Before You Register a Trademark, Start With a Search
The most expensive trademark mistake is choosing a mark someone else already has rights to. Before you file an application, order signage or launch a website, we search the federal register, the Florida register and common-law use to see whether your proposed mark is likely to conflict with an existing one.
A search also tells you how strong your mark is. Invented and arbitrary names are the easiest to protect. Descriptive names (“Orlando Plumbing Services”) are hard to register until they’ve acquired distinctiveness through use, and generic terms can’t be registered at all. Getting the application right the first time matters, because USPTO filing fees aren’t refunded if the application is refused.
One common misconception: forming an LLC or registering a fictitious name with the state doesn’t give you trademark rights. Those filings are public notice only. Your rights in a name come from using it in commerce, and registration makes those rights far easier to enforce.
Federal Trademark Registration at the Federal Level
Federal registration with the USPTO protects your mark across the United States. It gives the public nationwide notice of your claim, creates a legal presumption that you own the mark and have the exclusive right to use it for the listed goods or services, and lets you use the ® symbol. It also gives you the stronger federal claims and remedies available for registered marks, and lets you record your registration with U.S. Customs to stop counterfeit imports.
The federal trademark registration process
- Search and clearance. We confirm the mark is available and registrable.
- The trademark application. We prepare your application, including the description of your goods and services and the filing basis. The USPTO’s base fee is currently $350 per class of goods or services, with added surcharges for incomplete or custom descriptions.
- Examination. An examining attorney reviews the application, usually within about four to five months under the USPTO’s current pendency figures. If the examiner raises an issue in an office action, we prepare the response.
- Publication. Approved marks are published so others can oppose them.
- Registration. Most applications that reach registration take somewhere around a year from filing, depending on the filing basis and whether issues arise.
Keeping a federal registration alive
A federal registration isn’t permanent unless you maintain it. The owner has to file a declaration of continued use between the fifth and sixth year after registration, and a combined declaration and renewal between the ninth and tenth year, then every ten years after that. If a filing is missed and the six-month grace period also passes, the registration is cancelled or expires.
Registering a Trademark at the State Level in Florida
A Florida registration protects your mark within Florida only, but it costs less than a federal filing. The state reviews the application under Florida’s own registrability rules and against marks already in use or registered in Florida, and the mark must already be in use in Florida before you apply. It can make sense for a business that operates only in Florida. Florida registrations are filed with the Division of Corporations, cost $87.50 per class, and last five years, with renewals available for additional five-year terms.
Buying, Selling and Licensing a Trademark
When a brand changes hands, the trademark assignment has to be in writing and transfer the goodwill of the business that goes with the mark. Recording the assignment with the USPTO within three months protects the buyer against a later purchaser. If you’re buying a business or a brand, we review the chain of title before you pay for anything, and our Orlando business attorneys can handle the rest of the transaction.
A license, by contrast, lets another company use your mark while you keep ownership. A well-drafted license agreement sets the territory, term, quality standards and royalties, because a license without quality control can weaken your rights.
Trademark Infringement: How to Defend and Enforce Your Trademark
As a trademark owner, you’re responsible for policing your mark. If another company uses a name or logo that’s likely to confuse your customers, we typically start with a cease-and-desist letter, which resolves many disputes. When it doesn’t, our business litigation attorneys can pursue a trademark infringement or unfair competition claim. Even an unregistered mark can be enforced in the area where it’s been used, though registration makes the case much stronger.
We also defend businesses that receive a demand letter claiming they’ve infringed someone else’s mark. Those letters often overstate the sender’s rights, and a measured response can avoid a costly rebrand.
Why Work With Legal Counsel, P.A.
Michele Diglio-Benkiran founded the firm and has practiced business and real estate law since 1999, and she’s a member of The Florida Bar’s Business Law Section. Trademark work at our firm sits inside a broader business practice, so the same team can form your company, draft the contracts that use your brand and register the mark itself.
Richard Sierra is a commercial litigation and bankruptcy lawyer with more than three decades of experience, admitted to practice in Florida’s Middle and Northern District federal courts and the Eleventh Circuit. When a brand has to be defended, he’s already on the team. Results matter. We offer a free consultation, and pay later options are available for qualifying clients.
Serving Orlando and Central Florida Businesses
We help startups, restaurants, contractors, retailers, professional practices and established companies throughout Orlando and Central Florida protect their brands. We work from our Winter Garden, Orlando and Seminole offices, and much of the trademark process can be handled by phone, email and video. Trademark work is one part of our Orlando law firm, which also handles corporate formation for new businesses choosing a name.
