Common Law Trademark Rights: What Use Alone Gives You and Where It Stops

How common law rights start

Common law rights come from use, not from a government filing. The USPTO says you establish rights in your trademark by using it with your goods or services. Use means putting the mark in front of customers in the way you sell: on the product, packaging or labels for goods, and in advertising and on websites or social media for services. The earlier post listed these examples. The USPTO page on owning versus registering a trademark confirms the basic point but does not list media, so the list is illustrative.

The earlier post said common law rights give robust protection and that the owner can enforce them in court and recover money. Federal law does support civil claims for unregistered marks. Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1)(A), makes liable any person who uses in commerce any word, term, name, symbol or device, or any false designation of origin, that is likely to cause confusion about the source of goods or services. It lets any person who believes they are likely to be damaged bring a civil action. The statute does not require registration for that claim.

The area of use sets the limit

The USPTO says rights from use are limited and apply only to the geographic area in which you provide your goods or services. If the use covers less than the whole country, you may be able to enforce the rights only in the places where you use the mark. Its example is a person who sells handmade jewelry at a local farmers' market under a mark. As the business grows online, the owner might want federal registration for broader protection.

The earlier post used a Seattle coffee shop and said someone could open one with the same name in Miami without infringing. That is too absolute. Where common law rights end is a question of fact: where the mark is used, advertised and known. Online sales shipped nationwide make that boundary harder to draw, and the earlier post was right that these cases can be complicated. Keep dated records of where you sell, where you advertise and how far customers come from.

Common law rights and a later federal registration

Federal registration changes the position of everyone who comes later. Once a mark is registered on the Principal Register, the filing date is constructive use that gives a nationwide right of priority against anyone except a person who used the mark before the filing and has not abandoned it (15 U.S.C. §1057(c)). Registration is also constructive notice of the registrant's claim of ownership (§1072).

The statute protects an earlier local user in a limited way. In an infringement action, it is a defense that the accused mark was adopted without knowledge of the registrant's prior use and has been continuously used from a date before the registrant's constructive use. The defense applies only for the area in which that continuous prior use is proved (§1115(b)(5)). The incontestability section carries a similar carve-out for rights under state law that continue from before registration (§1065).

The same logic runs the other way. A mark that so resembles a mark or trade name previously used in the United States by another and not abandoned, as to be likely to cause confusion, can be refused registration (§1052(d)). The USPTO adds that earlier common-law use may affect the rights provided by your federal registration. The earlier post's Atlas Fitness example applies the same logic: a later local user may infringe an earlier federal registration for the same sort of services, whether or not the registrant operates in that city. Section 1052(d) also lets the USPTO issue concurrent registrations in limited circumstances, with conditions on where each owner may use the mark.

How long common law rights last

The earlier post said common law rights can last indefinitely with continuous use, in contrast to a registration that needs maintenance. That is broadly right, but two limits apply. First, the rights depend on use. Under 15 U.S.C. §1127, a mark is deemed abandoned when its use has been discontinued with intent not to resume, and nonuse for three consecutive years is prima facie evidence of abandonment. Intent not to resume may be inferred from circumstances.

Second, strength matters. The USPTO says weak marks can be difficult and costly to defend, and that descriptive marks may be registrable only when they gain distinctiveness through extensive use. The same practical point applies to unregistered descriptive names: the more a name merely describes the goods, the harder it is to hold anyone else back.

Practical steps for an unregistered mark

These steps follow from the sources above:

1. Use TM for goods or SM for services with the mark. Do not use ® until the mark is registered (TMEP §906).
2. Keep evidence of first use, places of sale, advertising and sales volume by area.
3. Search the USPTO database before you expand, and add state registries, business-name records and the internet. The USPTO's own results do not include unregistered users.
4. Decide when federal registration is worth filing. A federal registration gives nationwide rights, while state registration gives rights in that state only (USPTO).
5. Look at dead records, too. An owner of a lapsed registration may still be using the mark.