Common law trademark not always enough

Under United States common law, the first user of a trademark (which can be a company name, product name, tagline, or logo) in commerce has priority over all later users of identical or confusingly similar marks in the geographic area where such use takes place.

The geographic limitation is significant and extended nationwide if the mark is registered with the United States Patent and Trademark Office (“USPTO”). For example, if a business markets and sells its products under an unregistered trademark in New York, such business may only have rights in New York. However, if that same company registers with the USPTO then the mark will have protection across all 50 states.

To qualify for common law trademark rights, “use” typically requires:

  • the sale of goods bearing the mark; or
  • advertising and providing services in commerce in association with the mark.

Importantly, displaying a mark on a website is usually insufficient because it fails to prove that goods or services were provided in association with the mark. Some entrepreneurs opt to simply use their mark in commerce and never face an issue. However, failing to register the mark leaves the door open for someone to challenge the use of your trademark.

Register with the USPTO

This opposition can end up being quite costly so it’s smart to take the extra step to register with the USPTO. Federal registration, if available, is almost always recommended and gives a trademark owner substantial additional rights not available under common law. Registering a trademark provides advantages beyond exclusive and nationwide rights to your mark:

  • Inclusion in the USPTO database, which is searchable online (it’s very difficult to find common law “use” when another party performs a trademark search);
  • The ability to fully litigate in court regarding your mark (common law does not permit trademark holders the right to collect damages should a common law trademark infringement dispute arise);
  • It makes it easier and more likely to obtain trademark registrations in foreign countries; and
  • Protection from importing foreign goods that infringe on the trademark.

Unregistered marks are also protected under Section 43(a) of the Lanham Act, which is designed to prevent consumer confusion as to the source, sponsorship or affiliation of a product or service.

In sum, it makes sense to take the small amount of time and money to register your trademark because deciding not to may lead to losing the ability to use the mark and/or spending a considerable amount in court to enforce the mark.