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The limitations of common law trademarks

On Behalf of | Oct 18, 2021 | Trademark Law

Cost-conscious leaders of small, growth-oriented businesses sometimes take undue comfort in the legal concept of a “common law trademark”. Here’s why that’s a risky proposition, and why business owners should instead take advantage of the United States Patent and Trademark Office (USPTO)

Overview of common law trademarks

A trademark is any combination of words, images, and other design elements that identifies a business’s goods or services. A business obtains ownership rights in a trademark simply by using it in commerce. Those rights entitle the business to exclusive use of that trademark within the specific geographic area. In other words, the business may prevent others from using the same mark in the same area. Lawyers refer to these rights as a “common law trademark”. 

Geographic limitation of common law trademarks

Common law trademark rights exist only in the geographic area in which the business engages in commerce. This geographic limitation potentially puts a growing business in danger of having its trademark usurped. For example, a popular Hudson Valley pizzeria that uses a distinctive logo and hopes to franchise nationally, cannot necessarily rely on common law trademark rights to prevent a Philadelphia pizzeria from using the same logo. 

Trademark registration protects trademarks nationally

A growth-oriented business that hopes to expand beyond its current geographic market should therefore be wary of relying on common law trademark rights to protect its brand. Instead, it should invest in obtaining the registration of its trademark from the USPTO. 

Registration confers nationwide protection for a trademark and gives official notice of ownership to anyone else who might use a similar mark.  By registering its mark, the pizzeria in the example above can assure its ability to use its distinctive logo in any U.S. market. This assurance of coast-to-coast protection enables the business to make plans and invest in growth. It also entitles the business to certain statutory benefits, such as the right to seek significant damages in the event another party infringes on its trademark.

Register your trademark to grow your business

Registering a trademark with the USPTO involves proving its use in commerce. It must also establish that it is sufficiently distinct from other registered trademarks. By teaming with experienced intellectual property attorneys, emerging businesses can obtain powerful, dependable, predictable protection for their brands.