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Trademark Guides

Common Law Trademarks

Exploring Common Law Trademark Rights

Lindokuhle Mkhize

Lindokuhle Mkhize

14 August 20235 min read

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Common law trademarks

You have common law trademark rights even if you've never registered your trademarks. Yup, you read right. Ask yourself if there's a distinct IP you always use to market your products. Do you always use a company name or a product name? Is there a unique tagline or a logo people recognize with your product?

Words, phrases, symbols, or sounds you use to identify your company are trademarks. Famous trademarks include the golden arches of McDonald's to Nike's catchphrase "Just Do It." Think of the company name Amazon. Nobody else can use these marks due to their association with specific products.

We wouldn't want to lead to unnecessary customer confusion, would we?

By simply using your trademark in your business, you gain common law trademark rights. Registering your trademarks with the USPTO, the US Patent and Trademark Office, can strengthen those rights. Remember to swing by Trademarkia for a free search to ensure your mark isn't already used.

The common law use of trademark rights vs. federal trademark registration

Let's start by exploring the difference between the common law use of trademark rights and federal trademark registration:

Common law trademark rights

The company that uses a trademark first gets the common law trademark rights. Additionally, a common law trademark is valid only in the region in which it's used.

For instance, if you only offer services in LA, that's where your common law trademark is valid. You could stop another company from doing the same in another area under a name that sounds similar. But you won't be able to stop a rival from opening a business somewhere else in northern California under your name. 

And your competitor's common law trademark rights may prevent you from entering that market if they are the first to use it.

The early bird catches the worm, eh?

If you were the first user of the mark, common law rights may protect your ability to use it locally. This applies even if another company obtains a federal registration that covers the entire country for the same mark. Since there is no public record of your trademark or the date its use first started, common law trademark rights can be challenging to enforce.

Federal trademark registration

You need to submit an application to the USPTO and get it approved to register a federal trademark. Registering a trademark with the USPTO gives you the legal presumption that you're entitled to the mark. You can use it nationwide and bar others from using it for similar products or services.

The USPTO database lists registered marks to discourage others from using a similar mark. Another benefit is the right to file a lawsuit in federal court to enforce one's rights.

Additionally, federal registration streamlines the process of registering a trademark abroad. It also stops the importation of goods that are infringing upon trademark laws.

Common law trademarks and trademark searches

Conducting a comprehensive trademark search before using a trademark or submitting a common law trademark registration application is crucial. If a common law infringement is filed on another person's federal, state, or common law trademarks, a trademark search will reveal this. A thorough trademark search includes the following three elements:

A database search in the USPTO

Federal registration will be rejected if your mark is confusingly similar to another registered trademark. "Confusingly similar" refers to the similarity of your mark to a registered trademark and its use on the same class of goods or services, giving the general public cause to speculate about the source of the goods or services.

A trademark search under common law

A common law trademark search can reveal a company in your area that already has more advantageous rights than yours. If you choose to register your mark with the USPTO, it can also help you identify out-of-town companies whose common law trademarks might restrict your rights or make it more difficult for you to do so.

 Searches in business directories, phone directories, and the internet, in general, may be part of a common law trademark investigation.

A trademark search by state

Finding marks registered as business names, trademarks, or trade names with states requires searching databases for one or more states. You might be unable to use your trademark there if it's already been registered by another state.

The likelihood of a successful registration with the USPTO is increased by the trademark search, which is a crucial tool for locating obstacles to using your name, logo, or other trademark.

Common law protection of trademarks

If you have a federal trademark registration application that is still pending, the symbol TM denotes that you are claiming common law or state law trademark rights. You alert third parties to your trademark rights by adding a TM to your trademarks. As a result, competitors and copiers may be discouraged from using your trademarks on their products or services.

Only trademarks registered with the USPTO are eligible to use the registered trademark symbol ®.

As with all trademarks, the trademark owner is liable for common law trademark enforcement. If you don't take steps to prevent others from using your marks, you risk losing your right to do so. Adopting legal action is what is meant by "enforcing" your trademark if you find out that another business in your community is doing so. 

A trademark lawyer can advise you on the best course of action.

Federally registered trademarks are worth your time

Your company name, product names, logos, and taglines can be protected through common law trademarks, but the protection isn't comprehensive. Consider registering your trademarks with the USPTO for more comprehensive trademark protection.


Can you sue with a common law trademark?

As a common law trademark owner, you can stop local competitors from using your mark. However, you won’t be able to sue them for infringement damages. The only way to do so is by having an officially registered trademark. 

What are the limitations of a common law trademark?

Unfortunately, common law trademark rights are somewhat limited. You see, they’re limited to the local geographic area that the IP was used in. Although the protection may also include areas of reasonable expansion.

How do you assert common law trademark rights?

Start a business and begin offering goods or services. It's as simple as that because common law rights attach when you start using your mark.

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Lindokuhle Mkhize, a skilled creative copywriter and content lead at Trademarkia, brings a wealth of experience in driving innovation and managing teams. With previous success in starting and growing the Innovation and Marketing department at her former creative agency, Lindokuhle boasts expertise in leadership and delivering compelling content. Based in South Africa, Lindokuhle's work focuses on key themes of creativity, effective communication, and strategic marketing.