Common Law Trademarks in the USA

Just because you haven’t secured a federal trademark registration in the U.S. does not mean your trademark is worthless and not afforded any protection.  In the U.S., rights are built up based on USE of the mark.  Of course, federal registration does afford many benefits and we would encourage registering your mark, but we realize this is not always possible.

When it is not, and you are operating on “common law”, here are a few things to keep in mind.

Protection of your trademark begins with the first use of the trademark in commerce (state) or interstate commerce (federal).  This protection lasts as long as the trademark is used and distinguishes the source of the owner’s goods and/or services from others’.

As there is no “opposition” system to fall back on in common law, to enforce your rights you have to rely on “trademark infringement”.  A trademark infringement action can be brought on the grounds of likelihood of confusion, mistake, or deception.  These actions are dealt with by the U.S. district courts and United States International Trade Commission (USITC), and state courts.

The remedies available in trade mark infringement actions generally include monetary awards, injunctive relief, enhanced damages and impoundment and destruction of the infringing goods.

Trademark infringement actions are costly and can be avoided by registering your mark and putting others at notice of your mark.  Contact us and we can make the process pain-free.

By Waheedan Jariwalla

US Attorney

Waheedan@trademarkroom.com