A trademark protects a recognizable word, logo, phrase, symbol, or a combination of these elements that denotes a source of goods or services. The key role of a trademark is to differentiate providers of products and services from competitors.
What should a trademark owner do if a similar mark already exists in Florida? Read on to find out.
Florida Trademark Laws – The Fundamentals
US law provides that the ownership rights of trademarks do not necessarily come from registration, but from their actual use in business.
If a Florida company provides goods or services associated with a particular name, logo, or slogan, that company has the right to use the mark as a “common law trademark.” As long as a trademark is used in a certain area for long enough, the owner acquires common law trademark rights.
The problem is common law trademarks offer limited protection in case of infringement or fraud, which leads many entrepreneurs to register a trademark at the state or federal levels.
What Should I Do If a Similar Trademark to Mine Already Exists in Florida? – In Detail
There are two options for registering a trademark in Florida – applying with the United States Patent and Trademark Office (USPTO) or the Florida Department of State (Division of Corporations).
In both cases, applicants must demonstrate that the trademark is not overly similar or identical to an existing trademark that is already registered.
If you choose to register a trademark that is identical or too similar to a mark already registered, the owner of the registered trademark will likely sue you for infringement. Whether you are applying at the state or federal levels, you cannot register a trademark that creates a “likelihood of confusion.”
Two trademarks do not need to be identic to create the likelihood of confusion. The USPTO considers similarities in sound, appearance, or meaning to assess whether a trademark can mistakenly confuse consumers about the source of certain goods or services.
Accordingly, federal registration tends to have stricter requirements than state registration. If an applicant’s trademark has the same coloring or design as a registered trademark, it may result in a denial of application for likelihood of confusion.
Another common issue is when an applicant’s mark features the same name or meaning written in a different language. To avoid an unpleasant outcome, the applicant can:
- Re-file the applicant under a different name, logo, brand, or symbol
- Contact the owner of the trademark and discuss whether the new trademark affects the existing one (if applicable)
- Contact the owner of the trademark and make him aware that the new trademark will not be used for the same goods or services, or
- Discuss the possibility of the co-existence between the two trademarks as long as each mark focuses on different customers
If you have been using a common law trademark for a longer timeframe than the registered trademark owner, it is possible to work with an experienced trademark attorney to file a lawsuit based on the fact you were the first to use the mark.