Attorney Confession: Those Little TM and (R) Symbols Are More Important Than I Thought
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I recently became a student of what I practice and teach: the law.
As a corporate attorney, I’m not an expert in intellectual property law (trademarks, copyright, patents). Due to this lack of knowledge, I did what many of us do. I remained ignorant to it and its potential importance and implications. And guess what? I became a victim to it.
I started a legal program under the name Lawyer in Your Pocket. My program was filled and I had done the marketing and branding. I then decided it was probably important to trademark this name so that no one else could use it.
While no one has "Lawyer in Your Pocket" trademarked, there is a business with a registered mark called "Pocket Lawyer." I hadn't realized that, in the world of trademarks, names that are similar can actually be protected as well as the name you are using. This is to prevent confusion between the two different businesses. After months of creating this program, I had to change the name and completely rebrand.
Lesson: start with hiring a TM attorney. I now teach that obtaining a trademark for your business is step one in protecting your online business. Here are some insights into obtaining and maintaining your mark.
The stated purpose of trademark law is to avoid confusion among consumers as to who is the actual source of goods or services. A trademark may be 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 trademarks with a name, such as Pepsi, 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.
A registered trademark gives the world constructive notice of your exclusive rights to the mark in the category of goods and/or services. That means a competing party can not make a good faith argument of the existence of the mark in commerce. Furthermore, without registration, a party has no standing to bring an action for infringement against an infringing mark in a federal court. Trademark registration allows the exclusive right to use of the ® in association with your registered mark.
Many business owners and entrepreneurs are unaware of the fact is that it is entirely possible to establish common law trademark protection through use of a 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. Plain and simple, a Google search is not enough.
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.