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  • Writer's pictureDEBORAH MORTIMER

Understanding the Different Types of Trademark Protection:

Updated: Jul 2

US Federal, State, and Common Law Rights?



Did you know that there are different levels of trademark protection?  In this article, we’ll explore the differences between federal, state, and common law rights and the protections and considerations for each. You can also explore which type of trademark protection might be best for your business.

Federal Trademark Protection- Highest Protection

Federal trademark protection in the United States is governed by the United States Patent and Trademark Office (USPTO). When you register a trademark with the USPTO, you gain nationwide protection and a host of additional benefits.

 

Who is it for?

Brands that offer or sell products/services in more than one state in the US or intend to.


Benefits:

1. Nationwide Protection: Provides protection across all 50 states, regardless of where your business operates.

2. Legal Presumption of Ownership: Grants you the presumption of ownership and exclusive right to use the trademark nationwide for the registered goods or services.

3. Public Notice: Your trademark is listed in the USPTO database with all registered and pending marks, putting others on notice of your claim to the trademark, which can help deter potential infringers.

4. Right to Use the ® Symbol: Only federally registered trademarks can use the ® symbol, which signifies that the mark is officially registered.

5. Access to Federal Courts: Federal registration allows you to bring legal action for trademark infringement in federal court.

6.Can use your registration as a basis for filing for foreign trademark protection.

7. Customs Protection: You can enlist the help of U.S. Customs and Border Protection to prevent the importation of infringing goods.


Considerations:

- The registration process can be time-consuming and requires a thorough examination by the USPTO.

- There are fees associated with filing and maintaining a federal trademark registration.


State Trademark- Limited Protection

State trademark protection is available through individual state trademark offices or Secretary of States. While not as comprehensive as federal protection, state registration can still provide valuable rights and benefits.


Who is it for?

Brands that only operate within a specific state with no plans for expansion. An example is a childcare center that operates within only one state and whose customers are all located within that state.


Benefits:

1. In-State Protection: Provides protection within the specific state where the trademark is registered.

2. Simpler Process: State registration processes are generally simpler and quicker than federal registration.

3. Cost-Effective: Fees are often lower than federal fees.

4. Legal Recognition: Serves as evidence of your trademark rights within the state.


Considerations:

- State protection is limited to the geographic boundaries of the state, which may not be sufficient for businesses operating in multiple states or are thinking of expanding to other states.

- It does not provide the same level of legal benefits and protections as federal registration.

 

Common Law Trademark Rights- Least Protection

Common law trademark rights are established through the actual use of a trademark in commerce, even without formal registration. These rights are based on the principle of "first use" and can offer a baseline level of protection.

 

Who is this for?

While common law trademark rights offers a starting point, federal registration is generally recommended for businesses seeking comprehensive and nationwide protection. Registering your trademark with the USPTO provides stronger legal rights and greater security, making it a worthwhile investment for most businesses.

 

Benefits:

1. Automatic: Common law rights arise automatically upon the use of the trademark in commerce, without the need for formal registration.

2. Local Protection: Only provides protection in the geographic area where the trademark is used and recognized by consumers.

3. Cost-Free: There are no filing fees associated with common law rights, as they are based on use rather than registration.

 

Considerations:

- Common law rights are limited to the geographic area where the trademark is actually used on a continuous basis and recognized.

- Proving common law rights in a legal dispute can be more challenging, since there’s no formal registration to serve as evidence of your claim.

- It does not provide the same level of legal benefits and protections as federal or state registration.

 

A Couple Things to Keep in Mind

In the United States trademark rights are generally given to the first person to use a mark in commerce, not the first to file an application. This is known as a "first-to-use" trademark system, and the user that can demonstrate the earliest continuous use of a trademark in business usually holds the rights.

Therefore, conducting a thorough and comprehensive search, including state trademarks and businesses with possible common law rights, before filing or using your brand is essential. Even if there isn’t a competing registered or pending trademark application in the USPTO database, there may still be brands protected by state or common law rights. If these brands can demonstrate prior and continuous use of their mark, they can challenge your application.

 

How We Can Help

At Mortimer Legal, PLLC we specialize in trademark registration, enforcement, and maintenance. We can assist you in selecting a strong trademark, conducting a thorough search, and navigating the registration process. We are committed to protecting your brand and helping you achieve long-term success.

 

Contact us today to learn more about our services and how we can help you choose protect your business' most valuable asset... your BRAND.

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