Common-Law Trademarks: Part 2
This blog post concludes the two-part series on common-law trademarks. To learn about when you might use common-law trademark rights, what common law trademark rights are, and what some of the drawbacks are, please take a look at our earlier post Common-Law Trademarks Part 1. This post will cover the basics of:
How to establish common-law trademark rights,
How to enforce common-law trademark rights, and
Alternatives to common-law and federal trademark rights (state trademark systems).
How to Establish Common-Law Trademark Rights
Common-law trademark rights are created by using a mark in commerce. This means that, unlike the application process required to obtain a federal trademark registration, common-law trademark protections attach to your mark the moment you start selling goods or services bearing your mark.
However, common law trademark rights are different from federal trademark rights in a couple of other important ways as well. First, while federal trademark rights can provide nation-wide protection, common-law protections only apply to the geographic region in which you conduct business. Second, the federal trademark system operates under a “first to file” system, while common law trademark rights protect only those who are first to use in commerce.
A “first to file” system is one in which the first person to file an application, regardless of who actually used the mark first, becomes the owner of the rights in a trademark. Because common-law trademarks only protect those who are the first to use a mark in a particular geographic area, it is very important to conduct a common-law trademark search before using a mark.
How to Enforce Common-Law Trademark Rights
As the owner of rights in a common-law trademark, you are responsible for enforcing those rights. The first step in enforcing your rights is to deter others from infringing on your common-law mark. One way to do this is to add the symbol “™” at the end of your mark. This indicates to others that you are asserting rights in your mark.
If you don’t continue to enforce your common-law mark, you could lose the ability to protect your rights over time. For this reason, it is very important to monitor for potential infringers. Another mark does not have to be perfectly identical to yours in order to infringe on your rights. If someone is using a mark that is confusingly similar to your mark, that may qualify as infringement. Once you have identified a potential infringer of your common-law trademark rights or need assistance identifying potential infringers, it may be time to contact a trademark attorney to discuss your options for how to proceed.
The Alternative to Common-Law and Federal Trademark Rights: State Trademark Systems
Finally, there is an alternative to both common-law and federal trademark rights: state trademark systems. State trademark systems provide statewide protection for your mark but are not valid in any other state. Hence, state trademarks provide broader geographic protection than common-law marks but narrower geographic protection than federal marks.
There are two primary reasons you might consider seeking a state trademark registration. First, a state trademark registration will put your mark on the state registry, a list that can be helpful in deterring potential infringers from using your mark. Second, state registrations typically cost much less to obtain than federal registrations (for example, $30 per class in Virginia vs. at least $225 in filing fees for a federal registration). For these reasons, while a federal trademark application may generally be the best choice, if you plan on conducting business only within a certain state, filing for a state trademark registration can be a reasonable option.
If you have any other questions about common-law trademarks, state trademarks, or trademarks in general, please don’t hesitate to contact the firm using the forms below!
Written by Benjamin Rothermel and Connor Jaccard.