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b. What is a Common Law Trademark?


Tuesday, 30 July 2013

Beware of Common Law Trademarks

Individuals and businesses are constantly considering brand protection. In particular, they usually contact a trademark attorney and say they want to register their trademark. In the United States, that registration would be withg the United States Patent and Trademark Office, or USPTO. Often times, they have already made use of their trademark and do not understand that they already possess common law trademark rights. In the United States, the first person to use a distinctive mark in commerce possesses  Common Law Trademark rights. While Common Law trademark rights are limited to the geographical locations in which the mark was used, they are indeed a valuable piece of intellectual property. However, registering for a trademark with the USPTO provides additional benefits, such as nationwide priority and other rights to use the trademark in other geographic locations. Given the other benefits of a trademark registration, entities shouold always consider protecting their brand beyond Common Law trademark rights.

It is also important for trademark owners who wish to register their trademark to beware of Common Law trademark rights. For example, just because a trademark is not pending or registered with the United States Patent and Trademark office does not mean that you may have ytrademark rights to it. A Common Law trademark used prior to your filing for or actual use of your trademark may have senior rights. Therefore, your use may subject you to claims of trademark infringment. Performing a trademark availability assessment, or trademark clearance search, goes a long way towards identifying these other Common Law trademarks that may exist. However, you can never be 100% certain that there aren't any preexisting uses. Nevertheless, performing a prior search and getting an opinion from a trademark attorney may give you better insight into the likelihood of a trademark infringement issue and also provide defense to a claim of willful infringement, such as innocent infringement, in the event that another Common Law trademark use is found. Given the importance of brands in today's day and age, you should not rely solely upon Common Law trademark rights as a brand owner. Instead, you should pursue a trademark registration with the USPTO. Moreover, in selecting a brand, you should be aware that a search of the USPTO is insufficient to determine whether or not you may have copyright infringement liability. Common Law trademark rights may trump your rights, and as such, you should have a trademark clearance search performed in order to avoid infringment issues in the future. A trademark attorney can advise regarding both Common Law trademark rights and registered rights for you and your company.



Friday, 27 July 2012

Can I Use a Trademark that is Not Registered?

Common law trademark rights go to the first entity to use a distinctive mark in interstate commerce. The reality is, common law rights are only applicable to those areas in which you've used the trademark. So for example, if I sell a product and the name of the product is Brand X, if I use Brand X in Michigan and Texas and California, I may have common law trademark rights in Michigan, Texas and California. But I will not necessarily have trademark rights in other parts of the United States unless I actively marketed the good there under that brand and actually made sales there.

Continue reading Can I Use a Trademark that is Not Registered? >>
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.

Continue reading 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 >>
Monday, 14 May 2007

Utilizing Your Trademark: Your Trademark Rights Exist Once You Start Using The Mark In Commerce

Common Law Trademarks: You not need to register your trademark in order to have trademark rights.  You have common law rights once you start using your mark to identify goods and services in commerce. 

It is important that you utilize your trademark correctly in order to ensure that your customers perceive a distinct and uniform mark. This is important in all internal and external communications, and should be ensured throughout your company.

It is usually very helpful to prepare a style guide to distribute among your company in order to brief everyone about the use of your newly minted mark.

Key principles of the use of your trademark:
1) Follow the mark with a term that describes the product or service
2) Distinguish the mark from other text
3) Use the mark uniformly

By following those three simple rules you can ensure that your trademark is best prepared to become a household name.

Official Trademark Clearinghouse Agent

Trademark Blog Homepage: Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Trademark Infringement: Cease & Desist Letter Help

  • Trademark Threats: 6 Reasons To Take Them Seriously
    Trademark attorney Enrico Schaefer explains what you should do when you receive a trademark cease and desist letter. Listen as he reviews 6 reasons why you should take any trademark threat letter seriously, and what you should do when you receive a cease and desist.
  • How to handle a trademark cease and desist letter?
    Trademark Attorney Brian Hall discusses what you should do when you receive a trademark cease and desist letter. What a trademark threat letter? Why trademark owners send trademark threat letters? What you should do when you receive a trademark infringement threat letter.

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.
  • How To Copyright and Trademark a Catchphrase!
    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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