Common Law Trademark Rights vs. Federally Registered Trademark Rights

Most business people know that it’s important to protect intellectual property rights such as trademarks.  But did you know that there are different types of trademark rights available? Read more to learn the differences between the two major categories of trademark rights: common law trademarks and federally registered trademarks. 

Common Law Trademark Basics

Common law trademark rights are established by using a mark in commerce when selling goods or services. The ™ symbol indicates that someone is using common law rights to protect a trademark. Common law marks give you the right to keep others from using your mark in the geographic region of your business operations, but generally will not protect your mark anywhere else. This type of trademark right also goes to whomever uses a mark in a given geographic area first, regardless of whether someone else used the mark first somewhere else.

For these reasons, common law trademark rights, while providing some protections for businesses in their own backyards, are often not enough to support businesses intent on expansive growth. 

For example, if you start a business in New York and rely on common law trademark rights, your mark will be protected in New York as long as you were the first to use your business’s mark. However, if business is going well, and you want to expand by opening a new location in Atlanta, you might find that another competing business is there already and using your mark. Unfortunately, with only common law trademark protection, you would likely be out of luck in the Atlanta region because the competitor may have established its own common law trademark rights for the same mark in that region. Furthermore, if your competitor were to federally register the trademark before you, then your common law rights would still protect your mark in your starting region of New York, but you probably would not be able to expand anywhere else in the country using your mark.

Federal Trademark Basics

Federal trademark rights are granted only after filing an application with the United States Patent and Trademark Office (“Trademark Office”) and obtaining a registration. For more on the federal trademark application process and its requirements, please review my previous blog post here. Federal trademark registration is signified by the ® symbol and gives the owner of a mark presumptive priority to use the mark nationwide. Thus,your mark is protected everywhere in the U.S., unless someone can prove they used the mark first, and even then they will only be allowed to keep using the mark in the geographic area where he or she is already conducting business.

Another benefit of federal registration is that your mark will be publicly listed in the Trademark Office database. The public record will detail your mark and when you started using it. This public record provides two key advantages over common law rights. First, registering your mark and making it publicly searchable can deter others from using your mark anywhere in the country, because other businesses will see your mark when going through the process of trying to create their own marks. Second, if or when you do have to enforce your rights against an infringer, the federal registration and publication will provide information, like the date of first use and the date of registration, that you can use to prove that your rights to the mark are superior to the infringer’s rights.

Conclusion

While both common law trademark rights and federal trademark rights provide at least some protection for the marks businesses use in commerce, federal trademark protections are far more comprehensive. Getting a mark federally registered gives nationwide protection, provides public notice to deter potential infringers, and creates a record that can be used to enforce your rights against those who do infringe.

Written by Benjamin Rothermel and Connor Jaccard.