WHAT ARE THE DIFFERENCES BETWEEN COMMON LAW, STATE, AND FEDERAL TRADEMARKS?
In this article, I will discuss the differences between common law trademarks, state trademarks,
and federal trademarks and what can happen if a trademark registration is not obtained.
WHAT ARE COMMON LAW TRADEMARKS?
Once a person or business begins using a symbol, logo, product name, or other words or marks in
commerce, they have what is called a common law trademark. The common law trademark
provides protection for the mark that identifies the source of goods or services regardless of
whether or not the mark is registered with the state or federal government. The common law
trademark will provide its owner with priority within his or her locale and prevent other
companies from using a similar trademark near them.
ARE THERE ANY DRAWBACKS TO COMMON LAW TRADEMARKS?
COMMON LAW TRADEMARKS ARE ONLY ENFORCEABLE IN THE GEOGRAPHIC AREA WHERE THEY ARE USED
A common law trademark is only enforceable in the geographic area where the mark is used, so
the protection afforded to this right is extremely limited. Therefore, a common law trademark
will not prevent a larger, national company from using a trademark similar to the mark in other
states, as common law trademark rights are only relevant to the geographic region where the
common law trademark is used.
For example, if a coffee blend is sold under the name DARK BEAN in Arizona only, the
trademark rights to that name exist only in Arizona. If another coffee retailer begins to market a
different blend in California under the same name (assuming they had no knowledge of the
California company), then there would be no trademark infringement. However, if the California
company attempted to sell their coffee blend nation-wide, they would discover that the Arizona
company’s common law rights to the mark would prevent them from entering the Arizona
ENFORCING COMMON LAW TRADEMARKS CAN BE CHALLENGING
Furthermore, it can be challenging to enforce common law rights. The challenge in enforcing
common law trademarks is that it is difficult to determine who actually owns the trademark and
as of what date because they are never actually registered in a state database (in the case of state
trademarks) or the USPTO’s database (in the case of federal trademarks). Establishing who
actually owns the trademark and as of what date is critical to claiming priority rights within the
trademark and can greatly affect the protections that the trademark owner is afforded.
Therefore, it is important for owners of marks to understand the importance of obtaining
registered trademark(s) for their brand(s). In addition, they must decide whether they need to
obtain a state or federal trademark registration.
WHEN SHOULD YOU REGISTER YOUR TRADEMARK AT THE STATE LEVEL?
If your company’s products or service offerings are confined to a small region that does not
include multiple states, you cannot attain trademark registration at the federal level, but you
should acquire trademark registration at the state level to claim priority rights to your mark. To
acquire trademark registration at the state level, you must file an application with the trademark
office of the specific state in which protection is sought. State trademarks are quick and easy to
obtain and can be obtained without the assistance of an attorney.
WHEN SHOULD YOU REGISTER YOUR TRADEMARK AT THE FEDERAL LEVEL?
If your company’s products or service offerings are not confined to a small region that includes multiple states, a federal registration should be obtained because federal trademarks offer a lot of protection. To successfully obtain a federal trademark registration, the goods and services outlined in the application must be distributed across state lines. Because federal trademarks are more costly and complex, they should be prepared and filed by an experienced trademark attorney.
WHAT IS THE DIFFERENCE BETWEEN STATE AND FEDERAL TRADEMARK REGISTRATION?
State trademarks protect a mark only in the registered state(s), whereas a federal trademark
protects the mark(s) nationwide and potentially can be used to obtain international trademarks.
Furthermore, the owner of a state trademark registration cannot use the registered symbol ® next
to its mark to put others on notice. The registrant can only put either a TM for a trademark or SM
for a service mark next to its mark. Hence, when a federal registration is pending, the applicant
can put either one of these symbols next to its mark and once the federal trademark obtains
registration, the applicant can put the registered symbol ® next to it.
THE IMPORTANCE OF HIRING AN EXPERIENCED TRADEMARK ATTORNEY
Ultimately, priority dates are a critical factor to claiming rights within your trademark and can
greatly affect the protections that your business is afforded. The best way to ensure that your
application is correctly and promptly filed is by hiring experienced trademark counsel that
understands the trademark registration process. If you have any questions about trademark
registration process or getting started with your application, please contact an attorney from The
Phoenix Trademark Attorney today.