Trademark Matters

Trademarks and service marks protect your business’s brand name, logo, or slogan, and identify the source of your goods and services to consumers over your competitors. As our economy grows more global and more dependent on e-commerce, trademarks and service marks only continue to grow in value and importance — and so does the cost of getting the clearance search, the filing basis, or the foreign filing strategy wrong.

Our Miami trademark attorneys clear, register, and manage trademark portfolios in Florida, throughout the United States, and abroad — from the first knockout search through Madrid Protocol filings and licensing transactions.

Trademark Clearance Searching

Why a search comes before a filing — and before a rebrand

Registering your brand name, logo, or slogan with the United States Patent and Trademark Office can provide a key competitive edge. Before investing time, effort, and money into a particular name or logo, it is prudent — and often essential — to determine whether that mark is available in the United States and in any other country where you intend to offer goods or services. A trademark clearance search performed before launch can save thousands of dollars in rebranding costs, and can prevent the far more expensive risk of a later infringement claim from a trademark owner you never knew existed.

Our trademark search team can often turn around an initial search within a few hours of your first call, and we are experienced in performing searches that range from a quick knockout screen to a detailed, comprehensive, and exhaustive clearance opinion — depending on how much is riding on the mark.

The platforms we search

A reliable clearance search draws on more than a free USPTO database search. We use professional-grade screening and search platforms used by trademark counsel and brand owners globally, which may include:

Each platform has its own strengths in coverage, common-law data, and workflow, and we select the right tool — or combination of tools — based on the mark, the industry, and the jurisdictions involved. Apart from clearing a mark for registration, an initial search helps prevent the risk of a future infringement allegation from a trademark owner who was never on your radar in the first place.

Comprehensive Trademark Watchdog Services

Registration is the start of protection, not the end of vigilance

A registered trademark doesn’t defend itself. New applications are filed with the USPTO, EUIPO, WIPO, and state trademark offices every business day, domain names are registered around the clock, and marketplace listings and social media handles can go live in minutes. Our watchdog program keeps a continuous eye on all of it, so a conflicting filing or infringing use is caught while it can still be stopped cheaply — through a letter of protest or an opposition — rather than years later through expensive litigation.

What we monitor

• New trademark filings: weekly monitoring of the USPTO’s Official Gazette and pending application database, state trademark registers, and — for international portfolios — the EUIPO Bulletin, WIPO’s Madrid gazette, and other foreign national registers, screened against your registered and pending marks and classes.
• Domain names: new registrations incorporating your mark or confusingly similar variations, including typosquats and homoglyphs, coordinated with our domain name dispute practice when a UDRP or ACPA action is warranted.
• Online marketplaces and social media: listings and accounts on platforms such as Amazon, Etsy, and Alibaba, and social channel handles, watched for counterfeit goods, unauthorized resellers, and impersonation.
• Business name and entity filings: state corporate and fictitious name registrations that could create downstream confusion or complicate enforcement.

The tools behind the watch

We use the watch-specific modules of the same platforms described above: Clarivate’s Trademark Watch Analyzer and AI-native TM go365 surveillance, Corsearch’s watch and online brand-protection modules, and Questel’s watch services within its IP management platform — each tuned to the mark, industry, and jurisdictions that matter to your portfolio.

Reporting and recommendations

A raw hit list isn’t a watch service — the value is in what happens after a potential conflict is flagged. Our watch reports are delivered on a regular cycle (typically monthly, or weekly for higher-risk marks and industries), and every hit is reviewed by an attorney, not just a database, before it reaches you:

Each recommendation comes with the reasoning behind it and the deadline that applies, so you can make an informed, timely decision — and where a hit needs to escalate into a formal demand, our Cease and Desist Letters and Enforcement teams pick it up without missing a step.

Choosing a Filing Basis: Use, Intent to Use, or Madrid Protocol

Three different starting points for the same registration

Not every U.S. trademark application starts from the same place. Whether your brand is already in the marketplace, still in development, or already protected abroad changes which filing basis fits — and each comes with its own proof requirements, timeline, and risk.

Many of our clients use more than one basis over the life of a brand: an intent-to-use filing to lock in a filing date before launch, followed by a Madrid Protocol application once the U.S. registration is secured and international expansion is underway.

Trademark Preparation & Filing

One of the best values in intellectual property law — if it’s done right

Registration of a trademark or service mark for your brand name, slogan, or logo represents one of the best values in the field of intellectual property law. But registration requires real skill: properly identifying and describing the goods and services, selecting the correct international classes, and providing the federal government with proof of use in commerce where required. We guide clients through each of these steps.

