Watson IP Group

Watson IP Group

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What Are Common Law Trademark Rights and State Registration of Trademarks?

A common law trademark is another name for an unregistered trademark. A person has common law trademark rights when they start to use a trademark in connection with the sale of any goods or services. While these are rights which essentially happen automatically with the starting of use in connection with sales, common law rights are limited to the territory or geographic scope under which a trademark is actually being used. Therefore, relying solely on common law rights can be problematic in the long run, and certainly, it is not a best practice.

A state trademark registration can be received, typically, from the Secretary of State’s office of any of the states. Depending on the state, the registration rights extend only to the boarder of the state. In most states, while exact marks may be prevented, there is typically not an examination, nor, an analysis of a likelihood of confusion with other marks. It is more of a listing procedure than a procedure granting very strong protections. Additionally, having a state registration in one state has no power in an adjoining state.

Neither a common law trademark nor a state trademark registration gives any of the rights afforded to a Federally Registered Trademark. That is, a Federally Registered Trademark confers the following benefits onto the registrant:

First, you have a legal presumption of the exclusive right to use your mark nationwide in connection with the goods and services listed in the registration. This right extends to all the states and territories of the United States. Even if the mark is not in use everywhere, you have constructive and exclusive rights to everywhere in the US, that is, you have rights superior in the US to anyone that adopts the same mark after you. This is a powerful right, especially where most businesses start in certain localities and expand. It is good to know that your rights are nationwide right from the start.

Second, you have a legal presumption that you are the owner of the mark. The mere presence of the registration means that you are the owner when it comes time to enforce. Additional proof is not necessary to establish ownership. There are no complicated proofs and the like that are required at the time of a trial or assertion of your rights against another infringer. Rather, the ownership is presumed.

Third, by virtue of the Federal Trademark Registration, you have placed the public on notice that you are the owner of the mark. The notice provision is very helpful as it puts the responsibility on the junior user to ensure that there is no senior user.

Fourth, by virtue of the Federal Trademark Registration, you are in the USPTO database, and the USPTO will not all other marks to be registered that they deem confusingly similar to your mark. This is also important, because, while you can police and trace applications for opposition, much of the work to stop other similar marks occurs in the background at the USPTO, and by Examining Attorneys at the USPTO that are government employees. As such, this is happening without any cost to you.

Fifth, by virtue of the Federal Trademark Registration, you have the ability to record the trademark with the US Customs and Border Protection Agency. The agency will use your trademark registration to help prevent importation of goods that infringe your trademark, or are counterfeit goods. Here again, the government is there to protect your rights to your trademark.

Sixth, by virtue of the Federal Trademark Registration, you have the right to bring a legal action concerning the registered mark (such as an accusation of infringement against another party) in Federal District Court. The ability to bring the action in Federal Court is a big plus, and, many of the proofs are presumptive.

Seventh, the Federal Trademark Registration can form the basis for applying for a trademark registration in many foreign countries around the world.

Eighth, the Federal Trademark Registration allows you to use the “circle R” symbol ® when displaying your mark. This can only legally be done with a Federally Registered Trademark. The symbol indicates and places the public on notice that you have nationwide rights to the mark.

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