The continuing importance of so-called “common law” trademark rights is a source of confusion for those wishing to protect their brands with Federal trademark registration.
However, an understanding of the difference between common law and statutory law is essential for understanding not simply the trademark registration process in the US but how and when a trademark owner can be accused of infringing someone else’s trademark.
Understanding that common law trademark rights persist despite the fact that we also have, in the US, a Federal trademark statute, is also very helpful in answering the question, “Why Should I Conduct a Pre-Application Trademark Clearance Search?”
The Common Law in the United States Generally
Generally, amongst non-lawyers, the differentiation between US common law and statutory law is not well understood. The two different sources of law are frequently confused and conflated both in the media and, especially, in social medial discussions.
However, that is what the common law is: it is a source of the law that governs us in the United States. One of two.
The first, as noted above, is statutory law. This is the law that derives from statutes, laws, administrative and other governmental regulation.
A point of statutory law is a rule that was, at some point, written in the US or a State’s legislature and then signed into law either the US President or a State Governor.
Some laws enable the executive branch, or a department of the executive branch, of the Federal Government or a US State to create their own rules that are binding upon people or corporate entities. These are the regulations noted above.
They are rules created within the legal framework for rules-creation in the United States and are plainly written down on paper—somewhere.
Then, alternatively, there is the common law.
Common law is, simply, judge-made law. That’s what they tell lawyers in their first year of law school, anyway.
What does it actually mean?
It means that, in the US, judges issuing decisions in courts also “make law” when they do so.
That is, when a judge in a Detroit, Michigan courtroom issues a decision that says, “Defendant B trespassed upon Plaintiff A’s property by flying a remote controlled drone over her swimming pool,” that judge has just added to the legal definition of the tort (civil “crime”) of trespass the use of drones.
If someone else flies a drone over a pretty girl’s swimming pool to spy on her, afterward, that girl will be able to sue the drone operator for trespass (among other things). At least within the jurisdiction of that same judge’s court.
The common law is the way our legal system operates. It is a system that was transported to the US from the United Kingdom by the original English colonists.
Other countries, such as France or Turkey, do not operate a “common law” legal system. They have what is known as a “civil code” system (code civile), in which ALL law derives from a written piece of paper. All judicial decisions in such systems must and do revolve around whether or not a defendant has abided by the written letter of that law.
What does that all mean in the trademark context?
Common Law Trademark Rights: A Hidden Peril for the Lazy (or Cheap) Trademark Applicant
What this means in the context of trademark registration is that there is a legal underpinning to the “black letter” law that a layperson can otherwise easily find via a Google or other web-search.
What that black letter (or written and published statutory) law says is that an application for trademark registration may be filed by following Steps X, Y, and Z.
It says that a trademark may be refused registration under certain circumstances, such as when a trademark is not unique enough to specifically identify the goods or services being sold or such as when it is already being used (or a close version is already being used) by another trademark owner who has already been granted registration.
That’s all true (although, obviously, we are not addressing the specifics of X, Y, or Z in this post). That’s all good to know.
However, there is very important information arising from the common law of trademark ownership in the US that the US Trademark Act, the TMEP Manual, and other “black letter” guidelines will not tell you.
What is that information?
The most important common law trademark consideration is that the right to exclusive use of a word, name, logo, or image as a trademark belongs to the person or entity first to use it in interstate commerce.
It does not belong to the person or entity who first happened to file a trademark registration application with the US Patent and Trademark Office (USPTO).
The US is, in other words, what is known as a “first to use” trademark jurisdiction rather than a “first to file” jurisdiction.
You can rush to file your trademark registration application with the USPTO all day long, knowing in advance that no one else has registered your name or logo or slogan as a Federal trademark, and still lack the common law right to the mark’s exclusive use.
You can even be granted a Federal trademark registration—and still be infringing on someone else’s right to the exclusive use under the common law.
How can this happen?
