When discussing trademarks in the U.S., two main sources of rights come into play: federally registered trademarks and common law trademarks. While many are familiar with the protections granted by a federal registration, the concept and protection of common law trademarks can be more elusive. Let’s delve into what common law trademark rights are and the implications they hold for registered and unregistered mark holders.

Key Considerations for Using, Registering, and Protecting a Trademark

Understanding the interplay between common law and federally registered trademarks is vital for navigating trademark law. Below, we examine practical considerations for businesses.

1. What are Common Law Trademark Rights?

At its core, a trademark represents a source identifier. It tells consumers who the provider of a product or service is. In the U.S., one doesn’t need to register a trademark to have rights to it. Simply using a mark in commerce can establish rights based on common law, and these rights exist even without a formal registration.

Additionally, common law rights carry inherent risks. Since protection is geographically limited, relying solely on these rights can lead to vulnerabilities. For instance, if another party registers a similar or identical mark federally, they might gain nationwide priority over your common law rights, potentially restricting your use of the mark.

2. The Scope of Protection

The scope of protection for a common law trademark is geographically limited to the area where the mark is used. This contrasts with a federally registered trademark, which provides protection across the entire U.S. This distinction can have significant implications in disputes between mark holders.

Practically, this means that businesses relying on common law rights should carefully consider federal registration to safeguard against the potential for competing claims and to secure broader protections.

3. Canceling Registered Trademarks Based on Earlier Common Law Use

A fascinating aspect of trademark law is that a party with earlier, established common law rights can potentially challenge and cancel a federal registration. The process is as follows:

Proving Priority: The common law trademark user needs to show that their use in commerce predates the registered mark's first use or registration date.
Showing Likelihood of Confusion: Merely having an earlier use isn't enough. The common law user must also demonstrate that there's a likelihood of confusion between the two marks in the minds of the consumers.
Cancellation Proceedings: Armed with the evidence of earlier use and potential confusion, the common law user can initiate cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). If successful, the federal registration can be canceled.

4. Enforcement Limitations of Registered Marks Against Earlier Common Law Users

One might think that once they have a federally registered trademark, they can enforce it against everyone. However, the law provides a shield for those who had established common law rights before the registration.

If a party has been using a trademark in a certain geographic area before another party’s federal registration, the registered trademark cannot be enforced in that specific area against the earlier user. This principle recognizes and respects the earlier rights established by the common law user. Still, outside that specific area, the federal registration holder will generally have superior rights.

Furthermore, businesses should be mindful of the risk that a federally registered trademark could override earlier common law rights outside the geographically limited area of use. This underscores the importance of being proactive in federal registration to solidify trademark protection.

Conclusion

Common law trademark rights play an essential role in the U.S. trademark landscape. They provide protection for businesses that may not have the means or foresight to register federally but have built up goodwill and recognition in a particular area. As such, businesses, both big and small, should be aware of their rights and the rights of others. Before adopting and using a new trademark, it's wise to conduct thorough research to avoid potential legal battles down the road. Additionally, it is crucial for businesses to align their trademarks as presented in commerce with their registrations to avoid inconsistencies. Ensuring proper usage of trademark symbols is another critical step—'™' denotes claimed rights during the application process, while '®' signifies formal registration. Considering these practical measures can further solidify a brand's legal standing and recognition.

What are common law trademark rights?