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  • Writer's pictureTamara Pester

Common law intellectual property rights vs federal protection

Updated: Jan 5

Whitney Houston, may she rest in peace, sang, “it’s not right, but it’s okay . . . I’m going to make it anyway.” While that song discusses a woman making what she sees as the best relationship choice under the circumstances, the same principle applies to the issue of common law intellectual property rights. Certain steps can be taken to ensure comprehensive intellectual property protection, but if they aren’t, one may still have “okay” protection. I am not a patent lawyer, so this discussion is limited to trademarks and copyrights.

People are often confused about what they need to do to protect their rights in a trademark or original work of art. The answer can depend on what kind of protection is sought and the amount of resources available to protect the trademark or copyrighted work. Many people think that federal registration is required to stop others from using proprietary work. Actually, though, Federal registration is not required to establish rights in either copyright or a trademark.

Common law intellectual property rights arise naturally in both copyright and trademark. Copyrights are self-executing: in other words, the creator of an “original work of authorship” automatically has a common law copyright upon creation of the work. Similarly, Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. A trademark owner is entitled to exclusive use of a mark (so long as it is not descriptive, generic, or otherwise disqualified from protection under trademark law) in the particular geographic area and in connection with the particular goods or services, beginning on the date on which it is first used.

Why, then, do we lawyers and others make such a big deal about registering copyrights and trademarks? Well, like Whitney’s song, common law rights are just “okay.” Federal registration with the U.S. Copyright Office or the U.S. Patent and Trademark Office, as appropriate, is recommended for a number of reasons. First of all, applying for registration of a work gives notice to third parties of an intention to safeguard rights in the intellectual property. If someone runs a search of federal databases while considering the strength of a new mark or design, the record of application or registration shows up. Next, registered works may be eligible for statutory damages and attorney’s fees in successful infringement cases. Finally, the costs of registration often outweigh the risk of forging ahead with mere common law rights, especially if significant marketing resources are going to be invested in a brand or design. Registration with the U.S. Copyright Office is inexpensive, especially if done online. While trademark registration can be more costly, particularly if a comprehensive clearance search is performed, most feel it is a worthwhile investment. The circle ® signifying a registered trademark often leaves trademark owners feeling more secure in their rights, and their announcement of those rights to the world.

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