Protection of Trademarks under Common Law

Unlike other forms of intellectual property, protection of trademark rights is based upon actual use of the mark rather than by registration. Generally, the first party who uses a mark in commerce has the right to use the mark in that geographic area as well as in the natural zone of expansion for that geographic area. Any shipment of goods bearing the trademark across a state line in the normal course of business satisfies the “use in commerce” requirement. Token sales made solely to establish trademark use, however, do not constitute legally sufficient “use.”

If a mark is not actually being used but someone has the “bona fide intent” to use it in the future, the use of that mark may be secured by filing what is known as an “Intent to Use” Application with the United States Patent and Trademark Office (USPTO). The filing of an Intent to Use Application essentially reserves the mark in incremental periods of six months. Thereafter, the USPTO must be satisfied that the mark is being used or the right is lost.

Sometimes a state registration is filed by someone who is using a mark locally. This really doesn’t give any additional benefits other than what is gained by actually using the mark in commerce, but it does serve to put the world on notice of use of the mark.

Federal registration is not required to establish rights in a trademark. 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 USPTO has the ultimate right to use and register the trademark.

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