Are common law trademark rights enough to protect your brand?

Trademark Law0 comments

“I have a trademark, but I never registered it. Do I still have rights?”

Here’s an answer I bet you could see coming from a mile away…

It depends.

You probably have common law trademark rights (we’ll touch on why that’s not a given in a minute).

But even with those rights, you aren’t automatically protected in every scenario.

Whether you decide to roll the dice and only have common law trademark rights, or you choose to pursue trademark registration, you need to understand how far your protection goes.

And just how far it doesn’t.

**But before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

What are common law trademark rights?

Common law trademark rights refer to the rights you acquire from the moment you start using your mark in commerce.

–There’s no fee.

–There’s no application process.

And you can immediately use the fancy ™ symbol.

But there’s a caveat here (there always is):

You have to be the first person to use the trademark.

If you’re a junior user of the mark – a.k.a, you started using it after someone else did – then you may have no rights at all. 

Unless the other person is also using it as a common law mark and didn’t make sales in the same geographical area as you. But we won’t get that deep…

For the purposes of this post, let’s just assume you’ve done your due diligence, ran a trademark search, and verified you’re an original user before now.

How protected are you with common law trademark rights?

Even if you are the first person to use your mark, your rights are limited to the geographic area in which you’re using the mark.

So if you’re just using the mark locally – that’s the extent of your rights, anyway.

“But I own an online business. What about me?” I hear you ask!

Your rights extend to where your purchasers reside (so if you had purchasers from 5 different states, your rights would cover you in those 5 states).

But you don’t have nationwide protection, and your rights aren’t nearly as comprehensive as they would be with federal trademark registration.

Here’s an example of the limited protection common law trademark rights offer:

Let’s say you own a brick-and-mortar coffee shop. 

You might feel comfortable only having common law rights for your trademark because it’s not like you can pick up your business and move it to another location.

Until you decide to start an online merch shop. (Who doesn’t these days, right?)

Your mark will be protected in the states your purchasers live in. 

But absolutely nothing is protecting your mark in the states where you haven’t sold merch.

Which could eventually become an even bigger issue for your online and social media presence – because we all know how key online visibility is.

Federal trademark registration > common law trademark rights 

In the above scenario, you could end up with an even bigger issue than another coffee shop simply using your mark…

If they decide to apply for federal trademark registration before you.

Hopefully, you were an original user of the mark, and your competitors have been using your trademark for less time than you.

But that puts the onus on you to oppose the application – or seek to cancel it if their application was successful – by asserting your earlier date of first use of that mark in commerce.

And all of these headaches can be avoided when you apply for federal trademark registration yourself. 

While you may have common law trademark rights, federal registration gives you rights common law can only dream of.

Including the rights to:

  • Use the ® symbol to alert potential infringers of your registration;
  • Sue for infringement in federal court;
  • Recover attorney’s fees and damages if your infringement lawsuit is successful;
  • Registering your trademark internationally more easily;
  • Secure a valuable asset for your company.

If you have aspirations to grow or scale your brand, reach out to lock down your brand with the United States Patent and Trademark Office (USPTO).

Because federal trademark registration trumps common law rights. Every time.


Want to keep Uncomplicating Trademarks for yourself? Get on the exclusive podcast list and start listening today.

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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