Common Law Trademark Rights: What are They and Why Are They Significant?

Common Law Trademark Rights: What are They & Why Are They Significant?

In the intricate world of trademarks, understanding common law trademark rights and their relevance is pivotal for businesses aiming to protect their brands. Common law trademark rights emerge upon using a trademark within the United States for specific goods or services, albeit confined to the geographic area of usage.

But why do these rights matter? They hold significance not only for Federal trademark owners but also for those solely reliant on common law rights.

Dive deeper into this landscape as we dissect the nuances of common law trademark rights, the symbols signifying ownership, and the intricate differences between State trademarks and relying solely on common law rights.

Uncover the necessity of comprehensive common law research recommended by the USPTO and understand why a detailed account of this search is indispensable for safeguarding your brand identity. Explore the specifics of the databases involved in this search, ensuring a thorough examination of potential conflicts and an in-depth comprehension of the trademark terrain.

What are common law trademark rights?

Common law trademark rights emerge upon using a trademark for specific goods or services within the United States. They activate the moment a trademark is employed in commerce. However, these rights are limited to the geographic area where the trademark is utilized, restricting enforcement to that particular locale.

Why are common law trademark rights relevant to both Federal trademark owners and those relying solely on common law rights?

Common law trademark rights play a dual role. For Federal trademark owners, these rights can impact the scope of their federal registration, especially if earlier common-law usage precedes the registration’s use. For those relying solely on common law rights, although proving these rights is challenging, they hold a unique power. Demonstrating earlier usage might empower these individuals to contest registrations or applications, providing a chance to safeguard their marks despite the limitations of common law rights.

Why should business owners consider obtaining a Federal trademark over relying solely on common law rights?

Navigating common law trademark rights is intricate and situation-specific. Each case demands unique resolutions, emphasizing the absence of a universal solution. This complexity underscores the importance of contemplating a Federal trademark, particularly if the trademark aligns with the USPTO’s criteria for use in commerce. Federal registration offers clearer and more substantial protection, surpassing the safeguarding provided solely by common law rights.

What are the symbols used to signify ownership and protection of trademarks, and how do they alert the public?

The symbols “TM” and “SM” signify trademark and service mark ownership, respectively. These symbols serve as public notices that a business or service claims rights to a name or logo, even without official USPTO registration. They indicate ownership but don’t grant all the extensive rights of federal registration.

Once a mark is officially registered with the USPTO, the symbol “®” can be used, showcasing federal registration. However, it’s exclusive to the goods or services listed in the federal registration and must be used only while the registration is active and maintained.

What are the main differences between State trademarks and relying on common law trademark rights?

Choosing between State trademarks and common law rights significantly impacts a business’s legal safeguarding and market reach. State trademarks suit businesses operating within limited regions or specific local markets, offering localized protection. On the other hand, some businesses opt for relying solely on common law rights to avoid the complexities of Federal or State registrations. The decision between the two depends on factors like business size, scope, and expansion plans, with each strategy aiming to align with specific business goals.

The USPTO strongly advises trademark owners to conduct common law research because relying solely on the official federal trademark database may overlook trademarks without federal registration but with legal rights. A more extensive search encompassing the internet, state trademark databases, and business name records helps identify related trademarks not covered by federal databases. This approach aims to provide a more comprehensive understanding of existing trademarks, reducing the risk of potential conflicts or infringements.

In a comprehensive common law trademark search, various databases must be explored, including Business Name Databases, the Internet (including social media), Domain Names, and News Media. These databases offer insights into existing business names, online presence, domain registrations, and public mentions. It’s crucial for the trademark search company or attorney to provide a detailed account of the search to ensure a thorough examination of potential conflicts. This transparency guarantees that all relevant sources were scrutinized, safeguarding your brand identity from legal disputes and ensuring a comprehensive understanding of the trademark landscape.

Defining Common Law Trademark and Common Law Trademark Rights

Common law trademark rights hinge on using a trademark for certain goods or services within the United States. These rights kick in the moment you begin using a trademark in commerce.

However, these rights are confined to the specific area where you use your trademark. So, your ability to enforce these rights only extends to that particular geographic area.

common law trademark definition

The Relevance of Common Law Trademark Rights to Trademark Registration

Common law trademark rights hold significance both for Federal trademark owners and those relying solely on common law rights.

