Different trademark symbols for common law and federal rights
Trademark rights fall into two categories: common law trademark rights and federally registered trademark rights. Although you may not have consciously made this distinction, chances are that you have seen different brand designations in the market: ™ or ℠ and ®. Although these symbols all refer to asserted trademark rights, when used correctly, the ™ or ℠ symbols refer to common law trademark rights only, and the ® identifies federally registered trademark rights. registered with the United States Patent and Trademark Office (“USPTO”).
Common law trademark rights
Since trademark rights in the United States are based on use, common law or unregistered trademark rights are obtained simply by using a mark in association with the supply of goods or services. No application process or payment of fees is required to acquire common law trademark rights. The owner of common law trademark rights used in connection with the supply of goods may use the symbol ™, and the ℠ may be applied if the mark is used in connection with the supply of services by the owner.
Although common law trademark rights are easier to obtain than federally registered rights, an owner’s trademark rights in an unregistered mark extend only to the geographic areas where the mark is actually used. and other places where the owner’s use of the mark would naturally extend. In contrast, a registered trademark often provides nationwide protection across the United States and is not limited to the geographic areas where the mark is used.
Generally, common law trademark rights provide owners with much less protection than that provided to owners of federal registrations.
Additional Benefits of Federal Trademarks
Federal trademark registration can only be provided by the USPTO, and only through a lengthy application process. While paying fees to the USPTO, and likely to the attorney prosecuting your trademark application, is required to register a trademark and maintain that registration, a federal registration in turn has many benefits that law trademarks common can not offer.
In addition to the use of the ® symbol, which alerts everyone, including potential infringers, that the mark is federally registered, a registered trademark can achieve “indisputable” status. An incontrovertible mark is one that has been registered and used for five years, and it serves as conclusive evidence regarding the validity and registration of the mark, as well as the ownership of the owner and the exclusive right to use the mark in connection with registered products. and services. Although an indisputable mark is not invincible and remains vulnerable to certain challenges, indisputable status often deters potential infringers because it limits the defenses that can reasonably be raised in trademark litigation.
If formal legal action is taken, federal registration provides the trademark owner with a jurisdictional hook to litigate their trademark and related claims in federal court rather than state court. A federal court provides procedural and other benefits to the trademark plaintiff party that are not available in state court. A plaintiff who is the owner of a federally registered trademark also has additional remedies than a plaintiff who owns only common law trademark rights. These remedies may include monetary damages such as restitution of the infringer’s profits, statutory damages, and punitive damages. Common law trademark rights provide limited regional protections to a business. Investing in your trademark by strengthening common law rights with federal registration allows your trademark to become an even more valuable asset to the business.
©2022 Norris McLaughlin PA, All Rights ReservedNational Law Review, Volume XII, Number 126