What sets common law trademarks aside from their registered counterparts is the fact that they are not filed with the USPTO. Instead, common law trademark holders use their marks in commerce to assert ownership over them. These marks get a minimum amount of protection, much less then they would had they been officially registered.
Who Qualifies for Common Law Trademark Protection?
In order to be eligible for common law trademark protection, a mark must be distinctive. This means that it must be capable of identifying the goods or services of its owner and distinguishing them from those of others.
A mark can be either inherently distinctive or acquire distinctiveness through use. Inherently distinctive marks include fanciful or arbitrary marks, such as made-up words or new words with no dictionary meaning (think “Kodak” or “Sony”). However, most marks are not inherently distinctive and must acquire distinctiveness through use over time. This means that the mark must become distinctively associated in consumers’ minds with a particular company’s goods or services.
Benefits of Registering With the USPTO
Common law trademark protection is available for both unregistered and registered trademarks that are in use in commerce. However, there are some important benefits to registration, including a legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the specified goods or services. Therefore, even if your mark is entitled to common law protection, you may want to consider federally registering it with the USPTO.
If you believe that someone is infringing on your common law trademark rights, you should contact an experienced US trademark attorney who can help you assess your claim and take appropriate action.
How to Register Your Mark With the USPTO
If you have a strong common law trademark, you may want to consider federally registering it with the USPTO. The process of federal registration is relatively simple and straightforward, and it provides a number of important legal benefits.
To register your mark with the USPTO, you will need to file a trademark application and pay the required filing fee. You will also need to provide a specimen of your mark as it is used in commerce, and you will need to identify the goods or services with which your mark is used.
Once your application is filed, it will be assigned to an examining attorney, who will review it to ensure that it meets all legal requirements. If the examining attorney determines that your mark is eligible for registration, he or she puts it up for a period of public comment. During this time, anyone can oppose your trademark registration if they believe that it would cause them confusion or harm in the marketplace.
If there are no objections to your mark, or if any objections that are raised are overcome, your mark will be registered and you will be issued a certificate of registration. You will then have the exclusive right to use your mark in connection with the goods and services specified in your registration.
You can renew your trademark registration indefinitely as long as you continue to use your mark in commerce.
Why Hire a Trademark Attorney?
Trademark attorneys know the ins and outs of the process and can help you navigate potential pitfalls. They can also help you choose a strong mark that is not likely to be confused with other marks and will be more easily registered.
Federal trademark registration is much easier to accomplish with an attorney who can also fight for your intellectual property rights if your mark is being used by someone else without your permission.