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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:
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:
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.
Common law trademark rights arise from actual use of a mark in commerce — no registration is required. The first business to use a mark in a specific geographic area establishes priority in that area. But establishing and enforcing common law trademark rights requires solid documentation of that use. Courts look at evidence such as: the date the mark was first used, the geographic extent of sales and marketing, the volume of sales bearing the mark, advertising expenditures, and the degree of consumer recognition. A business that cannot produce this documentation may lose a priority dispute even if it was actually first in time.
The most significant limitation of common law trademark rights is geographic reach. Common law rights protect only the territory in which the mark has actually been used and recognized. A restaurant in Ann Arbor, Michigan that has operated under a distinctive name for thirty years has enforceable common law trademark rights in the Ann Arbor market — but not in Chicago, even if no one in Chicago has ever heard of the restaurant. This geographic limitation becomes a real business problem when a company with strong common law rights in a regional market seeks to expand nationally and discovers that another company has federal registration of a similar mark. The Supreme Court addressed this tension in Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916), and the rule that emerged remains the law today under the concurrent use doctrine.
One practical aspect of common law trademarks that often confuses business owners is the proper use of trademark symbols. The TM symbol (for trademarks) and the SM symbol (for service marks) can be used by any business to claim trademark rights in a mark — regardless of whether the mark is registered. Use of TM puts the public on notice that you are asserting trademark ownership. By contrast, the circle-R symbol may only be used if the mark is actually registered on the federal Principal Register. Using the circle-R on an unregistered mark is a federal offense under 15 U.S.C. section 1111.
A business with established common law rights in a mark has a significant advantage in the federal registration process. A common law user who was using the mark before the federal application filing date can assert that prior use to defeat the federal application or to secure a concurrent use registration that carves out their established geographic territory. To convert common law rights to federal registration, the applicant files a use-in-commerce application under 15 U.S.C. section 1051(a), accompanied by the date of first use in commerce and specimens showing current use.
Unregistered marks are harder to police than registered marks because there is no USPTO record that puts third parties on constructive notice. A new business conducting a trademark clearance search will likely check the USPTO database — if your mark is not there, they may not know it exists. Active policing requires periodic marketplace searches — Google searches, domain name monitoring, social media monitoring, and watching USPTO applications in your relevant classes. The Trademark Trial and Appeal Board (TTAB) allows common law trademark owners to oppose federal applications for confusingly similar marks during the 30-day opposition window after publication.
The Trademark Attorneys at Revision Legal help businesses document their common law rights, convert those rights to federal registrations, and police the marketplace against infringers. Call us at (855) 473-8474 or contact us online to protect your brand before a competitor files first.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
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