Brad Walz

Outside Consultant: Do I Have to Search My Trademark Before I Use It?

This "Outside Consultant" column by Bradley Walz '01, '04 J.D., head of the St. Thomas law school Trademark Clinic, ran in the Star Tribune on Dec. 6, 2021.

In selecting a trademark, a newcomer has the opportunity to avoid confusion and the law charges the newcomer with the obligation to do so. In determining if a likelihood of confusion exists, which is the standard for trademark infringement, all doubts must be resolved in favor of the senior trademark owner.

Accordingly, a business needs to conduct a trademark search before investing time and money into a new brand in order to avoid having to rebrand. Although no trademark search can reveal every possible conflict that may exist with a proposed trademark, a proper search can steer you clear of any big problems. If you are going to conduct your own trademark search, here are the reasons why you should search the United States Patent and Trademark Office Trademark Electronic Search System (USPTO TESS) database first before searching the internet generally:

1. The intent-to-use application. A trademark applicant can file a federal trademark application on an intent-to-use basis. Once there is use of the trademark, the intent-to-use trademark application can then proceed to registration, but this can take three years or more. If there is no use of a conflicting trademark in the marketplace, then the only place to uncover an issue is at the USPTO.

2. Standard character form drawings. A trademark applicant does not have to claim a particular stylization to its trademark, and can protect a word in any form of stylization. This means that even though you plan to use a stylization that is different from another trademark owner’s stylization does not mean you are in the clear.

3. Presumption of validity. Any trademark on the Principal Register enjoys the benefit of the presumption of validity. If you think the trademark you want to use is descriptive, so that everyone should be able to use it, you may have to think again if someone has registered the once descriptive term claiming acquired distinctiveness.

4. The exclusive right to use. A federal trademark registration is evidence of the trademark owner’s exclusive right to use the trademark. If you think you can use your last name as the name of your business, you may have to think again if another SMITH has beat you to it.

Bradley Walz '01, '04 J.D. is on faculty at the University of St. Thomas School of Law and a partner at Barnes & Thornburg LLP.