You must’ve come across the term “Common Law Trademark” while getting protection for your product or service. Also, it might be tricky to decide your financial limit while determining the boundaries of protection for your brand. However, if you’re not a big entity or franchise, then you might feel that you don’t need extensive protection. This is where a Common Law Trademark comes into play.
This article sheds light on everything you need to know about a Common Law Trademark.
A common law trademark (or “unregistered trademark”) is a type of protection against infringement for intellectual property. Also, the word “unregistered” implies that the property is in commercial use before its federal registration. The U.S. common law trademark initiates with the very first commercial use of the mark within a geographic area. Moreover, you need to use the symbol “TM” in the superscript along with the word/phrase/logo you seek protection for.
Advantages of Common Law Trademark
- Secure your rights: You can deploy this type of protection to stop the competition in your area from using identical or similar marks. If any local competitor uses your mark despite this, then you can file an infringement suit against them. Also, you’ll have to make your case and convince the court that the mark was your creation. If successful, the other business will also have to stop using your mark.
- Exclusivity: You will be the only entity in the area to use the trademark. Also, this will ensure that the target market doesn’t confuse your brand with any other. Moreover, customers won’t accidentally visit a competitor’s store believing it’s linked to yours.
Check out the trademark fundamentals if you are a start-up.
Common Law Trademark Protection
- Creation: As we spoke earlier, you can use this trademark by attaching the symbol ™. Place it next to the target material in superscript to inform your competitors of its trademark status. There is no need for a federal registration process for it. This symbol will discourage your competitors from copying your mark.
- Enforcement responsibility: You are responsible for enforcing your common law trademark rights. If you don’t, you could lose your right to protection. For example, another competitor may file an application to register a trademark that infringes the one you are using. Failure to oppose this application within five years will lead to revocation of your common law trademark.
- Enforcement Procedure: If another business starts using your mark, you need to send a cease-and-desist letter to that entity. If this doesn’t work, consult a trademark lawyer about filing an infringement lawsuit. Common law trademarks are a part of every state’s code and are enforceable by its courts. You will have to make your case for reserving exclusive use of the mark. The procedure is the same as that of a registered trademark:
- Produce your history of using the mark
- Provide reasonable evidence that consumers associate the mark with your business.
To know more about your trademark rights, visit the USPTO website.
Common Law Trademark Limitations
You can only exercise your trademark rights within the boundaries of a geographic area. This area limits to where the mark is in use and any areas where it could reasonably expand. Consider the following example:
You open a restaurant with the name “Alfredo’s Pizza” in New York and use a common law trademark. Your rights for this name are only valid in New York.
Now let’s consider another entity that is unaware of your restaurant. They open a restaurant with the name “Pizza by Alfredo” in Texas. They are free to trade under the name as long as they are doing business in Texas and their neighbor states. However, the common law trademark would only prevent them from opening a new branch close to the one in New York.
Comparison between a Common Law Trademark & Federal Trademark (Bonus Information)
|Factor||Common Law Trademark||Federal Trademark|
|Registration||No requirement of registration||Requirement of registration|
|Location||Protection within a local area||Protection across the United States|
|Listing||Not a part of any USPTO database||Exists on the USPTO database|
|Legal Action||File a lawsuit in a federal court to apply trademark rights||File a lawsuit in a federal court to apply trademark rights|
|Ease of securing trademark elsewhere||Very difficult to secure the same trademark in another location if another entity uses a similar mark||Easier to get a foreign trademark|
Registering a federal trademark has a lot of benefits. However, it does not give holders priority over common law trademark holders. There exists a very famous case to justify this. The national fast-food chain Burger King cannot open a Burger King outlet within 20 miles of Mattoon, Illinois. This is because a small burger restaurant called Burger King already has a common law trademark there.
Why Choose? – TMReady
Your brand name is an incredibly huge part of your business. People associate your brand’s reputation and success with its name. You would not want anyone to steal that and conveniently do business. To ensure that this doesn’t happen, it is highly advisable to hire a professional to search and monitor your trademark. Moreover, TMReady offers the widest and the most flexible search coverage. To ensure this, we carry out all our searches manually, and not via computers. Also, we want to ensure that our prices are affordable without compromise on quality. Your satisfaction is our guarantee.
To make an inquiry, contact us on TMReady.