What to Know About Using the Common Law Trademark Symbol: The Intellectual Property Application Series

In this ‘Intellectual Property Application Series,’ I’ll be discussing common law trademarks and the proper way to use the trademark symbol inorder to maintain the legal rights provided under common law.  I’ll explain what a trademark is, what a common law trademark involves, and what to know about proper usage of the trademark symbol to maintain a common law trademark. This and more will help explain why common law trademarks are an important tool, which protects both businesses and consumers.


A trademark is a type of intellectual property that uniquely distinguishes and identifies the source of a good.  Trademarks assert an owner’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the market. Importantly, trademarks also convey an indication of the uniform quality expected of the goods/services it identifies. This is also known as the “good will” of the trademark.  In general, trademarks are secured by a company to advertise and distinguish their products from those offered by other companies.

The word “trademark” is generally used as an umbrella term to include both trademarks and service marks.  More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service.  The protections provided, under either a trademark or service mark, vary slightly.  This is because they are specific to the classes of goods/services they protect.  State trademark rights extend to both trademarks and service marks.

The word “trademark” is also generally used as an umbrella term to include both commonly protected and formally protected trademarks/service marks. The protections provided by a trademark and the obligations to maintain those protections, vary based on the type of trademark rights governing the mark. Formally protecting a service mark would involve filing an application to register the mark federally and/or filing an application to register the mark in individual U.S. states.

Federal Trademark Registration:

To obtain federal registration, an official Application for Federal Registration of a Trademark is filed with the United States Patent and Trademark Office (USPTO). An application for federal registration undergoes the most rigorous of trademark prosecution procedures. The federal trademark prosecution process involves a review of the federal trademark application, to confirm adherence to the government filing requirements. Also during the prosecution process, the mark itself is examined to confirm it qualifies for federal protection, in accordance with strict government rules. Once the examination process is completed and the application is accepted, a formal Federal Certificate of Registration is issued and the mark is considered protected under federal trademark laws.

Only marks in current use in interstate commerce can be granted federal registration and protection. If a mark is not currently being used to market products/services, but there is a true intention to do so, the USPTO does provide the option of filing an intent-to-use based application. This option allows for an earlier application filing date and potential priority over competing marks, which could be crucial in a legal conflict over the trademark. .

State Trademark Registration:

To obtain registration in a specific state, an official Application for Registration of a Trademark or Service Mark must be submitted to the relevant Secretary of State’s Office. To qualify for state registration and protection, the mark must be in current use in commerce. Unlike federal registrations, no option is provided for filing an application with only an intention to use the mark. 

The trademark prosecution procedures for state trademark registration are not as rigorous as those for a federal trademark application. Even so, the application must meet the filing requirements of the Secretary of State’s Office and strict filing procedures must be followed.  These requirements and procedures vary based on the Secretary of State’s Office in question.  The trademark itself must meet the statutory requirements for registrations, governed by the Secretary of State’s Office with which registration is sought. Once the state trademark prosecution process is completed and the application is accepted, a formal State Certificate of Registration is issued by the relevant State’s Office. Once officially registered, the mark is considered protected under state trademark laws.

Common Law Trademark:

Marks used by a company in commerce, but not registered federally or with a state, are protected under common law rights and are referred to as common law trademarks.  A common law trademark distinguishes and identifies the source of a good, just as registered trademarks do.  One important difference is, common law trademarks and state registered trademarks are governed by state laws, while federally registered trademarks are governed by federal laws. All trademarks assert one’s right to use a specific word, phrase, logo/symbol, design or a combination thereof in commerce.  

According to the Lanham Act, which governs trademark law in the U.S., from the moment a mark is used by a business in commerce, it is automatically protected as a common law mark. Specifically, the first individual to use a mark in commerce, in connection with marketing and exchanging goods for legal tender, is awarded the common law trademark rights to the mark, as used.  This is different from some international trademark rules, e.g. China, which base rights to a trademark on a first-to-file, rather than first-to-use basis. Common Law rights do not extend to any country in which trademark laws are based on a first to file ruling.

