by Traverse Legal, reviewed by Enrico Schaefer - July 27, 2012 - b. What is a Common Law Trademark?
Common law trademark rights go to the first entity to use a distinctive mark in interstate commerce. The reality is, common law rights are only applicable to those areas in which you've used the trademark. So for example, if I sell a product and the name of the product is Brand X, if I use Brand X in Michigan and Texas and California, I may have common law trademark rights in Michigan, Texas and California. But I will not necessarily have trademark rights in other parts of the United States unless I actively marketed the good there under that brand and actually made sales there.
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is trademark attorney Brian Hall with Traverse Legal PLC, a law firm representing trademark owners throughout the United States. Today I will be answering a question that I receive on almost a daily basis, "Can I use a trademark that is not registered?"
The answer to that question is, maybe. Unfortunately, the answer to a lot of legal questions really is, "It depends." Here's why. Just because a trademark isn't registered with the United States Patent and Trademark Office doesn't mean that someone out there doesn't have common law trademark rights.
Common law trademark rights go to the first entity to use a distinctive mark in interstate commerce. The reality is, common law rights are only applicable to those areas in which you've used the trademark. So for example, if I sell a product and the name of the product is Brand X, if I use Brand X in Michigan and Texas and California, I may have common law trademark rights in Michigan, Texas and California. But I will not necessarily have trademark rights in other parts of the United States unless I actively marketed the good there under that brand and actually made sales there.
The reason somebody files for a trademark registration with the United States Patent and Trademark Office is in order to get nationwide rights to use of the mark throughout all 50 states. So, when someone asks me the question, "Can I use a mark that's not registered," I always answer, "Maybe," because a common law trademark search needs to be done, not only a search of the United States Patent and Trademark Office database.
A common law trademark search entails many different things. It at its highest level is done just by using a search engine such as Google. You look for uses of that term and see if it's used in connection with same or similar goods and services. You can also see if similar marks are used in connection with the same or similar goods and services. That will give you an idea of whether or not someone may be able to claim common law trademark rights, irrespective of the fact that they did not register that mark with the United States Patent and Trademark Office.
So at the end of the day, it's impossible for a trademark attorney to answer the question of whether or not someone can use a mark that's not registered without doing a trademark availability assessment, or sometimes known as a trademark clearance.
Now, the other issue that's related to this is, what happens if you look at the United States Trademark Office database and see that a mark used to be registered, but has since been cancelled or abandoned?
In that instance, some believe that they are free to use the mark because it's no longer registered. Once again, that's not true. The same rules that I talked about before apply. If that entity simply failed to renew their trademark registration with USPTO, they may still have common law trademark rights in all those places that they had used it in the past. Furthermore, they might be able to revive an application that has been canceled if they do it within the certain amount of grace period that's provided by the USPTO.
So, while searching the United States Patent and Trademark Office's database is critically important to determine whether or not you can use a particular mark, it is not the only thing that must be done. Instead, you must do a common law trademark search to see if someone else has common law trademark rights that would take priority over any rights you could claim in that particular mark.
So once again, this has been Attorney Brian Hall, answering your question, "Can I use a trademark that is not registered?"
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
