Another condition of a federal trademark is that it is used in interstate commerce. If you are only a local business, chances are your name is not used in interstate commerce. You can use it on a website, and that qualifies as interstate commerce, but you need to have several examples of its use in interstate commerce.

You are able to file for a federal trademark before the mark is used in interstate commerce on an-intent-to-use basis. If the trademark filing was based on an Intent-to-Use basis, the USPTO trademark attorney will issue a Notice of Allowance about four months after the date of publication. The applicant then has six months from the date of the Notice of Allowance to either (1.) use the mark in commerce and submit a Statement of Use or (2.) request a six-month extension of time to file a Statement of Use. If the Statement of Use is filed and approved, the USPTO trademark attorney will issue a registration certificate.

Prior to publication of your trademark, it will be reviewed by a trademark lawyer from the USPTO. The trademark lawyer from the USPTO may also refuse the mark because he deems the mark to be primarily geographically descriptive, primarily geographically misdescriptive, a generic term, primarily merely a surname (Smith Apples), or a scandalous or immoral trademark. The most common grounds for the trademark lawyer from the USPTO to refuse a trademark registration are likelihood of confusion between the applicant's mark and a previously registered mark or that the mark is merely descriptive in relation to the applicant's goods or services

When you file for a federal trademark it is published for review in the Official Gazette. Small businesses pay no attention to the trademark review but larger companies will have employees, staff counsel or an outside company reviewing trademark applications for them. If they find something that conflicts with one of their marks, they can file objections to the mark. In this case, you will need an attorney qualified to practice before the patent and trademark office.

Oppositions must be filed within 30 days of publication. If there are no objections the trademark will usually be issued in about four months.

USPTO Official Gazette Online

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State Trademarks

The second way to get a trademark is on the state level, in Florida filed with the secretary of state. Your mark is protected in Florida and can be enforced in state courts. Chances are that your main competition is going to be local or state-wide, so a state trademark offers important protection. The state trademark in any particular class costs only $70.00.

State trademark registration usually follows the federal designation of classes of goods and services. A few states have registration fees of only $10 and some are at $30. A few states are notable for having filing fees nearly as much as the federal fee.

Many businesses think that a state trademark is unnecessary if they have or plan to get a federal trademark. This way of thinking is a mistake. Many large corporations have state and federal trademarks. This has a number of benefits. One of them is that you have a choice of forum for enforcing your trademark in court. If your trademark is being violated locally, you could file a civil action in the county court to enforce your mark. In the case of Blue Planet Offices, Inc. for example, to enforce a trademark in U.S. District Court, we would have to file it in Miami and if there were hearings required, we would have a long drive of over 300 miles round-trip each time.

The cost of a state trademark is far less than a federal one and you don't have to worry about classes of goods and services, nor publication and waiting months for it to be issued.

If your business strictly operates within Florida or any other single state you will have difficulty getting a federal trademark, if you can get one at all. One of the big requirements is that the mark is used in INTERSTATE COMMERCE. If you use it only within a single state, it is not used in interstate commerce. Even if you do get it granted, when you have to go to court to enforce it, chances are it might be invalidated if you can not prove how it is used in interstate commerce.

Personally, I would always have state trademarks even if I had federal marks. There are any number of reasons why you might want to stick to the state court in your county rather than going to United States District Court. However, if you do have a federal trademark and the infringement is not local or is widespread involving multiple jurisdictions, then the federal route is the only way to go.

Many businesses operate only locally or within a state but they file for federal trademarks. In a court fight, the opposition is going to try to invalidate that trademark because it is not used in interstate commerce. In fact, I personally had a federal court battle with Ameritech over their "Bell" trademarks (Wisconsin Bell, Illinois Bell, Ohio Bell, etc.) because none of them were ever used in interstate commerce. They also had state trademarks and relied upon those. This is a good example.

Florida State Trademark Search

Incorporate to Protect Your Trademark in Florida