Common Law and Registration Based Trademarks

In the United States, trademark rights may be based on common law or federal registration. Understanding the differences between these bases is essential for effectively managing and safeguarding a brand's identity.

Common Law

A common law trademark is acquired through the actual use of a mark in commerce and does not necessitate a formal registration. The scope of protection for a common law trademark is generally confined to the geographic area where the mark is actively used in commerce, and these rights persist as long as the mark remains in use.

However, enforcing a common law trademark can prove challenging. The owner must demonstrate prior use and ownership within the specific region, making the burden of proof significant.

Before using a mark, it's advisable to conduct a trademark search to identify any existing marks or registrations that could conflict with your intended use.

Federal Registration

Registering a trademark with the United States Patent and Trademark Office (USPTO) confers nationwide protections under the Lanham Act. The registration process involves the examination of a formal application, including a search for conflicting trademark registrations.

A federal registration provides several advantages over common law trademarks:

• Nationwide Protection: Registration grants protection in all 50 states, irrespective of where the mark is used, and provides public notice of the owner's claim.

• Legal Presumption: Registration confers a legal presumption of the registrant's exclusive right to use the mark nationwide for the goods/services identified in the registration.

• Enforcement and Damages: Registration provides for enforcing trademark rights in the federal court system and the potential for higher damages in infringement cases

Again, conducting a trademark search before filing for federal registration is crucial to avoid conflicts with existing registrations.

How TCP Law Can Help

Choosing between trademarks based on common law or federal registration is an important business decision. A trademark attorney at TCP Law can help walk you through the benefits and limitations of each type of basis.

For assistance with establishing trademark rights or with any other trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.