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Florida Trademark Prosecution Lawyer

Seeking Assistance from a Trademark & Copyright Lawyer in Florida

If you already have a business and have a unique symbolic representation of your company, it is important to have that mark protected. For many businesses, it is essential to have protection across the entire country, in which case registering your trademark with the U.S. Patent and Trademark Office (USPTO) is necessary. This process is known as trademark prosecution, and an experienced Florida trademark prosecution lawyer can assist you.

What is Trademark Prosecution?

While the term trademark prosecution might suggest some form of litigation involving trademarks, the term is actually a specific one that refers to the process of filing either a trademark application or a service mark application with the USPTO. Filing an application to register a trademark or service mark with the USPTO is much more complex than registering a mark in Florida under state law, and it is important to have a lawyer who can work with you on your application.

In addition to filing an application with the USPTO, the process of trademark prosecution can also involve responding to any challenges from the USPTO concerning your application.

What is the Difference Between a Trademark and a Service Mark?

It is important to be clear about whether you have a trademark and need to file an application with the USPTO for trademark registration. In some cases, businesses have both a trademark and a service mark, and in such cases will need to file an application for each. In other situations, the business has only a trademark or only a service mark, and thus will need to file an application either for a trademark or a service mark. To ensure that the proper application gets filed with the USPTO, it is necessary to understand the distinction between the two terms. Here is the general distinction between a trademark and a service mark according to the USPTO:

  • Trademark: Word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.
  • Service mark: Word, phrase, symbol, and/or design that identifies and distinguishes the source of the services of one party from those of others.

While many people use the term trademark and service mark interchangeably, the distinction largely has to do with whether the business largely involves goods or products (trademark) or services (service mark). Since many businesses engage in the sale of both goods and services, they file applications both for a trademark and for a service mark.

Begin the Trademark Prosecution Process

The process of registering your trademark with the USPTO typically takes 12 to 18 months from the date of application even without challenges to the application. You should work with your attorney to determine which of the following types of applications you should file:

  • Use-based application when you are already using the mark; or
  • Intent to Use (ITU) application when you intend to use the mark but have not yet been using it.

Once you file the application, the USPTO conducts an examination, and if approved publishes the mark which is followed by a 30-day opposition period. During that time, anyone can file an opposition to your application if that party believes it will be harmed if the USPTO were to register your mark. Even if there is no opposition, third parties are permitted to petition the USPTO to cancel the registration of your mark for several years after it is registered. If your mark is registered, you will receive an initial registration term of 10 years, but you need to show use of the mark between the 5th and 6th year or your mark will be cancelled.

Contact a Florida Trademark & Copyright Law Attorney for Assistance with Trademark Prosecution

Trademark prosecution can be extremely complicated, and it is important to have an experienced advocate who can assist you with this process. A Florida trademark prosecution attorney can help. Contact Perkins Law for more information about our services.

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