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Trademark Rights: Common Law vs. Registration

Trademark law protects branding and works to prevent consumer confusion as to the source of products/services.  If you own a business, you most likely already own trademark rights, regardless of whether you have registered your trademark with the U.S. Patent & Trademark Office.  But how do you acquire trademark rights?  Is there a form you have to fill out?  Do you have to know a guy?  In this post, I will discuss the two main types of trademark rights and how they are acquired.

Common Law Trademark Rights

In the United States, trademark rights are created through commercial use of a trademark with products and/or services.  This is done through advertisement and marketing of the products/services in connection with the trademark.  Use in commerce also requires the transport or sale of products that bear the trademark.  Once a trademark user commences these activities, they acquire common law trademark rights.  While you do not have to have a high volume of sales to claim common law rights, one-time sales or sales made simply to claim the associated trademark rights are not sufficient.  Once acquired, your rights can last as long as the trademark continues to be used.

While common law trademark rights are easy enough to acquire, they do have limitations.  The biggest limitation is that these rights are geographically limited to areas in which you actively market and sell your products and services.  For example, if you are a restaurant with a single location in St. Louis, your rights would likely only extend to the St. Louis area.  It is unlikely that you could make a claim of trademark infringement against a restaurant in Chicago using the same trademark.  This limitation can obviously create problems for business owners.  Let’s say that the St. Louis restaurant owner wants to open a location in Chicago.  If they do so using the same trademark, this would likely be an infringement of the rights of the Chicago restaurant.

One way to avoid the geographical limitation of common law trademark rights is to acquire a U.S. trademark registration.

Federal Registration

We have all heard the word “trademark” used as a verb.  Generally, when someone says they want to “trademark” something, what they mean is that they want to register it with the U.S. Patent & Trademark Office.  However, federal registration is not the source of your trademark rights.  Instead, federal registration expands upon the common law rights you acquire by using your trademark in commerce.

The registration process begins when you file a trademark application with the USPTO.  Registration of your trademarks provides you with many important benefits and protections.  For example, trademarks registered with the USPTO do not have the same geographical limitations as common law trademarks.  A federal registration gives its owner the legal presumption of trademark ownership across the United States.  It also prevents others from registering confusingly similar marks with the USPTO.  You certainly want a federal registration should you decide to go after someone for infringing upon your trademark rights, or if someone has brought a trademark infringement claim against you or your business.

Scope of Rights

Regardless of whether you have trademark rights through common law use or registration, the scope of your rights depends on the strength of your trademark.  More distinctive trademarks receive a broader scope of protection.  That is true whether you are dealing with common law rights or federal trademark rights.  Having a federal registration for a weak trademark means that others can come closer to your trademark without necessarily infringing upon your rights.  On the other hand, if you have a very strong trademark such as a coined term, it will be easier for you to go after others if they try to use or register a trademark that might not be as close to your own.

Do You Have Questions About Your Trademark Rights Under the Law?

If you have any questions about your trademark rights, or want to look into acquiring a federal trademark registration, please feel free to call me at (480) 360-3499, email me at, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.

Contact Kevin

P.O. Box 94208
Phoenix, AZ 85070

(480) 360-3499

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