To apply for a trademark in Florida, you can either register with the state or the federal agency responsible for trademark regulation. Is it possible to file a trademark application before doing business in Florida? Read on to find out.
Trademark Law in Florida – The Basics
The United States Patent and Trademark Office (USPTO) defines a trademark as “any word, phrase, symbol, design, or a combination of these things that identifies goods or services.”
Without trademarks, it would be virtually impossible to recognize and distinguish the source of goods and services in the marketplace. If you have a company in Florida, you need a solid trademark to:
- Help customers identify the source of your company’s goods or services
- Protect your brand against counterfeiting and fraud
- Give you the right to sue the infringing party (if applicable)
Many entrepreneurs think that trademarking a certain word or phrase automatically prevents others from using it, which is not true. A trademark owner does not own the right to use a word or phrase in general.
Instead, a trademark registration restricts how that specific word or phrase can be used with certain goods or services.
Florida Trademarks vs. Federal Trademarks – Taking a Closer Look
Florida trademark owners have two options for registration – to apply with the USPTO or register with the Department of State (Division of Corporations). Registering a trademark with the state is less expensive and time-consuming but offers limited protection.
Conversely, federal trademark registration is a more complex and expensive process but offers nationwide protection. Please note that the ownership rights over a trademark come from its use in business, not necessarily from registration.
It is fundamental to understand that trademark rights exist under common law, considering trademarks are established by showing prior use of a name, logo, symbol, phrase, or a combination of these elements used to identify and distinguish a business.
Is it Possible to File a Trademark Application Before Doing Business in Florida?
The possibility to file a trademark application before doing business depends on the type of registration you choose.
Florida law only permits trademark registration for marks being actively used in a business. Conversely, it is possible to apply for a federal trademark before using the mark on goods or services.
If an individual or company located in Florida decides to register a trademark with the USPTO, they give the applicant the option:
- To register an existing mark, or
- To register a mark that has not yet been used in business but will be in the future
If the applicant chooses the second option, he or she must file an Intent-To-Use application. As long as the applicant demonstrates that the business exists but did not complete the process to link the trademark to goods or services yet, it is possible to apply with an Intent-to-Use.
Both state and federal trademarks cannot be registered for non-business purposes or if there is no actual business to use the mark.
Once the application is approved, the trademark owners have a limited period to prove that the trademark is being used in business. The USPTO grants the applicant one year to provide evidence of the trademark’s use in business, such as advertisement materials and specimens.
If the trademark owner fails to provide the required evidence, it is possible to apply for an increment of six months within which he or she must meet USPTO’s requirements.