We’ve talked before about the importance of conducting a thorough trademark search before launching a brand name or logo or slogan. You might be surprised to learn about similar trademarks that are already in use. You might learn that your proposed trademark would be considered relatively weak. Even if trademark registration simply isn’t in the budget yet or a federal registration doesn’t make sense for other reasons, you still need to know what trademarks your competitors are already using.
Whatever the reason for not moving forward with a trademark registration, that still leaves an important question—What rights do you have if you don’t or can’t register your trademark? Is there anything you can do to protect your unregistered trademark?
What rights do you have in unregistered trademarks?
Trademark rights, much like copyright, are created by use, not by registration. Once you begin using a trademark “in commerce,” i.e. actually selling goods or providing services in connection with the trademark, then you have what is known as a common law trademark.
A common law trademark is simply an unregistered trademark that is entitled to limited rights based on its actual and continuous use in commerce.
Unlike registered trademarks, common law trademarks are limited to the specific geographic area in which they are used. If a competitor comes into your geographic area with a confusingly similar trademark, then you have some legal arguments for demanding that they stop, at least in the geographic area where your goods or services are sold. However, to claim your common law rights, you will have to prove that yours is the prior use, i.e. that you were using the trademark first.
But in the modern world, so few businesses are truly only local. If your business has any presence at all on the internet, you may be wondering what, exactly, is your geographic area? Unfortunately, trademark law hasn’t really caught up with this reality. On the one hand, simply putting up a website with your trademark is certainly not enough to claim broad, nationwide rights in an unregistered trademark. On the other hand, using the internet to sell goods or provide services under your trademark might be a basis for arguing that your geographic area is broader than the metropolitan area where you just happen to be located. And none of this resolves the issues presented by you both trying to use the same or similar trademark on the internet and the possible consumer confusion that would result from similar domain names and social media usernames.
The geographic limits of common law trademark rights can also be a trap. Let’s say a bigger competitor comes along and beats you to the process of registering their similar trademark. What happens then? Well, you can continue to assert your common law rights, but only in whatever limited geographic area you were already selling in. From the point of your competitor’s registration, that geographic area is effectively frozen, and you won’t be able to expand your business without infringing upon your competitor’s federal trademark registration.
How to Protect Your Unregistered Trademarks
While unregistered trademarks do offer some limited protection for your brand, it’s still better to register your trademarks if at all possible, especially if you plan to grow or expand your business. Nevertheless, there are a couple of ways to protect your common law trademarks:
State Trademark Registration
Common law trademarks can be registered with the Ohio Secretary of State if you can verify that:
While a state trademark registration can broaden your common law trademark rights to the entire state, those rights can be challenged if you aren’t actually using the trademark or if someone else has prior rights in the mark because they can prove earlier use. And unlike the USPTO, the Ohio Secretary of State doesn’t assess the validity of any trademark claims prior to accepting a state registration. Whereas a federal trademark registration creates a presumption that you own the trademark and have the exclusive right to use it in connection with the goods and services listed in the registration, a state trademark registration doesn’t really prove anything.
Ohio’s Deceptive Trade Practices Act
Ohio’s Deceptive Trade Practices Act (“DTPA”) prohibits businesses from, among other deceptive activities, causing a likelihood of confusion or misunderstanding with respect to their goods and services. This could be a competitor outright passing off their goods or services as if they were yours, or pretending that their goods or services are somehow affiliated with your business, or even using a confusingly similar trademark to trick consumers.
Remember, trademark law is all about protecting consumers so that they aren’t confused about who they’re doing business with. When you purchase a brand name, you want to know that you are getting the real thing, not a cheap knock-off. Unfair competition laws like the DTPA give both consumers and business competitors a legal avenue for seeking damages for the confusion caused when a competitor infringes your trademark, even if the trademark is unregistered. Under the DTPA, you can get an injunction (a court order requiring your competitor to stop infringing your common law trademark rights), actual damages (if you can prove the dollar amount), and reasonable attorney’s fees (if you can prove your competitor’s conduct was “willful”).
While Ohio’s DTPA might give you a path into court, keep in mind that litigation is time consuming and expensive, and there is no guarantee that you will actually recover your attorney’s fees.
If you have questions about protecting your trademark rights: