Q: I'd like to start my own business. Should I conduct a trademark search?
A: Conducting a trademark search before investing time and money in a new business, product or service is the prudent thing to do. The law rewards the party who first uses a mark in commerce.
A company that uses an inherently distinctive mark in commerce creates trademark rights in that mark the second it is used. These are called common law trademark rights, and they are limited to the geographic area where the mark is used. A company that federally registers its mark expands its trademark rights to the entire nation, even if the mark is not used everywhere. If you don't search and later find that a confusingly similar mark is registered, you can be forced to rebrand entirely.
Five reasons searching the U.S. Patent and Trademark Office is a must:
1. Standard character form drawings. A trademark can protect a word in any form of stylization. Using a stylization that is different from another trademark owner's stylization does not mean you are in the clear.
2. Nationwide priority. Absent a federal registration, trademark rights are geographically limited. Federal registration expands those rights, and the registrant has the benefit of its priority date across the country.
3. Presumption of validity. Any trademark on the USPTO register enjoys the benefit of being presumed valid. If you think the mark you want to use is descriptive, so that everyone should be able to use it, you may have to rebrand if someone has registered the term claiming acquired distinctiveness.
4. The exclusive right to use. A federal trademark registration provides the owner exclusive rights to use the mark. If you use your last name for your business name, you may have a conflict if another Smith has beat you to it.
5. The intent-to-use application. A trademark may be registered before the business starts, so you may not discover it by using an internet search engine. This makes the USPTO the best place to research a potential conflict.
Affordable options exist to conduct a trademark search, such as using trademarkbob.com, and the Trademark Clinic at the University of St. Thomas.
Brad Walz is a shareholder with Winthrop & Weinstine and head of the Trademark Clinic at the University of St. Thomas School of Law.