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Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product's source. Common law marks are marks protected because they have been adopted and used, and the public recognizes the products or services identified by the mark as coming from a particular source. The term "common law" indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law.
Coexistence of Federal, State, and Common Law Trademark Rights
Federal trademark law coexists with state
and common-law trademark rights. Originally, state common
law provided the main source of protection for trademarks.
However, in the late 1800s, the U.S. Congress enacted the
first federal trademark law. Since then, federal trademark
law has consistently expanded, taking over much of the ground
initially covered by state common law.
Federal trademark law is embodied in the
Lanham Act, which was enacted in 1946 and most recently amended
in 1996. The Lanham Act is based upon the Commerce Clause
of the Constitution. Congress enacted the Lanham Act under
its Constitutional grant of authority to regulate interstate
and foreign commerce. Therefore, to obtain a federal trademark
registration, in most cases the owner of a mark must demonstrate
that the mark is used in a type of commerce that may be regulated
by Congress.
The Trademark Law Reform Act of 1988 amended the Lanham Act to establish trademark rights, which vest upon registration following use of the mark in commerce, as of the filing date of a trademark application indicating a bona fide intent to use the mark in commerce. For trademarks used in commerce, federal trademark protection is available under the Lanham Act.
Many states have trademark registration statutes
that resemble the Lanham Act, and all states protect unregistered
trademarks under the common law of trademarks. A trademark
registered under the Lanham Act has nationwide protection.
Today federal law provides the main and the most extensive
source of trademark protection, although state common law
actions are still available.
State and Federal Registration Systems
Registration at either the federal or state
level is not necessary to create or maintain ownership rights
in a mark. State registration systems exist throughout the
country to allow the owners of common law marks to register
them if they are used within a particular state. As commerce
between the various states evolved, the federal system of
registration emerged to provide protection for marks in interstate
commerce. Federal protection may be available for the name
of a product and/or service, a logo, or any other mark that
identifies the source of a product or service. Common law
and state registration rights are enhanced by the benefits
associated with federal registration.
Federal registration, a system created by
federal statute, is not required to establish common law rights
in a mark, nor is it required to begin use of a mark. However,
federal registration, if available, is almost always recommended
and gives a trademark owner substantial additional rights
not available under common law. Federal registration rights
can be renewed and can last forever.
Limited to Geographic Area of Mark
Common law trademark rights are limited to the geographic area in which the mark is used. It can be difficult to discover whether anyone has trademark rights in a particular mark because no registration is required in order to establish common law rights to a trademark.
First-in-Time Rule
The general rule is often referred to as
"first-in-time," which states that the first person
or entity to use a trademark in commerce receives common law
protection for the use of that trademark. Thus, this "first
person" can prevent others from using that same trademark
even if this "first person" never registered the
mark. Therefore, conducting a comprehensive trademark search
is vital in helping make the determination of whether to proceed
forward with a trademark registration even if the mark is
not registered with the United States Patent and Trademark
Office (USPTO) by another person or company. The first business
to use a trademark generally obtains certain common law rights
to it, whether or not it is registered. The owners of unregistered
trademarks may indicate their claim to common law rights to
the trademark by using "TM" with it. Priority of
trademark rights between owners of confusingly similar marks,
regardless of whether the marks are federally registered,
is based upon first use of the mark.
Common Law Rights Arise from Actual Use
Federal registration is not required to establish
rights in a trademark. Common law rights arise from actual
use of a mark. Generally, the first to either use a mark in
commerce or file an intent-to-use application with the USPTO
has the ultimate right to use and registration.
Common Law Search
A common law search involves searching records
other than the federal register and pending application records.
It may involve checking phone directories, yellow pages, industrial
directories, state trademark registers, databases, and other
sources to determine whether a given trademark has been used
already. A common law trademark search is generally done after
searching the USPTO database of registered trademarks. In
order to register a trademark, the federal trademark application
requires a signed declaration from the applicant that states,
"to the best of his/her knowledge no other person, firm,
corporation, or association has the right to use the above
identified mark."
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