Skip to main content
What Is Common-Law?



Most often when one hears the term Common-Law, it's in reference to marriage. If that's what you're looking for, go here. Otherwise, keep on reading.

First, let's start with the USPTO's definition:

"Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration."

The above sentence really needs a caveat added to it: Yes, you can be 'first in line' if you file an Intent to Use trademark application PROVIDED that there are no other parties that can claim prior Trademark or Common-Law usage.

Also, Common-Law rights are restricted to the geographic area in which the mark is used.

Let's look at an example to illustrate this point:


In 2003, you started a web design company called
Golden Fog Design & are based in the Bay Area of California. Your clientèle has been residents of the Bay Area strictly. This is where your Common-Law rights extend to, even if your web site that advertises your services is viewed worldwide.

Yesterday, a company called
GoldenFog launched their web site advertising their web design services. They are based out of New York, NY and have been in business with that name since 2005. The company also filed for an Intent to Use trademark application with the US Patent & Trademark Office.

How does this work out? Now, of course, each situation varies from the next & I'm using rather crude examples to illustrate a point. So yadda yadda yadda, if this is happening to you, seek advice.

That being said, here's how it'd typically work out:


You'd still have your Common-Law rights to the Bay Area of California since you've been in business the longest. The NY company would have Common-Law rights to their city since they've been using it longest there. Now, the USPTO would also likely grant them the trademark since the USPTO will be blissfully unaware of your usage of the mark, UNLESS you contest the application.

However, even contesting it does not necessarily negate the Federal trademark. You may able to restrict the NY based company's Federal trademark registration from advertising & servicing the Bay Area of California.

Again, if you find yourself in this boat, contact a trademark specialist or a trademark attorney. Each situation is specific & the details will need to be hashed out.

Read more about Common-Law
here.

Comments

malar said…

That's really cool buddy.....Obviously the lady was logical.





Bay Area Web Design

Popular posts from this blog

$50 Discount: Ends Wednesday, July 20th - Mention the Blog When Ordering

$50 DISCOUNT! Exclusively for you Comprehensive Research & Analysis: Federal/State Trademark & Common-Law Federal Trademark Application Order by Wednesday, July 20! 800-776-0530

So, you finally settled on the perfect name for your product or service – that's fantastic! Finding just the right name is vitally important to the success of any product line or service.
Or, perhaps, we've already searched & filed a trademark for you. If it's been a couple of years, have you had protective research conducted? Do you have a logo or a slogan or a new product/service name?
Regardless if you're new to the world of trademarks or have already gone 'round once, let's walk through a quick primer. Protecting your brand is a vital part of your overall business plan.
Trademark Step-by-Step Primer
1) Is it required that I register my trademark?
No, not at all. However, registering your trademark, specifically your Federal trademark, does provide you with several advantages:
* Pu…

Beware of Official-y Correspondence

Once you get that trademark filed be aware that your information is of public record, which means, unfortunately, some will mine that resource & some of those folks will send you solicitations. 
These solicitations often look very official, and "may use names that resemble the USPTO name, including, for example, one or more of the terms "United States," “U.S.,” "Trademark," "Patent," "Registration," "Office," or "Agency."  
Some will even have documents that resemble actual government documents rather than what you'd expect a company to send and this is often done by "emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records."
Most of these are asking you for money. That's your major warning flag.
"All official correspondence will be from the …

IP Webinar Series: December 9-11th

"The Minority Business Development Agency (MBDA) and the U.S. Patent and Trademark Office (USPTO) will co-host a free webinar series to help business owners understand the intellectual property process, starting on Tuesday, December 9.

Register today!
This three-part webinar series will provide participants with insightful tips for success on getting a patent or registering a trademark or copyright." The trademark webinar takes place on December 11th, 1pm-2pm EST. Register here. I'll be there so "see" you on-line!