In the U.S., trademark rights are use-based. Trademark rights only arise from your use of the mark. Registering your mark “perfects” your rights in the mark and provides numerous benefits that make enforcement practical. The strongest and broadest scope of protection is provided by applying for a federal registration with the U.S. Patent and Trademark Office (USPTO), but that is not your only option. States also register marks but such rights are only enforceable in the state courts of that state.

Also, you may have heard of “common law” trademark rights that can exist in unregistered marks. In states that recognize common-law trademark rights, common-law trademark rights provide protection even without registration. All you have to do to establish common law rights is use your mark in commerce, for example, on your website to sell goods or services, on your products themselves, in advertisements, etc. Common law rights are generally limited to the geographic area where the mark is actually used and can vary by state. Unless you have a state or federal registration, you will also have the burden in court to establish your entitlement to such common law rights. For these reasons, it can be difficult to enforce common law rights and doing so is often so impractical that it is pointless to try to enforce common law trademark rights.

The New Mexico Trademark Act set up a system for the registration of marks being used in New Mexico. While it has yet to be determined by a court with certainty, it is presumed (and some courts have suggested) that the New Mexico Trademark Act extinguished the common law cause of action for trademark infringement. So, it is wise to assume that a trademark infringement claim in New Mexico must be based on registered trademarks recognized under federal trademark law or the New Mexico Trademark Act.

Other states with their own trademark acts may also have extinguished common law trademark rights.

That being said, do not assume you cannot enforce your rights just because you don’t have a trademark registration. Those that have not registered their trademarks may still have other claims they can assert that do not require a trademark registration, for example unfair competition, false designation of origin, trademark dilution, tortious interference with contracts, etc. You may also be able to apply to register your trademarks and then strategize enforcement from there.

You should always consult with an attorney before making conclusions as to whether you have enforceable rights or not. If you haven’t yet done so, you should be thinking about registering that trademark if you plan to be in a strong enforcement position. We at Peacock Law can set you up with the right strategy.