Page 74 - Akerman | 2016 Guide to Doing Business in Florida

service mark to distinguish its services. Generally, service marks and
trademarks receive the same legal treatment.

(b) Selection of Trademark. A manufacturer should carefully consider the
trademark selected for its merchandise. The level of protection against
infringement of a trademark varies with the “strength” or “uniqueness” of the
trademark. “Descriptive” marks are the weakest and least defensible. A
descriptive trademark is a name that describes some characteristic, function,
or quality of the goods. A “fanciful” mark, the strongest type of mark, is a
coined name that has no dictionary definition. A “generic” word is not
available for protection.

Evaluation should also include consideration of the likelihood of success in
obtaining federal and state registrations of the trademark. For example, a
trademark that is “merely descriptive” cannot be registered under either
federal or Florida law.

Selection of a trademark should be accompanied by a trademark search to
determine whether another manufacturer has already adopted or used a mark
that is the same or similar to the one desired. Publications provide lists of
existing trademarks, registered and unregistered, and there are businesses
that specialize in trademark searches. Actual and potential trademark
conflicts should be avoided, lest the manufacturer become involved in an
expensive infringement lawsuit. Of even greater concern is the potential loss
of the right to use a mark after considerable expenditure in advertising
merchandise bearing the mark.

(c) Advantages of Trademark Registration. Under the trademark laws of the
United States and Florida, the principal method of establishing rights in a
trademark is actual use of the trademark. “Registration” of a trademark is not
legally required but can provide certain advantages.

Federal registration of a trademark is presumptive evidence of the ownership
of the trademark and of the registrant’s exclusive right to use of the mark in
interstate commerce, strengthening the registrant’s ability to prevail in any
infringement action. Federal registration is also a prerequisite for bringing a
lawsuit under the federal trademark laws, for an award of attorney’s fees and
for an award of statutory damages.

After five years of continued use of the mark following federal registration, the
registrant’s exclusive right to use of the trademark becomes virtually
conclusive upon filing a statement. Federal registration may assist in
preventing the importation into the U.S. of foreign goods that bear an
infringing trademark. There are also other less tangible advantages of
registration, such as the goodwill arising out of the implication of government
approval of the trademark.

State registration provides some advantages, though these advantages are
not quite as extensive as federal registration. State registration is usually
advisable, particularly in situations in which a manufacturer’s sales will occur
only in Florida.

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