Common-Law Trademarks: Part I
Trademark protection is crucial to the development of value in your business’s brand. The two broad categories of trademarks are common-law trademarks and federal registrations. Federal trademark registration is generally preferable to common-law trademark protection, but not all trademarks can or need to be federally registered. This post is part one of a two-part series on common-law trademarks and will cover the basics of:
When you might use common-law rights;
What those rights are; and
What some of the drawbacks are.
For more on the difference between common-law trademarks and federal trademarks, take a look at our earlier post Common Law Trademark Rights vs. Federally Registered Trademark Rights.
When Would You Use Common-Law Rights?
Common-law trademark rights can be important and useful when federal trademark protection is unavailable for your business. For example, during the period of time during which you are in the process of applying for a federal trademark registration, but do not yet have a federally registered mark, federal trademark protection may be unavailable. During this period, demonstrating that you believe your mark is covered by common-law trademark protection can be helpful in deterring others from using your mark. The ™ symbol is used to demonstrate to others, including potential infringers, that you are claiming common-law trademark rights.
Another reason you might use common-law trademark rights is that you are unable to obtain a federal registration for your mark. There are multiple reasons you might not be able to get a federal registration for your mark, and it is important to consult with an attorney in this situation - if you have not already - to help avoid legal pitfalls such as potential trademark infringement. However, in some circumstances, it could be advisable to use common-law trademark rights if federal registration is not available.
For example, say you have been using the mark “Supersoft Consulting” for your local software consulting business for 15 years and now would like to get your name federally registered. You have a trademark search done, and find out that “Supersoft” is already taken. Another business registered the name three years ago, and has been using it for four years. This is where common-law protection might be helpful. Because someone else federally registered a similar mark first, you may not be able to obtain a federal registration for your mark. However, you might still be able to use your mark locally because common-law trademark rights offer protection in the geographic region where you conduct business as long as you are the first to use your mark in that region.
What Protections do Common-Law Trademark Rights Provide?
The purpose of common-law trademark rights, like federal trademark rights, is to distinguish one business from another and allow consumers to identify the source of goods or services. This helps businesses and consumers by allowing consumers to identify the source of superior products and allowing businesses to capitalize on their reputations for providing superior products and services without fear of being ripped off by infringers.
Common-law trademark rights protect you from infringers by automatically attaching when you start using a mark in connection with your business. This means that unlike federal trademark rights, you do not have to go through an application process for common-law protection.
What are Common-Law Trademark Drawbacks?
However, common-law rights only apply in the geographic region in which you conduct business. That means someone else may be able to use your mark for the same type of business if they move beyond the region where your business operates. Federal trademark rights, on the other hand, give you nationwide presumptive priority and protection, and this difference in geographic scope of protection is why it is almost always better to pursue a federal trademark registration rather than relying solely on common-law rights.
For more on common-law trademark rights, such as how to enforce your rights, look for part two of this series next. If you have any other questions about common-law trademarks, or trademarks in general, please don’t hesitate to contact the firm using the forms below!
Written by Benjamin Rothermel and Connor Jaccard.