Do research so you don't violate patents

Q: Do I have to search my trademark before I use it?

A: In selecting a trademark, the law charges responsibility to avoid confusion on a newcomer. 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. Although no trademark search can reveal every possible conflict 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 you should search the U.S. Patent and Trademark Office Trademark Electronic Search System (USPTO TESS) database first before searching the internet generally:

The intent-to-use application. Once there is use of the trademark, an intent-to-use trademark application can then proceed to registration. This process can take three years or more.

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 if you plan to use a stylization that is different from another trademark owner's, you're not in the clear.

Presumption of validity. Any trademark on the Principal Register enjoys the benefit of the presumption of validity. Even 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.

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 beaten you to it.

Bradley Walz is on faculty at the University of St. Thomas School of Law and a partner at Barnes & Thornburg.