Common law trademark rights are one of the most widely misunderstood areas of the trademarks industry. So what exactly are common law trademark rights and how do they affect your business?
Common law trademark rights can be acquired by continuously using your business name/logo in relation to your goods and/or services.
As long as your business name/logo doesn’t conflict with an already registered trademark, then you gain common law trademark rights by simply using your business name/logo in relation to your goods and/or services. Additionally, if you are the first user of the mark, common law trademark rights can protect your mark in your geographical area even if someone else gets a federal nationwide registration for the same mark.
Sound too good to be true? Well there are, somewhat unsurprisingly, numerous disadvantages of common law trademark rights. These include:
(1) Common law trademark rights are limited to only the geographical area in which the mark is used. For example, if a business has only operated in the Chicago area then their common law trademark rights would only cover the Chicago area only. In contrast, a successful trademark registration with the USPTO provides nationwide rights to the mark.
(2) A common law trademark owner often has very limited ways to deal with another business infringing their mark. In some jurisdictions the common law trademark owner is only able to submit a court order for the defendant to cease and desist the infringement.
(3) Common law trademark rights are difficult to enforce because no public record exists of your mark or when you first used it in commerce. For similar reasons it can be very difficult for new businesses to find out if anyone has existing common law trademark rights for their mark.
So how exactly do you conduct a common law trademark search? A comprehensive common law trademark search can include the following:
(1) A company name search using all official records within your country.
(2) An identical and very similar domain name search using the most common TLDs (top-level domains).
(3) An internet search of the trademark name coupled with the most relevant keywords.
(4) An internet image search if the mark contains imagery.
(5) A social media search of the mark being used in the world’s largest social networks, namely Facebook, Twitter, Linkedin, Google+, Instagram and Pinterest.
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