Common law trademark rights are trademark rights gained through common use rather without federal registration. Common law trademark rights are not governed by the federal statute, but rather through state law.

Is There a Way to Obtain Trademark Rights without Registration?

If you use your trademark in connection with goods you sell, you can gain legal protection of your trademark through the common law instead of registration. These rights are only upheld in the geographic area where you sell the goods. Federal registration of the trademark rights is always recommended since it will result in additional rights that are not covered by common law.

Can the Same Trademark Be Used in a Different Area?

At common law, your trademark rights only cover the geographic region you are selling your goods in. So someone else in another region can typically use the same trademark as long as they do not market in your territory. If you choose to expand into another region where someone else is using your trademark, that person might be able to stop you from using the trademark in that region (even if you came up with the trademark first).

Common law trademark rights are also limited to geographical areas where the trademark is being used. For example, if the special brand of soap sold under the name “Bubbles” is sold only in California only, then the trademark right to the name “Bubbles” exists only in California and no other geographical area. So, if another person sold soap under the name “Bubbles” in the state of Nevada without the knowledge that there is an existing trademark name in California, there would be no trademark infringement.

However, if the person in Nevada wanted to sell the Bubbles brand nationwide through all the states including the state of California, it would be discovered that California already has a existing brand named under the Bubbles trademark and that person would be unable to sell their product in the California market.

Is There a Way to Obtain Trademark Rights without Registration?

If you use your trademark in connection with goods you sell, you can gain legal protection of your trademark through the common law instead of registration. However, these rights are only good in the geographic area where you sell the goods.

What Happens if Someone Else is Using the Same Trademark but Not in My Area?

At common law, it is possible that owner A’s use might come before owner B’s use in time, but B might have superior rights if B used the mark first within the geographic area or in connection with a particular product line over which the dispute centered.

If I’m the Latecomer, How Would I Defend My Right to Use My Chosen Mark?

A good faith user can defeat a claim of unfair competition by claiming lack of knowledge but this is rarely easy to prove. Usually, a user can maintain credibility and a good faith defense only if he uses the trademark at some distance from the first user, or in a line of products so different from those of the first user that the latecomer would not be expected to be aware of the first use.

Two Factors to Consider in Determining Common Law Rights

  • Priority: The first user normally has priority, but priority is measured and awarded only with respect to the market in which the first user conducts business.
  • Market: If the first user limited his business area, a second user can market under the same or similar mark in a completely different area. There the second user becomes first user in that area.

How Can I Lose My Trademark Rights?

There are a few ways in which a person or a company can lose ownership rights of a trademark:

  • The trademark may be abandoned by the trademark owner.
  • The trademark may be diluted by use from others.
  • The trademark rights may be severely infringed upon by another person or company.

What is Dilution of a Trademark?

Dilution of a trademark occurs when the trademark name become synonymous with a certain type of product. Examples of trademarks that have been lost through dilution include: escalator, aspirin, zippers, and kerosene.

How Do I Prevent Dilution of a Trademark?

The most effective way to prevent loss of trademark rights through dilution is to stay informed of the use of the trademark by others and prevent any misuse of the trademark by competitors. This may include having to sue competitors that use your trademark in a general description of their product to stop them from using your trademark that way.

Companies that have successfully kept their trademark rights as a result of aggressively engaging in litigation with others that have misused their trademarks include Kleenex and Xerox, which are two trademarks that still are used in everyday language to refer to the products they sell.

Should I Consult a Lawyer?

The laws that govern common law trademarks are very complex and often confusing. An experienced trademark attorney can help you protect your trademark. A trademark lawyer can also participate in on-going research to make certain no one else is using or diluting your trademark without your permission. Although registration is recommended, it is not required because you may still gain common law rights to your mark.