Relevance to Federal Trademark Owners

Federal registration isn’t mandatory to claim rights in a trademark. However, common law trademark rights might influence the rights granted by your federal registration, particularly if the common-law use predates the use that supports your registration. Essentially, earlier common-law usage could impact the scope of your federal rights.

Imagine two companies, GloTech in Rochester, NY and Glow Tec in San Francisco, CA, both in the business of innovative lighting solutions.

GloTech (NY) has been utilizing its brand name in various cities across the East Coast for the past seven years, building a loyal customer base and establishing a strong reputation through common law trademark rights.

Meanwhile, Glow Tec (CA) initiated its federal trademark registration process just three years ago and received federal trademark registration for its brand name in the lighting industry.

Now, suppose that GloTech’s (NY) common-law use of its trademark predates the federal trademark registration and/or the dates of first use obtained by Glow Tec (CA). In this scenario, GloTech’s (NY) prior common-law usage might influence the scope of Glow Tec’s (CA) federal trademark rights, namely, shutting the California-based company out of the East Coast.

Despite Glow Tec’s (CA) federal registration, the earlier common-law usage by GloTech (NY) could impact the extent of Glow Tec’s (CA) rights, especially in the areas where GloTech (NY) has established its presence through common law trademark rights. This exemplifies how earlier common-law usage could indeed influence and affect the scope of federal trademark rights in a trademark dispute.

DISCLAIMER: References to particular trademarks, service marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement.

federal trademarks vs common law trademark rights

Relevance for Common Law Trademark Owners

Common law trademark rights are rooted in actual usage of a mark. While they’re valuable, proving these rights can be challenging and navigating with only common law rights can be a challenge. These rights, stemming from actual use of a mark, are harder to prove and not as sturdy as those backed by Federal registration.

However, they do hold a unique power. Common law rights might empower you to contest a registration or application if you can demonstrate earlier usage, offering a chance to safeguard your mark.

Imagine EcoGrove as a small, eco-friendly clothing brand that began its journey in the small California town of Arcata. Operating for several years, EcoGrove built a local reputation for its sustainable branded fashion line, and sold branded goods via Etsy to numerous cities up and down the West Coast as well as Colorado. EcoGrove was relying solely on common law rights to protect its brand.

However, the thriving EcoGrove caught the attention of a larger retail chain, “NatureThreads,” intending to expand its eco-conscious line. NatureThreads applied for Federal trademark registration for a similar clothing brand line, Eco Growv.

Here’s where the power of common law rights comes into play. Despite EcoGrove’s lack of Federal registration, their years of local presence, their expanded usage, and the earlier usage of the brand name allowed them to contest Eco Growv’s registration. They could demonstrate through extensive records of sales, local marketing materials, and customer testimonials that they were the first to use the name “EcoGrove” for eco-friendly clothing.

This demonstration of earlier usage empowered EcoGrove to challenge Eco Growv’s trademark application. While common law rights aren’t as robust as Federal registration, in this scenario, it granted EcoGrove the leverage to protect their brand against the encroachment of a larger competitor, illustrating the unique power of common law rights in defending a mark.

Relying solely on common law trademark rights can seem like a beacon of hope in defending a brand.

However, the case of EcoGrove highlights the inherent risks. While they may have successfully contested Eco Growv’s registration due to their earlier usage, this scenario exposes the vulnerability of relying solely on common law rights. It underscores the risky nature of this approach as it demands extensive evidence and legal battles to safeguard a mark. The lack of federal registration made EcoGrove’s defense arduous, emphasizing the potential backfire of relying solely on common law rights.

DISCLAIMER: References to particular trademarks, service marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement.

Examples of Common Law Trademark Usage

Since every scenario differs, and the resolution of trademark matters relies on individual specifics; there’s no universal fix. Let’s explore five imaginary brands to understand the limitations posed by common law usage:

  1. “Café Breezy” (Local Coffee Shop – One City):

– Limited to the specific city where it operates.

Risky Aspect: Relying on these rights might backfire if a similar coffee shop in a neighboring city or a new competitor in the same location decides to register a federal trademark. This could potentially restrict Café Breezy’s expansion and marketing efforts beyond its current city.

  1. “ChicThreads” (Online Retail – 3 States):

– Confined to the three states where it has conducted business.

