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  • Justin T. Valentine

Trademark Rights: Common Law vs Federal Registration

Trademarks are a valuable intellectual property for many businesses. Business owners are often faced early on with the decision whether or not to pursue federal trademark registration. While some may choose to rely on common law rights that are automatically attached to all marks used in commerce, there are certain important and superior protections obtained by federal registration which must be considered.

Federal trademark registration secures comprehensive protection for your mark. Such registration grants a trademark owner exclusive rights to use their trademark in connection with the goods and services registered under the mark over all fifty states of the United States. Any mark used in commerce in the United States which is “confusingly similar” to your registered mark is therefore considered infringement, and the registrant may demand that use of the mark be stopped.

By contrast, common law trademark rights are limited to the geographic region in which the mark is used. If, for example, a mark “Oklahoma Oranges” is used for goods only sold in Oklahoma, a business in Kansas or Texas may also be able to use the mark “Oklahoma Oranges” for the same goods and services without infringing the common law trademark rights. However, if “Oklahoma Oranges” was registered federally, no business in any other state would be able to use the mark for the same goods and services.

Further, by registering your trademark federally, the mark is eligible to become incontestable by filing the appropriate paperwork five years after registration. Thus, if your mark is not opposed or cancelled in the intervening time, once it becomes incontestable it can no longer be subject to a cancellation proceeding by another. Common law rights offer no such protection.

When it comes to enforcing your rights, enforcement of common law trademark rights may be constrained the options for legal recourse. Common law trademark owners may be limited to seeking actual damages and injunctive relief. On the other hand, Federal trademark registration includes the ability to pursue statutory damages, attorney's fees, and injunctive relief.

In conclusion, Federal trademark registration offers significant protections over common law trademark rights. However, one will always be protected by the common law until the decision to register a trademark federally is reached. There is also an option to register a trademark just in the state in which it is used, which comes with its own advantages and limitations. Ultimately, the decision whether or not to register a mark is an important one and it is recommended that you contact trademark attorney for a full analysis of your situation. If you have questions regarding your trademark, please reach out to us and a qualified trademark attorney will assist you.

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