The party asserting a claim for trademark infringement will usually own a trademark that has been registered with the United States Patent and Trademark Office (“USPTO”). Registration provides many advantages, but does not conclusively establish ownership of the mark. Ownership of a trademark belongs to one who first uses it in commerce in connection with the specified class of goods or services.
Generally, the first to use a trademark in commerce owns the trademark – no registration is required. Where two different companies in two different geographic locations use the same mark for the same goods or services, the non-registered user may be entitled to continue use of the mark in a defined geographic region based on what are known as “common law rights” to use the mark. Common law rights, however, are restricted to the geographic area in which the mark is used.
The Dallas Cowboys provided an excellent example of a common law trademark in a dispute over the trademark for the term America’s Team, which was originally registered by America’s Team Properties, Inc. in 1990. Several years later, the Cowboys claimed rights in the mark based on their earlier, unregistered use in commerce. The Cowboys prevailed by showing they had first used America’s Team in 1979 as the title of the Dallas Cowboys’ 1978 season highlight film.
The San Francisco Giants are currently embroiled in a similar dispute over the use of their “San Francisco” logo. According to this article in SF Weekly, a clothing company named Gogo Sports trademarked a virtually identical logo and sued the Giants for a declaratory judgment that it owns the mark. The Giants have asserted that they have common law rights in the mark stemming from its use on team merchandise as early as 1993. It remains to be seen how this dispute will be resolved, but one has to feel pretty good about the Giants’ chances if they can establish first use.
About the Author:
Zac Duffy is a trademark attorney with Kennedy Clark & Williams, PC. His practice is focused on intellectual property and employment law, including the defense of organizations accused of trademark infringement, misappropriation of trade secrets, or a violation of federal or state employment statutes. Zac Duffy was recently named a Texas Rising Star, a designation awarded to 2.5 percent of attorneys in Texas.