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Common Law Trademark vs. Federal Trademark


First and foremost, what is a trademark? A trademark, as defined by the United States Patent and Trademark Office (the “USPTO”), is “ any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.” In other words, the name of your business, a nice slogan that represents your business, or even an image you drew up yourself to represent your business or brand is a trademark. 

Trademarks are intellectual property and intellectual property has value to both you and the business, so protecting your trademark is important. So how do you protect your trademark and when does such protection arise? The more common way a trademark protection arises is through something called a “common law trademark protection.” The other way trademark protections arise is through getting a state or federal trademark. 

You obtain common law trademark rights by using your trademark in connection with goods or services. You do not have to register your mark with a state or federal agency to receive common law rights to it. However, and importantly, a common law trademark right is limited in its scope of protection. The scope of protection for a common law trademark is generally limited to its actual use. For example, if you use your mark in Houston, you can protect and enforce your rights in Houston, Texas. However, this protection would not generally extend to other cities or counties far away, such as El Paso, Texas. 

However, by filing your trademark with state or federal agencies, you will be able to get expanded protection. For example, if you register your mark in Texas through the Texas secretary of state, you will be able to get statewide protection. If you file to register your mark with the USPTO, you will have nationwide protection on your mark. This is, of course, not without limitation. While your state and/or federal trademark may protect your mark against future infringers, if an individual or entity had been using their mark prior to your use and registration, you will not be able to stop them from continuing to use their mark within the geographic scope of their common law trademark rights. These individuals and entities with prior use have a superior common law trademark right to the trademark in their limited geographical scope, and therefore, one would not be able to prevent them from using their mark as they have been doing. 

If someone is using your trademark without your authority, you have any questions, or wish to federally register your mark with the USPTO, please feel free to contact us at the Vethan Law Firm because Your Problem is Our Business.

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