This post and the next post in this series are intended to provide an overview of recommended practices for common law trademark usage to assist owners in both establishing and preserving trademark rights under US law, particularly for unregistered marks.

Overview of Trademark Law in the United States

A trademark is any word, phrase, symbol, design, or combination thereof that serves to identify and distinguish the goods or services of one entity from those of others. The primary function of a trademark is to act as a source identifier, enabling consumers to recognize and associate products or services with a particular business.

In the United States, trademark rights are governed by a use-based system. Unlike many other jurisdictions that follow a first-to-file system, the US confers trademark rights primarily through actual use of a mark in commerce. 

It should be noted at the outset that a federally registered trademark provides important and commercial benefits to trademark owners, which include being included in a publicly available registry of marks; the ability to use the ® symbol to signify this registered status; a legal presumption that the owner of the registered trademark has the exclusive right to use it nationwide; and the potential to sue and potentially recover up to three times the actual damages suffered in federal court, among others. 

However, owners of unregistered marks should not discount the value and protections that can be gained simply from making use of their mark in commerce, or what's referred to as 'common law trademark rights.' Indeed, proper trademark use plays a critical role in both establishing and preserving trademark rights under US law and is, in many ways, more important than registration because a federal trademark registration cannot save a trademark that is lost due to incorrect use or non-use over time.

Recommended Usage Practices for Common Law Trademarks

• Use the Appropriate Designating Trademark Symbol: Unlike the federal registration symbol ®, which should be used only in connection with federally registered trademarks, the symbol ™ can be used with any mark, including unregistered common law marks. This symbol provides public notice, including to customers and known or would-be competitors, that the owner is claiming rights to a mark and considers it a proprietary brand identifier. In addition to making clear to possible infringers that a mark is not available for others to use, consistent use of this symbol also supports the owner's position in enforcement actions by serving as valuable evidence of the intent to protect and maintain a mark. 
• Develop and Maintain Internal Trademark Policies and Practices: When trademarks are to be used by many people, such as the employees of a company, all internal uses of a mark should be carefully monitored to ensure proper and consistent usage. Improper use, even internally, can erode trademark rights over time. Owners should take steps to develop and enforce comprehensive trademark usage policies that are instituted and clearly communicated across all employee levels, as well as to ensure proper use of the marks in advertising, promotional materials, sales communications, and digital platforms. Any permissible use by third parties should be documented in written agreements with clearly defined license terms.
• Maintain Consistency with Company Branding: Similarly, presenting a mark consistently within an owner's family of trademarks is another important component of proper common law trademark usage. This includes ensuring that the appearance of the mark within a company's logos, slogans, taglines, packaging, color schemes, and overall brand presentation is uniform across all marketing channels and materials. Discrepancies in how a mark is presented to different groups of consumers or in how it is used by the owner can undermine its distinctiveness and reduce its ability to function as an indicator of the owner as a single source.
• Invest Appropriately in Applicable Geographic Regions: Common law trademark rights under US common law are geographically limited and extend only to the regions where a mark is actually used and recognized by consumers. As such, owners can broaden the geographic scope and strengthen the value of their mark by participating in targeted advertising, strategic partnerships, and distribution efforts in any region of the US where their goods/services are available for sale but are not currently targeted by the owner. 
• Document the Usage: Finally, it is recommended that common law trademark owners actively document and archive all use of their trademark(s) in order to establish a clear and defensible record of both geographic reach and continuous use in commerce. This includes maintaining thorough records of marketing campaigns, product distribution, sales activity, and customer engagement in each region where a mark is used. Failure to retain this documentation can limit an owner's ability to assert its rights in the event of infringement or to defend against third-party challenges to a mark.

The next post in this series will cover available options and recommended steps for common law trademark holders to prevent and address the unauthorized use of potentially infringing marks by third parties.