Part 1 of a series on U.S. and Florida Trademark (and Servicemark) Law.
What is the difference between a trademark and a servicemark?
A trademark is some identifying mark that identifies goods to be sold. A servicemark, on the other hand, is some identifying mark that identifies service to be sold. The frameworks that apply to these legal concepts are extremely similar. In this blog post, unless specified, whenever the word “trademark” is used, you can assume I mean “trademark (and servicemark)”.
What is trademark protection?
A trademark is an intellectual property right that aims to protect a brand’s rights in its logo, or however it conveys its brand. This means trademark is a property right that protects intangible property, or property that doesn’t exist in the physical world. An example of physical property is a car. Intellectual property, on the other hand is the Ford logo. Interestingly, intellectual property is not the physical medallion that says Ford, but the actual design of the logo. This, as you might imagine, creates all sorts of interesting possibilities and questions which are explored, if only superficially, in this blog post.
Where does Trademark protection come from?
Trademark protection comes from both federal and state law. Federal trademark protection comes from the Lanham Act, 15 U.S.C. §§ 1051 et seq., available starting at https://www.gpo.gov/fdsys/pkg/USCODE-2017-title15/pdf/USCODE-2017-title15-chap22-subchapI-sec1051.pdf. Federal trademark protection allows brands to protect their marks that are in the stream of interstate commerce across the nation.
State trademark protection, in Florida, comes from chapter 495, Florida Statues, available at http://www.leg.state.fl.us/Statutes/index.cfm?App_mode=Display_Statute&URL=0400-0499/0495/0495ContentsIndex.html. State trademark protection also stems from the common law itself, as memorialized in the case law of Florida. Florida trademark protection allows brands to protect their marks that are in use in the state of Florida across the state.
What is the difference between Florida and federal trademark registration?
Assuming you can register your brand’s mark in under either Florida or federal registration, which should you choose? Here is an overview of some of the differences:
|Registration fees||Starting at less than $100||Starting at less than $500|
|Use of “tm” or “sm”||Yes||Yes|
|Use of ®||No||Yes|
|Territory of protection||Florida||All U.S. states and territories|
|Ability to extend territory of protection internationally||No||Yes|
|Protection of tastes, sounds, and smells||Possibly||Yes|
|Remedies available in the form of injunctions and lost profits||Yes||Yes|
|Statutory damages available for counterfeit marks beyond other remedies||None||Yes, up to $200,000, and up to $2,000,000 if willful|
|Specific protection for domain names||No||Yes|
|Registration with U.S. Customs for prevention of importation of infringing products||No||Yes|
|Federal forum available||Only if diversity||Yes|
|Prevailing party attorney fees possible||Yes||Yes|
In the end, making the determination of where you register a trademark is fact dependent. To learn more about where a trademark should be registered, you should reach out to a knowledgeable and experienced intellectual property lawyer.
Zachary W. Lombardo, Esq., and Joseph M. Coleman, Esq., at Woodward, Pires & Lombardo, P.A., have experience in trademark law matters. If you find yourself needing assistance in this area, please contact a lawyer knowledgeable in trademark law to discuss your matter.