How to Trademark a Name (in Florida?)

If you live in Florida (or any other state in the United States) and are interested in protecting your brand name, then you would be a good idea to consider registering a trademark or service mark either in the state where you live or with the USPTO.

But if you are at the very beginning of this process, chances are you have some questions about what it takes to protect your business name. This post was designed to help you answer some of the most commonly asked questions about obtaining trademark protection in Florida or any other state.

Let’s start with the basics… what is a trademark anyway?

What is a Trademark and Why Do You Need to Register it?

At its core, a trademark is a business or brand name, slogan, logo, word or phrase that identifies a business as the source of the goods or services is sells and distinguishes it from all other businesses that may provide similar goods or services.

As an example, let’s say you went to the store and wanted to purchase some Frosted Flakes. (Personally, these were my favorite cereal as a child). How would I know I was buying the “authentic” Frosted Flakes?

If I found that magical blue box with Tony the Tiger on it, then I would know that I found the right cereal. But if I instead found a box of “Great Value Frosted Flakes” in a baby blue box with a polar bear, or even a box of “Frosty Flakes” then I would know that I wasn’t getting the authentic version.

That’s the power of a trademark. It identifies the source of goods.

If you want to build a strong and distinguishable brand, then you must take your intellectual property – specifically your trademarks – seriously.

How to Register a Trademark in Florida (and any other state)

Many people are familiar with the USPTO and the fact that you can register your trademarks at the Federal level.

But did you also know that you can register your trademarks at the state level?

So for example, if you wanted to register your trademark in Florida, you may do so by filing an application at the Florida Department of State (Division of Corporations).

Not in Florida? That's ok. You can register your trademark at the state level by contacting the trademark office in the state where registration is sought. This is typically, but not always, the Secretary of State’s Office (i.e. the same administrative body where you file your LLC paperwork).

Who Should Register a Trademark in Florida (vs with the USPTO)

If you are debating whether you register your trademark at the state or federal level, it is important to consider and think about where you plan to operate your business.

If you are opening a small brick and mortar business and only intend to do business in the state where you are located, then a state trademark my be completely adequate for your needs. However, you should also be aware that even though a state-registered trademark is less expensive and easier to obtain than a federal trademark registration, it will still be superseded by a Federal Trademark should one exist that is confusingly similar to your potential trademark.

As a result, if you want to obtain the broadest type of protection, then a federal registration is the best option. Federal trademarks give you exclusive rights and ownership of your trademark in all 50 states, plus all U.S. territories. In addition, with a Federal Trademark you are permitted to use the ® symbol and can bring infringement lawsuits in federal court. Your mark will also be listed in the United States Patent and Trademark Office (USPTO) database, providing the broadest type of notice to all potential infringers.

This is why, for most businesses, filing their trademarks at the federal level is the best (and safest) option. A Florida registration limits your protection to the state of Florida and any similar trademarks filed at the Federal level will have priority over your trademark.

Here’s how to register your Federal Trademark.

How to Register Your Federal Trademark

Registering a trademark at the Federal level involves 4 important steps. At Hawthorn Law®, we refer to this as the 4R Framework™.

1. Research the Mark
2. Ready the Application
3. Respond to Office Actions
4. Registration

Let’s take those steps one at a time.

The First “R” – Research your Potential Trademark

The biggest mistake I see most people make is that when they pick a name they love, they run to the USPTO application and file it right away, without much thought. There are a number of pitfalls with this strategy, but the biggest one of all is that most people fail to adequately research their proposed trademark.

Accordingly, the first step to registering your trademark with the Federal Government (or with any particular state, including Florida) is to conduct a proper trademark search.

Here is the methodology that we use to search for trademarks that may cause a likelihood of confusion with a mark that our client’s are attempting to obtain,

First, we review the USPTO Trademark Electronic Search System (i.e. TESS) and the Madrid Database for various components of the words in the proposed mark, as well as similar-sounding variants.

Then we will conduct a common law search of various components of the word and similar-sounding variants.

For purposes of the Common Law Search, we search the following search engines and databases:

• Internet Search Engines (Google & Yahoo)
• Yellow Pages
• White Pages
• Social Media and E-Commerce (Facebook, Twitter, LinkedIn, Instagram, FlipKart, Amazon, Alibaba & EBay)
• US newspapers (The New York Times, The Wall Street Journal, Los Angeles Times, Newark (NJ) Star Ledger, USA Today & Washington Post)

I can’t stress this enough. BEFORE you apply for a trademark, it is absolutely crucial that you have thoroughly researched the proposed mark. You MUST know whether or not your mark will create a likelihood of confusion with an already existing trademarked name, slogan or logo.

