A common law trademark is a trademark established solely through use in commerce in a specific geographical area. Business names, logos, and phrases that are regularly used–even though they have never been federally registered–can all be considered common law trademarks. The rights associated with common law trademarks are regionally limited and not as easily enforced as a federal trademark, but common law marks are permitted to use the ™ symbol (learn more about trademark symbols here).
Common law versus federal registration
A common law mark is obtained simply by using the trademark in association with your business or product. Unlike a federal registration, there is no application process for common law trademarks; additionally, there are no fees associated with attaining a common law mark. While common law marks are effortless to obtain, enforcing them is much trickier–and while the trademark owner can prevent those in their locale from using marks similar to theirs, that authority does not have the same nationwide range as a federal registration.
While federal trademarks have some obvious advantages over a common law trademark, there are some cases in which a common law mark may prevail over a federal registration. Typically this occurs because the common law trademark has an earlier, proven first-use date that can combat the federal trademark’s rights in a certain region. Common law trademarks can also hinder a federal application if a proper clearance search was not performed prior to the application’s submission to the USPTO. In order to ensure a new trademark may not run into issues with an existing common law mark, the clearance process for new trademarks should include deep interest searches, industry-specific directory searches, business filing searches, social media searches, and even a domain search. To ensure that each search is thorough and accurate, many applicants opt to hire an experienced trademark attorney to conduct the clearance search.
The key to understanding common law trademark rights is the geographic restrictions that they possess. If you open a candy shop in California and operate under the same name for many years, common law rights will prevent any other candy stores from opening around you under the same name due to unfair competition statutes. However, your common law trademark will not prevent a candy shop of the same name from opening in Wisconsin or New York, and while that may not affect your local business, that could have detrimental effects to your social media presence or online retail services if consumers are confused as to which store is the original.
A common law trademark would also not give you the right to prevent any of those new businesses in other states from operating under the same name as yours. In a growing online marketplace, a federal registration possesses the added allure of national protection and extra security for your company.
We’ve written a full article detailing the benefits of a federal trademark registration, you can read here.
Protecting a common law trademark
While a common law trademark does provide some basic local protection for your business, its regional restrictions and lack of enforceability make it ill-suited as a long-term defensive solution. The only way to truly protect your common law trademark is by making it a federal registration. As your business grows, national protection of the goodwill behind your brand and product becomes a top priority, and investing in a federal trademark registration is a wise business decision. Federal trademarks are able to use the Ⓡ symbol for deterrence, provide the right to sue infringers, and can help you recover fees if infringement litigation does occur. Obtaining a registration also puts others on notice, discouraging other parties from using the same or similar marks in your sphere of commerce and potentially preventing conflict before it even happens. Furthermore, many investors hold intellectual property portfolios in high regard, adding even more value to your business’s net worth.
In the end, the only way you can truly strengthen your common law rights is by attaining a federal registration. Not only does this evolve your trademark into something much stronger and more tangible, but it allows your business to do the same.
If you are interested in taking your common law trademark to the next level, please contact an attorney at Gerben Law Firm today for a free consultation.