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Common Law Trademarks

Posted by Michael Rada | Aug 06, 2021 | 0 Comments

What is a Common Law Trademark and What Protections Do They Have?

A trademark is a sign, symbol, logo, or phrase that serves as a source identifier. It's job is to identify a source of goods or services in the marketplace.  Under federal law, you are not required to register your trademark with the Federal USPTO to obtain formal legal protection—meaning you can still have some trademark protections and even sue for infringement even without registration. Trademarks that are present in the marketplace, but not registered in the USPTO database are known as "common law trademarks." That being said, your rights and potential financial recovery are more limited in the case of common law trademarks and are limited to the geographic area in which the common law trademark is used. In addition, time matters. The first one to use a trademark in commerce, whether registered or not, will likely be considered to have superior rights over other later-to-market trademarks.

In the United States, trademark protection arises out of federal law called the Lanham Act. The federal statute lays out the rules and regulations regarding trademark protection. However, it is important to note and often misunderstood that the law does not require registration as a requirement to obtain at least some legal rights. Federal law allows for a trademark infringement claim even without registration. This is outlined in 15 U.S.C. § 1125(a). That said, your right to sue for an unregistered trademark will be restricted to your own geographic area and/or to bringing a false advertising claim.

What is Required For a Common Law Trademark Infringement Lawsuit?

In order to prevail in a common law trademark lawsuit, three issues must be satisfied by the plaintiff. These are 1) Proof of Ownership, 2) you have Federal Trademark Rights, and 3) Damages have occurred. These are described more here:

  1. Proof of Ownership: You can only bring a successful trademark infringement claim if you can prove that you are the rightful owner of the common law trademark, and have been so before the date that the infringing mark came into being.
  2. Federal Trademark Rights: A common law trademark may only seek damages against an infringing mark in the same geographic region. The definition of geographic region is a bit grey, but is determined by the court on a case by case basis. That said, state boundaries can certainly create geographic regions.
  3. Damages: Generally, in a common law trademark infringement case, the only damages that can be pleaded are actual damages. 
Does a Federal USPTO Trademark Registration Enhance My Protections?

Yes. They certainly do. First, it is much easier to prove proof of ownership with a registered trademark as significant legal declarations of ownership and use, including dates of first use, are made during the trademark application process. Second, federal trademark rights are not limited to just one geographical region. Your protections with a federal registered trademark span the entire United States. And third, your ability to seek damages is greatly enhanced with a federally registered trademark in that plaintiffs can seek actual damages as well as indirect damages, fees, legal expenses and even potentially punitive damages in certain cases.

Want to learn more? If you are considering registering your trademark in the federal database, we are here to help. Please schedule a free telephone consult so that we can discuss your needs more and see how we can assist you with your trademark needs. 

About the Author

Michael Rada

​Michael Rada is the owner-attorney of the Law Offices of Michael Rada, LLC located in Barrington, Illinois. He is admitted to the practice of law in the State of Illinois. Michael also can practice trademark law in all 50 states as trademarks are covered by federal law. ​Michael's practice is f...

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