Do I Need a Common Law Trademark Search?

Do I Need a Common Law Trademark Search?

If you are looking for a trademark attorney, you will notice that they offer several types of trademark search services.  The most common searches are: common law, state, and federal.  While my practice focuses on the latter, today I want to discuss the common law trademark search.

What Is the Common Law Trademark Search?

To understand the common law trademark search, you first need to understand the difference between common law and federal trademark rights.  Basically, you can acquire trademark rights in a name/logo/slogan/etc. just by using that trademark in commerce.  These are called common law trademark rights.  However, you get many important benefits by registering your trademark with the U.S. Patent & Trademark Office.  One key difference is that common law rights only extend to the geographic area where you are using your trademark in commerce.  Getting a federal registration expands those rights across the United States.  That is just one of several advantages to federal registration of your trademark.

With that bit of background information out of the way, we can now discuss the common law trademark search.  The  search is really just what it sounds like.  While a federal trademark search looks at the records of the Trademark Office to try and find pending applications/existing registrations for similar marks, a common law search looks for trademarks that have not necessarily been registered.  So how can you find common law users?  The Internet has made that a lot easier.  Both attorneys and businesses use it to look for common law users.  You want to use Google, Facebook, Twitter, and other popular sites where businesses list themselves in order to have potential customers find them.

Should I Hire an Attorney?

While most of my blog posts support hiring a trademark attorney, this one is an exception.  I do not provide common law trademark search services to my clients, for reasons I will get into in a moment.  But I do recognize that there are many attorneys and trademark DIY services that offer a common law search.  Here are my thoughts on the subject:

In 2018, most businesses have an online presence of some kind.  They are using the Internet to connect with potential clients and customers.  They may have a social media presence, an online store, or reviews from previous customers.  It usually only takes a quick Google search of their trademark to locate them, because they want to be found by potential customers.  That is why I do not see the common law trademark search as an area where trademark attorneys can provide a lot of value to their clients.  While you could hire me to do so, my Google search will be very similar to your own search, but at a much higher cost.

Keep in mind, a Google search will not reveal all common law users.  Some small businesses still operate on word of mouth, and may have zero online presence.  You probably won’t find these users with your search.  However, in those cases, an attorney’s common law trademark search is not likely to be helpful either.  Of course, if you find a similar trademark being used, an attorney can provide helpful insight on whether that mark is confusingly similar to your own.  But overall, I still think that this is a search you can perform on your own.

Federal Registration and Common Law Trademarks

Let’s say that you want to register the name XYZ for a clothing store, but you find another XYZ clothing store online.  How does that impact your ability to use and register the XYZ name?  First, remember that common law rights are restricted to the geographic area where the name is being used.  So if you’re in Toledo, and the other XYZ is a single retail store in San Diego, then you are probably OK.  There can be multiple common law users in different geographic areas.

Sure, but how does that affect your ability to register the XYZ name?  The Trademark Office does not reject applications based on the previous common law rights of others.  If no one has registered a similar name for similar products/services, then the Trademark Office will approve your application.  There is some risk here, though.  If the other XYZ used the name first, they could oppose your application or try to cancel your registration on that basis.  It can be very expensive to do so, though.

If you successfully register your trademark, it can eventually become “incontestable.”  That means that it cannot be cancelled for several reasons, including on the basis that someone else had prior common law rights.  The registration becomes incontestable five years after registration.  Once that happens, common law users are locked into the area where they used the mark before it was registered.  The registrant then reserves the rights to the mark in the rest of the United States.  You can see how that makes early registration very important.

Need Assistance With Obtaining Your Federal Trademark Registration?

If you want to avoid getting “locked in” with your common law trademark rights, I would be happy to assist you by performing a comprehensive federal trademark search or by preparing and filing your application.  Please call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.