Key Takeaways

  • An unregistered trademark offers common law protection based on first use but lacks nationwide enforcement.
  • These trademarks are enforceable within the geographical area of business operations.
  • The (™) symbol can be used with unregistered trademarks to assert rights.
  • Owners must prove actual use and consumer association with the mark to claim protection.
  • Registration offers broader rights, including federal protection and presumptive nationwide ownership.

What Is an Unregisted Trademark?

An unregistered trademark is a logo, graphic, image, or word that has not been approved by the United States Patent and Trademark Office. However, companies can use the trademark (TM) logo to show their company has use of a particular of a visual idea. Other businesses can use this logo without legal matters in some cases.

According to the Trademark Act, unregistered trademarks are also defined as marks for businesses and goods that haven't been registered with the United States Patent and Trademark Office (USPTO). 

Common Law Rights of Unregistered Trademarks

Unregistered trademarks are protected under common law in the United States, which means trademark rights arise from actual use in commerce, not from formal registration. If you’ve been using a mark in your area to sell goods or services, you may have legal grounds to prevent others from using a confusingly similar mark in the same geographic area. These rights are limited to the locations where the mark is used and recognized by consumers.

Under common law, you may still bring a trademark infringement claim, but you bear the burden of proving that your mark has acquired distinctiveness and that the public associates the mark with your business.

Why Are Unregistered Trademarks Important?

The biggest reason why unregistered trademarks are important is that they provide no protection in legal matters outside of local or state government. If you are using an unregistered trademark that represents your business in a small geographic location, you may be able to stop them. However, you cannot keep a party from stealing your brand or logo outside of that service area.

If you've already branded a trademark, your only option is a cease and desist order. If someone steals your logo, you still have legal recourse. You can take the infringer to court, but only if:

  • You can prove the mark is a valid trademark.
  • The infringer lives in another state.
  • The amount in question is more than $75,000.

What makes an unregistered trademark valid is that you only have to prove you were the first to design. The date of the unregistered trademark's design is the deciding factor in litigation. In some cases, you can have your trademark limited by a smaller or larger company if you didn't display it first.

However, you can file a registration that's considered a "constructive use of mark(s)" giving you priority over anything resembling your symbol. In that case, you can file for a trademark. In the meantime, no one can steal your logo. 

Limitations of Unregistered Trademarks

While unregistered trademarks offer some legal rights, they come with significant limitations:

  • Geographic Scope: Protection only applies where the mark has established a reputation.
  • Burden of Proof: The owner must prove that the mark has achieved consumer recognition (secondary meaning).
  • No Federal Remedies: Owners cannot file lawsuits in federal court unless specific diversity or monetary thresholds are met.
  • No Customs Protection: You cannot stop counterfeit goods at the U.S. border using an unregistered trademark.
  • No Presumption of Validity: Unlike registered marks, unregistered ones do not benefit from a legal presumption of ownership.

The Lanham Act

Any word, name, symbol, or device is protected by law. However, it's the Lanham Act that offers more. Trademark infringement is based upon use. A plaintiff with an unregistered trademark can win a court case. They must prove:

  • They had the first trademark in the market.
  • The trademark is valid, registered or not.
  • The other party wanted to confuse customers.

The Lanham Act was settled by the Popular Bank of Florida v. Banco Popular de Puerto Rico ruling. Under the Lanham Act, the other company must stop using your trademark, and you may also win restitution. 

Using the ™ Symbol with Unregistered Trademarks

Even without registration, you are entitled to use the ™ symbol with your mark. This symbol puts the public on notice that you claim common law rights to a trademark. It does not require prior approval or filing and can help establish evidence of your intent to protect the mark. However, only registered trademarks with the USPTO can legally use the ® symbol.

Reasons to Consider Using an Unregistered Trademark

A business does not need to file for a registered trademark if it has no competitors. In this case, the state court is the only medium that can deny your logo. Otherwise, the burden of proof is on the plaintiff. It's important to note that an unregistered trademark doesn't receive any legal benefits except those provided under common law.

If you decide not to register your trademark, you can still get protection from the law, but only if you can prove that the mark is synonymous with the reputation and goodwill of a product, good, or service. If a company uses a rival unregistered trademark to sell their goods, this violates the common law tort of passing off. Passing off is where a person tries to profit off your reputation. However, proving passing off is the burden of the plaintiff.

Passing off can be successfully tried in court if the plaintiff proves:

  • There's a similarity in trade names and marks
  • The defendant is purposely using their name to sell goods.
  • The defendant can easily confuse customers of average intelligence and imperfect recollection.

State Trademark Laws and Additional Considerations

In addition to common law, some states allow you to register trademarks at the state level. This can provide slightly stronger local protection than unregistered use alone. State registration may be beneficial if:

  • Your business operates solely within one state.
  • You want to create a public record of your claim.
  • You are not ready for or do not meet the requirements for federal registration.

Even if you rely on unregistered rights, it’s wise to conduct a trademark search to ensure your mark doesn’t infringe on an existing federal registration, which could expose you to legal liability.

Reasons to Consider Getting a Trademark

If you are in a larger location or want to expand, a registered trademark is worth the trouble. A registered trademark owner can:

  • Sue an infringer in federal court
  • Define presumption of ownership
  • Fight a court battle over a domain name
  • Be allowed for use in interstate commerce, making it recognizable and preventing infringers from saying they were unaware of the trademark
  • Add potential value
  • Add intellectual rights
  • Online sales
  • Get uncontestability in court if the registered trademark goes unopposed for five years.
  • Triple monetary damages and criminal prosecution for infringers

Even if you've never considered a trademark, it's a form of intellectual property that cannot be denied. In a larger market, it protects you from companies trying to infringe upon your hard work. However, the benefits outweigh any negative consequences making the trademark a sound business decision.

Frequently Asked Questions

  1. Can an unregistered trademark stop a registered one?
    Yes, but only within the geographic area where the unregistered mark was used first. This is called “prior use” and can limit the registered owner's rights in that region.
  2. How do I prove common law trademark rights?
    You must demonstrate that the mark has been continuously used in commerce and is recognized by consumers as identifying your business. Evidence may include advertising, sales records, and customer testimonials.
  3. Can I use the ™ symbol without registering my trademark?
    Yes, any business can use the ™ symbol to claim rights to an unregistered trademark. However, only federally registered marks may use the ® symbol.
  4. What happens if someone uses my unregistered trademark?
    You may have a claim under common law or the Lanham Act, especially if you can prove consumer confusion and established use. You may need to send a cease-and-desist letter or pursue litigation.
  5. Is a state trademark registration enough?
    State registration can be useful for local businesses, but it does not provide the national protections of a federal trademark. It also doesn’t stop others from using a similar mark in other states.

Steps to Apply

If you feel you may benefit from a registered trademark, you can do the work online. After the trademark is approved, you are permitted to use the (R) symbol, which indicates that your idea isn't up for grabs. You can also sue if someone tries to imitate. 

Many small business owners feel that they can't get protection with an unregistered trademark. However, with the Lanham Act and first right, owners may have the protection they need. If you aren't sure about your trademark status, you can post your legal need here and receive free custom proposals from the top 5% of lawyers.