A Florida Trademark Registration Service

One way to understand a trademark is that it is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another party. A “service” mark distinguishes the source of a service, rather than a good, but the two are typically simply referred to as a “trademark” or “mark”. Getting a trademark protects a brand. Many of the well-known brands, logos and slogans you love, know and trust have been registered. Generally, the registration of a trademark entitles the registrant to a presumption of ownership of the brand on a state or national level and a presumed right to use the brand exclusively. It may help prevent someone from registering a confusingly similar mark later and may also help the registrant bring a case in court if someone infringes on the brand. Once registered in Florida, a registrant can typically start using the "TM" symbol with the name, logo or slogan. The law considers a trademark to be a form of intellectual property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction. While a trademark may exist from its first use, it is wise to register a trademark to prove its use, ownership, and all proprietary rights to it.

The FL-DOS will not necessarily approve every name for a trademark. The law generally describes trade names as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” Generic names are rarely given protection. For example, a company that makes hammers and tries to trademark the name “The Hammer Company” is unlikely to be successful. Merely descriptive names are also unlikely to receive registrations. For instance, “The Steel Hammer Company” is not likely to pass muster because it merely describes a hammer as being made of steel, just like most others. The chances of approval normally improve with suggestive marks, which often hint at the quality or another aspect of the company. For example, “Samson Hammer Company” may be more likely to be registered than “Strong Hammer,” but conveys a similar meaning. Arbitrary marks are usually existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Hammer may work. The textbook example of the arbitrary mark is Apple Computers - not to be confused with Apple Records. Fanciful marks are ordinarily the easiest marks to be approved. A fanciful mark may be a made up word or a very rarely used word that has nothing to do with describing the products. “Splats” for a hammer company may work. Some examples of fanciful marks are Yahoo!, Google, Exxon and Spotify.

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It may be more time efficient and cost effective to do a trademark search before registering a trademark in the FL-DOS. A search may help avoid obvious duplications of pre-existing marks and the expenditure of nonrefundable applications fees. Newer companies may more easily make name changes while they are getting off the ground than years later and after substantial investment in a brand and associated goodwill. Running searches with the FL-DOS does not guarantee superior rights to a particular mark. There could be someone already using a similar mark, but who did not register it with the FL-DOS. In that case, a registration could be subject to challenge by the owner of the earlier-used mark based on of common law trademark rights.

There may be advantages to registering both a name and an associated logo. But bear in mind, each filing requires its own government filing fees to the FL-DOS and processing fees to Master of Trademarks. A more practical option could involve registering just a company name to begin with. Wrongful use of names seems to be more common than wrongful use of logos. Trademarking a name generally provides broader protection because it prevents any use of the name that causes confusion, even if someone tries to use the name within a unique logo. A mark for a logo typically protects the shape, orientation, stylization and sometimes color in that particular logo. Registering ordinarily prevents others from using that logo or something confusingly similar to the logo. Even if a company name is in the logo, registering the logo may only protect the use of that name in the particular way it is used in the logo and not the use of the name more generally. Once your trade name is secure as a registered mark you may move into registering your logo, which you may potentially change without interfering with the registration of the trade name. As may be expected, logo changes seem to be more common than name changes.

Most people live under the impression that registering a corporation, LLC, or fictitious name, even with the same name of the intended trademark, renders the name protected as a trademark. THIS IS A HUGE MISCONCEPTION. At the Florida Department of State (FL-DOS) you are dealing with different registers altogether. Registration of a trademark Is quite different from registration of legal entitles (corporations, LLC’s, business names, fictitious names, companies, partnerships, churches, and other organizations. The registration/incorporation of legal entities as well as the registration of trademarks are both regulated by the FL-DOS. However, they are handled by different offices and registries within that agency. Only a registration in the trademark division registry will grant legal protection and benefits to your trademark. Due to the potential value of a trademark and the inherent property rights entailed within a trademark, the application for a trademark is much more complicated than filing for a corporation, an LLC, fictitious name or any other legal entity. Intended marks are checked against other marks registered in the FL-DOS trademark division registry and not against the registry of corporations, fictitious names, or other business entities.

