Is it true that you automatically have the trademark rights to a name as soon as you have used it in trade? For example, If I make a movie or a comic book with a character named “Dr. Doomsday,” do I then have legal trademark rights to the name “Dr. doomsday” in the United States? Do I have the same trademark rights as a registered name, or what is the difference?

Answer by Brandon Blake, Entertainment Lawyer:

Thank you for a great question about common law trademark. Yes, it is true that there is something called common law trademark. In some states there are also statutes that codify these trademark rights. Additionally, a number of states even allow for a State trademark filing, where the mark is filed with the state rather than with the US Patent and Trademark Office.

Common law trademark works in much the same way as Federal trademark. Titles of single works and names of characters are not protectable in and of themselves. For example, if your comic book was titled “Dr. Doomsday” and it was an ongoing series, then that would qualify for trademark protection, provided the series was being sold commercially. However, if a movie or a single graphic novel was titled “Dr. Doomsday”, that would not allow for trademark protection. Likewise, the mere fact of having a character named “Dr. Doomsday” would not qualify for trademark protection, unless consumers related that character to some product or service. These basic principles of trademark law will apply regardless of whether we are discussing Federal or common law trademark.

Common law trademark, whether it is filed with a State or not, is acquired by using the mark in commerce. That means that the mark must be used to designate a product or service that is currently being sold in the market. There is no way to preserve the future right to use the mark.

There are some limitations to common law trademark. The first limitation is that the mark will be strictly limited to a particular geographic area. The geographic area is limited to where the product or service is actually sold. So if you only actually market the comic book in California, then you will only own the mark in California, and others throughout the country could use the same mark, provided they did not offer their comic book for sale in California.

Another limitation is that a Federal trademark filing will typically be given precedence over a common law trademark. That is not to say that the Federal filing will preempt the common law filing, but proving use in commerce can be difficult without a filing to provide a presumption of use.

The benefits of a Federal trademark filing include national coverage regardless of the actual scope of use in commerce, the ability to recover profits, increased damages and costs due to infringement, incontestability of the Federal mark after five years, the right to sue in federal court, the right to have the Customs Service block import of infringing goods, among many other benefits.

The most likely area where common law trademark law becomes important is when a cease and desist letter is received from a Federal trademark owner. At that point, the common law mark owner can assert his or her common law rights to protect the use. However, it makes a lot more sense to pre-empt this kind of situation by having a Federal trademark filed, and securing your rights throughout the United States.

As with any entertainment matter, please do not make a decision about complex matters without consulting an experienced entertainment lawyer first. I have been representing feature film projects, television series, and recording artists for more than 16 years. Please feel free to contact my office about a quote.

- By Brandon Blake, Entertainment Lawyer