Do you want to trademark a brand name or logo in Florida?
You might not need to file a trademark application in Florida to get maximum legal protection. Obtaining a trademark with the federal government might be the best thing to protect your Florida business or national business.
Keep reading to learn the importance of federal trademark registration and whether you need to register with the State of Florida. (Or if you don't want to read, you can always call me and I'll explain the importance of a protected trademark to you.)
What is a trademark?
A trademark is usually a word, design, or slogan. These brand identifiers are often business names, brand names, logos, and company catchphrases. Some unique trademarks include Play Doh's unique smell and the yellow color on Post-Its.
"A common misconception is that having a trademark means you legally own a particular word or phrase and can prevent others from using it. However, you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services." (https://www.uspto.gov/trademarks/basics/what-trademark).
The phrase "trademark" and "service mark" are used interchangeably but "trademarks" are technically for goods, and "service marks" are for services. The application is the same regardless of whether your mark is a service mark or a trademark.
Here is the United States Patent & Trademark Office's official definition:
A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.
The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services.
Identifies the source of your goods or services.
Provides legal protection for your brand.
Helps you guard against counterfeiting and fraud.
The applicable trademark law depends on the level of registration. Trademarks at the federal level are governed by the Lanham Act and Florida law governs at the state level . The United States Patent and Trademark Office accepts applications for federal registration. The Florida Department of State accepts applications for Florida state registration.
It is common for business owners to forgo Florida registration in favor of federal trademark registration with the U.S. Patent and Trademark Office.
That is because trademark protection at the federal level means national exclusive rights to use a trademark in the category for which the mark is registered. Thus, it may not be necessary to apply for state registration after you have received federal registration. Federal rights trump state rights. If you have a federal trademark, that means that your trademark is already protected everywhere in the United States. Someone in another state cannot use a mark that has a similar name to your mark, in a similar business.
However, sometimes a trademark is not eligible for registration at the federal level. The legal requirements for federal and state registration are not always the same. Thus an owner might opt to follow Florida's registration process. The legal rights and protections are limited to Florida's geographic area. Nevertheless, it can be a good idea to have a Florida trademark registration if you cannot afford the USPTO filing fee of $350, and/or want to deter potential copycats in your region. It might be better to have registration of a mark at some level, rather than none at all.
Another example involves businesses providing services relating to cannabis or cannabis goods. Certain cannabis goods are illegal under federal law but legal under state law. In this instance, a business might be able to obtain a trademark in a state that allows sales or services related to cannabis.
What are the benefits of having a trademark?
There are several benefits to having a registered trademark. One of the biggest benefits is having exclusive rights to use a mark. This means that others cannot copy your mark. It also means that another company cannot have a mark that is too similar to your mark. Altogether you can prevent an infringer from having an exact trademark or a similar trademark to your own.
For example, as an owner of the mark "Starbucks", that corporation can prevent others from having a name that looks or sounds too similar it its own. The same applies for the logo.
This will increase the strength of your brand. You do not want to dilute your use of the mark by allowing others to have the same or similar mark as you. You want customers to know that you are the source of the goods or services for which you are selling.
Investors also place added value on companies that protect its intellectual property rights. They applaud business owners that secure their brand with this level of protection.
Moreover, a federal registration allows you access to federal court. A trademark infringement lawsuit can be costly. Federal courts are often more efficient than state court and that can save a business money in the end.
Finally, when your trademark is registered, you can use the circle R symbol! This displays authority, and a level of officialness that you can use to impress your clients on your website, business cards, online newspaper advertisements, and anything that has your business's name!
Step 1: Full Trademark Search
The first step of the trademark registration process should always be a trademark clearance search. This is your due diligence to see whether there will be any likelihood of confusion with another state trademark or federal trademark. This is the first thing that a new business should do. Or else you could face a trademark infringement claim or other legal action for infringing on another trademark.
When I conduct a trademark clearance search, I look at the similarity of the marks, the similarity of the goods and services, and the date of first use. This helps narrow down the rightful owner of a trademark (company's name, logo, etc.).
If you lost an infringement suit, you could be forced to rebrand. This could mean having to purchase a new domain name, design a new website, order new packaging and advertisements, or incur other additional fees related to rebranding.
This could be extremely detrimental to small businesses. Do it right the first time with an experienced trademark attorney. You do not want to be the victim of a trademark infringement claim that could potentially result in you changing your own business, giving up profits related to the trademark to the rightful trademark owner, or losing your business altogether.
Remember that a google search is not enough. Owning the LLC is not enough. Having the domain name is not enough. You need to make sure that you company's name, your brand name, or your trademark is not too similar to another mark out there.
Checking the USPTO's TESS Database is also not enough because you may be prevented from using a mark by someone else who has common law trademark rights. That means that the person does not have a federally registered trademark but the person's first date of use and actual use of the mark precede's your own.
Do not jump into the application process without doing a comprehensive search because the filing fee is non-refundable.
Step 2: Trademark Application with the United States Patent & Trademark Office and State of Florida
After you have done a trademark clearance search and got legal advice from an attorney, then you should proceed with the application form for federal or state protection. You can access the federal form at www.uspto.gov, and the state form at https://dos.myflorida.com/sunbiz/forms/trademark-and-service-mark/.
The form is short but it is also intricate. If you make a mistake, your application can be denied. Hiring an attorney to fix the problem will cost you more than hiring an attorney to do it properly in the first place.
You can also jeopardize your company name, trade name, logo, business name, or other mark by not doing the application properly in accordance with federal law or Florida statutes.
I'd be happy to help if you want to know more about your trademark legal rights! Reach out to me anytime at www.mdgrlaw.com or (754) 800-4481. I am located in Florida but I can help anyone around the world with applying for trademark registration with the United States Patent and Trademark Office. Foreigners can apply for registration in the US, and then use the US Registration as a jumping board for foreign registration most times.
Legal Disclaimer: The information in this blog post is for educational purposes only. This post does not contain legal advice. Legal advice can only be given by Attorney Melissa D. Goolsarran Ramnauth after a legal retainer agreement has been signed. This material is copyrighted by MDGR LAW.