Common Law Trademark Protection – What You Get Without a Registered Trademark

by Zach Stevens

It’s a common misconception that not having your company or brand mark registered with the USPTO means you get zero legal recognition or brand protection. This isn’t the case. As the trademark owner, you do get a minimal amount of protection, but it is much stronger if you have your trademark registered. How strong? Let’s cover it.

Protection Non-Registered Trademarks Get

united states patent - else's common law trademarkCommon law protects you in the area where your business or brand name is recognized. If someone in your state begins using your company name and starts to sell similar products or services that are directly competing with what you’re offering, then they are infringing on your common law trademark rights no matter how long they have been around. It’s referred to as “unregistered” trademark protection because there was no official filing made with the USPTO, unlike registering the trademark which grants much more legal weight when pursuing legal action against an infringer.

This means that if someone who began using your company name for their business in the same geographic region as you started offering competing products or services, they are infringing on your common law trademark rights. This infringement can be detrimental to their business dealings with customers who wrongly assume that the company they want to do business with is affiliated with yours—especially if you hire a trademark attorney to pursue legal action against them in this regard.

Learn more about intellectual property law here.

Unregistered Trademarks Do Get Protection…But Not Much

intellectual property - common law marksFailure to register your trademark can leave an exploitable gap in legal protection for your brand. The minimally recognized rights granted by common law trademarks are easily infringed upon because there’s no real way of stopping someone from doing so without filing for official federal registration, which many companies don’t have the time or money to do. A business associate might buy a URL similar to your company name and use it to compete against you, for example, but under the common law trademark system there’s not much you can do about it.

It is possible to take legal action against someone for infringing your unregistered trademark, but the process is very time consuming and nuanced, so it’s generally not worth pursuing unless you have a large company with an established budget. The courts will look at multiple factors to determine if infringement has taken place, including how similar the competing brands are in appearance or name, how closely linked their goods or services are (if they’re even offering any), and whether customers might be confused into thinking the two brands are related.

For this reason, many small business owners—whose main concern is typically staying afloat without too much competition—hold off on getting trademarks until they absolutely need them. Or at least that’s what they think, until a problem involving trademark infringement rears its ugly head, at which time they realize they should have gotten their trademark registered years ago.

Why Filing for Trademark Registration Yourself is Difficult—and Has a Slim Chance of Success

If you’re like most business owners, you didn’t conduct a thorough trademark search yourself prior to designing your branding. This can put you in a losing position, as even if you’ve filed your paperwork correctly, your specific brand logo and name might not even be available. And, even if it is available, you are competing with others who have filed for the same or similar mark.

You might feel that filing on your own would be ideal since it keeps the fees associated with trademark registration to a minimum. However, most trademark attorneys’ rates are reasonable considering they have years of experience in this area of law and have developed valuable connections and resources for conducting trademark searches and getting marks filed and registered. Furthermore, you’d be ruling typical mistakes that many companies make when trying to file for a trademark on their own.

One such mistake is not showing that the mark has been used. If your mark is not yet in use, you may file an intent-to-use (ITU) application which allows you to put “intent” of using the mark down the road and provides legal protection once you actually begin using it. However, if your mark isn’t in use more than six months after filing this ITU application, your filing will be abandoned and will have no legal protection whatsoever.

If you have been using your brand in the sale of goods and/or services, then you’ll need to be able to prove this fact—there must be clear evidence that you’ve used your mark in commerce and in association with each U.S. class for which you’re registering.

Sound like a lot so far? That’s just scratching the surface.

Why Hiring a Trademark Attorney is the Better Option

Man In Suite With Briefcase - US Trademark AttorneyIf you really need the protection of a registered trademark in order to start your business or sell your products, then you should strongly consider hiring an experienced trademark lawyer for professional trademark services.

Even if you’re looking at filing on your own (which we don’t recommend for multiple reasons), it’s important to know how various applications and processes will affect your brand—and in what ways they’ll benefit it once they go through—so you can make the best decisions possible regarding your brand’s future and prosperity.

As mentioned above, filing for a federal trademark registration is just the beginning of protecting yourself from the potential infringement of others. You need to be sure that you’re also taking advantage of the legal protections afforded to you under common law and those associated with the level of protection for which your trademark allows.

Contact MZJ trademark office and law firm at (208) 528-4188 or fill out the form below for a free consultation.

Intellectual Property

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