protect nationally registered trademarks in international commerce. These treaties create reciprocity.

Owning a common law trademark gives the owner certain legal rights. These include:

  • Ability to sue for trademark infringement to bar another from using the trademark
  • Ability to collect damages caused by the infringement
  • Ability to license use

However, common law trademark protections are limited to the geographical area in which the trademark is actually used. This is one of the main disadvantages of common law trademark protections vs. the protections afforded by statutes.

In general, common law trademark protections exist through judge-make laws rather than through protections granted by statutes. In general terms, this is what the words “common law” mean in the legal field. Trademarks have been used for centuries, and at first, the only trademarks were common law trademarks. However, over the years, trademark statutes were enacted for several reasons. First, lawmakers intended to solidify the legal protections afforded to trademark owners. Second, lawmakers wanted to increase the protections for trademark owners. In addition, there was a desire to make use of trademarks uniform and standardized. Finally, since registering a trademark created a public record of the trademark, registration was intended to decrease legal conflict over use and ownership.

The extra-legal protections provided by federal and State trademark statutes are triggered by the registration of a trademark. At the federal level, the additional legal protections include:

  • National geographic coverage for the trademark
  • Ability to sue for infringement and potentially collect statutory treble damages (which can be more substantial than actual damages)
  • Ability to collect attorneys’ fees if you are the prevailing party
  • Ability to sue in federal courts (rather than State courts)
  • Authority to place the circle R symbol on your products and advertising for your services
  • Availability of additional legal causes of action, such as dilution or tarnishment of a trademark
  • Preferential treatment under procedures and protocols of the Internet Corporation for Assigned Names and Numbers (“ICANN”) designed to protect internet domain names based on registered trademarks
  • Ability to trigger the U.S. Customs and Border Patrol to investigate allegations of importation of counterfeit goods
  • And more

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.

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