Common Law Trademarks

Common law trademarks are marks that have certain rights and protections despite not being federally registered. A federally registered trademark has exclusive rights, the presumption of being valid, and its zone of protection is expanded from its common law restricted territory to that of the entire country. It does not have to justify itself for the use of the mark.  The term “common law” itself indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law.

Meanwhile Common law rights are established by using a mark first in commerce and the continuance of using that mark in commerce. The mark also must be distinctive enough. Trademarks are divided into five categories of distinctiveness:  (1) fanciful, (2) arbitrary (3) suggestive, (4) descriptive, and (5) generic. If a mark is categorized as fanciful, arbitrary or suggestive, it is considered to be inherently distinctive. The more distinctive the mark the better protection it has.

If a mark is able to achieve these requirements it is considered the senior user, and is provided protection in the geographic areas where the mark has been in use on a continuous basis prior to a federal registration of a similar mark. For example, if a user federally registers the same mark that is already in use by another user under common law, the secondary registrant will have rights in that mark in all areas except the limited geographical area where the senior common law mark-user has used the mark in commerce, or the area where the common law mark user would reasonably be expected to expand their business (“zone of expansion”). Therefore, when relying on common law trademark rights you can only exclude others from using a confusingly similar mark in connection with the same or related goods (or services) within the same territory as your use. Common law rights are basically limited to those areas where targeted marketing efforts, or meaningful sales, are made.

For additional information about trademarks in general visit our page here. We also provide additional information regarding trademark infringement and the likelihood of confusion amongst trademarks. And finally, the importance of distinctiveness amongst trademarks.


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