In addition, you should be aware that under US law (unlike some international rules), trademark rights are tied to actual use in commerce. This means that you cannot register your trademark until you are actually using your trademark to sell goods or services. In case you are confused by what this means, feel free to schedule a brand strategy call with us.

Step 2 – “Ready” Your Application

I realize this sounds a bit cheesy, and it probably is, but I couldn’t think of another “R” word that would work for “preparing your trademark application”.

In the state of Florida, you will download the trademark forms from the Florida Department of State website. But when filing for a Federal Trademark, the entire application can be found and prepared online in a 90’s looking, very archaic website.

But it works.

And it is deceptively easy.

What do I mean by that?

I mean that there are only 4 main areas that must be completed:

• Applicant/Owner information – Who will be the owner of the mark (typically your company name or you as a sole proprietorship)
• Lawyer information (if you are using a lawyer)
• Trademark you are applying for – Fairly straightforward
• List of Classes and Descriptions – Area of frequent confusion
• Specimen and dates of first use – Another area of frequent confusion
• Signature Page

The two biggest problem areas on the application that most people can’t figure out are the classes of goods and services, as well as the description of what you are selling (or intend to sell).

If you are a new business and are not currently selling goods or services under your proposed trademark, then you can file a statement of use after you begin selling. In so doing, you can achieve a level of protection from reserving your trademark and obtaining the legal rights to that name until you are ready to start selling. (But to do this you will have to pay additional fees later on, and you must file a statement of use within 36 months).

Once you have completed the online application, you will sign it electronically and submit it with the appropriate filing fee. From there, you will wait… and wait…

Currently it is taking 8.2 months (as of September 30, 2022) for the examining attorney assigned to your file to take action on it.

The attorney can either send your application through to publication (yeah!), issue a non-substantive office action, or issue a substantive office action.

A non-substantive office action is where the attorney asks for additional information about your file, edits your descriptions slightly, or asks you to disclaim a word of phrase in your proposed trademark. While not incredibly complicated for a lawyer who practices trademark law to handle, they can be terribly confusing to the layperson who doesn’t know how to properly respond.

A substantive office action is tantamount to a denial of your application and will require a carefully drafted legal brief from an attorney, together with case law citations and recitation of rules. In situations where the examining attorney determines that your mark is merely descriptive, you may receive the option to amend your application to the supplemental register.

Respond to Office Actions

Once you receive an office action, you will have 6 months to respond. While this seems like a long time, it will pass by incredibly fast.

I can’t tell you how many applications are dismissed because the applicant (typically someone representing themselves) fails to respond to an office action – either because they got confused by what was asked of them, forgot the deadline, or ignored the office action altogether.

And that six months is a firm deadline. If you don’t respond in time, the system will shut you out of your application and you will be unable to file your response.

So this is the third step of our 4R Framework™, filing a response to any office actions that get issued on your application.

I will also warn you that there can be 2 or 3 or more office actions issued on a file. Everytime the examining attorney takes any type of action on your file, it will trigger the 6 months deadline to file a response.

After you have responded to all office actions, the examining attorney will send your application for publication. At the Federal level, all trademark applications must be published so that members of the public can object to your application should they have the legal grounds to do so.

Assuming nobody objects to your application…

Step 4 – Register your Mark!

At this point, you are probably 12-18 months into the registration process, if not longer. Assuming nobody objects to your mark during the publication period, it will proceed to registration. Congratulations!

Previously, the trademark office would, at this point, send you a nice certificate to show off in your office. But recently, they have simplified these certificates, removed a lot of legal information, and stopped sending them automatically. If you would like to receive a certified copy of your registration, you must now pay an additional $15 fee.

Timelines for Florida Trademark Registration

It typically takes approximately six weeks to process your Florida trademark application. Your initial registration is good for 5 years and can be renewed.

The Bottom Line

All business owners should strongly consider protecting their registering a Federal Trademark. This will not only prevent others from using your trademarks in their business, but it will also prevent competitors with similar names from using a confusingly similar mark in business. But be aware, if someone else is using a domain name with your trademark, trademark laws do not require them to relinquish that name. Different businesses can use the same trademarks if they are in different industries and do not compete with one another. There are limits to what you can do with a Federal Trademark, and the rights you will acquire when your trademark registers.