What are Common Law Trademark Rights?

common law trademark

Common law trademark rights are an extremely important concept in trademark law.  In the United States, owners of common law trademark rights have significant protections against others who may seek to use a confusingly similar trademark to advertise and sell related products or services.  These rights can be enforced in a court of law and monetary damages may be awarded to a trademark owner whose common law rights were found to have been violated by someone else.

How Do I Acquire Common Law Trademark Rights?

It’s actually very simple to acquire common law trademark rights.  All you have to do is start using your trademark in connection with the advertising and sale of products or services.  If you’re in the business of providing products (as opposed to services), this generally means using your trademark on the products themselves, on product packaging, on labels/tags affixed to the products, or on point-of-purchase displays.  If you provide services, your trademark could be used in printed advertisements, on your website and social media profiles, in radio and televisions ads, and in other types of marketing materials you may develop to promote your services.

Where Do I Have Common Law Trademark Rights?

Generally speaking, you have common law trademark rights in the geographic areas in which you provide your products and/or services.  So, for instance, if you open up a dog grooming shop in Chicago under the name FANCY DOG, then your common law trademark rights will probably be limited to the Chicago metropolitan area.  This means that someone else could open up a dog grooming shop in Los Angeles under the identical name and acquire common law rights in the Los Angeles metropolitan area.  But, if someone opened up a dog grooming shop in a different part of Chicago under a similar name, then that person would be violating your common law trademark rights and you could sue them for trademark infringement.

The geographic reach of your common law rights becomes more difficult to determine when you’re shipping products to different areas of the United States.  For example, let’s say you start a makeup line called LUSCIOUS LIPSTICK and people living throughout the country can order your products through your website.  Over the past six months, you’ve made significant sales to people living in Cleveland, Ohio, but not to anyone living in Columbus, Ohio (140 miles away) or Toledo, Ohio (115 miles away).  About three months after you started selling your products, a competitor began selling makeup under the name LUSCIOUS LIPS to residents of Columbus and Toledo.  Does that competitor now have common law rights in Columbus and Toledo even though you could have easily shipped your makeup to those cities once someone placed an order?  Could the competitor stop you from selling your products in Columbus and Toledo?  Unfortunately, the answer isn’t always clear.  That’s why these types of situations often lead to very expensive and time-consuming trademark infringement lawsuits that are eventually decided by a judge or jury.

What if Someone Already Owns a Federal Trademark Registration?

You can only acquire legitimate common law trademark rights if someone doesn’t already own a federal trademark registration for a similar trademark for related products/services.  So, for example, let’s say you open up a restaurant in New York City called SATELLITE BURGERS.  However, an individual named John Smith already owns an active trademark registration for the name SATELLITE for “restaurant services.”  Because the federal registration gives Mr. Smith the exclusive nationwide right to use SATELLITE in connection with restaurant services, your use of SATELLITE BURGERS would be considered an infringement of Mr. Smith’s federal trademark rights.  In other words, you could not acquire common law trademark rights in SATELLITE BURGERS even though you’re actually using the name in connection with restaurant services.  This is true even if Mr. Smith doesn’t actually operate any restaurants in New York City.

How Long Do Common Law Trademark Rights Last?

The good news about common law trademark rights is that they can theoretically last forever.  So long as you continue using your trademark in commerce in connection with the advertising and sale of products/services, you will continue to own common law trademark rights in the geographic areas in which you provide your products/services.  This is very different from the additional benefits and protections you get with ownership of a federal trademark registration issued by the United States Patent and Trademark Office (USPTO), which you can lose by failing to meet the trademark registration renewal deadlines.

Questions About Trademark Rights?

I’m US trademark attorney Morris Turek.  If you still have questions regarding common law trademark rights, or perhaps need some advice about protecting or enforcing your trademark, please feel free to contact me at your earliest convenience.  I may be reached via email at morris@yourtrademarkattorney.com, by phone at (314) 749-4059, or by filling out the contact form located below.  I look forward to speaking with you soon.