Florida Trademark Attorney Lawyer

The One Minute Primer below provides general information regarding trademarks. However, trademark law is very fact specific. Please call me to discuss your particular trademark situation and goals.

Trademarks – a One Minute Primer

What is a trademark?

Simply put, a trademark is a distinctive word, slogan or logo that is used in connection with goods or services.

Here are some examples: Coca-Cola ® (soft drinks); Jet Blue ® (airline services), Cheerios ® (breakfast cereal); "We do it like you do it" ® (Burger King slogan); the Nike "slash" logo (sports clothing); the golden arches logo (McDonalds).

What is the difference between a trademark and a patent or copyright?

People often confuse these terms and use them interchangeably. They are, however, very different from each other.

Patents typically relate to inventions, formulas, processes and designs. Examples include: prescription drug formulas and novel mechanical processes.

Copyrights typically relate to expressions of ideas. Examples include: books, poems, motion pictures, audio recordings, songs.

If I have come up with a trademark, what should I do next?

First, you should make sure that nobody else is using your proposed mark in a way that makes it confusingly similar to your proposed use. This is not as simple as it sounds.

The best option – have a trademark attorney obtain a trademark search report (which searches all trademark registries, corporation databases, phone books etc.) and review it for you.

If my trademark is available, how do I protect it?

While registration at the state level is a good start, it does not substitute for a federal registration with the United States Patent and Trademark Office. Contrary to popular belief, registration of a corporation or fictitious name with a state division of corporations does not give you rights like a trademark registration.

Retain the services of a trademark attorney, such as me, to help you with the registration process – the process is not as simple as it might seem.

How does the federal registration process work?

First, an application is filed.

Approximately six months later, the Patent and Trademark Office’s examining attorney will contact you with any comments that he or she may have on the application.

Assuming that the examining attorney does not refuse the application and any requested amendments are made, the application will then be published for opposition by third parties.

If nobody opposes the application, either: (a) the registration will issue, if the application was a use based application (i.e., you had already used the mark in interstate commerce) or (b) a "notice of allowance" will issue, if the application was "intent to use" (i.e., you filed the application alleging a bona fide intent to use the mark in commerce).

If your application was "intent to use" and you have received the "notice of allowance", you then have 6 months in which to use the mark and file a "statement of use". You can obtain further six months extensions up to a maximum of 36 months. As soon as the "statement of use" is accepted, the registration will issue.

What if the examining attorney refuses my application or a third party files an opposition?

If you do not already have an attorney, get one! You need someone to fight for your rights.

I need to protect my trademark in foreign countries – what do I do?

Protecting your trademarks abroad is a complicated process.

In some cases you will have to retain foreign counsel to file an application in your country of choice.

In other cases, you can get the ball rolling by filing a "Madrid Protocol" application with the U.S. Patent and Trademark Office.

In any event, you will definitely need the services of a good trademark attorney here in the US.