To receive the broadest type of trademark protection, we recommend registration with the United States Patent and Trademark Office. However, in the United States, if you have not registered your trademark rights, but you can prove trademark use in commerce, you will build common law (unregistered rights) rights. Common law trademark rights have been developed under a system of rights governed by state law. However, they will be limited to the geographic area in which the trademark is used. Of course in today’s global economy, common law rights are defined slightly differently due to trademark use on the Internet. Although, the same principal of a case-by-case analysis that is applied to infringement matters, will also apply to define one’s common law rights when Internet use is involved.
It can be particularly difficult to discover whether a third party has common law trademark rights in a specific mark. It is critical to search, not only state and federal registers, but also unregistered use. Common law trademark rights can prevail against a registrant based on priority of use. The two cases discussed below demonstrate this point.
In a recent Trademark Trial and Appeal Board decision, Barnhardt Manufacturing Company v.Wildwood Gin, Inc., Cancellation No. 92053237 (June 17, 2013) [not citable as precedent], the Board ruled that the petitioner established priority by a preponderance of the evidence, based on its common law rights. The petitioner proved that it shipped its product to a customer in Israel before the registrant/respondent first used the mark in interstate commerce. The Board held that in order to establish priority, a plaintiff is only required to show prior use, not continuous of its mark, unless the defendant has asserted the affirmative defense of abandonment. Here, the sale to a single foreign customer was enough to win on priority, and thus the Board granted the cancellation petition.