The process of obtaining common law rights to a mark is relatively simple, in that it does not require the formal prosecution of a trademark application or official substantiation. As such, the rights conveyed and the protections offered to a common law trademark are limited, compared to those provided by a federally registered trademark.  Specifically, common law rights are limited in the scope of protection provided under the state laws, which govern them. In addition, use of common law trademarks are limited and can be geographically restricted from expanding into other markets.  Due to the unofficial nature and limitations, enforcing common law trademark rights may also prove difficult.

Federal registration of a trademark provides the broadest rights and the greatest protections available to trademarks. However, a common law trademark claim may be more suitable in certain situations. If a mark is only used in a small geographic area and not being used in interstate commerce, a trademark only qualifies for common law rights.  

Common Law Trademark Symbol:

Simply using a trademark in commerce allows a mark protection under common law rights.  Proper use of the trademark symbol gives constructive notice to the public that the mark is in use and is protected by that use.  This notice asserts the trademark rights and discourages others from infringing the mark. If alleged infringement is found, the owner of a trademark has the right to bring suit in the relevant state court.

Once common law trademark rights are claimed, those rights must be maintained through proper use of the trademark.  To maintain the rights provided by a common law trademark, the trademark owner must continue to use the same trademark in connection with the goods initially associated with the mark. Overtime, consumers will hopefully begin to associate a company’s trademark with that individual company and as the source of their particular marketed goods. The goodwill of a trademark can be established and grow as consumer recognition, and their association of the brand with trusted products, solidifies. 

To help with consumer association of a company’s trademark as the source of that company’s marketed goods, the standard “TM” symbol is appropriate to use, when displaying a common law trademark. Proper use of the TM symbol signifies to the public that the common law mark is in use. The use of the TM symbol does not confer legal rights, as common law rights do not provide an assumption of ownership.  This is because common law trademarks are not held to a standard involving a formal prosecution or registration process.  Without enduring these formal processes, a trademark cannot be verified as representing a unique and distinctive mark, which has not previously been used in the marketing and distribution of goods. 

A common law trademark must be displayed and used in accordance with the rules governing all trademarks/service marks. Common law trademarks are not permitted use of the registration symbol (®), which indicates federal registration. It is a violation of federal law to use the (®) federal registration symbol, if a federal trademark Certificate of Registration has not been issued for the mark. If the owner of a common law trademark attempts to federally register their mark, the premature use of the official registration symbol can be grounds for refusing to register the trademark. 

Proper use of a trademark preserves the rights provided under the Lanham Act and the opportunity to file suit in state courts. Common law trademark rights come with responsibilities and obligations for the trademark owner, in order to maintain those rights. If the trademark is not properly monitored and protected by an owner, the rights to the mark can be put at risk or lost completely.

Common Law Trademark – An Important IP Tool:

Common law trademarks are important in their ability to protect businesses and consumers alike.  They provide a business with legal backing to protect their identity, reputation, and the goodwill associated with a company and its trademarks.  While the strongest protection for a trademark is provided through federal registration, common law rights still provide a trademark owner important, but limited state rights.      

The rules that govern trademarks enable businesses to compete efficiently and fairly.  Government trademark rules establish a standardized system for businesses competing in the market. Government guidelines for addressing trademark disputes are also integral to the success of the trademark system.

In addition, the laws governing trademarks help protect consumers from deceit by counterfeit products or fraudulent companies.  Trademarks do this by signifying the goodwill and identity of a company. Consumers depend on trademarks conveying the goodwill of a company, as this establishes an expected level of quality and/or trust.  The proper use of the trademark symbol (™) is the best way to communicate to consumers that a legitimate trademark is in use.  If businesses could not prove and protect their reputation via trademarks, it could be consumers that pay the greatest price. 

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  Thrive IP® patent attorneys are located in Charleston, SC; Greenville, SC; and Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a trademark application or other intellectual property services.