Trademarks, Service, Collective & Certification Marks
A trademark or service mark may be registered with the Division of Corporations, providing the mark meets all requirements and complies with the provisions stipulated in Chapter 495, Florida Statutes.
The owner of a mark may be an individual or a legally recognized business so long as the business entity maintains an active registration on file with the Division. A mark must be in use before it can be registered. In the case of a trademark, the good(s) or product(s) must be on sale in the marketplace. For a service mark, the applicant must actually be rendering the service for which a service mark is applied. The mere advertising of goods or services does not constitute use of a trade or service mark.
Marks submitted for registration are checked for distinction from marks that are registered with the Division. Marks submitted for registration are not checked, however, for distinction from corporation names, fictitious names or any other entity names registered with the Division.
It is the responsibility of the registering party to investigate the availability of a proposed mark and to determine that the mark does not constitute infringement upon the mark of another. It is the responsibility of the owner of an existing mark to defend it against infringement.
Rights to ownership of a mark are perfected by actual use in the ordinary pursuit of the specific endeavor; rights are not perfected by registration only. The rule “First in Use, First in Right” is applicable. Ownership of a mark is not bestowed by a government entity but is obtained through use. Registering a mark is a means of placing notice to the public that the name is in use. Trusted legal advice regarding use and registration of a mark is recommended.
Trademark or service mark registrations with the Division are state government level registrations. They do not replace registrations with the federal government.
To obtain information about federal registration, contact the United States Patent and Trademark Office in Washington, D.C., (571) 272-1000, or on the web at www.uspto.gov. For information regarding copyrights, contact the Copyright Office at the Library of Congress, (202) 707-3000, or on the web at www.copyright.gov.
“Trademark” means any word, name, symbol or device, or any combination thereof, used by a person to identify and distinguish the goods of such person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown.
“Service mark” means any word, name, symbol or device, or any combination thereof, used by a person to identify and distinguish the services of such person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that the person or the programs may advertise the goods of the sponsor.
“Certification mark” means any word, name, symbol or device, or any combination thereof, used by a person other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
“Collective mark” means a trademark or service mark used by the members of a cooperative, an association or other collective group or organization, and includes marks used to indicate membership in a union, an association or other organization.
The purpose of specimens or facsimiles is to illustrate the manner in which the mark is actually affixed to or displayed in connection with the goods or services. Three specimens or facsimiles for each class of mark must be included with the application. Specimens or facsimiles must depict the mark as it is actually used. Do not submit typed or handwritten specimens or facsimiles unless the mark is actually depicted in that manner on the goods or products or in the case of a service mark, in advertising or promotional materials. If applying for a trademark, submit specimens or facsimiles that are affixed to the good(s) or product(s). Some acceptable trademark specimens or facsimiles are labels, decals, tags, wrappers, boxes and containers. If your mark is a service mark, submit specimens or facsimiles that reflect the type of service(s) being provided. Some acceptable service mark specimens or facsimiles are business cards, brochures, fliers and newspaper advertisements. If your mark is both a trade and service mark, you must submit three appropriate trademark specimens or facsimiles and three appropriate service mark specimens or facsimiles. Three of the same item or three different items are acceptable. Be sure to send three specimens or facsimiles for each class for which application is made.
Do not submit camera ready copies, letterhead stationery, envelopes, invoices or matchbooks. Photographs of bulky specimens are acceptable if the mark to be registered and the good(s) or product(s) are clearly legible. Specimens or facsimiles that are difficult to view or have been altered or defaced in any way are not acceptable.
CLASSES / FEES
Each product or service falls within a specific class for registration. There are a total of 45 classes. For information on classes and fees, call (850) 245-6051 or visit www.sunbiz.org.
Basic Information Required on Trademark or Service Mark Registration Application:
To register a mark pursuant to Chapter 495, Florida Statutes, submit one original and one photocopy of a completed Application for the Registration of a Trademark or Service Mark, three specimens or facsimiles and a check payable to the Florida Department of State for the appropriate amount. The application must be typed or legibly handwritten, signed and notarized. Registrations are good for five years beginning with the date of registration. Owners must file renewals with the Division within the six-month period preceding the expiration date. See Chapter 495, Florida Statutes, for detailed requirements of mark registration. The registration application must contain:
- The name and business address of the applicant and state whether the applicant is an individual, a corporation, a limited partnership, a general partnership or other business entity. If the applicant is a business entity, include the entity’s domicile state, the Florida registration number and Federal Employer Identification number.
- If a service mark application, list the services the mark is used in connection with, for example, restaurant services, real estate sales, insurance sales, etc.
- If a trademark application, list the goods or products the mark is used in connection with, for example, window cleaner, furniture polish, children’s shoes.
- List how the mark is being used. If a trademark, tell how the mark is applied to the goods or products, for example, as a label, decal, or by engraving or imprinting on the goods. If a service mark, tell how the mark is used in advertising, for example, newspaper advertisements, brochures, business cards, etc.
- List the applicable class(es). Please refer to www.sunbiz.org for information on classes.
- The date the mark was first used anywhere and the date the mark was first used in Florida.
- The mark to be registered. If the mark includes a design, include a brief description. If a mark includes a word or design that must be disclaimed, applicants must include a disclaimer statement. All geographical terms and representations of cities, states or countries must be disclaimed (i.e., Miami, Orlando, Florida, the design of the state of Florida, the design of the United States of America, etc.). Commonly used words, including corporate suffixes, must also be disclaimed. If your mark includes a word or a design that is commonly used by others, the state of Florida cannot grant you the exclusive right to use the word or design and will require you to complete a disclaimer statement.
- The dated and notarized signature of the applicant or person authorized to sign and the signer’s title.