Common Law vs. Registered Trademarks

Unlike common law marriage, which was abolished in Pennsylvania in 2005 (disclaimer: it may exist in other jurisdictions - check where you live if that interests you), common law trademark rights are a real thing. The United States is a "first-to-use" and not a "first-to-file" jurisdiction when it comes to trademarks. That begs the question -- why file a trademark at all? The answer is that common law trademark rights are incredibly limited.

The geographical zone of protection that comes with a common law trademark is limited to the location where the mark is used and known -- and maybe slightly beyond that. By contrast, a registered trademark offers nationwide protection, even if it's not used nationwide when registration occurs.

Example: This summer, my kids were training at a facility in Garnet Valley, Pennsylvania, which is almost two hours away from where we live. My husband (who is more familiar with that area than me) suggested that we stop for lunch at Jimmy John's on one of our trips. Initially, I ignored him. I can stop at a Jimmy John's any time. But no, he insisted, this is a different Jimmy John's.

Jimmy John's, the franchise with thousands of locations started doing business in 1983. According to the USPTO site, there are many marks associated with their business. But Jimmy John's, the West Chester, Pennsylvania landmark, opened for business in 1940. The family restaurant "Famous for Frankfurters" can continue to exist in West Chester because they were there first. Could they expand into new territory without infringing upon the franchise's trademark? No.

At the original Jimmy John's in West Chester, PA

Owners of common law trademarks have some other rights, acquired simply by using the name/image/logo:

• The ability to prevent competitors with similar names from operating within their territory.

• The opportunity to prevent others from registering a similar mark on the federal registry -- provided that they're aware of this happening.

• Bring an action against another business for unfair competition.

But if someone else registers a similar mark, now there is a presumption that the registered mark gets priority. The common law mark owner may still have recourse, but the options are not great, and enforcement of any rights that may exist is likely to be much more expensive than a registration would have been.

The flip side of this, of course, is that a registration does not shut down common law trademark owners who can prove that they existed first.