Common Law Trademark Rights

Common law trademark rights are trademark rights acquired through common use rather than without federal registration. Common law trademark rights are not overseen by the federal statute but by state law.

Is There a Way to Obtain Trademark Rights without Registration?

If you use your trademark in association with goods you sell, you can acquire legal protection of your trademark through the common law instead of registration. These rights are only supported in the geographic location where you sell the goods. Federal registration of the trademark rights is always advised since it will result in additional rights not shielded by common law.

Can the Same Trademark Be Used in a Different Area?

Your trademark rights only cover the geographic region you are selling your goods by common law. Someone else in another area can generally use the same trademark if they do not market in your region. Suppose you decide to expand into another area where someone else is using your trademark. In that circumstance, that individual might be able to stop you from using the trademark in that area (even if you came up with the trademark first).

Common law trademark rights are also restricted to geographical locations where the trademark is used. For instance, suppose the particular brand of soap sold under the name “Bubbles” is sold only in California. At that point, the trademark right to the name “Bubbles” exists only in California and no other geographical location. So, if another individual sold soap under the name “Bubbles” in the state of Nevada without the understanding that there is an existing trademark name in California, there would be no trademark infringement.

Nevertheless, if the individual in Nevada wanted to sell the Bubbles brand nationwide through all the states, including California, it would be uncovered that California already has an existing brand name under the Bubbles trademark. That individual would be unable to sell their product in the California market.

What Happens if Someone Else is Using the Same Trademark but Not in My Area?

At common law, owner A’s use might come before owner B’s use in time. Still, B might have superior rights if B used the mark first within the geographic area or connected with a particular product line over which the debate centered.

If I’m the Latecomer, How Would I Defend My Right to Use My Chosen Mark?

A good-faith user can beat a claim of unfair competition by claiming a lack of knowledge, but this is seldom straightforward to establish. Usually, a user can keep credibility and a good faith defense only if they use the trademark at some length from the first user or in a line of products so different from those of the first user that the latecomer would not be expected to be cognizant of the first use.

There are two factors to consider in determining common law rights:

• Priority: The first user usually has priority, but priority is gauged and awarded only concerning the market where the first user conducts business.
• Market: If the first user limits their business area, a second user can market under the same or similar mark in a totally different area. There the second user becomes the first user in that area.

How Can I Lose My Trademark Rights?

There are a few ways in which a person or a company can lose ownership rights of a trademark:

• The trademark owner may abandon the trademark.
• Use by others may dilute the trademark.
• Another person or company may severely infringe upon the trademark rights.

When Is Nonuse Excusable?

Nonuse of a trademark is justifiable when it comprises what a reasonable business person having the intent to use the trademark would do. If you can demonstrate intent to resume use, you can beat an abandonment claim.

Must Abandonment be Nationwide?

Since federal registration is nationwide, abandonment must be, as well. There is no abandonment claim if you stop using the trademark only in a particular area. Yet, since users must be interstate (in more than one state), the withdrawal would be considered nonuse if a user withdraws to primarily intrastate use (within the same state).

What Might Cause the Trademark to Lose Its Significance?

A trademark can be deemed abandoned if it has lost its significance. Significance can be lost if the trademark’s owner:

• Fails to regulate its use;
• Excessively licenses it;
• Fails to exercise reasonable controls over those he allowed to use it; or
• Fails to stop unauthorized use by others of the trademark.

How Can I Oppose the Registration of a Trademark Similar to Mine?

If you feel another person’s trademark registration may damage you, you may oppose it. You must do so within 30 days after the other individual’s intent to use the application is posted in the Official Gazette of the Patent and Trademark Office. The opposition is heard in front of the Trademark Trial and Appeal Board (TTAB) rather than a court.

What Will Happen if I Lose?

The decision by the TTAB can be reviewed by a Court of Appeals for the Federal Circuit. The first time an action is filed, it is termed de novo. This term means that the party who initially filed suit has the chance to retry the entire case, and evidence not admitted the first time may be permitted the second time.

What If the Two Trademarks Are Not Exactly the Same But Only Similar?

Trademark infringement can also involve using a trademark that looks very similar to an officially registered one. This is particularly true where the “copycat” trademark is used to mislead consumers into thinking that it is authentic.

In such cases, the essential factor of proof is whether there is a high “likelihood of confusion” that the purchaser would think that the trademark owner made the products. In addition, several factors can be used to resolve whether trademark infringement exists:

• How close the goods or products are in nature
• The “strength of the mark” or how visible it is
• How alike the marks are in appearance
• The kinds of marketing and distribution channels used
• The degree of care that an average consumer would exercise in selecting the item
• The defendant’s intentions in choosing the trademark
• Evidence that the consumer was confused over the trademark

So, for instance, if a “copycat item” is disseminated using the same marketing tracks as the original brand, it is more likely that a court would conclude that trademark infringement happened.

What Is Dilution of a Trademark?

Dilution of a trademark happens when the trademark name becomes synonymous with a specific type of product. Examples of trademarks that have been lost through dilution include escalators, aspirin, zippers, and kerosene.

Should I Consult a Lawyer?

The regulations that govern common law trademarks are very complicated and often disjointed. An experienced trademark attorney can help you defend your trademark. A trademark attorney can also participate in ongoing research to ensure no one else is using or diluting your trademark without your permission. Although registration is recommended, it is not required because you may still gain common law rights to your mark. Use Legalmatch to find the right trademark attorney for your needs.