Common Law Trademarks (and its Case Law)

A legal aid organization may be entitled to common-law protection even if it has not registered a federal trademark. Common-law trademark claims apply similar principles and case law to the Lanham Act, so that state and federal courts often rely upon each other’s cases, providing a “common reservoir” of trademark precedent.

Common law protection, however, is often limited to the geographic area in which the mark is used, and the plaintiff in a common law protection suit must prove it is entitled to exclusive use of its trademark. Unregistered common-law marks are protected locally even if someone later federally registers the mark.

 

According to case law:

• A party may obtain a common-law trademark or service mark on any terms it uses in commerce, though absent federal registration, common-law status generally limits its protection the geographic area in which the term was used. Accordingly, to bring a claim under the Lanham Act, federal registration is not required, “but the scope of any common law rights vindicated would be limited to areas where the mark is in use.”

  Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 336 n.7 (1st Cir. 2004) (citing United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918), which clarifies that trademark rights are confined to territories of use).

• Trademark rights may arise under either the Lanham Act or under common law, but in either circumstance, the right is conditioned upon use in commerce.

  Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 335 (1st Cir. 2004) (citing United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918), which establishes that “the right to a particular mark grows out of its use, not its mere adoption”)

• Establishing use in commerce for common-law marks is similar to that of registered marks.

  Gen. Healthcare, 364 F.3d at 336 n.6 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992), which asserts that “[T]he general principles qualifying a mark for registration under the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection.”)

• Justice Stevens has noted that the congressional purpose of the Lanham Act was to bring consistency to the myriad of common-law trademark decisions.

  Two Pesos v. Taco Cabana, 505 U.S. 763, 782 (1992) (Stevens, J., concurring in result) (citing H. R. Rep. No. 944, 76th Cong., 1st Sess., 4 (1939))

• Absent federal registration, a party seeking to establish a common-law trademark or service mark protection bears the burden of proving that it is entitled to exclusive use of the mark.

  Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 376 (1st Cir. 1980).

• It must prove that “the primary significance of the term in the minds of the consuming public is not the product but the producer.”

  Keebler Co., 624 F.2d at 376 (quoting Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938)).

• To prevail under section 43(a) of the Lanham Act, a plaintiff must establish that the mark it seeks to protect has become “so associated with its goods that the use of the (mark) by another company constitutes a representation that its goods come from the same source.”

  Keebler Co., 624 F.2d at 376 (quoting Joshua Meier Co. v. Albany Novelty Mfg. Co., 236 F.2d 144 (2d Cir. 1956)).

• A common-law mark is only effective in geographic areas where it has a presence. As Professor McCarthy stated in his treatise, “under common law, absent appropriate federal legislation, the national senior user of a mark cannot oust a geographically remote good-faith user who has used the mark first in a remote trade area.”

  McCarthy on Trademarks § 26:4 at 26-9; see Ammon & Person v. Narragansett Dairy Co., 262 F. 880 (1st Cir. 1919); Raxton Corp. v. Anania Assoc., Inc., 635 F.2d 924 (1st Cir. 1980)).