Establishing a Solid Legal Foundation for Your Business: Trademarks

07/09/2014 01:32 pm ET | Updated Sep 08, 2014

This post was co-authored by Julie Shavalier, Founder of Shavalier Law PLLC, a New York attorney specializing in trademark law.

It's an all too common question among business owners and entrepreneurs: "Where do I begin in establishing a solid legal foundation for my company?" As a business and trademark attorney supporting women in business, we would argue that it might be less obvious than one would suspect.

Before investing your precious start-up resources and emotions in a brand, the most business savvy and legally sound investment you might make in the future of your company is to invest in a trademark. All too often, clients approach us to assist in trademark registration as an afterthought to their program, product or service. While we absolutely love our work, there is nothing we dread more than placing a phone call to a client to advise them that should they to move forward with the name they've chosen, they would likely be infringing on an existing mark (resulting in a Cease and Desists and potentially an injunction). It's heartbreaking news to receive.

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 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. Additionally, after receiving trademark registration, you own the exclusive right to use of the ® in association with your registered mark!

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! As a result, someone could have the rights to a mark without even registering; however, in order to prevent a new business from using that mark, the common law mark user would have to register. This means a simple Google search, just won't cut it.

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.

*This is for legal information purposes only and should not be construed as legal advice. Genavieve Shingle & Julie Shavalier are only licensed to practice law in the State of New York.