What Is a Common Law Trademark?

A common law trademark is a type of infringement protection for intellectual property wherein the property is used in commerce before it's federally registered. The U.S. common law trademark starts when you use the mark in commerce for the first time within a geographic area. It endures with continual, deliberate use and is shown by the superscript symbol "TM."

Business names, taglines, product names, logos, design elements, and sounds used to identify companies are all covered by a common law trademark. U.S. trademark law differs from international trademark laws because it's based on common law, rather than first-to-file law.

Benefits of Common Law Trademarks

Common law trademarks stop competing businesses in your area from using identical or similar marks that could confuse customers. You can sue any local competitor for damages if they start using your mark. If your case is successful, the other business will also have to stop using your mark. 

Since you're the only one using the mark, there's no confusion among consumers. Customers won't accidentally visit a competitor store believing it's linked to yours.  

Limitations of Common Law Trademarks

Common law trademark rights are limited to the geographic area the intellectual property is used in and any areas where it could reasonably expand. If a hair salon trades under the name Curlz in California, the common law trademark rights for this name are only valid in California.

So long as the owners didn't know about the Californian Curlz, a salon in Maryland could also trade under the name Curlz without infringing the trademark. However, if the Maryland Curlz began franchising outlets around the country, the common law trademark would prevent it opening a new salon close to the one in California.

Protecting Your Common Law Trademark

You can promote your common law trademark by using the symbol ™. Place the symbol next to your trademarked material to inform your competitors of its trademark status. This symbol could be enough to make copycats think twice.

It's your responsibility to enforce your common law trademark rights. If you don't, you could lose your right to protection. For example, if you don't oppose the registered trademark application of a patent that infringes on your common law trademark within five years, your common law trademark could be revoked.

If a competitor business starts using your mark, you should send a cease-and-desist letter. If this fails, speak to a trademark lawyer about filing an infringement lawsuit. Common law trademarks are built into your state's code and are enforceable by its courts. You will need to prove you deserve exclusive use of the mark. You'll do this in the same way someone with a registered trademark proves use:

  • By showing a history of using the mark
  • By providing evidence that suggest consumers associate the mark with your business, rather than its products

Usually common law trademark claims use similar doctrines and case law to the Lanham Act. State and federal courts often rely on the trademark precedents established in previous common law trademark cases to make their rulings.

How a Common Law Trademark Compares With a Federal Registered Trademark

Common law trademarks aren't governed by statute as federal registered trademarks are. Instead, they were created under a system of rights governed by state law. You don't need federal registration to have common law trademark rights or start using the trademark symbol.

You don't have to register your trademark through the United States Patent and Trademark Office (USPTO), but it's a good idea to do so because it comes with stronger rights concerning:

  • Location. Registered trademarks protect the mark across the United States, not just within the local area as common law trademarks do.
  • Listing. All registered trademarks are listed on the USPTO database. This makes it easy for competing businesses to learn about your mark and avoid using it. 
  • Symbol. Businesses show they have a registered trademark using the ® symbol, rather than the ™ symbol used for common law trademarks. 
  • Legal action. Registered trademark holders can file lawsuits in a federal court to apply their trademark rights. In these cases, registered trademark holders have the right to:
    • Recover profits
    • Sue for statutory damages
    • Get the infringing business to pay their legal fees, which is much harder for common law trademark holders
    • Receive triple damages for willful infringement

In addition, businesses holding a registered trademark in the U.S. find it easier to get a foreign trademark and stop foreign businesses from selling their goods in the U.S.

While registering a federal trademark has many advantages, it does not give holders priority over common law trademark holders. In a well-documented case, the national fast food chain Burger King could not open a Burger King outlet within 20 miles of Matoon, Illinois, because a small burger restaurant called Burger King already had a common law trademark there. 

Searching For Trademarks

Before using a piece of intellectual property, U.S. law states you must ensure it doesn't already have a federal, state, or common law trademark.

  • Search for federal trademarks. Visit the USPTO website to find all registered U.S. trademarks.
  • Search for state trademarks. Visit state trademark websites to find trademarks registered within the state. Before using a common law trademark, you only need to check the official trademark website in your state. However, you'll need to check all state records before registering for a federal trademark. 
  • Search for common law trademarks. Since people don't register their common law marks, they won't appear in trademark databases. Business directories, phone directories, and online searching could help you learn whether your intended mark is already protected under a common law trademark. Finding domain names similar to your intended mark could signal that a website holder already has the common law trademark.

While you can do your own search, a U.S. trademark lawyer is likely to do a more thorough job. Once you're sure you can use a mark under a common law trademark or register the trademark, act quickly. Search results can quickly lose relevance. If you haven't started using the trademark or filed for its registration after two to three months, you must repeat the searches.

Frequently Asked Questions

  • Do I need a trademark attorney?

Many businesspeople handle their own trademark matters without any problems. However, common law trademarks can be difficult and confusing. A lawyer can help make any matters surrounding your trademark easier. Attorneys can conduct regular research to make sure no one infringes on your trademark. A lawyer can also help if your application or trademark runs into one of the following issues:

  • Trademark litigation
  • Administrative opposition to registration
  • Petitions for the cancellation of registration

Dealing with these matters can cost up to $500,000. Prices vary depending on:

  • The case's complexity
  • The motions filed
  • The amount of discovery and testimony
     
  • What happens in trademark court cases?

