What is a Common Law Trademark?

A common law trademark is a type of legal protection you gain by using your name or logo in commerce in order to market your brand.

In order to protect their intellectual property, many companies register their trademarks with the U.S. Patent and Trademark Office. However, you don’t have to formally register a mark to gain protections under U.S. law.

Once you make your first business transaction using a particular mark, that mark becomes protected under common law.

In this article, we’ll talk about what a common law trademark is and what rights simply using a mark will grant you.

Common Law Trademarks: The Basics

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Essentially, all a trademark does is claim a particular form of branding for your business. In this way, no other similar business may use that mark to sell their goods.

Unlike some other countries, trademark ownership in the United States is based on common law. This means that by using your mark in commerce, you gain a form of legal ownership over that mark.

For this reason, if you’re already doing commerce with your product or service using a name, slogan, or image, you already have a common law trademark. You can indicate this by using the superscript ™ (trademark) or ℠ (service mark).

Note that, just as with a federally registered trademark, a common law trademark can’t be too generic. Courts generally consider highly specific trademarks that have been around for a long time to have more legitimacy than vague, generic, or new trademarks.

For example, the computer brand “Apple” is an excellent trademark. This is because the name is arbitrary and has nothing to do with computers. However, a seafood restaurant named “Seafood Restaurant” would find it incredibly hard, if not impossible, to trademark their name because of how generic it is.

What Rights Do I Gain From a Common Law Trademark?

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Just as with a registered trademark, a common law trademark protects your business from unfair competition. Unfair competition is a broad term, but in this case, it refers to practices which intentionally create confusion between one brand and another for profit.

Clear-cut examples of unfair competition include counterfeit merchandise and unauthorized reselling.

The most common type of unfair business practice, however, is trademark infringement. This occurs when another enterprise in the same geographic or economic area attempts to draw customers from your business by using a trademark similar to your own.

Even with just a common law trademark you can take another business to court for trademark infringement. By doing so, you can force that business to stop using your trademark without authorization.

As you can imagine, having the older trademark makes for a much stronger claim in such circumstances. In fact, this age discrepancy is one of the most basic pieces of evidence for a common law trademark infringement case.

Keep in mind, however, that these rights pale in comparison to those gained by registering your trademark. While common law trademarks are useful for smaller disputes, registering your mark is the only way to gain full protection for your mark.

What Are the Limits of a Common Law Trademark?

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The main limits on a common law trademark are based on geography.

While a federally registered trademark protects you from infringement from anywhere in the U.S., a common law trademark only applies to your specific geographic area. In most cases, this means the community or city where your business is located.

For example, this is why the fast food restaurant Burger King can’t expand into a small city in Illinois, since an older “Burger King” restaurant already exists there.

In this way, while a common law trademark can protect you from unfair competition across the street, it can’t stop businesses with the same name from opening in another state.

Finally, as with all other trademarks, common law trademarks only protect against infringement by similar businesses.

In other words, a laundromat and a restaurant can have similar names and be in the same geographic area without one infringing on the other’s trademark. This is because there’s little to no chance that a customer could confuse the two business.

Do Common Law Trademarks Work for Online Commerce?

Generally speaking, no.

While you might be able to gain common law protections if a business in the same town or county copies your online branding, you generally won’t be able to claim infringement on any business outside that scope, even if you’re both doing business online.

In order to protect your brand online, you’ll need a federally registered or international trademark.

Can I Lose a Common Law Trademark?

Just as with a federally registered trademark, it’s possible to lose your right to a common law trademark. This can happen because you aren’t using your trademark, or because you have failed to contest unauthorized uses of it.

The first scenario is the most straightforward. Simply put: if you stop using a trademark, you lose your legal right to it.

Normally, three years of non-use is the cutoff before you entirely lose your right to the trademark. However, any significant period of non-use can weaken your case if you end up in court.

Additionally, you must contest perceived infringement of your trademark. In most cases, this means sending cease and desist letters to other businesses which appear to be infringing upon your trademark.

Of course, this requires having a trained eye for what constitutes trademark infringement and what doesn’t. For that reason, you should strongly consider consulting an intellectual property lawyer if you are worried about losing your trademark.

How Do I Find Out if a Trademark is Already in Use?

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Before using a new trademark in commerce, always search for similar trademarks online.

For example, you should always check the USPTO trademark database for similar trademarks. Additionally, make sure you search for trademarks registered with your state government. Fortunately, most states (including Virginia) have websites that will allow you to do just that.

Common law trademarks can prove somewhat more difficult. Because there is no central database for common law trademarks, your best bet will usually be searching phone books and city business directories.

Alternatively, you could hire a law office to create a Trademark Search Report for your brand.

If you find that the trademark you’re using is already in use by another company, don’t panic. Instead, talk to your lawyer about your next steps.

While you might need to change your trademark, you may also be able to prove that you were unaware of the other trademark when you started using your own.

If the two trademarks or businesses are different enough, you may be able to continue using the mark.

Conclusion

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U.S. trademark law can get incredibly complicated, especially when common law trademarks are involved.

Common law marks offer limited protections without formal registration, especially in cases of local infringement. If you perform interstate or online commerce, however, you should consider formally registering your mark with the USPTO instead.

If you’re unsure about your next steps, contact an experienced trademark attorney who can walk you through the steps. By getting in touch with a lawyer early, you can iron out your situation before issues arise with your trademarks.

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