Our Miami trademark team includes practitioners licensed before the United States Patent and Trademark Office, and we have prepared, filed, and prosecuted hundreds of trademark applications to registration, before both the USPTO and the Florida Department of State. We understand the Trademark Office’s practices and know how to move an application efficiently from filing to registration — often on a cost-effective, flat-fee basis.

Florida State Trademark Registration

Registered in days, not months — and backed by a fee-shifting statute

Not every brand needs — or is ready for — a federal registration on day one. For businesses whose customers are primarily in Florida, for a new venture that needs an enforceable registration on the books before a launch, a trade show, or a marketplace dispute, and for any client who wants leverage in a Florida courtroom, a state registration under Chapter 495, Florida Statutes, is often the right first move — either instead of a USPTO filing or, more commonly, alongside one. Our Miami trademark attorneys prepare and file Florida trademark and service mark applications with the Florida Department of State, Division of Corporations, and manage the resulting registrations through renewal, assignment, and enforcement.

How a Florida application is prepared and filed

A Florida application looks simpler than a federal one, but the details still decide whether the registration is worth having. Chapter 495 requires that the mark already be in actual use in Florida before the application is filed — there is no intent-to-use basis at the state level — so the application must accurately recite the date of first use anywhere and the date of first use in Florida, and the applicant must swear that it owns the mark and knows of no one else with a superior right to it. The goods or services are classified under the same international classification system the USPTO uses (§ 495.111, Fla. Stat.), a separate $87.50 filing fee is paid for each class claimed, and specimens showing the mark as actually used — labels, tags, or packaging for goods; business cards, brochures, or advertising for services — must accompany the application. The Division examines the application against the state register of marks only, not against corporate or fictitious names, which is why a Florida filing should still be preceded by the same clearance search we run before any federal filing.

Once issued, a Florida registration runs for five years from the date of registration and may be renewed for successive five-year terms by filing within the six months before expiration (§ 495.071, Fla. Stat.). We calendar those renewal windows alongside the client’s federal Section 8 and Section 9 deadlines, so a Florida registration is maintained on the same consolidated docket described below.

Why file in Florida rather than — or before — the USPTO

Three practical differences drive most of our clients’ decisions to file in Florida: speed, cost, and the ability to recover attorney’s fees.

• Speed — days instead of months. The Division of Corporations’ own filing guidelines state that a properly prepared Florida application should be processed within two to five business days of receipt. By comparison, the USPTO reported that in the first half of fiscal year 2026 the average time from filing to a first examining-attorney action was 4.45 months, and the average total time from filing to registration or abandonment was 10.03 months — an improvement over the 5.6 and 11.7 months of fiscal year 2025, but still the better part of a year, and longer still if an office action or opposition intervenes. The USPTO’s stated goal is to reach a four-month first action and a nine-month total disposal by fiscal year 2028. In practice, a Florida registration can issue and be in a client’s hands before the USPTO has even assigned the corresponding federal application to an examining attorney.
• Cost — a fraction of the federal fee. Florida charges $87.50 per class, for both the initial application and each five-year renewal. The USPTO’s base application fee has been $350 per class since January 18, 2025, with surcharges of $100 to $200 per class for applications that omit required information or use a free-form identification of goods rather than the Trademark ID Manual, before counting the Section 8 and Section 9 maintenance fees that follow. For a brand with several classes of goods and services, the difference is measured in thousands of dollars.
• Attorney’s fees — a more accessible fee-shifting standard. Under the Lanham Act, a prevailing party can recover its attorney’s fees only in “exceptional cases” (15 U.S.C. § 1117(a)) — a standard that, even after the Supreme Court’s decision in Octane Fitness, requires the court to find that the case stands out from others in the strength of the losing party’s position or the unreasonable manner in which it was litigated. Florida’s statute is written more generously: in an action for infringement of a Florida-registered mark, the court “may also award reasonable attorney’s fees to the prevailing party according to the circumstances of the case” (§ 495.141(1), Fla. Stat.), with no “exceptional case” threshold. The same section authorizes the court to award the infringer’s profits, the registrant’s damages, and an enhanced award of up to three times actual damages, together with an order for the destruction of infringing goods. The willful-dilution provision of § 495.151 carries its own discretionary fee award. For a Florida business whose infringer is also in Florida, that fee-shifting exposure changes the tone of a cease and desist letter and the economics of a settlement.

A Florida registration also supplies a certificate that can be cited in demand letters and marketplace complaints, appears in the state’s public trademark search that the Division consults when examining every later Florida application, and gives a client that is not yet ready to prove interstate use a registration it can enforce today.

