Common Law Trademark Rights
A common law trademark is an unregistered word, phrase, design, sound, or combination of these elements that is used in commerce to differentiate one brand from another. Though unregistered, common law trademarks have inherent rights, including the right to protect the mark’s exclusivity against local competitors’ infringement.
In this article, we'll cover:
Inherent Common Law Trademark Rights
The inherent rights of a common law trademark activate as soon as the mark is used in connection to goods or services for sale – no extra steps needed. Once you make sure that no other mark has likelihood of confusion with yours, the mark can be used in commerce and earn rights.
But what exactly are these rights? Common law trademarks’ inherent rights include:
- Exclusive use of your trademark in your region.
Once you’ve established common law trademark rights, no one else within your business’s reach can market with a trademark that has likelihood of confusion with your mark. This means that if you have a sweets shop in Albuquerque, New Mexico, and you use the trademark Southwest Sweeties, no one else in Albuquerque can use that phrase when marketing or selling products related to yours. And if you later expand into other regions, your trademark would have exclusive rights there too (as long as it’s the first of its kind in those locations).
- Enforcement of your trademark’s exclusivity.
Although only a registered mark can sue for infringement damages, you do have the right to enforce your common law trademark’s exclusivity against competitors that enter your market. This can include sending cease and desist letters to inform competitors of trademark infringement and even suing to prevent further common law infringement (just not for damages.)
- Use of the unregistered trademark symbol, ™.
Only federally registered trademarks can use the ® symbol, but the ™ symbol is available for common law trademarks. Using the unregistered trademark symbol is a great way to protect your mark by making it clear to competitors that it is a trademark, and as a way to boost your business’ credibility and image.
Still not sure if a common law trademark is right for you? We’ll walk you through what you need to know to understand your common law trademark rights.
What is my common law trademark’s geographical region?
The geographical territory of a common law trademark includes the town or city that your business has a foothold or reputation in. This means that if you have a business in Spokane, Washington, your trademark’s geographical region is Spokane, not necessarily the whole state of Washington.
Anything outside of your exact location is typically not included in your trademark’s region, unless you have presence and reach in another area, which can be hard to prove. Your geographical rights may also extend to areas where you could feasibly expand, but again, proving expansion plans can be tough.
Especially with social media and internet sales, it can be a bit tricky to know exactly where your business’ region starts and ends. This is one reason why state and federal trademark registration can be a huge asset.
How can I prove my common law trademark has rights?
Proving your common law trademark has rights is really about proving the mark’s first use in commerce. A huge part of settling infringement disputes is figuring out which mark existed first. To help prove first use, keep detailed records that clearly show when you began using the mark.
If you try to prove infringement against a federal trademark, for example, their first use date and examples of the mark in use will be recorded in their application. You’ll want to have sound evidence, too.
Keep in mind that your trademark must be used consistently in commerce in order to maintain its rights. If you stop using your trademark, it will lose its rights over time.
Want a registered trademark instead? Our Trademark Service has experts who are available to answer your questions and work to ensure your application is submitted as error-free as possible.
Boosting Common Law Trademark Protections
Common law trademark rights protect your business by giving you the exclusive local right to use your mark in commerce. The law lets you enforce your mark’s rights even without registration, but you’ll have limited protections compared to state or federal trademarks.
You might be wondering: is there any way to boost your protections without registering?
Sort of. You can do a few things to boost your common law protections, including expanding your business’ reach and choosing a strong mark.
How does expansion impact my common law trademark’s rights?
Since your common law trademark rights and protections are tied to your business presence, one way to boost your protections is to expand your geographical area. For example, let’s say you’re the owner of Southwest Sweeties in Albuquerque, New Mexico. In order to have common law trademark rights up in Santa Fe, you could open a new shop in that city.
How do I earn the strongest common law trademark rights?
In a dispute, the strongest trademark is often the one that was used in commerce first. Prior to selling product(s) with your trademark attached, you can conduct a thorough trademark clearance search to ensure your mark is not infringing on an existing mark. This means going through trademark databases from the United States Patent and Trademark Office (USPTO), state trademark and business registries, and even using Google® searches.
But trademark strength is determined by several things, including how unique your word, phrase, sound, or design is. To determine if your mark is unique enough to be considered strong, first look at how distinctive the mark’s parts are—the more creative the mark, the stronger it is. (For example, Wendy’s Weddings is weaker than Wendigo Woven Weddings because of its descriptiveness.)
What if I haven’t used my trademark yet?
If you haven’t used your trademark in commerce yet, it has no common law rights. Although all trademarks require you to use the mark in commerce to enact their inherent rights, this is especially important with common law trademarks. Because there is no application to document the mark’s origins, having proof of first use in commerce is a primary way to fight infringement.
What else does a common law trademark do?
Though the main purpose of a common law trademark is to differentiate your product/business from other products/businesses, in practice, a trademark can do a lot more. Common law trademarks give you the right to protect your branding, as well as to make your branding seem more legitimate and professional to consumers.
Not sure about the difference between a brand and a trademark? We’ve got you covered.
Common Law Trademark Rights vs. Registered Trademark Rights
Now, you have a good idea about the rights that a common law trademark has. But how do those rights compare to the rights of state and federally registered trademarks? Let’s go over the main differences.
|Type of Trademark:||Common Law Trademark||State Registered Trademark||USPTO Registered Trademark|
|Cost||$0||$10-$125 depending on the state||$250 or $350 per class depending on application type|
|Duration||In perpetuity||In perpetuity with renewals every 5-10 years||In perpetuity with renewals every 10 years*|
|Scope||Where your business operates or has an active presence||Just to your state borders||Throughout the U.S., including U.S. occupied territories like Puerto Rico|
|Enforcability||Local and State Courts||State Courts||Federal Courts|
*Federal trademark renewals are due every 10 years following registration, plus by the 6th year after registration.
*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.