Trademark rights develop over time through use of a name or logo in connection with certain goods or services. Those rights strengthen if the owner registers its trademark with the proper authorities, and there are many benefits of registering a trademark federally or in Florida. Consider the following example.
Suppose that Mr. and Mrs. Entrepreneur open XYZ Ice Cream Parlor, which serves ice cream in Tallahassee. Although local customers associate XYZ Ice Cream Parlor with great service and tasty ice cream, XYZ Ice Cream Parlor is relatively unknown outside Tallahassee. A few years after XYZ Ice Cream Parlor opens, XYZ Ice Cream Shop – owned by Mr. Infringer – also begins to sell ice cream in Tallahassee. Similarly, Ms. Copycat, visiting from Atlanta, loves the XYZ name and upon returning to Atlanta opens XYZ Ice Cream Café there.
Mr. and Mrs. Entrepreneur are upset. Their customers believe they opened a second location in Tallahassee, which they did not do, and are complaining about slow service there, which is actually at Mr. Infringer’s XYZ Ice Cream Shop. After some online research, the Entrepreneurs also find Ms. Copycat’s XYZ Ice Cream Café in Atlanta and learn that Ms. Copycat filed a federal trademark application for XYZ Ice Cream Café and is planning on opening new locations.
The Entrepreneurs legal rights at this point vary based on what steps, if any, they have taken to protect their trademark.
EXAMPLE 1 – The Entrepreneurs did not register any trademark
If the Entrepreneurs did not register their trademark anywhere, they may be able to stop Mr. Infringer from operating in Tallahassee because he is operating in the same geographic area they are. But even this could be difficult to do, because the Entrepreneurs must prove, among other things, that they own the XYZ Ice Cream Parlor trademark and that it distinguishes their services in Tallahassee.
In addition, without a trademark registration, they will be unable to stop Ms. Copycat from operating XYZ Ice Cream Café (or anyone else using a similar name anywhere) because it is outside the area where the Entrepreneur’s trademark is known. Furthermore, if Ms. Copycat actually receives the federal trademark registration she applied for, she may be able to prevent the Entrepreneurs from expanding anywhere outside of Tallahassee under the XYZ name. This means Ms. Copycat will be able to continue operating her similarly-named ice cream shop in Atlanta, and the Entrepreneurs may be unable to use the XYZ name anywhere but Tallahassee.
EXAMPLE 2 – The Entrepreneurs registered XYZ Ice Cream Parlor as a Florida trademark
On the other hand, if the Entrepreneurs registered XYZ Ice Cream Parlor as a Florida trademark, their chances of preventing Mr. Infringer from using the name XYZ Ice Cream Shop in Tallahassee increase significantly because the law will presume that they own the XYZ Ice Cream Parlor trademark and that it distinguishes their services in Florida.
Additionally, Ms. Copycat cannot stop them from expanding their business within Florida. However, the Entrepreneurs still cannot stop Ms. Copycat from expanding outside of Florida.
EXAMPLE 3 – The Entrepreneurs registered XYZ Ice Cream Parlor as a U.S. Trademark
A U.S. registration entitles the owner to the exclusive right to use its mark in all fifty states and confers the presumption of ownership over a valid trademark. Therefore, if the Entrepreneurs registered XYZ Ice Cream Parlor as a U.S. Trademark, they would have a good chance of preventing both Mr. Infringer and Ms. Copycat from operating under the XYZ Ice Cream name anywhere.
Additionally, it is likely that Ms. Copycat’s federal trademark application will be denied registration because the Entrepreneurs registered the XYZ Ice Cream trademark first.
Federal trademarks offer other important benefits such as better control over infringing goods sold through e-commerce websites or those imported in the United States. Federal trademarks can also be used to stop others from using similar domain names that disrupt the owner’s business.
Federal and state registration of a trademark offers a business many benefits. A business that plans to never expand outside of Florida may only wish to register a Florida trademark, while a company that sells good online, may perhaps expand in the future, or already operates in several states may benefit from a federal registration.
The information provided does not and is not intended to constitute legal advice; instead, all information is intended for general informational purposes only.