Trademark enforcement through "common law rights" and not registration

Factual Questions
1

In this article from today’s New York Times on the cancellation of the Washington Redskins trademark, the following statement is made:

Is such an approach likely to be successful? My sense is ‘no’ if only because all trademarks could then be defended in such a way upon their expiration, invalidation, cancellation, etc., and that clearly does not seem to be the case - have an ‘major’ trademarks been defended using this approach in the last decade?

Regardless, it seems to me that allowing defence of a trademark based on “common law rights” and usage could lead to what would be essentially immortal trademarks (which, I assume, would not be allowed to happen).

Comments? Insights?
Thanks!

2

“Normal”, registered trademarks are already essentially immortal, and the conditions under which they’re lost are much the same as the conditions under which a “common law trademark” would be.

3

There is the tort of “passing off”. If you sell goods or services packaged, presented, branded, displayed etc in a way which is confusingly similar to the way I sell the same or similar goods or services, such that somebody wishing to buy from me might inadvertantly buy from you, that’s “passing off”. It doesn’t depend on my having registered trademarks, etc. What you are infringing on is not actually my registered trademarks - I may have none - but my goodwill. To have any hope of succeeding, I need to establish (a) that I have built up goodwll, and (b) that you are improperly capitalising on it by © offering your products for sale in a way that leads consumers to think that they are mine.

4

You are entering very murky waters… :stuck_out_tongue:
Prior use of a mark used to be a reasonably effective defence to an infringement allegation in the USA. But it’s not really so easy and there are many factors that may come in to play.

To have a look at just some of the issues:
http://openjurist.org/418/f2d/838/mister-donut-of-america-inc-v-mr-donut-inc-mr-donut-inc

However, in terms of the article that you have linked to regarding the Redskins, I can say that since they are a very famous team nation-wide, anyone trying to sell unauthorized Redskins products could probably be prevented from doing so under Unfair Competition Prevention Law.

5

To have the right to sue for infringement, it must be registered.

6

You cannot sue for trade mark infringement if you don’t have a registered trademark.

You can sue for passing off even if you don’t have a registered trademark.

There is also such thing as unregistered design protection, but I’m not sure if the US has this.

7

You can sue for anything. Whether your suit stands is another question.

If the Redskins appeal, then there is a stay to the striking of their trademarks. While under appeal, they can continue to enforce their trademarks.

8

Usually you need a cause of action to sue. I’d assume you’d at least need to show you have a trademark capable of infringement before you can bring a lawsuit alleging trademark infringement.

9

Thanks for the responses.

My gawd! That is almost unreadable a times. I will need to read and reread it (and maybe color code the two sides!)

10

There is precedent for enforcement through “common law” which is the point of the OP.