1509 S. Tyrell Ln., Suite 100, P.O.Box 877, Boise ID 83702 - 208.345.1122

Common law trademarks

How do I get a trademark?

While a Federal trademark registration or a state trademark registration is greatly preferred, in general, Trademark protection ensues under the common law of trademarks as soon you begin using the name, but only as far as the area in which you are using the mark, provided that the trademark is protectable and not a generic word for your goods or services.  The U.S. Supreme Court described this principle in stating that a mark is protectable as far as it is known, but this protection does not sch to markets where goods bearing the mark have not traveled.  For example, a small hair salon in the North End of Boise, Idaho may have rights in its name in the North End, or perhaps even as wide as the entire Treasure Valley depending on its marketing and client range.  However, this hair salon may not be able to protect its name as far away as Portland, Oregon, New  York, or California.

The United States Supreme Court described the principle of trademark law and set forth the boundaries of common law trademark rights in Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916). In Hanover, the United States Supreme Court illustrated that the purpose of trademark law is to protect the good will of a trade or business by identifying “the origin or ownership of the article to which it is fixed.” Id. at 412. The rights afforded to an entity through its trademarks grow out of use of the trademark and through the good will that becomes associated with the trademark. Id. at 413. Trademarks are treated as merely a protection for the good will associated with the mark, and not the subject of property except for the limited extent the marks are used in connection with an existing business. Id. at 414. The United States Supreme Court in Hanover summarized the geographical limitation of a trademark when it stated “the mark, of itself, cannot travel to markets where there is no article to wear the badge and no trader to offer the article.” Id. at 416.

In order to obtain trademark rights under the common law for a descriptive trademark, your mark must have acquired secondary meaning.  This means that the consumers in an area associate that mark with your business or product, as opposed to associating the mark as a description of the goods or services you offer.

The Internet has greatly complicated the analysis of how far a common law trademark’s rights stretch.  Does an online company who has a few sales across the country have nation-wide rights?  Probably not, but determining just how far those rights stretch is a very complicated, expensive argument to make in court.

State or Federal trademark registration greatly helps in clarifying rights and puts others on notice that you are using your trademark and helps to avoid the expense and issue of proving a common law trademark.  Please do not hesitate to contact us to assist you in furthering the protection of your trademark.