Trademark cases have five distinct phases:

  • Answer: The applicant/registrant has 40 days to respond.
  • Discovery: A 180-day period when the parties can file requests for oral and written depositions, written interrogatories, written production of documents and other items, and written requests for admissions. Discovery requests are due in 30 days, but a motion or agreement of the parties can make the term longer.
  • Entering testimony: Both parties submit written testimony into the trial record. It's followed by time for argument.
  • Main trial phase: The opposing/petitioning party has 60 days to file its main trial brief. During this time it:
  • Discusses the main facts
  • Makes its key case arguments
  • Rebuts potential arguments

The applicant/registrant has 30 days after the opposer's main trial deadline to file its own trial brief. The opposer can reply within 15 days.

  • Oral arguments: Both parties make their cases in front of the Trademark Trial and Appeal Board. This phase is optional, on written request of either party.
     
  • Can I trademark any word, design element, or sound I use in commerce?

In the United States, words, design elements, and sounds used in commerce must be distinctive to get trademark protection. Simple shapes and generic words and phrases aren't distinctive enough for patent protection. Words and phrases that simply describe goods, services, or businesses usually won't pass either. The USPTO's Supplemental Register may grant patents if the marks could become distinctive in future. If the mark becomes distinctive, the applicant can get it moved to the Principal Register. Suggestive marks that are more abstract and creative are always distinctive and easier to register.

  • If two companies in the same state are found to use the same business name, which one has the common law trademark?

The common law mark goes to the company that started using the business name first. This establishes prior use, which is a key part of the first-to-market rule. In an infringement case, both companies need to produce evidence showing when they started using their business names. 

  • I just found out I've been using someone else's common law trademark. What should I do?

Speak to a lawyer for their advice. You may be allowed to keep your trademark, but your lawyer must prove you had no knowledge of the existing trademark. A court will be more likely to rule in your favor if you sell a different product or service or run your business in a different part of the country.

  • Can a foreign company get a U.S. common law trademark?

Any foreign company that uses a mark in commerce within the United States is also protected by a common law trademark. Alternatively, businesses with registered trademarks in their native countries can apply for an extension of their international protection through the Madrid Protocol. This extension gives an international business trademark rights in the United States, even if they don't actually use the mark in U.S. commerce.

International companies with subsidiaries around the world may think it's easier for the U.S. arm to file for U.S. registration. However, it's best for the single parent company or a holding company to organize all patents. Enforcing trademarks owned by different parts of a company can be difficult, because the relationship of all affiliates must be proven.

  • Could I lose my common law trademark?

If you started using your common law trademark before a competing business registered it, you'll need to prove you started using the mark first. If you can prove this, you'll keep your rights and prevent the competing business from trading in your state. The court will evaluate a number of factors, including:

  • How widely your mark is used
  • What the public associated with the mark and whether consumers connected the mark with the source of goods
  • Whether the mark became distinctive
  • Whether you exercised control over the quality of your goods and used the mark as if it were trademarked.

Since there are no public records of your trademark or its usage history, proving your case in court can be tricky. A trademark attorney can help you with this. If you lose the infringement case, you'll also lose your common law trademark.

You must also continue using your mark in commerce. If you do not use a common law or registered mark for business purposes in three years, your trademark expires.

You must take control of the nature and quality of your goods and services. If you don't, you're said to have a naked license, which could compromise your trademark.

  • Can I lose a registered trademark?

In addition to the ways discussed above, you can also lose a registered trademark in a number of other ways, including:

  • Failing to pay maintenance fees on time between the fifth and sixth year and at 10-year renewal
  • Failing to include necessary documents like Declaration of Continued Use 
  • Filing a Declaration of Continued Use when you aren't the applicant
     
  • How do I register for a federal trademark?

Visit the USPTO website and complete the online application. You may want a trademark lawyer to help you with your application to help you get approved.

The description of related goods and services must be specific and accurate. If it's too broad, the application may be denied or you may lose the trademark later. Your registration may also be canceled if you don't delete unused goods and services.

You should also submit examples of the mark's use in the United States when you file. You also need to include specimens:

  • When filing a statement of use before or after a notice of allowance is issued in an intent-to-use-based U.S. trademark application
  • As requested, such as at the six-year and 10-year anniversaries for international applicants

Provide a separate specimen for every good and service listed in the application. Acceptable specimens for product include:

  • Labels attached to goods and commercial packaging
  • Point-of-sale advertising
  • Catalogs and websites. These should usually show order information and the mark close to the goods
  • Websites that have enough information for users to download marked software
  • Photographs of display screens or movie frames showing the mark

Unacceptable product specimens include:

  • Advertising circulars and brochures
  • Price lists
  • Media announcements
  • Publicity releases
  • Trade directory listings
  • Business cards
  • Websites that advertise software but don't have download facilities

Service specimens must show the mark as it's used in the advertising or sale and a description. Acceptable service specimens include:

  • Newspaper and magazine advertisements
  • Brochures, handbills, and direct-mail leaflets
  • Menus 
  • Signs and billboards
  • Business documents (letterheads, invoices) if they show the mark and service details

Unacceptable service specimens include:

  • Advertisement printer proofs
  • Press releases
  • Printed media articles

Registering a federal trademark costs $275, plus attorney fees. This might seem expensive, but it's much cheaper than becoming involved in an infringement case with only a common law trademark.

There are three people who can sign a trademark application's declaration:

  • The applicant
  • A person with first-hand knowledge of the application's facts with the authority to act for the application
  • An authorized U.S. attorney

A U.S. trademark counsel cannot sign a trademark application.

If you need help with common law trademarks, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.