Sunshine State Business Portfolio: Registration of Florida Trademarks & Service Marks
By: Ira Cohen, Esquire, Partner, Henkel & Cohen, P.A., Miami
Once upon a time, Florida's home towns and cities were bustling with modest shops and a patch-quilt of "mom & pop" stores. Over the decades, for better or worse, much of the commercial landscape has changed. To be sure, while mega-malls dot the marketplace map, not every business is national, international, or multi-national in nature. Similarly, not every pizza restaurant or convenience store is part of a cross-country chain, franchise, or licensing arrangement. For local entrepreneurs, the time-worn adage "there's no place like home," may be true.
The name and good reputation of a business is its lifeblood. A name or mark may fairly be described as a color, logo, name, slogan, sound, or word (or combination thereof) which serves to uniquely identify the commercial source of the company's goods or services. There are two (2) species of marks, to wit: trademarks and service marks. There are also two (2) types of registered marks: Federal and State. Within both systems, Federal and State, the marks are further broken down into classifications according to the nature of goods (i.e., Classes 1-34) (e.g., Class 25, for Clothing), or services (i.e., Classes 35-45) (e.g., Class 41, for Entertainment and cultural activities).
One need not register a trademark (or service mark) to engage in use, or to have legal claims referred to as "common law" rights. Such common law rights spring from the actual use of a mark. (See Florida Statutes ("F.S."), §495.161.)
Albeit Federal trademark and service mark registrations provide a host of salutary benefits and advantages, not every business necessarily needs to expend the time, resources, and money in order to secure same. For businesses involved in interstate commerce and/or foreign commerce, Federal trademarks and service marks are key to the legal strength of your business name. However, many businesses (e.g., local coffee shops, car washes, dry cleaners, and laundries) do not conduct much, if any, business over the internet and never cross State lines or international borders. Such businesses can and should seriously consider applying for State marks.
A State trademark or service mark may well be sufficient in the event that your business is selling goods or providing services in just one jurisdiction. Such businesses clearly are engaged in only intrastate commerce. Each of the 50 U.S. States, including Florida, have a State trademark office that has the power to grant a State trademark. Marks can be applied for in Puerto Rico and U.S.V.I. as well.
In Florida, the Division of Corporations, of the Florida Department of State, is the controlling governmental agency. At present, the filing fee for a Florida trademark application is only $87.50 per class. Other, current Florida trademark fees are as follows: Trademark and Service Mark Assignment (per class), $50.00; Trademark and Service Mark Renewal (per class), $87.50; Trademark and Service Mark Cancellation, $50.00; Certificate of Name Change Filing Fee, $50.00; Certified Copy of Application File, $52.00; and Certificate of Registration Under Seal, $8.75. Of course, a company may be well-advised, in addition, to have the trademark lawyer conduct a formal trademark/service mark search prior to its attorney's submission of a Florida State trademark or service mark application.
Once your company does secure a Florida State trademark, you can then lawfully insert a "TM" or "SM" symbol next to your company's name. However, under no circumstances are you permitted to use the "®" symbol, which indicates that the mark is registered, federally, in the United States Patent and Trademark Office. That would be against the law; in fact, it is a felony.
Registering a Florida State mark is relatively expeditious and inexpensive. It can be attended to by your Florida trademark attorney. It is a relatively small investment given its duration; a Florida State trademark is valid for five (5) years. (See §495.071, F.S.)
A company's marks are not referred to as intellectual property for nothing; marks are valuable intangible assets. Furthermore, the registration of a Florida trademark or service mark serves several significant purposes, to wit: 1) it places the world on notice that the mark(s) belong(s) to your company; 2) it allows your company to advertise, promote, and market your mark(s), as well as to foster a positive business reputation and related goodwill; 3) it prevents copycats, knock-off artists, trade pirates, and other unethical and unscrupulous individuals and entities from abusing and/or misusing your company's mark(s); and 4) it allows your company to enforce and protect its marks, by granting judicial remedies for infringement including, but not limited to: defendant's disgorgement of profits, injunctive relief, treble damages, and awards of reasonable attorney's fees. (See §§495.131 and 495.141, F.S.)
In the event that your business actively, and significantly, utilizes the internet, Florida State trademark or service mark registrations may not be the best route for your local business to follow. In addition, if your Florida business is, or may be, subject to expansion, or you plan on buying or selling to businesses based on operating in other States, or foreign entities, you will need a Federal trademark and/or service mark. The same holds true if any franchising or licensing campaign(s) is part and parcel of your Florida company's future plans.
In order to discuss the potential registration of your company's mark(s) in connection with your local business, contact your Florida trademark attorney for a consultation.
About Henkel & Cohen
Henkel & Cohen, P.A. is a Miami, Florida boutique business litigation law firm whose partners hold the highest AV rating from Martindale-Hubbell®. For additional biographical and contact information, please visit the firm's website at www.miamibusinesslitigators.com.