The Importance of the Pre-Filing Trademark Clearance Search
This can happen because you failed to retain an experienced trademark attorney to conduct a proper and thorough trademark clearance search prior to filing your trademark registration application.
You may have Googled your name and gotten no results before filing your application on your own or with a discount online form-filling service. You may even have searched TESS, the USPTO trademark database.
What you likely did not realize when performing that “knock-out search” is that “exact match” is not the legal standard of concern in trademark registration. Your name or word or logo can be slightly similar to someone else’s and still be infringing.
The question the USPTO examiner will ask and that a judge will ask if you are sued for trademark infringement is whether your mark is “likely to confuse” consumers as to the source of the product or service being sold in relation to the trademark.
You don’t have to have an exact match to infringe.
Only an experienced trademark attorney will review detailed search results for those that, in his or her experienced, are likely to cause a legal obstacle.
That’s the first thing you will not have realized.
The second thing that you will not have realized is that TESS doesn’t rule the question of infringement.
Remember that “first to use” idea above? If another company has been using your same mark or an uncomfortably close version of it for longer than you have, they have the right to use that mark in commerce, not you.
Even if they did not file a trademark registration application and, therefore, do not appear in your TESS search.
This is because the common law pre-dates the statutory trademark legal framework in the US. Again, the common law in the US holds that the first use of the mark in commerce across state lines holds the right to use the mark.
Why would, then, a mark be registered if it is not the first in use?
Because it is outside of the role of the USPTO Examiners who review applications to search beyond the confines of the Federal trademark database. A prior registered mark will, therefore, turn up in an Examiner’s review process—but a mark that is in use in commerce but is not registered will not.
So, under such circumstances, your later used mark may be registered.
However, it will be a weak mark, vulnerable at any time to what is known as a cancellation proceeding by the earlier used mark, with only a limited ability to enforce it in Federal courts.
A good pre-filing clearance search conducted by an experienced trademark lawyer might very likely have located the non-registered prior use, saving you a year or more in processing time—and potentially a lot of money.
What Is a Trademark Clearance Search?
We have already discussed the utility and advantage of the trademark clearance search here.
In short, however, a proper trademark clearance search is run by your Detroit trademark lawyer once you retain him or her. A trademark lawyer has the expertise and experience in determining what search result “hits” may cause a problem for your trademark registration now—or some time in the future
Your trademark lawyer will retain a professional trademark search service to scour not only the Federal Trademark Registry but also the State trademark registries of all 50 states, business entity formation records, domain name registrations, web search hits, and social media search results.
Further, a trademark lawyer will have the expertise to conduct “design mark” searches (logos and images as trademarks) differently than “word mark” searches.
Once the search results are received, depending upon how many common English-language words are used in your trademark, your trademark lawyer may have thousands of pages of results to review.
Your trademark lawyer will then locate in your search results the “problem hits” and provide you an opinion as to the risks of proceeding with an application.
Should you then elect to proceed, you do so understanding of those risks.
If a prior, longer-term use is located that is not registered, you will have, then, also the opportunity to consider rebranding entirely before spending time and money on a trademark registration application that may, ultimately, turn out to be unenforceable.
Common Law Trademark Rights: The Bottom Line
The bottom line is that common law trademark rights are only one of the hidden obstacle to a successful and defensible Federal trademark registration.
Filing your own application without a Detroit trademark lawyer assisting you will leave those obstacles hidden—until you discover them the hard way, after filing and after, potentially, significant investment in a brand that may not be yours to use exclusively.
Likewise, an online form-filling and application-filing service may be cheap—but that service will not involve legal advice, counsel, a weighing of risks—or any assistance whatsoever after your application is denied by the USPTO Examiner post-filing.
Only a licensed US attorney can argue on your behalf before the USPTO.
If you are interested in registering a trademark or need legal assistance with an office action refusal for a mark already filed or renewal assistance, click the button below to schedule an initial consultation.
The Hilla Trademark Law Firm is located in Detroit but services trademark clients world-wide.