Starting a Business in Miami? Begin by Protecting your Trademark

By Josh Gerben, Esq.

Whether you are planning to open a boutique in Coconut Grove or run a food truck in Downtown, the Miami area is a great place to start a new venture. Before you begin to build your brand, however, you should consider how to protect it. The best way to do that is through trademark registration.

Create a Unique Trademark

Successful businesses use trademarks to help them stand out in a crowded industry. Take the time to select the perfect trademarks to represent your unique brand. Be sure to avoid generic or descriptive words in your trademark, as the United States Patent and Trademark Office, or USPTO, won’t approve these trademarks. Instead, opt for arbitrary marks, which are real words that don’t have any relation to the goods or services you offer (like Amazon) or fanciful marks, which are completely made up. Kodak is an example of a successful fanciful mark.

The USPTO will also reject your trademark application if a confusingly similar mark already exists. Once you’ve narrowed down your list of preferred trademarks, you’ll need to conduct a comprehensive trademark search to ensure that your mark is available for registration. Your trademark attorney can assist you in conducting a thorough trademark search and determining whether your mark may cause a likelihood of confusion in the marketplace.

Register your Trademarks with the USPTO

In order to have the presumption of validity nationwide and the ability to take legal action against infringers, you’ll need to register your trademarks with the USPTO. With a registered trademark, you’ll also be able to expand your business outside South Florida and use your trademarks in other areas without concern for infringing on other businesses.

Once you’ve selected a unique trademark and determined that no other businesses are using a confusingly similar mark, you can begin the application process. Your attorney can assist you in drafting the application, selecting the appropriate trademark classes, and even responding to Office Actions on your behalf.

Simply filing your application will also lock in a valuable protection. The date you file will become your priority date, and anyone looking to file a similar mark after that date will not be approved by the USPTO. Read about the steps we recommend on how to register your trademark.

Consider International Registration

Your business may be based in Miami, but in today’s global economy, you’re likely to do business outside the United States at some point, if you aren’t already doing so. Unfortunately, your federally registered trademark is only protected within the U.S. So if you sell your products or manufacture them in another country, you should strongly consider seeking trademark registration in that country as well.

Registration with the USPTO is actually the springboard to obtaining international registration. Once you’ve submitted your application to the USPTO, you can begin the process to register outside the United States. If you plan to register your marks in a small number of countries, you can apply directly with each country’s intellectual property office.

However, if registration in multiple countries is your goal, you may want to consider using the Madrid Protocol. This international treaty will allow you to complete a single application that can then be applied to over 90 member countries.

Maintain your Trademark Protections

Your registered trademark will provide valuable protections to your brand, but you must monitor your mark’s use and take action against infringement. Failing to monitor and police your mark could confuse your customers, cost you sales, and even damage the reputation you’ve worked hard to build for your brand.

While monitoring your mark may seem like a full-time job itself, many trademark attorneys, including those at Gerben IP offer monitoring services and can assist you in taking legal action if infringement is found.

Monitoring your mark is only one part of maintaining your trademark protections. You must also meet the renewal deadlines set by the USPTO and continue to use the mark as it appears in your trademark application.

It’s understandable that you may want to make updates to your logos or slogans over time, but these changes, if not registered with the USPTO, will not be protected. As you expand your products and services, you’ll also need to register those additional classes to ensure protection.

Protecting the Trademarks of your Miami-Based Business

As a new business owner, there’s no shortage of tasks that you’ll need to complete, from fine tuning your product to creating a website and developing a marketing plan. In fact, some entrepreneurs are so focused on these tasks that they overlook the critical responsibility to register their trademarks. As you plan to open your own Miami-based business, start by carefully selecting the right trademark for your brand, and conduct a trademark search to ensure that a confusingly similar mark isn’t already in use.

While you will have some common law rights to your trademark as you soon you begin to use it, registering with the USPTO will provide you the presumption of validity nationwide and the legal standing to take action against infringement. Registering in other countries ensures that your trademark will be protected there as well.

Once your mark has been approved, you will need to monitor it, take quick action against infringement, and meet renewal deadlines. Contact our experienced trademark attorneys today to start the process to register your valuable trademarks.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.