YourBrand™ or YourBrand® — The Difference Between Common Law and Federal Registration of Trademarks

As a trademark attorney, I can attest to the importance of having a federally registered trademark. However, even if you do not have federal registration, you may have common-law protection if you’ve been using a trademark in commerce.

Federal registration is obtained by filing a trademark application with the U.S. Patent & Trademark Office. The application will be examined, and if approved, a federally registered trademark will issue. This means that the trademark may use the symbol ®, as in YourBrand®.

If you don’t have a federal registered trademark, you may still have what’s called a “common law” trademark. A common law trademark is a trademark that has been used in commerce to sell goods or services. This includes sales made on websites, to sales made at farmer’s markets, and everything in between. Using a trademark to identify specific goods or services that are sold to consumers is sufficient to create common law rights in a trademark. If you have such a trademark, you may use the symbol ™, as in YourBrand™. For more information about Trademark Basics, see here.

                                                  Compare and Contrast                                                           Federally Registered Trademarks and Common Law Trademarks

Infringement Lawsuits.  Both federally registered trademarks and common law trademarks provide protection, and may be the basis for a trademark infringement lawsuit.

Geographic Limitations.  A common law trademark provides protection only in the geographic area where the common law trademark has been used.  A federally registered trademark provides protection across the United States.

Awareness Limitations.  All federally registered trademarks can be found in the U.S. Patent & Trademark database. Anyone may go to this database and search for a particular mark. If your trademark is registered, it will appear in this database. In contrast, there is no central repository for common law trademarks. Thus, if you have a common law trademark, it’s possible that others will not know about your trademark, and they could apply for federal registration of your trademark. Obviously, this can lead to a myriad of problems.  These problems can be avoided by obtaining federal registration of your trademark.

Practice Tip — Apply for federal registration of a trademark to provide notice that you own the mark, and to forestall others from applying for a trademark that is identical or similar to your trademark.

 

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