One of the most basic tenants of trademark law is that trademarks prevent consumer confusion. In particular, the first to use a mark in commerce has rights in their trademark. Specifically, even without a federal (or state) trademark registration, a prior user still has rights in a name under their “common law” use.
What are Common Law Trademark Rights?
Simply using a trademark in association with specific goods or services in commerce can result in common law trademark rights. While there is no formal trademark application, common law trademarks provide very limited benefits. Specifically, common law rights are established through the use of the mark in commerce. Thus, common law rights only extend to the specific geographic region that the goods/services are provided. Because of the limited scope of protection afforded by common law rights, the only true way to protect your brand is to obtain a federal trademark registration.
However, one significant implication of well-established common law rights is that it could prevent others from registering a federal application. This is exactly the case that World Wrestling Entertainment, Inc (WWE) is likely to face.
The WWE Trademark for THE COLLECTIVE
On December 15th, 2020, WWE filed an intent-to-use (ITU) federal trademark registration for THE COLLECTIVE. An ITU application states that WWE has a bonafide “intent-to-use” the mark in commerce.
Class 041 – Wrestling exhibitions and performances by a professional wrestler and entertainer rendered live and through broadcast media including television and radio, and via the internet or commercial online service; providing wrestling news and information via a global computer network; providing information in the fields of sports via an online community portal
However, because it seems that WWE has not yet begun using its THE COLLECTIVE mark in commerce in connection with its services a potential common law user may have prior rights. Specifically, Game Changer Wrestling (GCW) has been apparently using the term THE COLLECTIVE with respect to its wrestling services for several years. In fact, GCW owner, Brett Lauderdale recently sent out the following tweet to his followers. A tweet presumably in response to WWE’s trademark filing.
Takeaway
Unless the WWE is able to provide evidence that they have been using the mark THE COLLECTIVE earlier than GCW they will likely be unable to register its trademark. Even in the event, the Examining Attorney approves WWE’s application for publication, GCW will certainly oppose its registration based on its prior use.
Overall, GCW should have filed a trademark for THE COLLECTIVE when it began using the mark to protect its brand. By trademarking THE COLLECTIVE by GCW early on, the WWE would have alsmot certain faced a rejection. Specifically, the Examiner attorney would have likely have issued a refusal for being “confusingly similar” to GCW’s registered trademark. However, since GCW is now relying on its common law rights, it will now have to defend its brand. Don’t wait until the last minute or until it’s too late to protect your brand. The best strategy for any area of intellectual property (IP) is always to protect your IP early and often.
On-the-other-hand, had the WWE done a simple common law trademark search, it would have almost certainly discovered GCW’s prior use.
Common law rights arise from actual use of a mark but are limited geographically.
Generally it takes about a year to get a federally registered trademark. However, this timeline can be extended based on use in commerce and whether or not any Office Actions are received from the U.S. Patent and Trademark Office.
