the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

Picture of Registration Symbol Being Destroyed

The last four posts covered the importance of obtaining a trademark registration by pointing out how difficult it is to prove common law rights in trademark litigation. On the heels of those posts, I decided to write this short post on the importance of not letting your trademark registration lapse or be cancelled. It dovetails nicely because, once the registration is cancelled, the statutory presumptions are extinguished and a trademark owner will find itself back in the same situation discussed in the preceding four posts.

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Old Man on a Scooter. Can you prove seniority under common law?

This is the fourth post on proving common law trademark rights. In order to prove common law rights, you need to establish (1) seniority, (2) market penetration, and (3) natural zone of expansion. Some courts also let you use reputation theory instead of market penetration. All these topics have been covered except seniority.

For some reason, I didn’t start this series of posts with seniority. But now I’m circling back to the beginning and addressing seniority. It’s the first thing you need to establish to prove common law rights. But what does it take to establish seniority?

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featured image for blog post on reputation theory as a basis for common law trademark rights

This is the third blog post in a four part series on the difficulty of proving common law trademark rights in trademark litigation. Originally, I had only planned on three posts covering (1) seniority, (2) market penetration, and (3) natural zone of expansion. But in researching and preparing these blog posts, every so often a federal court would reference reputation theory in its opinion. For completeness, I decided to add a fourth post on reputation theory—a very murky theory that may or may not provide another basis for claiming common law trademark rights.

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Ivy growing on a wall

In my last blog post, I discussed how difficult it is to rely on common law trademark rights because of the requirement to prove market penetration. Continuing with this same theme, it doesn’t get any easier after you’ve proven market penetration. After you’ve established common law trademark rights by proving market penetration in one or more markets, your next task is to try to expand your common law trademark rights beyond just the markets in which you were able to prove market penetration. This takes us to the common law principle of natural zone of expansion. Unfortunately, federal courts are pretty stingy when it comes to a common law trademark owner’s natural zone of expansion, leading once again to the inescapable conclusion that you should federally register your trademark if you can.

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Photo of man pushing rock uphill symbolizing uphill battle with common law trademarks

There a real advantages to federally registering your trademark. Unfortunately, those advantages are usually described in vague legal terms that may not mean much. The practical import is missing, and the benefit of federal registration cheapened. For example, one of the benefits of federal registration that gets touted is constructive nationwide use. So what? What does that even mean anyway? And why is it so great? Because if you don't have a federal trademark registration and you are relying only on your common law trademark rights, you are going to have to deal with a big freaking headache: proving market penetration in order to establish your common law trademark rights in a geographic area.

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