Registering your trademark with the United States Patent and Trademark Office (USPTO) can help ensure you have legal and priority rights to your mark nationwide. However, you can obtain common law rights simply by using your mark in commerce. There is no registration requirement or application process when it comes to common law trademarks. Although this type of trademark is typically easier to obtain, it does not have the same protections as a federally registered trademark — and can be harder to enforce.
A common law trademark is established by using the mark in connection with goods or services in a certain geographical area. There is no application or paperwork that needs to be filed with any government entity. Specifically, a common law trademark provides protection in locations where the mark is being used and to areas where the business would naturally expand.
Even if the mark has not been registered with the USPTO, the following elements of a brand can qualify for common law trademark protection:
Before you begin using a common law trademark, you should conduct a comprehensive search to ensure another business isn’t already using the mark in commerce. By taking the time to do your diligence at the outset, you could potentially save yourself a substantial amount of time and expense in the long run if you later discover someone else already has priority rights to the mark. Even if the mark’s owner doesn’t commence legal action, you could still incur substantial costs to rebrand your business and develop a new mark.
Critically, there is no common law trademark search database. A common law trademark search must be conducted by searching the internet, public records, newspapers, and other sources.
The owner of a common law trademark is responsible for monitoring it for potential infringement and dilution. If you learn that anyone else is using the same mark or a similar one in your area, you should inform them of your common law rights immediately. It may be necessary to send a cease-and-desist letter requesting that they stop using the mark. However, it’s vital to understand that you cannot sue for infringement damages with a common law trademark — this right is only reserved for federally registered trademarks.
While common law trademarks only apply to a particular geographical area, a federally registered trademark puts the entire country on notice of your priority rights. A common law trademark only shields a mark in the specific area where the owner conducts business.
For instance, if you market and sell your product in Michigan, you may be able to stop a competitor from using the same mark if you have priority common law or federal rights there. But you would not be able to stop a business owner in California with priority common law rights from using the same mark in their geographical area if they precede the federal Trademark filing date. In addition, if a competitor was first to use the mark in California, their common law rights could potentially stop your business from entering that marketplace.
Pre-existing businesses may continue using a trademark to which they had common law rights in their geographical area, even if another business later files an application for the same or a similar mark with the USPTO. In other words, if you were first to use the mark in your area, your common law rights generally preserve your right to use it there — even if another business obtains federal rights. But once you register your mark with the USPTO, any subsequent competitors are prohibited from using it — regardless of the geographical vicinity in which they conduct business.
Notably, the “TM” and “SM” symbols can be used for common law trademarks and service marks that are not registered with the USPTO. These symbols notify the public that you are claiming common law rights to the mark. However, it’s essential to be aware that these symbols can only be used in connection with unregistered marks. Once a trademark is federally registered, you can begin using the circled “R” symbol.
Registering your trademark with the USPTO is the single most important thing you can do to protect your brand and bottom line. Although a common law trademark provides a certain amount of local protection, they don’t always offer a long-term defense strategy for a growing business. Also, with a common law mark, you do not have the option to recover your infringement damages if a competitor harmed your company’s reputation or caused your business to suffer financially. Taking the steps to register your trademark federally can strengthen your common law rights, ensure your priority rights are enforceable nationwide, and increase the value of your company.
When you register your trademark with the USPTO, there is a legal presumption that you own the mark and have the legal right to use it in commerce. If you sue or are being sued in federal court, your registration certificate establishes your ownership, eliminating the need to produce a substantial amount of additional evidence to prove your case. Your federal registration can also be used as the basis to file for trademark protection in other countries, allowing you to expand your business into the global marketplace.
When you’re building a business, it’s crucial to ensure you take every possible measure to safeguard your brand and bottom line. Located in Ann Arbor, Michigan, the attorneys at the Trademark Lawyer Law Firm, PLLC work with entrepreneurs nationwide to help them register their marks with the USPTO and develop solid brand-protection strategies. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.