Trademarks

Fort Lauderdale Trademarks Attorney

Trademarks

Trademarks are regulated by federal law as well as by various state laws. The federal regulating body is the U.S. Patent and Trademark Office. The applicable state law can be found here.

What is a trademark?

A trademark is “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” In other words, a trademark is a symbol or design that legally represents a particular company or product. Trademarks are typically used in connection with goods. If a trademark is used in connection with a service then it is known as a service mark.

An unregistered trademark is accompanied by the TM symbol (or “SM” if it is identifying an unregistered service mark). Once the trademark is registered with the U.S. Patent and Trademark Office then it can be identified by the federal registration symbol, ®.

How do I choose a strong trademark?

For a trademark to be enforceable, it must be “distinctive,” which means it must identify the source of the good or service. For example, the well-known Nike® swoosh logo clearly identifies shoes and products associated with that brand. Trademarks are rated by the “strength” of the mark, ranging from strong to generic:

1. “Arbitrary” and “fanciful” marks – These are strong marks. They are inherently distinctive and difficult to infringe. What makes the mark strong is that it bears no relationship to the associated good or service. Again, the Nike® swoosh logo is a good example.
2. “Suggestive” marks – These marks are slightly less strong, but are strong nonetheless. They are also inherently distinctive and difficult to infringe. One example is Greyhound® for bus services. While the mark is slightly descriptive of the service, some imagination is required.
3. “Descriptive” marks – These marks are not inherently distinctive. They are weak marks because they actually describe a characteristic or quality of the associated good or service. Holiday Inn® and Windows® are two examples. However, if the mark acquires “secondary meaning” (such that the public associates the mark with the source of the good or service and not merely as describing the good or service), then it can be protected against infringement.
4. “Generic” marks – These marks are never entitled to trademark protection because they generically describe the associated good or service. An example would be “Shoe Store” for a store that sells shoes.

How do I register my trademark?

A trademark registered with the U.S. Patent and Trademark Office (USPTO) allows the owner to prevent others from using the same mark. Once you have decided to file a trademark application and have hired a trademark attorney, you will:

• Identify your mark format;
• Clearly identify the goods and/or services to be associated with the mark;
• Search the USPTO database to make sure no one else has already registered that mark;
• Identify the proper basis for filing a trademark application (either “use in commerce” or “intent to use”); and
• File the application.

Florida law extends additional protections, which is why you should also consider registering your mark with the state. I am a registered trademark attorney with experience helping clients register trademarks both with USPTO and the state. Contact me today at (954) 812-0660.