Key Takeaways

  • A common law trademark search identifies unregistered marks that may still have legal protection, beyond what the USPTO database reveals.
  • Common law rights arise from first use in commerce, not registration, but protections are geographically limited.
  • Businesses face risk if they only rely on federal trademark searches; common law marks can still block registration or trigger infringement claims.
  • Resources for these searches include state trademark databases, internet searches, business directories, case law, and news archives.
  • Conducting a search helps avoid wasted investment, customer confusion, and potential lawsuits.
  • While useful, common law rights are weaker and harder to enforce than registered rights.

What Is a Common Law Trademark Search?

A common law trademark search is the most comprehensive trademark search that a company can conduct. It involves searching through databases, news, business, and public records, legal and financial records. Your goal in a common law trademark search is to find out if someone is using a similar trademark, even if the mark isn't registered in the Patent and Trademark Office (USPTO) database.

How Common Law Rights Are Created

Common law rights in a trademark begin the moment a business uses the mark in commerce. Unlike registered trademarks, which provide nationwide recognition, common law rights are limited to the specific geographic areas where the mark has been used and gained recognition. Courts will often examine evidence such as sales records, advertising, website traffic, and consumer recognition to determine whether rights have been established. These rights are designed to protect consumers from confusion and reward businesses that are first to use a distinctive brand name, logo, or slogan.

Registered Trademarks vs. Common Law Trademarks

According to the USPTO, a trademark is a "word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies the source of the goods of one party from those of others." Trademark owners can register their marks at the Patent and Trademark Office. However, registration is not necessary for the trademark to be valid. The symbol ® indicates a registered trademark, while unregistered trademarks may have the ™ symbol.

In the US, trademark rights result from use, and not registration in the USPTO database. The first business to use a certain trademark on an ongoing basis owns common law rights to it. The rights owner can sue competitors that use similar marks for trademark infringement.

However, there are some limits on common law trademark rights. In fact, federally registered trademarks are valid throughout the country. Unregistered trademark owners can only claim rights for the locations where they actually sell their products or services.

The goal of trademarks is to make sure consumers don't get confused. It makes sense that a trademark exists if the public recognizes it, even if it's not registered. This rule protects consumers but makes things harder for companies. In fact, simply searching through federal databases before launching a product isn't enough.

Limitations of Common Law Trademarks

While common law trademarks provide free and automatic protection, they come with several significant limitations:

  • Geographic restrictions: Protection is limited to the territory where the mark is actually used and recognized. A business in New York may not be able to stop a competitor in California from using the same or similar mark.
  • Enforcement challenges: Without a federal registration certificate, proving ownership can be difficult and costly in litigation. Courts may require substantial evidence of consumer recognition.
  • Weaker remedies: Owners of common law marks may face reduced damages in infringement suits compared to registered mark holders.
  • Business expansion risks: A company with common law rights may find itself blocked from expanding nationally if another party registers a similar mark elsewhere.

Understanding the Difference Between a Trademark Search and a Common Law Trademark Search

A trademark search usually only includes trademarks that are registered in the USPTO database and in state databases. A common law trademark search, instead, includes a number of other resources to also search for trademarks that aren't registered.

Completing a common law trademark search is important to determine if your chosen trademark can be registered or not.

Why a Common Law Search Is Critical

A basic federal trademark search through the USPTO’s TESS system is not enough to clear a name for use. Many small businesses never register their trademarks, relying instead on common law protection. If you launch a brand without checking for these unregistered marks, you risk:

  • Denial of your trademark application due to prior unregistered use.
  • Rebranding costs if you are forced to change names after investing in marketing.
  • Infringement lawsuits, which could include damages and attorneys’ fees.

For these reasons, businesses often conduct a comprehensive common law trademark search before investing heavily in a new name or logo.

Resources for Conducting a Common Law Trademark Search

There are multiple resources you can use for your search. The most common are:

  • Internet The internet is where you should start your search. Searching for your mark and similar marks on search engines such as Google and Bing can give you a fast first answer.
  • Newspapers and TV sources Newspapers can be a great resource to look for marks protected by common law. It's impossible to list all of them, but city and national newspapers, financial articles, lifestyle publications, and TV program transcripts should all be part of your search.
  • State Trademark Registers Each state has a register where you can look for marks that are not registered in the USPTO.
  • Cases and administrative materials Don't forget to include in your search four million of U.S. and state law cases, as well as the federal and state statutes.
  • Yellow Pages Although the big yellow book isn't used much nowadays, the Yellow Pages remains a great resource to look for marks that are not in the Federal and State government records.
  • Business and financial records Mergers and acquisition reports, U.S. public and private companies records, and international companies records are other available resources for your search.

Professional Search Firms and Attorneys

While it is possible to conduct a preliminary common law search on your own, many businesses turn to trademark attorneys or professional search firms for deeper analysis. These professionals have access to proprietary databases, industry-specific publications, and legal tools that go beyond internet and state searches. They can identify:

  • Similar marks in niche industries.
  • Uses in smaller markets that may not appear in national media.
  • Prior use that could derail your application.

An attorney can also evaluate likelihood of confusion under trademark law, giving you a realistic assessment of your chances for registration and enforcement.

