So long as there is not a federal registration or pending federal application for a similar mark for similar goods or services when an owner uses his/her mark in commerce, he/she establishes common law rights in the geographic area of use, if he/she is the first user of the mark in that area. Common law rights give the owner exclusive rights to the mark in a specific geographic location. These rights do not protect the mark throughout the state, or nationally. Common law rights afford limited mark protection within the area of use. Under common law, an owner can send a cease and desist letter in an attempt to prevent infringement by a secondary user of the mark.  Common law trademark rights can be enforced in federal court under the Lanham Act or in state court under state statutes.

Though federal trademark registration is not required, it can enhance and extend the owner’s common law protections in many ways. First, federal registration of the mark gives the owner legal presumption of the exclusive rights to use the mark throughout the United States and its territories in connection with the goods or services identified in the registration. This is advantageous when the owner is attempting to police his/her mark in and out of court.

Second, because it is a federal registration, the mark is listed in the USPTO database. Others will see the owner’s mark in the database when conducting a search prior to filing their own. This can help to prevent others from using a mark that is too similar to the one already registered. It also puts secondary users on constructive notice of the registrant’s rights. Moreover, the USPTO uses the database when conducting its own searches during trademark examination and will cite the owner’s mark against a confusingly similar one in a later-filed application.

Third, a federal registration allows the owner the right to record his/her trademark with the U.S. Customs and Border Protection. The agency will then have the ability to use the trademark registration to help prevent others from importing infringing or counterfeit foreign goods.

Finally, a federal trademark registration means that the owner has the benefit of using the encircled “R” with his/her mark. The mark is usually added to the right side of the mark and indicates that the owner has federally registered the mark with the USPTO. The encircled “R” acts as actual public notice of the owner’s exclusive nationwide rights in the mark.