How to Establish a Common Law Trademark

How to Establish a Common Law Trademark

by Michelle Kaminsky, Esq., October 2018

A common law trademark provides protection for a symbol, logo, product name, or other words or marks that identify the source of goods or services before it is registered with the state or federal government. Trademarks help protect consumers from being confused as to the source of a product or service, and, of course, for business owners, a trademark can protect your brand as well.

Indeed, common law trademark protection can be invaluable for small businesses because it provides a way to stop local competitors from using your mark.

How to Establish a Common Law Trademark

Your common law trademark rights begin when you start using the mark in commerce in a particular geographical area. The first person to do this—as opposed to the first person to register with the United States Patent and Trademark Office (USPTO)—owns the common law rights to the mark in that area.

To declare your ownership of a common law trademark, you should add a superscript "TM" to it. Once you start looking for the TM, you will probably notice many common law trademark examples with this symbol.

You maintain common law infringement protection so long as you continue to use the mark, and this protection includes the right to stop someone else in your same geographic area from using the same mark if their use is likely to confuse consumers.

Common Law Trademark Search

Before you begin to attempt to establish your right to a common law trademark, you should make sure that no one else is already using the mark. Due diligence now could avoid the unfortunate situation of finding out you have infringed on someone else's common law trademark later.

Even if the common law trademark owner doesn't choose to sue you for infringement, you still could face incredible costs to rename and rebrand your business. Besides, you don't want to confuse potential consumers, either.

By its nature, a common law trademark search must be extensive, and likely time-consuming, because there is no central database of common law trademarks as there is for trademarks registered with the federal or state government. Accordingly, an effective common law trademark search must cover various sources, including the internet, public records, and newspapers, as well as searching for registered trademarks in the USPTO trademark database.

When searching, you should think beyond the exact word or mark you'd like to use to determine whether similar variations also could cause confusion. For example, search for similar-sounding words with different spellings, and in both plural and singular form.

Protect Your Common Law Trademark

Another important aspect of having a common law trademark is protecting it. You are responsible for "policing" the trademark, which means keeping track of whether anyone else is using it. Failing to police your common law trademark may lead to losing your rights to infringement protection.

Accordingly, you should keep an eye out for competitors in your area that use a confusingly similar mark and, if you come across a potential infringer, contact them to make them aware of your common law trademark. You may choose to do this through a cease-and-desist letter to ask them to stop using the mark.

The Difference Between Common Law Trademark and Trademark Registration

If you choose to register your trademark with the USPTO, you receive additional protections and rights, including the following:

  • Protection throughout the country, not limited to your geographical area
  • Right to use the symbol of an R in a circle (®) to denote a registered trademark
  • Listing in the USPTO database to inform others of your use of the trademark

The most important difference, though, is that, with registration, you also gain the right to sue for damages if someone infringes on your trademark. In contrast, there is no right to common law trademark infringement damages.

Dealing with trademarks can be complicated and overwhelming, but you don't have to manage it alone. You may find that working with an experienced online service provider can ease your mind that you're handling your trademarks the right way for your business.