I recently became a student of what I teach: the law. I'm not a trademark attorney, so I'm giving myself a little slack. However, I started a program recently with the name "Lawyer in Your Pocket." My program filled and I finally decided that I was going to have the name trademarked so that no one else could use the name in the United States. While no one has "Lawyer in Your Pocket" trademarked, there is a business with a registered mark called "Pocket Lawyer." It turns out that even if a name isn't identical, if it could cause confusion and is in the same "class" (industry, good, services), you could be rejected. I decided that it wasn't worth my money, time or aggravation to move forward and potentially (actually very likely) be denied, so I now am changing the name of the program — and all of the design work I paid for.
Lesson learned: I should have worked with a trademark attorney at the beginning.
I now believe that hiring a trademark attorney may be one of the most, if not the most, important thing you do when you're starting your business.
What exactly is a trademark?
The United States Patent and Trade Office defines a trademark as a word, phrase, symbol or design (or a combination thereof) that identifies and distinguishes the source of the goods of one party from those of others. We commonly associate the concept of trademarks with a name, such as CocaCola, or a symbol, such as McDonald’s golden arches. More unconventional examples of trademarks include the iconic red Louboutin sole and NBC’s three-note chime. The stated purpose of trademark law is rooted in consumer protection from a likelihood of confusion.
The benefits of having a registered mark
The most significant benefit of a registered trademark is that it puts the world on constructive notice of your ownership of the mark. This means that no legitimate argument could be made that a competing party was unaware of the existence of the mark in commerce. Furthermore, without registration, a party is forbidden from bringing an action for infringement in a federal court. After receiving trademark registration, you own the exclusive right to use of the ® in association with your registered mark!
Why a Google search is not enough
A little-known fact among business owners and entrepreneurs is that it is entirely possible to establish common law trademark protection through use of the mark in commerce. Many successful businesses operate without ever having established an online presence or formed a business entity. Before a trademark application is filed, a thorough and professional search should be conducted to rule out the likelihood of a competing mark already in commerce.
Don't make the same mistake that so many of us, myself included, made. Get yourself a trademark lawyer today!
Genavieve Shingle is a member of the DailyWorth Experts program. Read more about the program here.
This article was co-authored with Julie Shavalier of Shavalier Law Firm. Genavieve and Julie work together helping female entrepreneurs in all areas of business law.
*This document is for informational purposes only and should not be construed as legal advice Genavieve Shingle is an attorney only licensed in the State of New York and the distribution of this guide does not constitute an attorney-client relationship.