Unfortunately, a having a domain name does not grant you trademark rights at all. Much like how the availability of a corporate name does not necessarily provide superior trademark rights to use the name in commerce, the availability of the domain name is not an indication either. A company could have a trademark name on a product or service, but not have acquired the domain name, or vive versa. The availability of the domain name should be one part of a comprehensive search in the FL-DOS, which Master of Trademarks offers, to help evaluate the strength of a brand name or slogan and the likelihood of a trademark being approved. Using a domain name as part of a brand that sells goods or services may help to establish common law trademark rights. A “common law” trademark could be established when a name, logo or slogan is used in commerce, even if it is not registered.

A state registry will grant you trademark protection within the jurisdiction of such state while a national registry will provide you protection throughout all the U.S. However, there are certain considerations: If you initially intend to commerce your goods and services within the Florida, you might not need a national registration. On the long run, you may consider a national registration upon expansion to other states. A national registration can take up to a year for official certification. In Florida, it only takes 4 to 6 weeks, depending on workload. A national registration costs a lot more than a Florida registration. With a Florida registration you can begin establishing the trademark presence of your goods and services while the national registration may still be in process. You may deter others from intending to use your mark once your Florida trademark is officially registered and able to be searched out.

A service mark is the same as a trademark, except that it is a type of trademark that specifically applies to services rather than physical products. It allows businesses and individuals to protect their brand identity in connection with the services they provide. For example, banking, realty, restaurants, legal, medical, etc. The inclusion of service marks registrations was a significant development in intellectual property law, recognizing the importance of brand identity and protection for businesses that provide services rather than physical goods. The registration process and legal protections for service marks are similar to those for trademarks used on goods.

Slogans are commonly defined as “advertising phrases” or catch phrases used to promote a product or service. Slogans are often used in conjunction with a trademark or service mark (for instance, “You are in good hands with ALLSTATE”). They often convey information about a brand owner’s goods or services or praise some aspect of those goods or services. Slogans are registrable if they are “capable of trademark significance” and “used in such a way as to identify and distinguish the seller’s goods and services from those of others.” In that sense, slogans are much like trademarks and subject to the same scrutiny. Slogans that are protectable as trademarks such as “Where’s the Beef” or “Don’t Leave Home Without It”, are tied to an advertising campaign or used to sell a product or service. To acquire registration of a slogan, the trademark applicant must create a consumer association with a product or service. To qualify as protectable marks, slogans must be either, inherently distinctive and creative, or have developed enough secondary meaning to immediately call a product or service to mind.

Have you ever wondered why one brand name can be used on so many products and services all at the same time? For example, the mark “Olympus” represents diving goggles, cameras, textile, or synthetic ropes, letter sorting machines, a mortgage company, a real estate company and more. This is possible because the law allows businesses to secure intellectual property rights in one or more of 45 trademark or service mark industry classes. The system divides all goods and services into 45 trademark classes – 34 for goods and 11 for services. There are many goods or services that fall into each class, and they’re not always obvious from the class name. Goods and services are never lumped together in the same class. So if you sell bags of coffee to grocery stores, you’re selling a product that’s in class 30. But, if you operate a café, you’re providing a service that belongs in class 43 (food services). Depending on your business (if you sell roasted beans at your coffee shop, for example), you may need to register in both classes. When you file your trademark application, you must properly select the class of goods or services under which your trademark will be protected, and you must also identify the goods or services that you provide. When registered, your trademark will only be protected under such goods, services and class that you chose. Suppose, for example, that you make handcrafted tables and chairs, and you register your trademark in class 20, for furniture. If you then start making wooden serving spoons, your trademark won’t protect your spoons because they’re in a different class – class 21, for household utensils. To protect your spoons, you’ll need to file a separate trademark application.

Once properly registered in the FL-DOS, trademarks last 5 years and must be renewed every 5 years. Master of Trademarks provides notice of the applicable deadlines and allows filing of the necessary renewal paperwork and updates. Renewal and service fees apply.

Currently, the Florida Department of State (FL-DOS) assesses a filing fee of $87.50 per trademark application, per class (subject to change). This is charged regardless of whether applicants file on their own, or use an assisting service like Master of Trademarks. This filing fee is collected by Master of Trademarks prior to beginning any registration service, then remitted to the FL-DOS once the application is complete. The remaining of your payment covers our service fee, notary services, and inherent costs such as copies and mailing expenses.