Why You Should Not Rely on a Common Law Trademark to Protect Your Brand

If you are a business owner, you might have heard of the term common law trademark. A common law trademark is a trademark that is established solely through use in commerce in a specific geographical area, without being registered with the state or federal government. You can declare your ownership of a common law trademark by adding a superscript “TM” to your mark.

You might think that having a common law trademark is enough to protect your brand from competitors who might want to use similar marks. However, relying on a common law trademark has many disadvantages and risks that could harm your business in the long run. Here are some reasons why you should not rely on a common law trademark and why you should consider registering your mark with the United States Patent and Trademark Office (USPTO).

a neon sign  with the words "this is the sign you've been looking for" on a brick wall

If you are a business owner, you might have heard of the term common law trademark. A common law trademark is a trademark that is established solely through use in commerce in a specific geographical area, without being registered with the state or federal government. You can declare your ownership of a common law trademark by adding a superscript “TM” to your mark.

You might think that having a common law trademark is enough to protect your brand from competitors who might want to use similar marks. However, relying on a common law trademark has many disadvantages and risks that could harm your business in the long run. Here are some reasons why you should not rely on a common law trademark and why you should consider registering your mark with the United States Patent and Trademark Office (USPTO).

Limited Protection

A common law trademark only protects your mark in the geographical area where you use it in commerce. This means that if you operate your business in California, you can prevent other businesses in California from using your mark or a confusingly similar one. However, you cannot stop someone from using your mark in Wisconsin or New York, unless you can prove that you have a reputation or goodwill that extends beyond your region.

This could be a problem if you want to expand your business to other states or if you sell your products or services online. You might find out that someone else has already registered or used your mark in another state, and they could prevent you from entering their market or sue you for infringement12. You might also lose customers or followers who might be confused by the similar marks and think that they are dealing with the original brand.

Difficult Enforcement

Another disadvantage of having a common law trademark is that it is harder to enforce than a registered trademark. If you want to stop someone from using your mark or a similar one, you have to prove that you have a valid common law trademark, that you used it first in commerce, that the other party’s use is likely to cause confusion among consumers, and that you have suffered damages as a result. This could be costly and time-consuming, especially if you have to gather evidence from multiple sources and jurisdictions.

On the other hand, if you have a registered trademark, you have several advantages over a common law trademark owner. For example, you have the presumption of validity and ownership of your mark nationwide. You also have the right to use the ® symbol, which puts others on notice of your rights and deters potential infringers. You can also file an infringement lawsuit in federal court, which has more remedies and resources than state courts. You can also record your registration with the U.S. Customs and Border Protection, which can help prevent the importation of counterfeit goods bearing your mark.

Risk of Infringement

A third reason why you should not rely on a common law trademark is that you might be infringing on someone else’s rights without knowing it. Before you start using a mark in commerce, you should conduct a thorough clearance search to make sure that no one else is already using or has registered the same or a similar mark. This search should include not only the USPTO database, but also various sources such as the internet, public records, newspapers, industry directories, social media, and domain names. You should also consider variations of your mark such as different spellings, plural or singular forms, and similar-sounding words.

If you fail to do a proper clearance search, you might end up infringing on someone else’s common law or registered trademark. This could result in legal consequences such as having to stop using your mark, paying damages, changing your name and rebranding your business, losing customers and goodwill, and facing negative publicity.

Conclusion

As you can see, having a common law trademark is not enough to protect your brand from competitors who might want to use similar marks. A common law trademark has limited protection, difficult enforcement, and risk of infringement. Therefore, if you value your brand and want to secure its future success, you should consider registering your mark with the USPTO. By doing so, you will gain stronger and broader rights over your mark, as well as more benefits and advantages.

If you need assistance with registering your trademark or any other trademark matter, please contact us today for a free consultation with a trademark attorney.