Florida vs. the USPTO at a glance

What a Florida registration does not do

We are candid with clients about the limits of a state registration. Its rights stop at the Florida state line; it provides no nationwide constructive notice or priority, cannot serve as the home registration for a Madrid Protocol filing, does not permit use of the ® symbol, and will not by itself prevent the USPTO from registering a conflicting mark to someone else, because federal examiners do not search state registers. A later federal registrant with earlier rights can also limit a state registrant’s ability to expand. Chapter 495 itself preserves whatever common-law rights a business has built through use (§ 495.161), so a Florida registration adds to those rights rather than replacing them.

For most Florida clients, the answer is therefore not Florida or the USPTO, but Florida and the USPTO: a state application filed the week the brand launches, delivering an enforceable registration and fee-shifting leverage within days at minimal cost, paired with a federal application that secures nationwide rights on the USPTO’s longer timeline. We prepare both from the same clearance search, the same specimens, and the same identification of goods and services, so nothing is done twice.

Filing Around the World: USPTO, EUIPO, IMPI & CIPO Compared

The requirements — and the paperwork — change at every border

A U.S. business expanding its brand into Europe, Mexico, or Canada quickly discovers that “just file the same application” isn’t how it works. Below is how a standard U.S. § 1(a) filing compares to filing directly with the European Union Intellectual Property Office (EUIPO), Mexico’s Instituto Mexicano de la Propiedad Industrial (IMPI), and the Canadian Intellectual Property Office (CIPO).

Notice what doesn’t change across borders: none of these four offices requires the applicant itself to be domiciled in that jurisdiction. What changes is representation — the U.S., the EU, and Canada all condition foreign applicants’ ability to prosecute their own applications on appointing local counsel or an agent, while Mexico adds a formal Power of Attorney requirement on top of that. Missing any of these procedural requirements is one of the most common reasons a foreign filing stalls after it’s already underway.

International Trademarks & Madrid Filings

One network, one filing system, global reach

We maintain a comprehensive network of foreign trademark associates throughout Europe, South America, Central America, and the Caribbean to help file and register international trademarks where a Madrid Protocol designation isn’t available or isn’t the right fit. Our trademark team also has direct experience filing international applications through the Madrid Filing system administered by the World Intellectual Property Organization (WIPO), allowing us to secure protection not only in the United States, but throughout Europe and Latin America from a single, coordinated filing strategy.

Beyond securing these rights, our paralegal team assists with the ongoing management and oversight of international trademark portfolios. Global portfolio management — tracking renewal deadlines, use requirements, and office actions across multiple jurisdictions — turns a scattered set of foreign registrations into a coordinated, value-based asset that supports your business’s growth and stability.

Trademark Licensing & Acquisition

Our trademark attorneys have broad experience not only registering trademarks, but assisting clients with transactions to license, monetize, or acquire trademark portfolios. That includes drafting, preparing, and negotiating complex trademark licenses that build in proper quality-control provisions, so any technology transfer remains effective and enforceable — along with performing due diligence and audits of intellectual property assets as part of any sale or acquisition of a trademark portfolio.

Detailed, comprehensive, and well-written trademark agreements can have a significant effect on your business. Don’t go it alone, and don’t rely on downloaded forms from the internet that are often not applicable or relevant to your transaction. If you need business agreements that ensure proper rights and responsibilities, timely reporting of sales and income, and clearly defined payment obligations, contact us today.

Comprehensive Maintenance & Reporting Services

A registration lapses on a missed deadline, not on a legal dispute

A U.S. trademark registration is not permanent by default — it survives only if its owner files the right paperwork, on time, for as long as the mark is in use. Most registrations that die do so not because of a competitor’s challenge, but because a maintenance deadline was missed. We calendar and manage every deadline a registration will face under the Lanham Act, and report status to clients well before each one comes due.

The Section 8 and Section 9 filings are mandatory to keep a registration alive; Section 15 is optional but valuable, since an incontestable registration can no longer be challenged on the ground that it is merely descriptive without secondary meaning, or on a claim of a common-law owner’s earlier — but not superior — use, narrowing the defenses available to anyone who challenges it later. (Certain grounds, such as fraud on the USPTO, genericness, functionality, and abandonment, remain available against an incontestable mark regardless.)

For marks protected internationally under the Madrid Protocol, a comparable filing — a Section 71 affidavit of use — is required to maintain the U.S. designation of an international registration, on a timeline that mirrors the Section 8 deadline. Because foreign offices maintain their own, separate maintenance rules (Mexico’s Declaration of Actual Use at year 3, for example, has no exact U.S. counterpart), a portfolio spanning several countries needs one consolidated calendar, not four separate ones tracked independently.

Our maintenance and reporting service keeps that single calendar for you: proactive deadline reminders well ahead of each filing window, preparation and filing of the Section 8, 9, and 15 filings (along with Florida five-year renewals and their foreign equivalents), and a standing status report across your full portfolio so nothing is left to chance.

Full Capability

Our Trademark Services Include