The Differences Between Registered Trademarks and Common Law Trademarks
Clients often ask me whether it’s worth it to file for trademark registration. I tell them that registration is both a business and personal decision. If you plan on using your mark beyond your current zip code – which is often the case with e-commerce – then registration is a smart business decision. But even then I ask: how would you feel if someone else began using the same mark? Therein lays the personal choice. Business owners understandably become attached to their name and logo. Sometimes the added protection registration provides is just worth it for that personal association.
But registration isn’t your only avenue to trademark protection. Like many other laws, you may have some trademark protection that naturally derives from “common law.” Common law trademarks don’t give you everything that registration offers but they do give you some rights, and those rights may be enough for you and your business. In this article, I’ll review some of the differences between registered trademarks and common law trademarks. Note that by “registration” I specifically am referencing national registration with the U.S. Patent & Trademark Office (USPTO). States also often their own registration but I’m focusing here on the national state.
Geographic Area
One difference between registered and common law trademarks is their geographic area of protection. A registered trademark grants you priority to use your mark across the entire nation. In contrast, a common law trademark is limited to the area in which you use it. Say, for instance, you operate your business using a common law trademark at a single retail store in Chicago. If someone else later uses the same mark in Milwaukee, you likely would not be able to enforce your trademark rights against them. On the other hand, if you were using a registered trademark for your Chicago store then you’d have a better claim for infringement against your Milwaukee competitor.
Courts
Another major, yet often overlooked difference between common law and registered trademarks is where you can enforce your trademark rights against a potential infringer. Naturally, since registered trademarks grant you priority across the nation, you have the benefit of using the federal courts and law. When it comes to trademark law, the federal courts have a uniform set of laws to apply which generally results in more predictable decisions and remedies. Plus, federal law remedies broaden with worse cases of infringement, known as “counterfeiting.”
Common law trademark-owners must use state courts and laws. Unlike federal law, state court decisions vary according to the differences in their state laws. Looking back at my hypothetical of Chicago and Milwaukee, you’d likely have to sue your competitor in Wisconsin under Wisconsin law, even though your trademark exists under Illinois common law.
In addition, common law trademark-owners first have to establish that they have a common law trademark to sue for infringement. That’s a fact-intensive process in which you need to prove when you started using the mark, that you use the mark in association with providing certain goods or services and the area in which you’ve been using the mark. It provides an opportunity for a potential infringer to defeat your claim before it begins, and could also leave you with an unfavorable opinion that limits your trademark protection going forward. Registered trademark-owners don’t have that burden. In fact, the burden completely shifts to the defendant to show why the mark should not be afforded federal protection. Shifting the burden to your opponent is an incredible advantage in any litigation proceeding.
Clarity
Another understated benefit of a registered trademark is the registration process itself. Usually the first step in applying for a trademark is searching for other owners’ trademarks. The USPTO documents all trademarks online for you or your attorney to search to see if anyone else is using the same or similar mark. After you apply, an examining attorney with the USPTO reviews your application. Sometimes they’ll respond with a letter outlining some concerns that they want you to address. Their letters often don’t block your application but rather raise legitimate issues to which you can reply and solidify the basis for your trademark. Once the examining attorney passes the application, the USPTO publishes your mark for potential objections from the public. Once that period lapses with no objections, you’ll receive your trademark registration certificate knowing that the USPTO vetted your application. Your mark will then be added to the federal register which puts the public on notice of your registered mark. In a way, the registration process earns registered trademark-owners the presumption that their marks are legitimate should they need to enforce them in court.
Symbols
Both common law and registered trademark-owners can us certain symbols next to their trademarks (although none are required) but the symbols are different. The most commonly recognized symbol is the ‘®’ which only registered trademark-owners can use. Simply put, the ‘®’ symbol shows that you registered your mark with the USPTO. Common law trademark owners can use ‘TM’ or ‘SM’ which still tells the public that you consider your mark a trademark under common law but it doesn’t show that your mark is USTPO-registered. In any case, each of those symbols put the public on notice that your mark is an important piece of your brand and its association with your goods or services.
Common law provides business owners with some trademark protection naturally through use. For some businesses, it may be enough. For others – particularly for those who aspire to expand – federal trademark protection is the better option. Consider these differences and your personal connection with your mark when making that decision.
