Trademark Rights

The long history of trademark rights began under common law and became federal statutory rights with the enactment of the Lanham Act in 1946.


Purpose of Trademark Rights


Many people think the main purpose of trademark law is to allow business owners to protect their trademarks from unfair competition and competitors. Although that is certainly part of the equation, the main purpose of trademark law is to protect consumers. Trademark law is designed to protect consumers by ensuring they know the source (producer) of any goods or services they purchase.


For example, trademark law does not protect the COCA-COLA brand from cheap knock-off infringers for the sake of Coke, Inc. but to protect consumers from not knowing if they are buying an authentic can of COCA-COLA or some infringing brand that taste terrible and different. Coke, Inc. benefits from the consumer protection purpose of trademark law, however, because it Coke can stop unfair competition from competitors that use similar logos, branding, colors and more to the famous COCA-COLA brands.


Common Law Trademark Rights


Trademark law developed overtime through “common law.” Common law is law created by the courts in the name of justice and fairness, but not based on statutes. In 1879, the United States Supreme Court stated trademarks are “a property right for the violation of which damages may be recovered in an action at law…” In other words, the Supreme Court stated that companies had an exclusive right to use trademarks they own and could sue infringers in civil court to recover damages.


One of the benefits of common law trademark rights is that companies obtain trademark rights the moment they first use a trademark. There is no requirement for companies to apply for federal trademark registration to obtain common law trademark rights and they can even use trademark rights they acquired in common law to bolster future trademark registrations.


However, trademark rights under common law, back then and still today, are relatively limited. For example, trademark owners that rely on common law rights alone (as opposed to a federal trademark registration) can only assert their trademark rights in the region they used the trademark. So a company that uses a brand name exclusively in the southwest cannot enforce their common law trademark rights to the brand name against a company in New England.


In addition, when asserting common law trademark rights in court, common law trademark owners must prove exclusive ownership of the trademark, they used the trademark where the alleged infringer used it and more, whereas a trademark registration is rebuttable evidence for all of those issues in court. That is why it is important for trademark owners that want to seriously enforce their rights to apply for and receive a federal trademark registration.


Granite Trademark Services founder, Joseph Piper, explaining common law trademark rights.


The Lanham Act and Trademark Registration


The Lanham Act, enacted in 1946, codified much of common law trademark rights and added additional rights for trademark owners. The most obvious example of the added trademark rights made possible by the Lanham Act is the federal trademark registration system and the additional rights that go along with it in comparison to common law trademark rights.


Trademark owners can file trademark applications for a federal trademark registration with the United States Patent and Trademark Office (USPTO). If the trademark application is successful, the trademark owner gets many benefits not granted by common law trademark rights alone such as, nationwide protection, presumptions of validity and exclusive ownership of the trademark, listed in the USPTO trademark databases, use of the ® symbol, and more.


Many of the benefits of a federal trademark registration make it easier to enforce trademark rights, especially in civil court cases, including the potential to receive treble damages if successful in a civil lawsuit. For trademark owners seeking maximum trademark rights and protection, it is crucial to apply for and obtain a federal trademark registration.


When considering filing trademark application, consider whether you need a trademark attorney (they add value), how to avoid common mistakes, whether the attorney charges flat fees, avoid online trademark mills, and more. If you have any questions, we are here to help!


Granite Trademark Services founder, Joseph Piper, explaining the benefits of trademark registration.


Do you have any questions about common law or federal trademark rights? Or do you want to inquire about obtaining a federal trademark registration? Do not hesitate to reach out to us for a Free Trademark Consultation and one of our trademark attorneys will reach out to you in twenty-four hours.

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