When prospective clients contact me about registering their trademarks, they often ask me whether they have any protection for their trademarks if they don’t get a federal trademark registration. Oftentimes, these are new start-up businesses that want to protect their trademarks but are on the fence as to whether they should spend the money on filing a trademark application if their trademarks already have a minimal amount of protection.
Well, you acquire what are called “common law” trademark rights by properly using your trademark in connection with the advertising and sale of products or services. If you are selling products, this means using your trademark on product packaging, point-of-purchase displays, tags affixed to the products, or on the products themselves. If you are offering services, proper trademark use includes using your trademark on printed marketing materials, in radio and television commercials, and on websites and other internet-based advertising. Your common law trademark rights will last for as long as you continue to offer your products or services under your trademark. Although the use of your trademark does not have to be particularly substantial to acquire common law trademark rights, it does have to be a bona fide use and not just a token or one-time use.
Your common law trademark rights extend only to the geographic areas in which you’re actively marketing and selling your products or services. So, for instance, if you only serve customers located in the Los Angeles metropolitan area, then you will only own trademark rights in the Los Angeles metropolitan area. This generally means that a competing business that only serves residents of New York would be permitted to use an identical trademark for the same products or services and not be considered an infringer.
The biggest drawback to only having common law trademark rights is that other individuals and businesses can adopt identical or confusingly similar trademarks in other areas of the United States and acquire their own common law rights. This can be especially problematic if you ever want to expand or franchise your business because you may be prohibited from selling your products or services in those parts of the country where others have obtained common law trademark rights. Applying to federally register your trademark with the United States Patent and Trademark Office can help prevent this unfortunate situation from happening to you because it reserves the entire U.S. for your exclusive use (subject to anyone who might have acquired common law rights before you filed your trademark application).
One very important thing to remember is that you can only legally acquire common law trademark rights if another person or business doesn’t already own a federal trademark registration for an identical or confusingly similar trademark. If such a trademark registration exists, the use of your trademark would be in violation of the trademark owner’s federal rights and you risk being sued for trademark infringement. This is true regardless of whether the owner of the trademark registration is actually doing business in the same part of the U.S. as you are. This illustrates why it is absolutely essential that you conduct a federal trademark search prior to adopting and using your trademark.
Questions About Common Law Trademarks vs. Federal Trademarks?
If you still have questions about the differences between common law trademark rights and federal trademark rights, please do not hesitate to contact me at (314) 749-4059 for your free consultation. I may also be reached at firstname.lastname@example.org or through the contact form located on this page. I look forward to hearing from you soon.