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Small Business Trademarks

Trademark Rights for Small Businesses:
Understanding Florida State Common Law Rights

Introduction: The Importance of Small Business Brands

Miami was recently named the No. 1 city for small business growth in 2019, knocking off New York City from the top spot. Miami’s prime location in South Florida allows the city to be the “the gateway” to Latin America for both importers and exporters of various branded goods. Additionally, Miami’s warm weather attracts tourists all year long while also being the media capital of Spanish broadcasting. All these factors contribute to why small businesses continue to flock to the “Magic City” not only for its beneficial lifestyle, but because of its opportunities for start-up businesses.

With growth comes growing pains – and one of those happens to be certain misunderstandings and/or misgivings regarding how to protect brands while a company and its products are in their infancy. Put another way, how does a company that is determining what it is, and what it should sell – seek protection from its most important capital – its trade name, its logos, and related indicia?

Let’s first begin with an understanding that brand protection is rooted in obtaining and procuring trademark rights. So, what is a “trademark.” The most straightforward definition is: “a symbol, word, or words legally registered or established by use as representing a company or product.”

So, as a starting point – trademark rights are developed through the use of the branding, and/or via registration of such brand either through the State of Florida or Federally via the United States Patent & Trademark Office.

Regardless, a trademark allows consumers to recognize the origin of products or services – i.e., from what company or source they come from. In other words, the name and reputation of a business is its backbone.

As mentioned, two types of registered marks may be available to protect your brand: Federal and State. A Federal trademark is appropriate for businesses involved in “interstate” commerce, or a business that is planning in the future on expanding or operating in other states (or between a state and a foreign country).

A state mark is sufficient if your business is selling goods or providing services in one jurisdiction, i.e., within the State of Florida. Each of the U.S. states have a state trademark office that grants the appropriate state trademarks. For the most part, if you only provide services within Florida (and not to folks outside of Florida) a state trademark is likely your only option. That said, here in Florida (particularly here in Miami) there is a good chance you are offering services and/or goods to at least a portion of patrons that are international. Thus, by locating your business in Miami, there is a good chance you have the opportunity – when seeking registered rights in your brand – to see Federal protection. And to be clear – there is no prohibition from registered in both as both statutes differ (for example there is a better opportunity to recover fees when enforcing a state trademark in comparison to a Federal trademark registration).

If you own a business and have not gotten around to registering your mark (either via a State Trademark or Federal Trademark), you still may have some common law rights. While registered rights typically afford additional rights and protections to brands, those unregistered rights available via state and/or Federal law still are incredibly valuable.

A company can have common law rights in a mark if the company can demonstrate “actual and continuance use in commerce.” i.e., the company has been using the mark in connection with their good or services. An important factor that determines if the mark has acquired common law rights is whether or not the public associates the mark with the company’s good or services. There have even been rare occasions where a company’s common law rights have allowed them to fend off a company with a registered mark in the same geographical area.

At the outset – understanding the benefits of a Florida Trademark Registration vs. a Federal Trademark Registration is important – and having that understanding is important for any start up and/or small business.

An Example of Small Business Trademarks: Florida Avenue Brewing Company v. Florida Avenue Eats

A recent case in Tampa has received press due to its involvement with Florida state common law rights being enforced in the trademark realm. Florida Avenue Brewing Company was first to use “Florida Avenue” in its name and believes that a competing company that recently opened on the same street, Florida Avenue Eats, will cause consumers to be confused. Neither company has registered its respective mark (either before the State of Florida or Federally), which is why common law rights are being addressed.

Florida case law states that “the elements of common law and statutory trademark infringement are the same.” Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1025–26 (11th Cir. 1989).

Before opening its doors, “Florida Avenue Eats” reached out via a Facebook message to the owner of “Florida Avenue Brewing Company” to ask permission to use name “Florida Avenue” – which was denied. Nonetheless, despite not obtaining permission, “Florida Avenue Eats” opened with that name, and the brewery immediately began receiving calls – where patrons were asking if the Brewery was affiliated with “Florida Avenue Eats”

The attorneys sent “Florida Avenue Eats” a cease and desist notification on March 4, 2019 – which was apparently ignored. On April 15 of this year, Florida Avenue Brewing Company filed a lawsuit in the U.S Middle District of Florida in Tampa, alleging that Florida Avenue Eats is infringing on its mark.

So, what is the lesson? Just because you don’t have a Florida State Trademark or a Federal Trademark – does not prevent you from engaging a Florida Trademark Infringement Attorney to protect your brand and your related rights.

Understanding the Benefits of Registering Your Mark

What are the benefits of registering a state trademark – rather than benefiting from these already automatic and available common law rights? Great Question!

As an owner of a business, registering your mark comes with many advantages. Federal registration gives a presumption that the owner of the mark has exclusive rights to use the mark nationwide. State registration gives a presumption that the owner has exclusive rights to use the mark in that particular state. In contrast, common law rights are only limited to the specific area in which the owner is using his or her mark. Some other advantages of a federal registration include: a public notice of your claim to ownership, the basis for registering your trademark in foreign countries, and the right to bring a legal action in federal court.

Whether you are an entrepreneur with a Miami based start-up, or own many businesses nationwide, registering your mark will protect you from infringers trying to use your mark’s name and reputation for their own benefit.

If you have questions about the protections afforded by a Trademark registration – or if you believe your mark is being used by another entity, contact a Florida Trademark Attorney today at 305-374-8303 to discuss your rights.