The United States recognizes the rights of trademark owners who are the first to use a mark in connection with particular goods or services. These rights are called common law trademark rights and may be established solely by the use of a trademark in connection with goods or services in interstate commerce. 

You can acquire common law trademark rights even if you do not have a state or federal trademark registration.  In some cases, these rights can be the basis for challenging an existing trademark registration for the same or similar mark, if you were the earlier user.

However, there are some limitations with common law trademark rights.  A key limitation is that these rights are limited to the geographic area where a mark is being used.  For example, if you own and operate a chain of coffee shops in New York and New Jersey, your common law rights to your mark are likely limited only to this geographical area.  Your common law rights would not extend to the West Coast or the Southern United States.

However, if your coffee shops are located across the United States, your common law rights may extend to all geographic areas in the country. In this case, your rights may even completely supersede the rights of the owner of a federal trademark registration for the same mark in connection with coffee shops, if you were first to use the mark.

It is important for business owners to know what common law rights they may have in their trademarks and the limitations of these rights.  On the reverse, if you have a federal trademark registration for your mark, it is important to know the risks that another party’s common law rights could bring to your registration.

There are some steps business owners can take to both avoid future challenges from owners of common law trademark rights and to ensure they are aware of any common law rights they have in their marks.

1. Run a Clearance Search

Before launching a brand or using a trademark, business owners should conduct a trademark clearance search to make sure a mark is available for their use and not in use by another party who may have superior common law rights.

2. Keep Detailed Records of Use

Trademark owners should keep records showing their earliest use of a mark in commerce with details on the geographic areas where the mark has been used.  This is key if you ever need to rely on your common law trademark rights to challenge the use of a subsequent user of the same or similar mark.  

3. File an Application for a Federal Trademark Registration

Securing trademark registrations for your marks provides numerous benefits above those provided only by common law rights. 

If you need assistance with a trademark matter, feel free to contact us.