Risky Aspect: As ChicThreads plans to expand its reach, relying solely on common law rights could lead to conflict if a competitor with a similar name starts operations in other states and secures federal trademark protection. This might hinder ChicThreads’ nationwide expansion.

  1. “Mindful Therapies by Sarah” (Licensed Marriage and Family Therapist – Oregon & Planned Washington):

– Currently limited to in-person services in Oregon; future expansion planned for Washington.

Risky Aspect: Relying on common law rights for an upcoming expansion might pose challenges. If another therapist or a similar business starts using a similar name in the Washington area before Sarah secures federal trademark protection, it could lead to legal battles or rebranding efforts, disrupting the transition to online services in Washington.

  1. “Artisan Gems” (Jewelry Brand – Craft Fairs across Mid-Atlantic Coast):

– Rights established in the states where craft fairs were held.

Risky Aspect: Depending solely on common law rights might pose risks as competitors emerge or expand in these states. If a competitor in any of these states registers a federal trademark or a similar brand, Artisan Gems might face limitations in expanding its market reach beyond these specific states.

  1. “Taste Haven” (Restaurant – One Location in One State with Two Locations in Another):

– Rights divided between two states based on business locations.

Risky Aspect: The division of rights between states might become problematic if a similar restaurant in any of these locations or adjacent areas decides to secure federal trademark rights. Relying solely on common law rights could hinder Taste Haven’s potential expansion within or outside these regions.

DISCLAIMER: References to particular trademarks, service marks, products, services, companies, or organizations appearing on this page are for illustrative and educational purposes only and do not constitute or imply endorsement.

Navigating common law trademark rights can be quite challenging, as shown by these made-up examples. Each situation is unique, and resolving trademark issues depends on specific details – there’s no one-size-fits-all solution. This complexity highlights why business owners should give serious thought to obtaining a Federal trademark, especially if their trademark meets the criteria set by the US Patent and Trademark Office (USPTO) for use in commerce.

A Federal trademark provides clearer and more robust protection compared to relying solely on common law rights.

Providing Public Notice for Common Law Trademark Owners

Understanding the symbols used to signify ownership and protection can be pivotal for businesses. The use of symbols like “TM,” “SM,” and the revered “®” holds significance in asserting rights and communicating ownership over a brand or service. Let’s delve into the clear distinctions and implications of each symbol:

trademark symbols tm versus r

Alerting the Public with TM/SM Symbols:

If you believe you have rights to use a certain name or logo for your business or service, you can use the “TM” (for trademarks) or “SM” (for service marks) symbols. These symbols serve as a notice to the public that you claim rights in that name or logo. It’s like a flag saying, “Hey, this is mine!”

You can use these symbols without registering your mark with the USPTO (United States Patent and Trademark Office). Even if the USPTO doesn’t approve your mark for registration, you’re allowed to keep using these symbols. However, remember, these symbols don’t give you all the powerful rights and benefits that come with federal registration.

Using the Federal Registration Symbol ®:

Once the USPTO officially registers your mark, you can use the ® symbol, known as the federal registration symbol. But here’s the catch: you can’t use this symbol while your application for registration is still pending. This symbol is special and can only be used for the goods or services specifically listed in your federal trademark registration.

Also, it’s not a lifelong pass – you can only use it while your registration is active and maintained. Most businesses place this symbol in the upper right corner of their mark, but there aren’t strict rules about where it should go.

State Trademark vs. Common Law Trademark Rights

From State filings to Federal trademarks registrations and reliance on common law rights, the choice of trademark protection significantly impacts a company’s scope, reach, and legal safeguarding. Some businesses may opt for State trademarks, catering to localized operations, while others find strength in relying solely on common law rights, steering clear of the complexities of Federal or State registrations.

Filing for a State Trademark:

Certain businesses find State trademarks more advantageous, especially those operating within limited regions or catering to specific local markets. For instance:

  1. Local Services: A family-owned landscaping company serving a specific county might prefer a State trademark as it grants protection within their operational area without the broader scope of Federal registration.
  1. Small Retailers: A boutique offering unique handmade products within a single state could benefit from a State trademark, safeguarding their brand within their localized customer base.
  1. Service Providers: An independent therapist offering counseling services within a state might opt for a State trademark, securing their practice’s identity within their operating region.

