Every business has a trademark. Protecting and enforcing trademark rights are essential to building a strong brand, and properly clearing a trademark is important to avoid trademark disputes, according to Brad Walz ’01,’04 J.D.
“Being able to identify a trademark issue with a business is important not only to trademark practitioners, but to every business attorney,” said Walz, a partner at Barnes & Thornburg LLP and head of St. Thomas Law’s Trademark Clinic.
The clinic, established in spring 2018, offers practical experience for students interested in intellectual property (IP). Although young, the clinic already has had an impact on the business community and on its student participants.
Eighteen clinic students have filed 33 trademark applications, represented a client in a trademark infringement lawsuit in the District of Minnesota and are defending one client in an opposition proceeding before the Trademark Trial and Appeal Board. The students also have prepared a copyright application and drafted IP-related agreements.
Students in the Trademark Clinic gain the analytical skills, practical knowledge and legal background to counsel businesses in IP. Along with these technical skills, they are able to practice the interpersonal skills necessary for advising clients.
Certified attorneys with the patent office
Three years ago, when Professor Tom Berg asked Walz to lead the clinic, Walz thought it was a perfect fit.
“It’s right in my wheelhouse,” said Walz, who specializes in IP. “When students graduate, pass the bar exam and are a practicing attorney, there are so many things they’re learning for the first time. This gives them a head start.”
While a student at St. Thomas Law, Walz requested mentors who were involved in IP work. He said he’s grateful for the practical knowledge he gained from being paired with Tim Kenny of Norton Rose Fulbright US LLP and Michael Collyard, now with Robins Kaplan LLP.
At Barnes & Thornburg LLP Walz helps companies of all sizes monetize, protect and enforce their IP. He is also the creator of the BOB trademark search software application (www.trademarkbob.com). As a St. Thomas Law alumnus he has served as a mentor, an Alumni Association Board member, mock interviewer, and guest lecturer for the Copyright and Trademark courses.
“I want to help anywhere I can,” he said.
For the Trademark Clinic, students meet with him twice a week at the firm and discuss their trademark cases.
Consistent with the mission of St. Thomas Law and its clinical program, clients of the Trademark Clinic may include nonprofit entities, small businesses and individuals who otherwise could not afford to protect or defend their trademarks. According to Walz, students have helped many nonprofits so far, including clothing, food and literacy organizations.
“We haven’t had an unsuccessful application yet. Some clients have already registered their trademark,” Walz said.
The trademark cases involve conducting a preliminary trademark search, writing a clearance opinion letter, and preparing and filing an application. Once filed, the applications can go in a variety of directions, depending on the examining attorney assigned to them, Walz said. The clinic’s cases are in a range of stages and proceedings typically last longer than a semester, so the cases often are handled by different students.
Past clinic participant Stephanie Wolf, 3L, who said that IP is her passion, will continue her work through the newly established Advanced Trademark Clinic at St. Thomas Law.
She explained how clinic work has helped fuel her drive.
“When a trademark application isn't perfect, the U.S. Patent and Trademark Office (USPTO) will send you an explanation why. Our job was to show the USPTO why our client's trademark should receive legal protection. We also filed trademark applications, visited with attorneys from the USPTO, and (my personal favorite) gave clients the great news that their trademark was approved!”
She admitted that it was less fun to relay bad news. “Clients may not understand why the USPTO did not accept their trademarks; however, those conversations only motivated me to work harder on behalf of the clinic's clients,” she said.
Wolf said the Trademark Clinic taught her how to successfully navigate the USPTO's website and database, which she’s already used in her work as an IP clerk at The Toro Company.
“I was able to significantly shorten the learning curve, and my supervisor and colleagues have made note of the benefits of my clinic experience for the legal department at Toro,” she said.
‘The empathy of a close, but honest friend'
Clinic students explain the trademark process and discuss issues with their clients. Law students learn to help their clients realize the business decisions that need to be made, while also empathizing with them.
“Students learn how to be active listeners and identify issues as clients are explaining their stories,” Walz said. “It’s not as emotionally charged as family law, for example, but trademarks to a small business are a very personal thing. Students need to be able to reason with clients who are emotional about what they have developed.”
Wolf found this to be true. “The Trademark Clinic marries interpersonal communication with the professionalism of a lawyer and the empathy of a close, but honest friend. As trademarks are a symbol of identity for a business, criticism can be taken personally and a delicate approach to these conversations is imperative.”
Kevin Beach ’18 J.D. said the clinic was a great opportunity to develop relationships with clients. While working on two cases as a student, he found that clients may have an idea of one thing they want to do, and the students can inform them of other areas in their business that also need protection.
“I was helping them figure out what the law can do for them,” said Beach, who plans to go into corporate law. “Understanding of trademark and copyright are very important to any business or corporation, because they’re trying to differentiate themselves through their brand.”
Being an attorney is not just advising clients on the law, but being a trusted adviser.
“That’s the mission of the law school. That’s what draws many students to the school. It’s a calling,” Walz said.