On June 7, 2019, Governor DeSantis approved HB 445, a bill that revised the classification system of Florida’s Registration and Protection of Trademarks Act (see Chapter 495 of the Florida Statutes). The purpose of the revision was to align the Florida trademark classification of goods and services to that of the United States Patent and Trademark Office (USPTO), which is the federal trademark authority. The new changes revise most of Florida’s 45 trademark classifications. A copy of the changes can be found here.
The USPTO breaks up the 45 classes into two groups. There are 34 classes for products and 11 classes for services. When applying for a trademark, at the USPTO or in Florida, the owner must select the class or classes where the brand is being used. For example, if the business uses a brand in the real estate business, then they likely fit in one of the service-based classes. If the business also brands their real estate business in related apparel, they may also want to apply for a product-based class. It is important to select these appropriate class and word the description accurately because you will have to submit evidence of your use of the brand in the applied for classes at the beginning or end of the trademark process.
While federal trademark registrations secured with the USPTO are more commonplace, there are reasons to secure a Florida trademark to protect your brand. For some business owners, their entire business is focused in Florida and does not extend outside the state. If there are no plans to expand out of Florida in the future, a Florida trademark may be all the business owner needs. While a federal trademark registration is often litigated in federal court, a Florida trademark owner may have the ability to file an infringement action in Florida state court, which is relatively rare.
There are pros and cons to litigation in federal court compared to state court. The business owner should assess the cost/benefit of securing a Florida trademark and/or a federal trademark as they build their trademark portfolio to protect their valuable branding. Often overlooked, branding is in important part of your business and steps should be taken to protect your brands. Otherwise, you may have limited options to enforce your rights should someone copy your branding in a related market.
For any questions about trademarks, patents, or copyrights, contact Greg Popowitz.
Registered Patent Attorney
AV Rated by Martindale-Hubbell
Intellectual Property Litigation
213 East Sheridan Street, Suite 3
Dania Beach, Florida 33004