Common Law Trademark Rights

Richard Rimer

February 6, 2023

You are not required to get your brands registered. While registration enhances your rights in a brand, you have a certain amount of legal protection by simply using your brand in the marketplace.

The rights given to unregistered brands are called “common law” rights. In essence, you have the right to prevent another party from using an identical or highly similar name in connection with identical or highly related goods or services within the geographic zone in which you use your brand. Maybe an example will help.

Hudson House is a restaurant in Redondo Beach, California. They opened in 2008 and serve casual bar fare. This week a Texas company opened a restaurant named Hudson House in West Hollywood that serves upscale Americana. These restaurants are 20 miles apart.

The original company sued the Texas newcomer for trademark infringement. The original company does not have a registration, but they can show:
– the newcomer is using the exact same name;
– the newcomer offers a highly related type of restaurant service (with some menu items overlapping); and
– at only 20 miles apart, the newcomer is almost certainly within the same geographic zone (insert joke about California traffic here).

My prediction is that the newcomer will be forced to change its name.

By the way, would it matter if the original restaurant had gotten a registration? ABSOLUTELY! That is, the original restaurant would have a slightly easier time proving its rights in the name, and also they could request #trebledamages and their own #attorneysfees. Registrations are pretty cool….

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