What is a common law trademark?
A common law trademark is a type of infringement protection for intellectual property in which property is used in commerce before the federal registration of the mark. The U.S. common law starts when you use the mark for the first time in your geographical area. It endures with continual, deliberate use and is shown by superscript TM. Business names, titles, taglines, product names, logos, design element, and sounds used to identify companies are all covered by common law trademark. U.S. law trademark differs form international trademark law because it is based on common law, rather than first to file.
Pros of Common law Trademark
Common law trademark stop competing business in your area from using identical or similar mark that could confuse customers. You can object or sue any local competitor for damages if they start using your mark. If your case is successful then other business will have to stop using your mark. Since now you are the only one using this mark, there would be no confusion.
Limitation of Common Law Trademark
Common law trademark are limited to geographical area the intellectual property is used in and any area where it could possible expand.
Protecting your Common Law Trademark
You can promote your common law trademark by using the symbol TM. You can place your trademark next to your trademarked material to let your competitors know about its trademarked status. Its your responsibility to enforce your common law trademark rights only if you want to keep your trademark protected. If a competitor business start to use your trademark you can send a cease and desist letter to them. If this fails you can contact a trademark lawyer about filing a infringement suit. You will need to prove you deserve exclusive use of the mark. You will do this in the same way someone with a registered mark proves use:
1. By showing a history of using the mark
2. By providing evidence that suggests consumers associate their mark with your business, rather than product.
How a common law trademark compares with a federally registered trademark
Common law trademark are not governed by statute as federally registered trademark are. Instead they were created under a system of rights governed by state law. You need federal registration to have common law trademark right or start using the trademark symbol. There is no compulsion that you have to register your mark with the USPTO, but if you do it, it becomes a stronger right concerning:
- Location: Registered mark protects the mark across the United States not just within the local area as common law trademark do.
- Listing: All registered trademark are listed in USPTO database. This makes it easier for competing business to know about your mark and avoid using it.
- Symbol: Businesses show they have registered trademark using R, rather than TM, used for common law trademark.
- Legal Action: Registered Trademark holders can file lawsuit in a federal court to apply their trademark rights. In these cases, registered trademark holders have the right to:
a. Recover profit.
b. Sue for statutory damages
c. Get the infringing business to pay their legal fees, which is much harder for common law trademark holder’s
d. Receive triple damages for willful infringement
In addition, businesses holding a registered trademark in the U.S. find it easier to get a foreign trademark and stop foreign businesses from selling their goods in the U.S. While registering a federal trademark has many advantages, it does not give holders priority over common law trademark holders. In a well-documented case, the national fast food chain Burger King could not open a Burger King outlet within 20 miles of Matoon, Illinois, because a small burger restaurant called Burger King already had a common law trademark there.
Searching for Trademarks
Before using a piece of Intellectual Property, U.S. Law states you must ensure that it does not already have a federal,state, or common law trademark.
- Search for Federal Trademark: Visit the USPTO website to find all the registered U.S Trademark.
- Search for State Trademark: Visit State Trademark website to find Trademarks registered within the state. Before using a common law trademark , you need to actually check the official trademark website on your state.
- Search for common law trademark: Since people do not register their common law marks, they wont appear in the trademark databases. Business directories, phone directories, online searching could help you learn whether your intended mark is already protected under common law trademark.While you can do your own search, a U.S. trademark lawyer is likely to do a more thorough job. Once you’re sure you can use a mark under a common law trademark or register the trademark, act quickly. Search results can quickly lose relevance. If you haven’t started using the trademark or filed for its registration after two to three months, you must repeat the searches. Finding domain names similar to your intended mark could signal that a website holder already has the common law trademark.