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Common Law Trademarks

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Law Offices of Ernest Goodman > Entertainment Law  > Common Law Trademarks

Common Law Trademarks

Explaining Common Law Trademarks: The Film Production Company Example

Hello, everyone!

Today, we will discuss common law trademarks.

Imagine this scenario: You start a film production company in California and use a distinctive name for your business over several years. By consistently operating under this specific name, you naturally acquire common law trademark rights. These rights play a crucial role in protecting your business’s identity. They essentially prevent other film production companies in the same geographical area from using an identical or confusingly similar name. This form of protection is grounded in unfair competition laws, which are designed to avoid confusion among consumers and safeguard the reputation and brand recognition you’ve established for your film production company.

Understanding Common Law Trademarks: Protecting Your Brand Without Registration

I am frequently asked about aforementioned scenarios involving the protection of trademarks. States like California and New York, for example, do provide a certain level of protection for these types of trademarks. However, it’s important to note that to secure protection within the United States or internationally, federal registration is essential.

Federal registration of a trademark with the United States Patent and Trademark Office (USPTO) not only offers nationwide protection but also serves as a basis for obtaining registration in foreign countries. Under international trademark laws and agreements, such as the Madrid Protocol, a USPTO-registered trademark can be used to apply for protection in multiple countries simultaneously, simplifying the process of securing international trademark rights.

This is a significant consideration for businesses planning to operate or extend their brand globally. Without federal registration, the scope of protection for your trademark is generally limited to the geographical area of its use within the United States, potentially hindering your brand’s growth and legal defense in international markets.

In the complex world of intellectual property, trademarks play a pivotal role in protecting brand identity. While most are familiar with registered trademarks, there’s another category, often overlooked but equally important: Common Law Trademarks. This post delves into what they are, their significance, and how they differ from registered trademarks.

What Are Common Law Trademarks?

Common Law Trademarks are rights that are automatically established through actual use of a trademark in commerce, without undergoing formal registration with a government entity, like the United States Patent and Trademark Office (USPTO). These rights are based on the “first to use” principle rather than the “first to file” principle, which governs registered trademarks.

Key Features of Common Law Trademarks

  1. Origin: They are created automatically when a business uses a distinctive mark in commerce that identifies their goods or services.
  2. Geographical Limitation: Their protection is typically limited to the geographical area where the mark is used. This is in stark contrast to registered trademarks that usually offer nationwide protection.
  3. Proof of Use: Establishing a common law trademark requires proof of continuous and consistent use of the mark in commerce.
  4. No Symbol Required: Unlike registered trademarks, where you often see the ® symbol, common law trademarks don’t have a specific symbol. However, many use ™ to signify a claim to the mark.

Advantages and Disadvantages

  • Advantages:
    • Cost-effective, as there are no registration fees.
    • Instant protection as soon as you start using the mark in commerce.
  • Disadvantages:
    • Limited geographical scope of protection.
    • More challenging to enforce, as you must prove the mark’s distinctiveness and your prior use in any legal dispute.

States in the U.S. Offering Protection for Common Law Trademarks

It’s important to recognize that common law trademark rights are not exclusive to any specific state but are acknowledged across the United States. These rights originate from actual use rather than registration. Here’s a list of some key states and a brief insight into how they regard common law trademarks:

  1. California: Recognizes and enforces common law trademark rights, especially in cases of unfair competition and consumer confusion prevention.
  2. New York: Similar to California, New York upholds common law rights, offering protection in the geographic area where the trademark is used.
  3. Texas: Texas law acknowledges common law trademarks, providing protection within the region where the mark has established recognition.
  4. Florida: Respects common law trademark rights, primarily within the commercial area where the mark is actively used.
  5. Illinois: Recognizes these rights, offering protection against misleading use of similar marks in the same geographical region.
  6. Pennsylvania: Upholds common law rights, focusing on the prevention of consumer confusion in the region of the mark’s use.
  7. Ohio: Acknowledges common law trademarks, providing defense against unauthorized use in the area of established business.
  8. Michigan: Respects common law rights within the state, especially in cases involving unfair competition.
  9. Georgia: Enforces common law trademark rights, offering protection in the market area where the trademark is used.
  10. Massachusetts: Recognizes and protects common law trademarks within its jurisdiction.

This list is not exhaustive, but it highlights how common law trademark rights are a fundamental part of the legal landscape in various states. Each state might have nuances in how these rights are enforced, but the underlying principle remains consistent: use of a trademark in commerce can establish rights in that specific geographic area. It’s crucial for businesses to understand the extent and limitations of these rights in their respective states and consider federal registration for more comprehensive protection.

How Do Common Law Trademarks Differ from Registered Trademarks?

The most significant difference lies in the scope and strength of protection. Registered trademarks provide legal presumption of ownership and exclusive rights to use the mark nationwide, along with the ability to bring action in federal court. Common Law Trademarks, in contrast, offer more limited, regionally confined protection and generally require more proof to enforce.

Why Are Common Law Trademarks Important?

They are crucial for small businesses or startups that may not have the resources for immediate formal registration. They provide a level of protection and rights to a brand name or logo, ensuring that a business can establish some degree of exclusivity and identity in its local market.

Again, common law trademark rights are limited to the geographic area in which the mark is used.

Best Practices

  1. Conduct a Trademark Search: Before using a mark, conduct a thorough search to ensure it’s not already in use.
  2. Use it Consistently: Consistent use strengthens your claim.
  3. Keep Records: Document the first use of the mark and keep records of all marketing and sales using the mark.
  4. Consider Registration: As your business grows, consider registering your trademark for broader protection.

While Common Law Trademarks offer immediate, cost-effective protection for a brand within a local area, their limitations in scope and enforcement capabilities make registered trademarks a more robust option for long-term brand protection. Understanding and utilizing common law rights can be a strategic initial step for businesses building their brand identity.

Your common law trademark rights begin when you start using the mark in commerce in a particular geographical area. The first person to do this—as opposed to the first person to register with the United States Patent and Trademark Office (USPTO)—owns the common law rights to the mark in that area.

In fact, to declare your ownership of a common law trademark, you should add a superscript “TM” to it. Once you start looking for the TM, you will probably notice many common law trademark examples with this symbol.

The Bottom Line

In conclusion, while state-level common law trademark rights offer basic protection in specific regions like California and New York, they are limited in scope, especially when considering the broader, more interconnected global market. For comprehensive protection across the United States and beyond, federal registration of your trademark is indispensable. It not only fortifies your legal standing nationwide but also paves the way for international protection under various global treaties and agreements. Understanding and navigating these levels of trademark protection are key to safeguarding your brand’s identity and future growth on a global scale. Remember, in the world of trademarks, proactive registration is often the cornerstone of robust brand protection and management.

Note: This post is a general overview and does not constitute legal advice. For specific legal concerns, it’s always recommended to consult with a qualified attorney.




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