Originally Posted 3/16/07

 Q: Do I have to have a federal trademark registration to have rights in a trademark?

A: This one we get asked a bunch. In fact, if I had a dollar for every time I was asked this question . . . well needless to say I probably wouldn’t be sitting here doing this blog post.

Contrary to popular belief, trademark rights do not arise through the actual registration of the trademarks. Trademark rights arise through an individual’s or company’s use of the trademark to identify their goods or services in commerce. The rights that arise though this use are referred to as common law rights. Common law rights have certain characteristics. First, the rights extend only to the geographic area that they are being used. Therefore, two people could be using the exact same trademark for the exact same goods and if the territories in which they are offering their goods or services do not over-lap, each person has a right to use the trademark and cannot prevent the other from using it. Secondly, common law trademarks do not carry any presumptions with them at trial. This means that no matter how long you have been using the trademark you will have to prove 1) that the identifier rises to the level of being a trademark and is not merely a generic term or a term that is merely descriptive of the good or service that it identifies, 2) that you are entitled to use the trademark and 3) that the defendant is using the trademark in the same geographic area. Additionally, you will need to prove that the defendant had knowledge that you considered the identifier a trademark (which can usually be satisfied by using the TM symbol with your mark). Lastly, you will have to prove your actual damages with a good degree of certainty. Often times this is a difficult and laborious proposition. If two people in the same geographic area are using the mark and neither has registered it, the individual or company that has the earliest first use date will have the rights to use the mark – the other is well, absent any other circumstances out of luck.

Although you don’t have to have a federal trademark registration to have rights in a mark, federal registrations do confer some extra added benefits that can be hugely valuable to your business – we will talk about those benefits in a future post.