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 Oct. 11, 2021.
Too few businesses federally register their trademarks. There’s a disparity between the number of new business applications and new trademark applications filed each year; perhaps business owners do not know what a trademark is, how important it is to their business, or how best to protect their trademark.
The subject matter that qualifies as a trademark is very broad. A trademark is how customers recognize you in the marketplace and distinguish you from your competitors. Most people think of words, phrases, symbols, designs, or a combination of these things, as trademarks. However, colors, smells, sounds, shapes, product configurations and trade dress can also function as trademarks.
You create trademark rights as soon as you start using your trademark with your goods or services. However, those rights are limited, and only apply to the geographic area in which you are providing your goods or services. To obtain nationwide rights, you will need to apply to register your trademark with the United States Patent and Trademark Office. A federal trademark registration expands your trademark rights to the entire United States even though you may not sell or offer your goods or services in every corner of the country.
A federal trademark registration functions as a sword and a shield. As a sword, you can prevent another party from using a similar trademark on related goods or services that is likely to cause consumer confusion. Consumer confusion harms your business by diverting sales from you at the point of sale, or losing a sale because a competitor tarnishes your business’ reputation. Your trademark is where all the goodwill of your business is stored. It reflects all of the positive interactions consumers have with your business and your goods and services.
As a shield, the trademark registration prevents others from telling you to stop using your trademark and clears the path for you to expand your business throughout the country. A person or business that adopts a similar trademark for related goods or services in a remote geographic area without knowledge of your trademark is a good faith junior user. A good faith junior user can prevent you from selling or offering to sell your goods or services in its geographic area.
Make trademarks a priority in your business.
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.