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What Is An Unregistered Trademark?

An unregistered trademark — also known as common law trademark — is a logo, graphic, image, or word that has not been approved by the United States Patent and Trademark Office (USPTO), either because an application was never made or because it was not accepted. However, companies are allowed to use the trademark logo if they would like to show that the company has use of a particular idea. Also, according to the Trademark Act, unregistered trademarks are defined as marks of businesses and goods that have not been registered with the USPTO.

It is important to understand the basics of unregistered trademarks because they do not provide any protection in legal matters outside the local / state jurisdiction. Therefore, the infringer of an unregistered trademark may be able to be stopped within a specific geographic location. But in turn, they will not be able to stop the infringer from stealing the brand/logo outside of such service area. In order to make an unregistered trademark valid, one must prove that they were the first to design it. Also, the deciding factor when it comes to litigation is the fate of the unregistered trademark’s design. Sometimes, if the owner did not display it first, they may have their trademark limited by someone else.

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Reasons To Consider Using An Unregistered Trademark

One of the main reasons a business will not file to register its trademark is if such a business does not have any competitors in the marketplace. As such, the state court is the only authority that can deny the logo. It is also important to note that an unregistered trademark does not receive any legal benefits other than those benefits provided by common law. Therefore, even an unregistered trademark will get protection from the law. Specifically, the owner must prove that the mark is synonymous with the reputation and goodwill of a certain product, good, or service. This also means that if a company uses a rival unregistered trademark to sell their goods, it will be a violation of the common law tort of “passing off.” This is essentially where a person tries to profit from the reputation of the mark. The burden of proving passing off is on the plaintiff.

Reasons To Register A Trademark

If a business owner is in a larger location (geographic area), registering their trademark may be worth the time and money. This is because a registered trademark owner can do the following: sue an infringer in federal court, define the presumption of ownership, litigate over a domain name, get the trademark approved for interstate commerce, add intellectual property rights, increase sales, get a result of un contestability in court if the registered trademark goes unopposed for five years, and have the ability to triple the amount of monetary damages if the action is brought as a criminal proceeding.

Bringing A Civil Action

The United States Code § 1125(a) creates a civil cause of action for claims of false designation of origin and false advertising. This essentially provides federal protection for unregistered marks. Marks not registered with the USPTO may be protected at the state level by common law or statutes associated with unfair competition. It is important to note that most states have adopted either the Uniform Deceptive Trade Practices Act or the Model Trademark Bill.

As stated above, if an owner does not register their trademark, they will have legal rights only within the geographic areas where they operate. This essentially means that they may be able to stop a subsequent user of the mark, even a larger company, from using the mark in your geographic area only. It is also important to note that an owner can claim trademark rights in their unregistered trademark as long as it is distinctive and identifies/distinguishes the products/services from other products/services.

Although the range of protection is limited to the region where the unregistered trademark is used, there is also protection from infringement and dilution under the common law. This means that one can send a cease and desist letter to try and stop someone from using the trademark without the license.

Unregistered Trademark Lawsuits

If an owner wishes to bring a lawsuit, they will have to prove their mark is a valid trademark, however usually only in the local / state court where the unregistered trademark operates. There is an exception to this rule above. An owner can bring the lawsuit in federal court only if the infringer lives in a different state and the amount in question is more than $75,000, or the owner can bring a lawsuit if the case depends on interpreting the Lanham Act / another federal law.

It is also important to note that being the first person to file an application to register a trademark does not guarantee that the original owner will get priority over the trademark. Instead, the date on which a mark was first used determines the right of priority to the mark. This essentially means that the owner can get the trademark rights limited by territory even if they are a tiny lesser-known business with an unregistered trademark. However, the filing date of registration is considered constructive use of a mark, and it gives priority over a later date of actual common law use in commerce if the registration application results in a registration.

Final Remarks: Unregistered Trademark

Overall, an unregistered trademark is a mark that has not been approved by the United States Patent and Trademark Office. Since unregistered trademarks only provide legal protection within the relevant local/state jurisdiction. In conclusion, there are certain reasons why one would want to use an unregistered trademark and other reasons why one would want to register their trademark. Therefore, a trademark owner should look into these aspects before they decide which legal route to take.

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Sources

  • Kenney, R. J. (2017, September 1). United States: Protecting unregistered trademarks under common law and unfair competition. World Trademark Review. Retrieved June 22, 2022, from https://www.worldtrademarkreview.com/article/united-states-protecting-unregistered-trademarks-under-common-law-and-unfair-competition
  • Unregistered trademarks. Justia. (2021, October 15). Retrieved June 22, 2022, from https://www.justia.com/intellectual-property/trademarks/unregistered-trademarks/
  • Cornell Law. (n.d.). 15 U.S. Code § 1111 – notice of registration; display with Mark; recovery of profits and damages in infringement suit. Legal Information Institute. Retrieved June 22, 2022, from https://www.law.cornell.edu/uscode/text/15/1111