Many of our clients seek our assistance in preparing, filing, prosecuting, opposing and cancelling federal or United States Trademark Applications and Registrations. However, there are lesser known benefits afforded to companies and people who also seek Florida Trademark Registrations. The benefits of registering a trademark in Florida are:
1. The Florida Trademark Act at § 495.141(1), Florida Statutes now provides for an award of attorneys’ fees to the prevailing party in a trademark infringement action. Trademark litigation is often costly and unfortunately often determined based upon which party is the most aggressive and can endure litigation the longest. The new fee provision permits the recovery of such expenses and therefore gives a smaller company a fairer chance to pursue actions to police their marks than the standard under the federal Lanham Act (Trademark Act), Title 15, United States Code.
2. Claims for damages under Florida law are sometimes governed by more liberal standards than some federal circuits in that it may be easier to obtain an award of the infringer’s profits.
3. Having a Florida trademark registration gives the holder a basis to exercise the option of filing a lawsuit in a Florida state court (if any of the infringement occurred in Florida). It is often far more cost effective to litigate in a Florida state court than a federal court. Florida state courts often provide the parties with far more leeway in voir dire (jury selection), which in federal court is generally limited and conducted largely by the United States District Judge.
4. The application process is usually complete within a few weeks as opposed to a federal application which usually takes between eight (8) months to a year and a half.
5. Although a Florida Trademark Registration only applies to the State of Florida, the application is far less costly than a United States Application.
6. The owner of a Florida Trademark Registration is entitled to a rebuttable presumption that it is the owner of the trademark in Florida and that its trademark rights in Florida are valid. This can provide the owner a huge advantage in court.
Regardless of residency or principal place of business, any person or company who uses a trademark in Florida commerce may be eligible to apply for a Florida Trademark Registration. Also note that forming a corporation, partnership, limited liability company or other business entity in Florida does not create any trademark rights at all, and is not the equivalent to a Florida Trademark Registration. Other filings which are often confused are state or county Applications for Fictitious Name Registrations (“DBA’s”). These registrations are also separate from and have little if any bearing on trademark rights of Florida Trademark Registrations.
Feel free to contact me if you would like to learn more.
Michael I. Santucci