Reasons to Consider Doing a Common Law Trademark Search

Before launching your new business, it's a good idea to do a common law trademark search on the name you want to use for your company. This is why:

  • To accelerate a business launch

It can take up to one year to get the registration of your trademark. This is a long time to wait if you need the USPTO's approval before selling your product/brand. A trademark attorney will only take a few weeks to complete a common law search. You'll know much sooner if you can use the mark and start your business before the registration approval.

  • To avoid wasting money

Spending money on advertisement, gadgets, and business expenses isn't wise until you've completed an extensive trademark search. If you begin making your product and the USPTO rejects your application, it will be all wasted money. Also, you might be sued for trademark infringement before you receive the USPTO rejection.

To sell a product that customers can easily identify without confusion is in any company's best interest. Also, confusing customers with a mark that's similar to another one can because problems later on.

  • To avoid trademark infringement

Doing a common law search is your best option to give you peace of mind and avoid getting sued for trademark infringement.

If a competitor sues you for trademark infringement and succeeds, you won't be able to use your mark. This means you'll have to replace it on all advertising materials, your website, and gadgets, which can become a very expensive problem. Also, the court might order you to pay yours and your competitor's legal fees and pay damages to your accuser.

You should also keep in mind that even if the USPTO approves your trademark application, this doesn't mean you automatically hold the trademark rights. The USPTO, in fact, only checks its database when deciding to approve or deny an application. If a company has been using the same or a similar mark, it owns the rights to it even if the company never applied for trademark registration.

If you register a trademark and the previous user sues you for infringement, you will see your trademark registration canceled and you won't be able to use the mark anymore. If the previous user had trademark rights in a specific geographic area, you won't be able to expand your business in that area.

Be also aware that having a corporate name approved by a Secretary of State doesn't grant you trademark rights, and you could still be sued for infringement.

  • To develop a strong brand name

Choosing a trademark that is similar to other brands and confusing to the public might lower the value of your brand. It's smart to do a complete search, choose a name that stands out, and develop a stronger brand.

How To Perform a Common Law Trademark Search

In order to make sure you can use your chosen mark and be protected, you will need to go through a few steps.

  1. Search the Internet for your mark Searching the web should be your first step. Search with a search engine such as Google, then look through the products offered within your industry.
  2. Search in the USPTO Database Searching for your mark in the USPTO database, although not enough to give a final answer, is the next step. Simply go to the USPTO homepage, click Trademarks, and then Search Trademarks Database. You will be redirected to the TESS search engine, which lets you search for a basic wordmark or a word. If your mark is a visual one, you need to first look up the Design Code Search Manual to find the relevant design codes.
  3. Search as broadly as possible Don't limit the search to your immediate business area, but also consider other classes of products that might be related to your product. When a company acquires trademark rights, it also acquires rights for related products that it might offer in the future.
  4. Don't limit the search to your identical mark Try and locate possible variations of your mark. Look for words that sound similar, plurals, gender variations, and foreign translations. Choosing a similar mark that may confuse the public can lead to trademark infringement.
  5. Expand your search and get professional help Not finding similar marks in the USPTO database or the Internet is good news, but it's not enough to ensure you can use the chosen mark. It's time to go through the above-listed resources and complete a Common Law Trademark Search. If you feel overwhelmed by the thought of performing such an extensive search, you can hire a trademark lawyer to do the research for you. A professional will give you a report of any similar trademarks they find. This type of search can be expensive (depending on the quality of the search, it can cost from $25 to $500), but it's well worth the cost if you plan on investing lots of money in your new business.
  6. Apply for registration of your mark If you have completed a common law trademark search and didn't find a mark similar to yours, congratulations! You can now apply to register your mark with the Patent and Trademark Office.

Risks of Relying Solely on Common Law Rights

Some businesses assume common law rights are sufficient protection, but this strategy carries risks. Without federal registration:

  • You may have to defend your rights repeatedly in local courts.
  • Competitors could register a similar mark federally, gaining nationwide protection and limiting your expansion.
  • Proving your priority of use can become costly and fact-intensive.

For these reasons, even if your common law trademark search reveals your chosen mark is available, it is generally advisable to follow up with a USPTO registration to secure broader and stronger rights.

Frequently asked questions

  1. Do I need to register a trademark if I already have common law rights?
    No, registration is not required, but it provides stronger nationwide protection and easier enforcement than common law rights.
  2. How far do common law trademark rights extend?
    They extend only to the geographic area where the mark has been used and gained consumer recognition.
  3. What happens if my desired trademark is already used under common law?
    You may be prevented from registering or using the mark, even if the other party never filed for federal registration.
  4. Can I sue for infringement with only common law rights?
    Yes, but you must prove priority of use and consumer recognition, which can be more complex and expensive than with a registered trademark.
  5. How much does a professional common law trademark search cost?
    Costs vary but typically range from $25 for basic online tools to several hundred dollars for comprehensive attorney-led searches.

Performing a common law trademark search is essential to launch a strong and successful brand. If you have any doubts about performing a trademark search, the lawyers on the UpCounsel's marketplace can help you out. With an average of 14 years of legal experience and a degree from some of the most important law schools in the country, UpCounsel lawyers can make sure your business is off to a great start.