Want to Register a Trademark? Here is What You Have to Prove

A trademark is an important form of intellectual property (IP). Although you are not legally required to register a trademark (there are common law rights in Florida), there are a number of different advantages to doing so. At Perkins Law — Brand Protection, we have extensive experience with the trademark registration process. In this article, our Florida trademark registration attorney explains what you will need to prove to bring a successful application.

You Must Prove that Your Proposed Trademark in Distinctive

Distinctiveness is a foundational requirement of trademark registration. Trademark protection does not extend to every word, phrase, or symbol. To qualify for protection. you must prove that the mark is capable of identifying a single commercial source. Among other things, you need to show inherent distinctiveness or acquired distinctiveness. Fanciful, arbitrary, and suggestive marks qualify on their face. On the other hand, descriptive marks do not qualify unless you can prove secondary meaning through long and exclusive use, advertising, or consumer recognition.

You Must Show Actual Lawful Use in Commerce

Federal trademark rights arise from use, not intent alone. You cannot register a trademark to simply “squat” on it for some potential speculative future use. To register a trademark at the federal level, you must prove lawful use of the mark in interstate commerce or a bona fide intent to use the mark in the near future. Use in commerce requires more than internal planning. You must show the mark placed on goods, packaging, labels, or point-of-sale displays, or used in the advertising and rendering of services. The use must be real and continuous.

You Must Establish Legitimate Ownership and Top Priority

Next, you must prove that you own the mark and that your rights are superior to others. Ownership depends on who first used the mark in commerce, not who first filed an application. If multiple parties use similar marks, that is when priority controls. The analysis often turns on dates, geography, and the nature of the goods or services. Prior registrations, common law users, and pending applications can all block registration. Even without a direct conflict, a likelihood of confusion could lead to a refusal if the USPTO determines that consumers could reasonably believe two marks come from the same source.

You Must Show the Mark Is Not Barred by Law 

Certain marks are barred regardless of use. These include marks that are deceptive, falsely suggest a connection, consist of immoral or scandalous matter as defined by statute, or primarily function as a surname without acquired distinctiveness. Government insignia/official seals are also prohibited. 

Speak to Our Florida Trademark Registration Attorney Today

At Perkins Law — Brand Protection, we are proud to be leaders in IP law. If you need help with trademark registration, we are here as a legal resource that you can rely on. Contact us today for a completely confidential, no obligation initial consultation. We handle trademark registration cases throughout Southeastern Florida.