Common Law Trademarks

How to Establish a Common Law Trademark

Establishing common law trademark rights doesn’t involve any registration paperwork or fees. You gain these rights when you use a trademark in commerce. It sounds shockingly easy, and it is.

Once you start using a trademark in the marketplace—by placing it on the goods you sell, putting it on a sign on your storefront, branding your website with it—you’ve obtained common law trademark rights.

The more you use your mark, carve out a place in the market, and teach consumers that the mark identifies your goods/services, the stronger your common law rights become.

Do I have to sell goods/services in order to get common law trademark rights?

Yes. Trademarks—whether registered or common law—offer protection in connection to goods or services that are being bought and sold.

To keep things interesting, there’s no rule that says specifically how many transactions must occur before “use” has been achieved. But generally, one-off or sporadic sales don’t count. To gain common law trademark rights, you need to actively sell goods/services promoted by the mark.

Common law trademarks provide some protection, but federally registered marks provide even more. Want help with registration? Learn about our Trademark Service.

What Are the Geographic Limits of a Common Law Mark?

Common law trademarks have rights within the geographic area(s) where your business operates. But what qualifies as a common law trademark’s geographic scope is not always easily defined.

Exactly how far the protected geographic area extends depends on numerous factors related to the mark’s use:

• Zone of Actual Market Penetration
  The zone of actual market penetration takes into account how many customers a business has compared to its potential customers. If your business has sufficient sales in a region, then use has been established in that market. For example, if your Dallas business reaches enough Dallas customers, then your common law mark would be protected in Dallas. Its rights might not extend to Austin or Houston.
• Zone of Reputation
  Zone of reputation has to do with how recognizable a mark is within a geographic area. Maybe a brand’s operations are in Dallas, but the company is well known—real and potential customers across Texas can identify which goods the trademark promotes. In that case, it is possible that common law trademark rights would span beyond the region where business operations actually occur.
• Natural Zone of Expansion
  The natural zone of expansion considers the physical area into which a brand could reasonably extend its reach. (The expansion zone can also address what new goods/services a trademark could promote.) This zone is determined by looking at multiple factors, such as the trademark owner’s business activity, previous expansion, planned expansion, and market dominance. If a Dallas business has plans to open a new shop in Austin, it may be able to claim common law trademark rights in Austin prior to actually operating there.

How does the internet impact common law trademark rights?

Much about common law trademarks is based in geography, which the internet throws a wrench into. (To say the least.)

How can you tell what geographic area a common law trademark spans when the business is based entirely online? If similar marks promote businesses that have physical locations in different areas, can both marks have an online presence?

Unfortunately, there are no simple answers to these questions, which continue to be puzzled out in the courts. For most mark owners, the most reliable way to get strong trademark rights—on the internet and elsewhere—is to register the trademark federally.

How Do I Protect a Common Law Trademark?

The burden of protecting a common law trademark—as with all trademarks—lies with the mark owner. Here are a couple tips for protecting a common law mark:

• Use the ™ Symbol
  To bolster your rights and let others know you’ve claimed this trademark territory, place the ™ symbol next to your mark. Doing this can make it harder for others to assert they didn’t know the mark was yours in cases of infringement.
• Monitor for Infringement
  To protect your common law trademark rights, you must monitor for trademark infringement. Consider browsing domain registries, state business and trademark registries in the region(s) where you operate, and the United States Patent and Trademark Office’s Official Gazette to look for similar marks. While your narrower common law rights will make it difficult or impossible to prevent someone from using your mark entirely, you can likely prevent them from using the mark in your area. If trademark infringement occurs and you don’t take action, your rights can dilute over time.

Common Law Trademark vs. Federal Trademark Registration

Marks registered with the USPTO have significantly greater rights than their common law counterparts. If you want to ensure your mark has broad protection, federal trademark registration is likely the way to go.

Differences between federal and common law trademarks include:

• Geography
  One of the biggest contrasts between common law and federal trademarks has to do with geography. Where unregistered marks only have rights within a certain region, federal marks are protected nationally.
• Right to Sue
  With a federal mark you can sue for infringement in federal court. Common law marks encountering infringement can’t seek legal action beyond the state level.
• Trademark Symbol
  Federally registered trademarks can use the ® symbol to alert others of its status. Only federal marks are allowed to identify themselves this way.

Does a federal trademark supersede a common law trademark?

Not necessarily. Rights gained from federal trademark registration are more far-reaching than rights gained under common law, but they do not wipe unregistered marks off the map.

One of the most important factors in trademark infringement cases is determining which mark was in use first. These first-use dates are crucial regardless of the marks’ registration statuses.

If the common law mark has an earlier use date, its rights will likely be superior to the federally registered mark’s in the area where the common law mark is used. In turn, the federal mark may be prohibited from expanding into the common law mark’s geographic scope. The common law mark, conversely, would likely be prohibited from expanding beyond its current network.

Is Trademark Monitoring necessary for federal trademarks?

If you have a federally registered trademark, you are required to monitor your trademark. This can look the same as the DIY monitoring many people do for their common law trademarks, but there is a lot more ground to cover. Instead of searching every single state database, plus USPTO resources and social media, you may want to look into monitoring software. For example, here at Northwest, we offer all our trademark clients 90 days free of our Monitoring Service. After that, it’s only $14/month.

Get Trademark Service

*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.