Can a trade mark owner with a common law trade mark do anything to stop an infringer from infringing on her mark? For that matter, what is a common law trade mark? If she does nothing, are her rights waived? What if she has a federal trademark registration — is she required to sue every possible infringer in order to protect her trademark rights?

Common law trade mark rights are rights accrued under the law by using a trademark in commerce in connection with the offering of goods or services. They extend to the territory where the mark is used, as opposed to federal trademark rights which cover all 50 states in the U.S. Common law rights must also be proved with evidence of use, whereas federal trademarks carry a presumption of validity and statutory damages. A common law trademark holder still has rights which can be protected under the law. The law on when a trademark owner needs to act to protect a trademark is complex and nuanced — the cryptic answer is not unless the infringing use is material, i.e., it matters. If the infringer is making enough of an impact in the marketplace, a trademark holder must take action to stop the infringer or risk waiving its rights.

Of course, these types of issues tend to be highly fact-specific, as with everything in trade mark law. It’s best to consult a trade mark attorney if you have any questions.

In order to function as a trade mark, an adopted word, phrase or symbol must be distinctive. Distinctiveness is the thing that transforms an ordinary turn of phrase into a brand, capable of identifying the source of goods or services. In some sense, distinctiveness can be thought of as uniqueness, as in the case of “fanciful,” i.e., coined trade marks. These are marks like TWITTER, GOOGLE, and MICROSOFT, which are made up words. Distinctiveness can also exist when one uses an ordinary dictionary word in a way that has no connection to the meaning of the products or services being sold, e.g., APPLE for computers or mp3 players, or DELTA for an airline. In some cases, the distinctiveness arises because of the leap of logic that is required to associate the trade mark with the goods or services being sold. SUGAR for a dating service, or ROACH MOTEL for a roach trap are examples. All of these types of distinctiveness are thought to be inherent, meaning that nothing more is needed to make such marks distinctive.

Some trade marks begin their life cycle as descriptive marks, which are not distinctive. Marks that merely describe a good or service are not entitled to registration on the Principal Register, however, they can acquire distinctiveness through use. Marks comprised of last names, such as MACY’S and BLOOMINGDALE’S, and geographic marks, such as BROOKLYN BREWERY, began their lives as descriptive marks, but acquired distinctiveness through use in commerce. Other marks that describe an aspect of the goods or services offered, such as BANK OF NEW YORK for banking services, or REGISTER.COM for a company that registers domain names, also started out lacking distinctiveness, but have become well-known brands. And that’s really the key to distinctiveness, the ability of a trade mark to identify a brand.

While some companies prefer to adopt inherently distinctive marks, others prefer to choose names that describe their offerings. A trade mark attorney can assist you to know which is right for your company.

In the case of Apollo Industries Limited v. Motocentric, No: FA1405200, the Complainant claimed rights to a domain name that was registered some ten years prior to its adoption and use as a trademark by the Complainant! What’s more, until 2003, the Complainant had used the domain name for a business that employed forty people. The Panel summarily denied the overreaching trademark claim, holding “Complainant’s unsupported assertions of bad faith registration to be inadequate to establish that the domain was registered in bad faith.”

This case is a fairly blatant example of overreaching by a trademark holder. As a practical matter, a domain name registrant cannot register a domain name with a bad faith intent to profit off of a trademark that does not exist. It’s also a waste of money for the Complainant. It’s incumbent upon lawyers to educate their clients about what constitutes an abusive filing.

In the case of Apollo Industries Limited v. Motocentric, No: FA1405200, the Complainant claimed rights to a domain name that was registered some ten years prior to its adoption and use as a trademark by the Complainant! What’s more, until 2003, the Complainant had used the domain name for a business that employed forty people. The Panel summarily denied the overreaching trademark claim, holding “Complainant’s unsupported assertions of bad faith registration to be inadequate to establish that the domain was registered in bad faith.”

This case is a fairly blatant example of overreaching by a trademark holder. As a practical matter, a domain name registrant cannot register a domain name with a bad faith intent to profit off of a trademark that does not exist. It’s also a waste of money for the Complainant. It’s incumbent upon lawyers to educate their clients about what constitutes an abusive filing.