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Trademark Rights: Common Law vs. Registration

Trademark Rights: Common Law vs. Registration

In a previous post, I explained what trademarks are, and their importance to businesses.  But how does one go about getting the trademark rights?  Is there a form you have to fill out?  Do you have to know a guy?  In this post, I will briefly go over trademarks that are based in common law, and those that are based on a U.S. trademark registration.  Each of these topics is worth a full post on their own, but this post is really just an overview.

First off, the proper use of your trademark in connection with the advertisement and sale of goods or services in commerce creates what are known as common law trademark rights.  You have these rights as long as you use the mark in connection with the advertisement and sale of your goods or services.  While you do not have to have a high volume of sales to claim common law trademark rights, one-time sales or sales made simply to claim the associated trademark rights are not sufficient.

For common law trademark rights, your rights are geographically limited to areas in which you actively market and sell your products and services.  For example, if you are a restaurant that operates exclusively within St. Louis, you would have rights to the mark within the St. Louis area.  However, you could not make a claim of trademark infringement against a restaurant using the same mark that operates in Chicago.  You can see where this limitation to common law rights can become a problem.  If the St. Louis restaurant owner wants to open a location in Chicago, they could not use the same mark, or they risk becoming infringers themselves, because the mark is already being used by another owner in that market.  One way to avoid the geographical limitation of common law trademark rights is to acquire a U.S. trademark registration.

Unlike common law trademark rights, you do not just get a U.S. trademark registration for using your mark.  Instead, the registration is a process that begins with the filing of a trademark application with the United States Patent and Trademark Office (USPTO).  You can probably guess from the URL of this site (kevintm.wpengine.com) that I recommend registering your trademark and obtaining the rights associated with a federal registration.  There are many advantages to doing so.  For example, U.S. trademark registrations do not have the geographical limitations of common law trademarks.  They apply throughout the United States, and prevent others from registering confusingly similar marks, and from acquiring common law rights after your application is filed.  Your trademark registration also is prima facie evidence that your mark is valid, that you own the mark, and that you have exclusive rights to its use in the United States.  This is something you certainly want at your disposal should you decide to go after someone for infringing your mark, or if someone has brought a trademark infringement claim against you or your business.

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 (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.

Contact Kevin

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(314) 479-3668

kevin@yourtrademarkattorney.com

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