Stephen A. Kennedy Intellectual Property Law Blog on Lawyers.com

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.[1]  Ownership of a trademark belongs to one who
first uses it in commerce in connection with the specified class of goods or
services.[2] 

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.[3]  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< br /> 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.