Most often if anyone hears the word Common Law, it is regarding marriage. The little discussion on definition of Common law has to be done with trademarks.

Initially, we can start with USPTO’s definition :

“Common Law rights occurs from real use of a mark. In general, the first is for either using a mark in commerce or file an intent for using application with the Patent and Trademark office is having the ultimate right to use and registration.”

The above definition actually requires a caveat added to it : Really, you may be first in line if you file an intent for Using Trademark application ‘Provided’ that there are not any other parties which can claim previous Trademark or Common Law practice.

As well, Common Law rights are limited to the geographical area in that the mark can be used.

Following example will illustrate this point :

Suppose, in 2003 you have started a web designing company named ‘Creative Culture Design’ and is based in California- the Bay Area. Your clients has been strictly tenants of the  Bay Area. And here your Common Law rights extent to, also in case your web site which advertises your services is watched out all over the world.

Previously, a company named ‘Creative Culture’ launched the company web site that advertising their web designing services. They are  based out of NY- New York and has been in business by that name since 2005. The organization has also filed for an Intent for using Trademark application with the U.S. Patent and Trademark Office.

How does this happen? Now, obviously, every condition changes from the next and I am using instead simple examples to demonstrate a point. So, if this has happened to you, get an opinion.

This being said, here is how it would usually work out -

Still, you will be having your Common Law rights to the California- Bay Area since you have been in business the longest. The New York company will be having Common Law rights to their city since they have been using that longest there. Now, the USPTO will as well probably grant them the Trademark since the USPTO would ecstatically unaware of your usage of the  mark, UNLESS you challenge the claim.

But, even challenging that doesn’t essentially cancel out the Federal Trademark. You can able to confine the New York based company’s Federal Trademark registration from advertising and servicing the California, Bay Area.

Once more, in case you find yourself in this situation, do contact to Trademark experts or a Trademark Lawyer. Every condition is special and the details will require to be hashed out.