Relying on Common Law Trademark Rights:

Conversely, some businesses, due to their scope or nature of operation, might thrive by relying solely on common law rights, avoiding the complexities and costs associated with Federal or State registration:

  1. Local Artisans: Small-scale artisans selling their creations in local markets or craft fairs might find common law rights sufficient, as they might not have plans to expand beyond their current scope.
  1. Neighborhood Cafés or Eateries: A cozy café known for its unique local ambiance and limited neighborhood presence might opt for common law rights rather than Federal or State registration, especially if their focus remains local.
  1. Home-based Businesses: Some home-based enterprises, like freelance writers or artists operating within a specific area, might find that common law rights suit their needs, as they operate within a confined geographic boundary.

Each business must weigh the pros and cons of State registration, Federal trademark protection, or relying solely on common law rights based on their size, scope, and expansion plans. It’s about finding the trademark strategy that aligns best with their business goals and ambitions.

The Importance of Common Law Trademark Research

The USPTO strongly advises trademark owners to look beyond just the official federal trademark database.


Because that database only covers federal trademark applications and registrations. It misses out on trademarks held by others that might not have federal registration but still hold legal rights. So, the USPTO recommends a more comprehensive search.

common law trademark search

Conducting a Comprehensive Common Law Trademark Search

The USPTO suggests diving into the vast realm of the internet, state trademark databases, and business name records. This broader search scope helps identify trademarks related to your goods or services that might not pop up in the federal database. By exploring these different avenues, businesses can gather a more comprehensive picture of existing trademarks, reducing the risk of potential conflicts or infringements.

Let’s get into specifics for the types of databases that should be searched for common law usage.

Business Name Databases Search:

This part of the search dives into public records like corporation filings, LLC registrations, and fictitious business names. Company databases like Business Profile and Dun & Bradstreet are goldmines, offering insights into millions of businesses.

Why search here?

Because these databases hold a treasure trove of information about companies, revealing any existing business names that might conflict with your trademark. Ensuring that your brand name doesn’t clash with others in these records is crucial to avoid legal tussles and safeguard your brand identity.

Internet Search:

The vast expanse of the internet holds a wealth of information, including social media profiles.

Why is this search necessary?

Well, in today’s digital age, businesses thrive online, and social media platforms are bustling hubs for brand presence. Searching here helps unearth any businesses or individuals using similar names or logos, ensuring your trademark doesn’t inadvertently mirror or conflict with another brand’s digital footprint. It’s about safeguarding your online uniqueness and reputation.

Common Law Trademark Search Essentials

Domain Names Search:

In a world where websites are virtual storefronts, checking domain names becomes imperative.

Why bother?

Imagine your business sharing a name with a domain already claimed by another entity. It could lead to confusion among customers or limit your online presence. By searching domain names, you ensure your chosen trademark isn’t already claimed in the digital realm, safeguarding your brand’s online identity and accessibility.

News Media Search:

The landscape of news media—newspapers, journals, magazines, broadcast transcripts—is a reservoir of public information.

Why scan through these sources?

Because they might unveil any mentions or references to brands similar to yours. A thorough news media search is essential to comprehend the broader context of existing trademarks, especially if certain brands have garnered attention or recognition. This search aids in understanding the public perception of similar brands and their potential impact on your brand’s uniqueness and market standing.

To bring it all together…

Understanding the nuances of common law trademark rights is essential for businesses striving to protect their brand identity. Whether navigating the complexities of federal registration or relying on the unique power of common law rights, each strategy holds distinct advantages and considerations.

As emphasized by the USPTO, common law research is a recommended practice, urging businesses to delve beyond federal databases into the vast landscape of the internet and other relevant sources. A comprehensive common law trademark search, including thorough exploration of various databases, ensures a meticulous examination of potential conflicts, underscoring the importance of transparency from trademark search companies or attorneys.

In this intricate landscape, businesses must navigate with informed strategies, contemplating the path that aligns best with their unique goals and aspirations. TradeMark Express stands ready to guide you through this complex terrain.

Your brand’s future success begins with robust trademark protection.

The information provided on this site is for general informational purposes only. All information on the Site is provided in good faith; however, we make no representation or warranty of any kind, express or implied, regarding the accuracy, validity, or completeness of any information on the Site. The Site cannot and does not contain legal advice. The legal information is provided for general informational and educational purposes only, and is not a substitute for legal advice. Consult a licensed attorney for legal advice.

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