What is a Common Law Trademark in Intellectual Property?
A common law trademark is a right at common law to certain names, sentences or logos that you very often use in connection with your product. You can have common law trademarks rights without having your trademark federally registered. A common law trademark, however, can only be enforced within a certain area, where it is used. A federally registered trademark, on the other hand, is enforceable anywhere in the geographical territory of the United States. Another downside to using a common law trademark, is that those types of trademarks are not searchable in the USPTO database, like federally registered trademarks are. Therefore, it takes more effort to do a common law trademark search before starting to use a certain trademark.
When using a common law trademark, the owner of the work can use the ™ symbol, as opposed to the ® symbol. The ® symbol is used only for federally registered trademarks.
How to Establish a Common Law Trademark in Florida?
In the United States, the Lanham Act governs trademark rights. Additionally, trademark rights under common law exist independently of statutory registration requirements. Common law trademark rights are mainly established by a showing of prior use of a certain name, logo, etc. Common law trademark ownership rights are established by “actual and continuous use in commerce”. Florida courts have held that “protection will be extended to the first appropriator of a name, within the territorial scope of its business, against subsequent use of the same or similar name by another”. The Supreme Court of Florida has stated that “There must be a use of such length and publicity as to show an intention to adopt the mark as a trademark”.
How to Establish a Common Law Trademark Infringement in Florida?
A common law trademark infringement may be established, if the plaintiff shows:
(1) that it had trademark rights in the name or work at issue and
(2) that the defendant adopted a name or logo that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.
See Temurian v. Piccolo, 2019 WL 1763022 (S.D. Fla. 2019).
The same Florida court has stated that the analysis that it used when examining a common law trademark infringement claim is substantially similar to one that should be used when analyzing a federal trademark infringement claim. For example, when engaging in that comparison analysis, a court will judge from a viewpoint of a layman and not of a professional.
