Understanding Common Law Trademark Rights

The other week I was exchanging emails with a client regarding trademark registration.  The client obviously wanted to prevent another party from using their mark, or a mark that could be interpreted as being confusingly similar to their mark. In counseling the client, I advised that they already had common law trademark rights to their mark without having registered their mark with the USPTO. That answer only invited more questions from the client. All via email.

The concept of a common law trademark right is difficult to explain over an email.  As is the case with much of trademark law, it is easier to explain common law trademark rights through examples or cases. Today, while sorting through Twitter, I came across a story tweeted by Toronto trademark attorney Meg Langley Grainger (follow Meg here, trust me).  Ms. Langley Grainer posted a link to this story from The Toronto Star.

An entrepreneur named Richard Ottenhof in Kingston, Ontario opened a local coffee shop named “Coffeeco” in 2007.  In 2008, he filed a trademark application with the Canadian Intellectual Property Office.  However, he abandoned his application with the intent of refiling later. Fast forward to 2010, where a friend noticed that another company was using the Coffeeco name in association with a coffee shop at the Moncton, New Brunswick airport.  After a brief investigation, Mr. Ottenhof learned that the Coffeeco mark was being used by the Canadian arm of U.S. company Aramark.  Aramark Canada had registered the mark “Coffeeco” after Mr. Ottenhof abandoned his application.

How will this resolve? There are a couple of options. Mr. Ottenhof likely will not have to change the name of his company, however, he would probably not be permitted to expand his coffee company outside of Kingston.  Aramark, on the other hand, as the junior user in the Kingston geographic area, likely would not be able to use the name Coffeeco in Kingston. Given the scope of Aramark and the wide reach of the internet, this is likely not satisfactory either.  Possible solutions include the parties entering into a co-existence agreement, or Aramark entering into some agreement wherein Mr. Ottenhof would change his firm’s name. Mr. Ottenhof could also offer to buy out Aramark, but that is, um, unlikely.