You have to register a trademark to prevent competitors from stealing your brand, right? Wrong.
Common law trademark rights help protect your brand name, logo, symbol, and more within the territorial scope of your business without formal registration. All you need to do is be the first one to use your trademark for commercial purposes (and use it consistently).
Read on to learn how to set up a common law trademark, what rights it entails, how it differs from a registered trademark, how to police for infringements, and more.
Table of Contents
What Is a Common Law Trademark?
A common law trademark gives you the exclusive right to use a name, symbol, logo, or phrase in connection with your products or services without registering it with the United States Patent and Trademark Office (USPTO). You can think of it as a trademark without registration.
The rationale behind common law trademarks is twofold. On the one hand, they help ensure that consumers are not confused about the source of products and services. On the other hand, common law trademarks protect brands before they are formally registered with the USPTO. This can be especially useful for small businesses that are just starting out, do not have the budget for a USPTO registration, or have a pending registered trademark status.
How to Establish Common Law Trademark
Take these steps to set up a common law trademark in Florida:
1. Check That Your Trademark Is Available
One downside to using common law trademarks is that they are not in the USPTO database, unlike federally registered trademarks.
As a result, it takes a lot more than a quick search in the database to ensure that your trademark is not already taken. You will need to consult various other sources, including the Internet, local newspapers, public records, industry publications, etc. Make sure to check for alternative spellings of the same word, similar-sounding words, and plural and singular forms.
2. Show Prior Use
Next, you will need to show that you have previously used the name, logo, symbol, etc., within the territorial scope of your business in Florida.
3. Prove That You Are the First Appropriator
Courts in Florida will only extend common law trademark protection to the original appropriator of a name, logo, symbol, etc. A common law trademark right starts the first time someone uses the mark for commercial purposes in a specific geographical area. In contrast, a federal trademark begins when someone first registers it with the USPTO.
4. Establish Actual and Continuous Use
The Supreme Court of Florida has ruled that businesses must show “actual and continuous use in commerce” of the purported trademark to establish a common law trademark. Essentially, you must show that you have used the name, logo, or symbol long and publicly enough to indicate an intention to adopt it as a trademark. Your right to infringement protection will last as long as you continue to use the mark.
5. Use the ™ Symbol
When using a common law trademark, you must use the unregistered trademark symbol (™) instead of the registered trademark symbol (®).
What Are My Common Law Trademark Rights?
You have the following rights as the owner of a common law trademark:
Enjoying Trademark Rights Without Registration
Common law trademark rights are independent of statutory registration requirements. You do not need Florida trademark registration to enjoy trademark protection.
Using the Trademark Within a Certain Geographical Area
A common law trademark enables you to use your mark within the territorial scope of your business. However, note that you cannot use it throughout the country. If you want your mark to be enforceable anywhere in the United States, you need a federal USPTO trademark registration.
Stopping Competitors from Using Your Mark
As the owner of a common law trademark, you can stop local competitors from using your mark. However, you do not have the right to sue them for infringement damages. For that, you will need a registered trademark.
Using the Unregistered Trademark Symbol
A common law trademark allows you to use the ™ symbol after your mark. If you choose to register your trademark with the USPTO, you can use the ® symbol.
Policing Your Common Law Trademark Protection Rights
It is your responsibility to police your common law trademark for potential infringements. Failure to do so could result in losing your right to infringement protection.
Policing your common law trademark entails keeping an eye on competitors in your local area and ensuring that no one is using your mark. This includes when someone is using the same trademark or similar versions that may confuse consumers.
If you find out about a potential infringer, reach out to inform them of your common law trademark. You could speak with them directly or send a cease and desist letter requesting them to stop using your mark.
What Constitutes a Common Law Trademark Infringement?
To establish an unregistered trademark infringement, you must show the following trademark infringement elements:
- You have common law trademark rights in the mark at hand; and
- The infringer used a mark (name, logo, symbol, or phrase) that was either the same or confusingly similar, such that consumers may confuse the two.
Florida courts have established that the analysis used to examine common law trademark infringements is substantially similar to the one used in federal trademark infringement cases. This means that the court analyzes the matter from the viewpoint of a consumer and not of a professional.
Need Help with a Trademark Common Law Rights Case?
If you need a trademark attorney in Miami or elsewhere in Florida, we at the Cueto Law Group can help. Our team of experienced trademark lawyers can guide you every step of the way, from trademark search to trademark policing, infringement, and more.
Contact us today for a free consultation.
Final Thoughts on Common Law Trademarks
A common law trademark ensures that new and small businesses can operate within their geographical area without worrying that competitors could steal their brand name or logo. However, once your business has gained traction, you may want to start thinking about registering your trademark with the USPTO to benefit from the additional protections.
Common Law Trademark FAQs
Check out the answers to these questions about common law trademarks we often hear in our practice:
Do You Have to Register a Trademark?
No, you do not have to register a trademark to benefit from trademark protection under common law. However, a federally registered trademark offers additional protections, so you should carefully look into the differences between registered vs unregistered trademarks before committing to one or the other.
Do Trademark Rights Come from Registration Rather Than Use?
Common law trademark rights come from use, not registration. Common law trademark protection starts the first time you use the mark for commercial purposes in a particular geographical area and continue for as long as you continue to use it. Statutory trademark rights come from registration and offer additional protections.
Does Common Law Copyright Your Name as an Individual?
To copyright your name under common law, you need to show that you use it as a trademark and that it has acquired a second distinct meaning. Essentially, your name must be recognizable to the public as your brand name rather than your personal name.
