Common Law v. Registered Trademark Rights

By Doni Robinson


What rights does a registration get me? And what happens if I don’t have a registration?

Of course it goes without saying that obtaining a trademark registration in invaluable. But what exactly does that registration grant you? A trademark registration grants the owner the exclusive right to use a mark as it pertains to specified goods and services, and further, allows them to prevent others from using confusingly similar or infringing marks. These exclusive rights are presumed throughout the entire United States. A federal registration also makes it easier for you to bring infringement matters. This is because you don’t have to prove that you have a trademark – a registration alone is sufficient proof of that.

But what protections do you have if you don’t have a registration? If you were the first user of a mark, this use affords you common law rights in that mark from the date of that first usage. The key distinction between a common law trademark and federally registered trademark is that your rights in your common law trademark exist only in the geographic area in which you are using the mark. So, if you’re a small business owner in Cleveland, Ohio and were the first one to use a trademark, but have not yet registered the mark, you can enforce those rights only in Cleveland, Ohio. However, if you then register your mark on the federal register, you have now put others on notice that you wish to extend that protection throughout the entirety of the United States. If someone else registers first, you could face an issue of enforceability throughout all of the United States. But you’ll have the prior rights in Cleveland. It will depend on a variety of factors, including when the other mark first started their usage in commerce.

The best way to avoid this situation is to register your mark as soon as you are using it – especially if you foresee any national expansion in your business. It could be expensive to fight for enforcing your common law rights, as the presumption of your mark is not as strong as it is once you have a federally registered trademark.

Just because you don’t have a registration doesn’t by itself mean you have no trademark rights. However, the presumption of your valid enforceable rights becomes exponential once you obtain that federal registration. If you think you have a common law trademark, and would like to inquire about the necessary steps to obtain federal registration, contact an attorney at Jayaram Law to assist you with the process.