Features and Considerations:
- Geographical Scope: Common law rights are limited to the area where the trademark is actively used, while registered trademarks offer nationwide protection.
- Legal Protection: Registration provides a legal presumption of ownership and exclusive rights to use the mark for specified goods/services.
- Enforcement: Common law trademarks can be more challenging to enforce than registered trademarks.
- Public Record: Registration ensures the mark is listed in public databases, deterring others from using similar marks.
- Use of Symbols: The ™ symbol can be used with common law trademarks, while the ® symbol is reserved for marks that have been officially registered.
- Searchability: Registered trademarks are listed in a searchable database, making it easier for others to avoid infringement. Common law trademarks lack this visibility, potentially complicating infringement disputes.
Examples:
- Registered: McDonald’s “Big Mac” burger registered and protected globally.
- Common Law : A local bakery has been using a unique name and logo for years, establishing common law rights in its geographic area. Another bakery cannot open in the same area using the same or a confusingly similar name.
- National Franchise: A fast-food franchise secures a registered trademark for its name, ensuring no other food business in the country can use it or a confusingly similar name, providing clear and nationwide protection.
- Craftsman: A craftsman selling handmade goods at local markets under a specific brand acquires common law trademark rights, limiting others from selling similar goods under the same name in the same markets.
- Software Company: A software company registers its product name as a trademark, gaining the exclusive right to use the name for software across the jurisdiction and preventing others from using it, even in non-competing industries.
Why This Matters:
Understanding the difference between common law and registered trademarks is crucial for businesses to effectively protect their brand identity and navigate the legal landscape. Registered trademarks offer robust, nationwide protection and easier enforcement, making them a strategic asset for businesses planning to operate on a larger scale or online. However, common law trademarks can still provide valuable protection for local businesses or those in the early stages of brand development. Knowing when to rely on common law rights and when to seek registration can save businesses from potential disputes and strengthen their brand’s legal standing.
Call to Action:
- Conduct a Trademark Search: Before using a new business name or logo, conduct a thorough search to ensure it doesn’t infringe on existing registered or common law trademarks.
- Consider Registration Early: If you plan to expand beyond your local area or operate online, consider registering your trademark early to secure nationwide protection.
- Monitor Your Trademark: Regularly monitor your trademark to ensure others are not infringing on your rights, especially if you rely on common law protections.
- Seek Legal Advice: When in doubt, consult with an IP attorney to navigate the complexities of trademark law and ensure your brand is adequately protected.
External Resources:
- Learn about trademarks (CIPO): https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/learn-about-trademarks
- Considerations with United States trademark registrations (CIPO): https://www.tradecommissioner.gc.ca/united-states-of-america-etats-unis-amerique/trademark-marques-commerce.aspx?lang=eng
- Canadian trademark law: https://en.wikipedia.org/wiki/Canadian_trademark_law
- United States trademark law: https://en.wikipedia.org/wiki/United_States_trademark_law
- Unregistered trademark: https://en.wikipedia.org/wiki/Unregistered_trademark
- Why register your trademark (USPTO): https://www.uspto.gov/trademarks/basics/why-register-your-trademark
Advanced Topics:
- Global Trademark Registration Strategies: Managing and extending trademark protection internationally beyond common law and national registration.
- Trademark Litigation: Navigating legal disputes over common law and registered trademark rights.
- Trademark Monitoring and Enforcement: Strategies for monitoring marketplaces and enforcing trademark rights efficiently.
- Trademark Dilution: Examines how registered trademarks are protected against dilution, even in non-competing industries, unlike common law trademarks.