What Are Common Law Trademark Rights?

Common law trademark rights vs. federal trademark registration

The difference between a common law, or unregistered trademark and a federally registered trademark lies in the amount and geographic reach of your protection.

Common law trademark rights

Common law trademark rights go to the business that uses the trademark first. And you can only enforce a common law trademark in the geographic area where the trademark is used.

For example, if you sell a product only in southern California, your common law trademark may prevent another business from selling the same type of product under a similar name in Los Angeles. But you will not be able to prevent a competitor from setting up shop with your name in San Francisco or elsewhere in northern California. And if your competitor is the first to use the trademark in San Francisco, its common law trademark rights may prevent you from expanding into that market.

If you were the first user, common law rights may preserve your right to use your trademark in your geographic area, even if another business gets a nationwide federal registration for the same mark. However, common law trademark rights can be hard to enforce because there is no public record of your trademark or when your trademark use began.

Federal trademark registration

To obtain federal trademark registration, you must file an application with the USPTO and have it approved. Registering a trademark with the USPTO gives you a legal presumption that you have the right to use the trademark nationwide and prevent others from using a similar mark for the same types of goods or services.

A business in southern California with a federal trademark registration can use its federal trademark rights to prevent a new business from using the trademark on similar goods or services in San Francisco, New York, or anywhere else in the country.

Federally registered trademarks are listed in the USPTO database, potentially deterring others from adopting a similar mark. Federal registration also gives trademark holders the right to file a lawsuit in federal court to enforce their rights. Federal registration also makes it easier to apply for foreign trademark registrations or to stop the importation of infringing goods.

Common law trademarks and trademark searches

Before using a trademark or applying for federal trademark registration, it's important to conduct a thorough trademark search. A trademark search will show whether your mark infringes on someone else's federal, state, or common law trademarks. A comprehensive trademark search has at least three components:

• A search of the USPTO database. Federal registration will be denied if your mark is confusingly similar to another registered trademark. “Confusingly similar" means that your mark is similar to a registered trademark and is used on the same type of goods or services, so that the public might be confused about their source.
• A common law trademark search. A common law trademark search can identify a business in your locality that already has common law rights that are superior to yours. It also can find out-of-town businesses whose common law trademarks may hinder you from expanding or limit your rights if you decide to register your mark with the USPTO. A common law trademark search might involve searching business directories, phone directories, and the internet generally.
• A state trademark search. This involves searching databases for one or more states to find marks that have been registered with states as business names, trademarks, or trade names. A preexisting state trademark registration may prevent you from using your trademark in that state.

The trademark search is an important tool for identifying barriers to using your name, logo, or other trademark, and it increases the likelihood of a successful registration with the USPTO.