While a federally registered trademark is the more commonly known, it does have a lesser-known sibling, the common law trademark. Unlike federally registered trademarks, which must survive a sometimes lengthy application prosecution and incur fees at the United States Patent and Trademark Office, a common law trademark can arise solely through the use of the mark. This is true whether the mark is a word, logo or slogan, and the mark can even have the advantage of using the TM symbol.
While the benefits of a common law trademark may sound convincing at first glance, there are detriments to relying on common law trademark protection.
GEOGRAPHIC LIMITATIONS
Because common law trademark rights arise out of the use of the mark, the protection of the mark may be claimed only in the geographic region in which the trademark is used in commerce. When it comes to preventing others from using the exact same mark, an owner of a common law trademark will only be able to prevent those in the immediate geographic region from using the mark. Protection of the trademark will fall under the unfair competition laws and the trademark laws of the state in which the common law trademark claims priority. This can leave common law trademark owners open to expensive litigation as the limits and definitions of geographic commerce are often decided through weighing several factors. Alternatively, a mark that has obtained a federal trademark will be successful in preventing others from using the mark anywhere in the United States. Additionally, with a federal trademark, the owner is more likely to be able to prevent another from using not only the exact mark, but even a mark that is “confusingly similar.”
IS A COMMON LAW TRADEMARK SUFFICIENT FOR LOCAL USE?
Use in interstate commerce is a requirement of all federal trademark registrants and must be evidenced prior to being awarded with a registered mark. Due to this requirement, not every mark will be eligible for federal registration. However, as the world shrinks due to e-commerce, social media and franchising, federal registry is becoming a likely reality for many common law trademark owners.
For those not eligible for federal registry, common law trademark rights will likely be sufficient to protect the name in the immediate geographic region. However, there are certain circumstances where a common law trademark will not be sufficient to protect a brand. For example, if the common law trademark began its commerce after the federal registration of another using the mark. Additionally, if a federal trademark applicant establishes a first date of use in interstate commerce prior to the common law use of the mark, the third party can likely prevent the common law use of the mark in its own geographic region.
BRANDING CONSIDERATIONS
While a localized common law trademark may seem sufficient for some businesses, one must consider the protection of its goodwill. Having the ability to prevent others from using an identical or “confusingly similar” mark anywhere in the country is priceless in obtaining brand recognition and maintaining goodwill. The owner of a registered trademark will run into fewer obstacles when asserting its right to use the mark in all states and on social media.
Business owners should consult a trademark attorney prior to the formation of a business entity to ensure that a comprehensive clearance search is conducted. This will ensure the availability of the mark prior to investing in a business name. Once a business owns a registered trademark, they will enjoy several benefits. In the event that a third-party claims ownership of the mark, the owner of the registered mark will have the presumption of ownership in any court proceedings. This means that the burden of proof is on the third-party user of the mark to present evidence that they have the priority right to the mark. Second, registering a mark with the United States Patent and Trademark Office and using the ® symbol serves as constructive notice of the owner’s assertion of rights to the mark. Lastly, after five years of continuous use after federal registration, the owner can apply for incontestability, which adds another layer of protection to the trademark, making it more difficult for third parties to claim rights to the mark.
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Monica Ugliuzza, Esq.
Monica is an attorney with a practice dedicated exclusively to trademark law. Monica is the founder and owner of Creative Law Studio, a law firm with creative minds to best serve creative clientele. Creative Law Studio is able to serve clients with a wide-range of budgets, due to the firm's boutique, web-based presence. Creative Law Studio is committed to providing excellent counseling to our clients and we get just as excited about your trademark as you do.
Disclaimer: This blog/website is intended to be published for educational and entertainment purposes and to give readers a general idea of the law of trademark. This blog/website is not intended to give any specific legal advice or to target a specific person. Readership of this blog cannot create an attorney-client relationship between you and the publisher. This blog should never be used to substitute the seeking out of personal, legal advice. The discussion of an existing or potential trademark shall not be taken as an endorsement by creative law studio, nor shall the same be taken as an endorsement of creative law studio. The discussion of specific trademarks does not mean that creative law studio is a record attorney for such trademarks.