Wednesday, 25 June 2008

What Are Common Law Trademark Rights? You Don't Need Have a Trademark Registered with the USPTO in Order to Protect Your Common Law Trademark Rights in Commerce

Many businesses and individuals do not know that trademark rights arise not only from registration with the United States Patent and Trademark Office, but from simply use of a trademark in connection with goods or services.  These rights, or common law trademark rights as they are known to lawyers, come from the continuous prior use of a mark in commerce.  But common law trademark rights are not preferred, as they extend only to the places where a trademark has been used in commerce.  Additionally, they do not offer the benefits of federal registration with the United States Patent and Trademark Office, such as the ability to recover profits, statutory damages, attorneys fees, treble (triple) damages for willful infringement, national priority, and the right to use the ® to give notice of rights in a mark.

Common law rights require prior actual and continuous use in commerce.  To prove common law rights in a mark, one must show that it was the first to use the mark within a geographical area.  Courts look at many factors in determining whether one has acquired common law rights in a mark: widespread distribution, public association with the mark, whether consumers associated the mark with the source of the goods, whether the mark has become distinctive, and whether the mark owner has exercised control over the quality of the goods and has used the mark in a trademark sense. 

Common law rights are severely limited because they are restricted to the geographical area where the mark was used.  Common law rights, when recognized, will protect a mark holder as against infringement only within that specific geographical market.  If another mark-user comes along and registers the same mark on the federal level, the subsequent registrant will have rights in that mark in all areas but the limited geographical area where the prior mark-holder had used the mark in commerce, or the area where the common law mark holder would reasonably be expected to expand.  Simply put, federal registration is preferred if one seeks nationwide protection for a trademark because it will put the entire nation on notice of your claim of trademark rights in the mark.

Do not be deceived by the term “rights” when in association with common law rights.  Common law rights are a right of last resort.  If you are seeking trademark protection on the internet and across the nation, it is best to contact an attorney and seek a federal registration with the United States Patent and Trademark Office.


Relying on common law to protect your trademarks is always a bad idea. Any good trademark attorney will tell you that you do have common law trademark rights. But if you really want to enforce those rights against a 3rd party who uses your trademark or a similar mark without your permission, you are swimming upstream if you don't have a trademark registration in place. To better understand how to trademark the name, addicted trademark registration attorney.

Common law trademarks are really worth very much. Typically, someone has a common-law trademark because all of a sudden they have a trademark problem and start asking a trademark attorney questions about what they can do. Because it takes a year on average to get through the trademark registration process with the USPTO, the trademark attorney will typically rely on the common law trademark rights in order to send the 1st trademark infringement threat letter. Under the UDRP, a complaint and can still file an arbitration proceeding alleging bad faith cyber squatting based on common law trademark rights. In that instance, the attorney has to show the length and extent of use of the name or brand as a trademark in order to establish rights. If the website doesn't have enough traffic associated with that, it is harder to prove that the owner of the subject domain name alleged to be cyber squatting knew or should have known of the common law trademark right prior to registration of the domain name.

Common law trademark rights are fine, but they won't help you much if someone fights back against your trademark infringement threat letter. Get your trade marks registered people!

A common law trademark is not worth much. Why wouldn't you register your name as a trademark with the USPTO or other foreign trademark office?

Great to know one can have common law trademark rights as a last resort to protect your company brand name but any brand worth protecting under the common law trademark should be registered with the USPTO for the benefits of statutory trademark rights and benefits of trademark registration.

Common law trademark rights are like light sabers from Walmart. They look good from a distance but if you don't have your trademark registered, you have a hard time inflicting damage. Trademark registration turns your common law territorial trademark rights into national trademark rights with statutory damages as your weapon of choice..

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Trademark Infringement: Cease & Desist Letter Help

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How to Trademark A Name?

  • How to Register a Trademark - USPTO
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
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    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.


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