Registered Trademark vs. Common Law Trademark – What’s The Difference?
As a trademark attorney, one of the questions I’m frequently asked is the difference between a registered trademark vs. common law trademark. While the two types of trademarks may seem similar, they are different in several important ways. In this post, I will explain the differences between these two types of trademarks.
A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods or services of one party from those of others. Trademarks serve as a way for consumers to identify the source of the goods or services they are purchasing. There are two types of trademarks: registered and common law.
A registered trademark is a trademark that has been registered with the United States Patent and Trademark Office (USPTO). A common law trademark, on the other hand, is a trademark that is created simply by using the mark in commerce. No registration is required for a common law trademark, but there are some limitations to its protection.
A registered trademark is created by filing an application with the USPTO. The application must include a description of the mark, the goods or services associated with the mark, and evidence of use in commerce. Once the application is approved, the trademark is registered with the USPTO, and the owner is granted exclusive rights to use the mark in connection with the goods or services listed in the registration.
A common law trademark is created simply by using the mark in commerce. For example, if you start a business and use a particular logo to identify your products or services, that logo becomes your common law trademark. However, common law trademarks are limited in their protection, and the owner of a common law trademark may have to go to court to establish their ownership of the mark.
Scope of Protection
A registered trademark provides broader protection than a common law trademark. A registered trademark is presumed to be valid, and the owner is granted exclusive rights to use the mark in connection with the goods or services listed in the registration. The owner of a registered trademark can sue for infringement and may be entitled to damages, including profits and damages for harm to the goodwill associated with the mark.
A common law trademark, on the other hand, provides limited protection. The owner of a common law trademark must establish that the mark has acquired secondary meaning, meaning that the mark is widely recognized as identifying the source of a particular product or service. This can be a difficult and expensive process, and the scope of protection for a common law trademark is generally limited to the geographic area in which the mark is used.
Enforcing a registered trademark is generally easier than enforcing a common law trademark. If someone uses a registered trademark without permission, the owner can sue for infringement and may be entitled to damages. In contrast, enforcing a common law trademark can be more difficult, as the owner must first establish that they have a valid trademark and that the defendant’s use of the mark is likely to cause confusion.
A Registered Trademark Is a Stronger and More Valuable Brand
A registered trademark can help to build a stronger brand and increase its value by making it more recognizable and memorable to consumers. This can help to create customer loyalty and drive sales, which can be especially important in competitive industries.
Use of the ® and TM Symbols
Only registered trademarks can use the ® symbol, which indicates that the mark is registered and provides notice to others that the mark is protected. This can help to deter potential infringers and make it easier to enforce the trademark against them. In contrast, the TM symbol can be used at any time, even before filing an application to register a trademark. The TM symbol simply means that you consider yourself to have common law rights to your trademark and it has very little legal significance.
A registered trademark provides nationwide protection, which means that the owner can prevent others from using the mark in any state or territory in the United States. This makes it easier for the owner to expand their business into new geographic areas without having to worry about trademark issues.
In contrast, a common law trademark is only enforceable in the geographic area where the mark is used, so the protection afforded to this right is extremely limited. Therefore, a common law trademark will not prevent a larger, national company form using a trademark similar to the mark in other states, as common law trademark rights are only relevant to the geographic region where the common law trademark is used.
For example, if a coffee blend is sold under the name DARK BEAN in New York only, the trademark rights to that name exist only in New York. If another coffee retailer begins to market a different blend in New Hampshire under the same name (assuming they had no knowledge of the New York company, then there would be no trademark infringement. However, if the New Hampshire company attempted to sell their coffee blend nationwide, they would discover that the New York company’s common law rights to the mark would prevent from entering the New York market.
In conclusion, a registered trademark provides broader protection than a common law trademark. While a common law trademark is created simply by using the mark in commerce, the owner of a common law trademark has limited protection and may have to go to court to establish their ownership of the mark. In contrast, a registered trademark is presumed to be valid, and the owner is granted exclusive rights to use the mark in connection with the goods or services listed in the registration. Enforcing a registered trademark is generally easier than enforcing a common law trademark, making registration a wise choice for businesses that want to protect their valuable intellectual property.
If You Have Not Yet Registered Your Brand as a Trademark, What Are You Waiting For?
If your company’s products or service offerings are not confined to a small region that includes multiple states, a federal trademark registration should be obtained because federal trademarks offer a lot more protection than common law trademarks. Because federal trademarks are more costly and complex, they should be prepared and filed by an experienced trademark attorney.
Get in touch with us and we’ll handle the entire trademark registration process for you. We can be reached at 1 800-651-7301, via email at firstname.lastname@example.org, or through our contact form. One of our attorneys will get back to you within 24 hours of your submission to schedule a phone consultation, virtual meeting, or an in-person meeting with you. We look forward to hearing from you!