Common Law Trademarks v. Federally Registered Trademarks

April 28, 2023

Defining Common Law Trademark and Federal Registered Trademark

A common law trademark refers to a trademark that is protected under the common law, rather than by statutes or regulations. Common law trademarks are typically denoted by the "™" symbol. Common law trademark rights arise from the actual use of a particular mark in commerce to indicate the source of goods or services. Common law rights are recognized as property rights in the mark. See Volkswagenwerk Aktiengellschaft v. Wheeler 814 F.2d 812 (CA1 Mass. 1987.) Thus, the one who first uses the mark in commerce in connection with a business is the first to obtain these property rights.

A federal registered trademark, on the other hand, is a trademark that has been registered with the United States Patent and Trademark Office (USPTO) and is protected under federal law. Registered trademarks are typically denoted by the "®" symbol.

Major Differences

One of the primary differences between a common law trademark and a federal registered trademark is the level of protection they provide. Federal registered trademarks provide stronger legal protection and offer several benefits, such as the ability to sue for infringement in federal court, the ability to use the "®" symbol, and the ability to obtain nationwide protection. Owning a federally registered trademark is considered prima facie evidence of the mark’s validity and the owner’s right to use the mark. See Architemps, Inc. v. Architemps, Ltd. 704 F.Supp. 39 (S.D.N.Y. 1988).  In contrast, common law trademarks only provide protection in the geographic area where they are used. Specifically, common law trademarks include “the right to prevent the subsequent use by another person of the same or similar name or mark when the business or service for which the name or mark is subsequently used is likely to cause confusion as to the origin of the business or the service.” Caesars World, Inc. v. Caesar’s Palace 490 F.Supp. 818 (D.C.N.J. 1980). This means that common law trademarks may have limited enforceability and make it more difficult to assert and defend its rights.

Another key difference is the process for obtaining each type of trademark. To obtain a federal registered trademark, a trademark application must be filed with the USPTO, which involves a comprehensive search and review process. In contrast, common law trademarks are established simply by using the mark in commerce, without the need for registration.

If a business intends to use a trademark nationwide or internationally, or if the mark is particularly valuable or distinctive, it may be advisable to register the mark with the USPTO to ensure maximum protection. However, for smaller businesses or marks with limited geographic use, a common law trademark may be the route to go with.

If you have questions regarding your trademark or would like to register a trademark, please contact us.

This marketing material is provided by Tyler Law, LLP for informational purposes only and is not intended to be legal advice or to create an attorney-client relationship. The information contained in this material is not guaranteed to be current or complete, and should not be relied upon as such. The material is not meant to provide any representation or warranty regarding the outcome of any legal matter. Any reliance on the information provided in this material is done at your own risk. If you require legal advice, please contact an attorney licensed to practice law in your jurisdiction. Nothing in this material shall be construed as a guarantee, warranty, or prediction regarding the outcome of any legal matter. Tyler Law, LLP is a California-based law firm authorized to practice law in California, Arizona, Oregon and Arkansas and is not licensed to practice law in any other jurisdiction.

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