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What Are The Requirements For Registering A Trademark In Florida And At The Federal Level?

In Florida, the trademark needs to be used in commerce at the time of application, and you need to submit the trademark application, along with three specimen, to the Department of State. A specimen is simply proof that shows that you are using the mark in commerce; so for example, a flyer, a screenshot of your website, a business card, a brochure, etc. You mail the application, specimen, and filing fee all in, and then the State either approves or rejects your application.

On a federal level, an applicant is able to submit an application prior to them even using the mark in commerce, in a way reserving the right to register that mark. This means you can get an earlier application filing date than a possible competitor and give your mark priority over someone else’s if a legal conflict develops. However, that application process will not conclude (meaning you will not be able to register that mark) until you actually submit a specimen showing that you started using the mark in commerce. On the federal level, your application is submitted online.

Should I Submit An Application Before I Start Using A Mark?

It varies from state to state, but in Florida, you have to already be using the mark. For a federal registration, you can submit what is called an “intent to use” application, which is valid for six months after a Notice of Allowance is issued. This means you need to start using the mark within six months and submit a specimen in order to proceed with your application. If you do not submit a specimen during that time, then you must file an extension to avoid your application being abandoned. Once you submit your specimen, the process for the registration continues until your mark gets approved or denied.

Why Do I Need An Attorney To Apply To Register A Trademark?

An attorney can help you with the trademark search process and help you decipher whether your mark is high risk for registration prior to filing the application. An attorney will be able to give you that analysis and assessment of the search results, in addition to making sure that you file the application correctly and include the proper information, which can vary from mark to mark. That way, you minimize the risk of your application being denied or delayed.

My Application Was Rejected. What Can I Do?

An application could be rejected for many different reasons. The most common reason is a likelihood of confusion. What that means is that there is a registered mark in the federal database that is either identical or confusingly similar to your mark. If the examining attorney for the U.S. Patent and Trademark Office determines that your mark is confusingly similar to the already registered trademark, your application will be rejected.

That rejection comes in a document called an office action. Depending on the reason for the rejection, the applicant can choose to respond to the office action with legal arguments in order to convince the examining attorney that the applying trademark should not be rejected. If your office action still stands after you respond to it, then the application is abandoned. Once the application is abandoned, you could do one of two things: (1) You can refile your application in hopes that it gets into the hands of another examining attorney who does not find it confusingly similar, and therefore, approves your application; or (2) abandon the application.

If you decide not to refile because you don’t want to risk it getting rejected again, you can continue using your mark without it being registered. What you would do is use the ™ symbol instead of the ® symbol. You’d also need to make sure that you’re not infringing on anyone else’s mark by doing so.

In Florida, the applicant has three months to reply to an application if it’s rejected, and then it gets re-examined. Depending on what the issues are in the application, if you amend the application accordingly and resend it, they will reexamine it and then tell you if it’s approved or not.

How Do I Maintain My Trademark Registration?

In Florida, a registration expires after five years, so in the six months prior to the expiration date, you must submit a renewal application along with the filing fee. For the USPTO, the applicant has to file what’s called the Declaration of Use or Excusable Non-Use under Section 8 between the fifth and the sixth year after registration of their federal trademark, and then again between the ninth and the tenth year after the registration date. After that, you will file another renewal application every ten years.

For more information on Trademark Law in Florida, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (305) 912-4247 today.

Portalatin Law Firm

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(305) 912-4247

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