Have you ever wondered what the difference between ™ or ℠ and ® is in the marketplace? Well, there are two categories of trademark rights: the federally registered trademark and the common law trademark right.
These symbols represent different trademark rights, but in their proper form, the ™ or ℠ symbols mean common law trademark rights. Contrarily, the ® symbol means federally registered trademark rights as seen in the United States Patent and Trademark Office (“USPTO”).
A common law trademark protects the name, logo, symbol, or other identifiers of a product or service while it is in the process of being registered with the federal or state government. It protects an owner’s intellectual property as well as any consumers who may not know the source of a service or product.
Common law trademark protection is crucial for small businesses since it ensures local competitors don’t use your mark. Read on to find out how to get a common law trademark for your business.
Common law trademark
A person has a common law trademark when they have produced a unique phrase or name associated with a service or product that has not been federally trademarked. Court decisions can then provide common law ownership rights.
This gives the owner most, but not all, of the rights of an officially registered trademark. For example, a common law copyright owner can freely use either the SM (service mark) or the TM (trademark) but not the ®.
Also, since common law copyright only applies at the state level, it will only be enforced within a specific jurisdiction. So, say you have a common law trademark in Houston and want to enforce your ownership rights to the trademark. You must first consult your trademark lawyer in Houston, who will help you register the trademark with the USPTO.
Establishing a common law trademark
Not much paperwork or fees are involved in registering common law trademark rights. When you begin using a trademark by putting it on your goods, branding your website with it, or putting it on a sign in your shop, you have started obtaining a common law trademark right.
By using the mark, you are establishing your place in the market, which notifies your customers that this mark is connected to your product or service. This, in turn, makes your common law right stronger. A trademark acts as a protective measure for the goods sold and bought by the owner.
Interestingly, there is no specific rule that identifies the number of transactions you must have before ‘use’ is achieved. However, sporadic or one-off sales don’t count. So, you must be selling your services or goods consistently before you can earn a common law trademark right.
Geographical restrictions of common law mark
The right of a common law trademark is usually within the geographical area of your business operation. But, sometimes, the qualification of the geographical scope of common law can be a bit more complicated. The protected geographic range is dependent upon several factors surrounding mark usage.
These include:
Market penetration zone
This includes the number of customers a business has compared to its potential customers. A business with good sales in a specific region already has established use in that market.
For instance, if your Houston business gets enough customers, then you can protect your business under the common law. However, the protection may not expand to Dallas or Austin.
Reputation zone
This refers to how well-recognized a mark is within a specific geographic area. For example, say a company’s operation is in Houston, but potential and actual customers in Dallas can still identify the goods with its trademark. In such a case, the common law trademark can extend across the state.
Natural expansion zone
This brings into consideration the physical area that a brand can reasonably reach. This is usually determined by previous expansion, business activity, and market dominance.
For example, suppose a business in Austin intends to open a new branch in Houston. In that case, if it has activities there before the opening, it can claim common law trademark rights in Houston before officially starting operations there.
Protecting common law trademark
A business owner is responsible for protecting their common law trademark. Below are some tips that can help an owner protect a common law mark:
Using the ™ symbol
To let competitors know that you have claimed a trademark in a specific territory, you should put the ™ symbol close to your logo or brand name. In doing this, your competitors cannot deny knowledge of your mark in the event of an infringement case.
Pay attention to cases of infringement
You must monitor any infringement cases to protect your common law trademark rights. You can browse the United States Patent and Trademark Office’s Official Gazette for similar marks, trademark registries, or domain registries in your region of operation.
Since common law rights are narrower, it can be hard and near impossible to stop others from using your mark. This said, you can prevent your competitors from using your mark in your area. If you do not take action when you notice an infringement, your rights can be diluted over time.
Common law and trademark registration
Registering your trademark with the United States Patent and Trademark Office (USPTO) provides additional rights and protection. These include:
The major difference is that trademark registration provides the right to sue a person who infringes on your trademark. This right is not given to infringement cases for businesses with common law trademarks.
Final thoughts
In the United States, though it is recommended, it is not necessary to register for a trademark right with the USPTO. Simply being the first person to own and use a trademark will automatically qualify a business for specific rights within the region where the trademark is being used. Many famous federal trademarks began with common law rights.
A trademark application might seem straightforward, like filling out a form. However, it is a legal process involving lawyers and the United States government. So, consider a lawyer’s services for assistance and legal advice when filing for trademark protection.
