Intellectual Property for Businesses

Protecting your business’s intellectual property is critical in today’s competitive market. At Assouline & Berlowe, P.A., our seasoned attorneys assist companies of all sizes in safeguarding their unique ideas, designs, trademarks, copyrights, and trade secrets. We understand that intellectual property can be your company’s backbone, and we are dedicated to helping you maintain a strong legal foundation. We are ready to address evolving business demands. Whether you are looking to register a brand, protect a creative work, or defend your proprietary methods, our lawyers can guide you through each phase of the process. We tailor our approach to your business’s distinct needs, from initial strategy to ongoing monitoring and enforcement. By offering clear counsel and practical solutions, we strive to help you maintain a competitive edge while mitigating risks. If you have questions about your company’s intellectual property rights, call (305) 567-5576 for more information about our services.

Trademarks 

Trademarks serve as source identifiers for goods or services, enabling consumers to associate specific brands with distinct products and services. Effective trademark protection can elevate a business’s reputation and ward off confusion in a crowded market. Both Florida-specific and federal avenues exist for registration and enforcement, each suited to different strategic objectives. Florida law governing trademarks is primarily set forth in the Florida Trademark Act (Fla. Stat. Chapter 495), while federal law is administered by the United States Patent and Trademark Office (USPTO).

Types of Trademarks

• Fanciful Marks: These are invented or coined words that hold no meaning apart from serving as a mark. They generally receive the strongest protection.
• Arbitrary Marks: These use standard words with common meanings but apply them in an unrelated context. A classic example is using a simple word to brand an entirely different product category. 
• Suggestive Marks: Suggestive marks hint at certain product characteristics without explicitly describing them. They gain protection if they require consumers to use some imagination to link the term with the product.
• Descriptive Marks: Descriptive marks directly convey a product’s feature or quality. They often require proof of a secondary meaning—that consumers recognize the term as referencing a particular source—before they can achieve trademark protection under Florida or federal law.

Florida Registration, Federal Registration, and Related Filings

Many Florida businesses elect to register their marks with the USPTO for nationwide coverage, potential access to federal infringement suits, and the automatic listing in the USPTO search database.  That said, Florida registration through the Florida Department of State (pursuant to Fla. Stat. Chapter 495) can be a cost-effective way to secure rights restricted to Florida. This local registration may appeal to businesses with strictly in-state operations or those as yet unprepared to file federally.

Under Florida law, the process of registering a trademark begins by submitting a state trademark application to the Florida Department of State. The typical steps might include:

• Checking existing state (and USPTO) registrations to ensure no conflict. 
• Completing the trademark application form and confirming that the mark is in use for specific goods or services in Florida.
• Paying the required filing fee and attaching examples of the mark’s usage. 

If accepted, the state registration confers trademark protection within Florida’s borders, helping businesses enforce their mark in state courts. However, this protection does not extend beyond Florida. Companies that anticipate expansion or interstate commerce typically pursue federal registration for broader coverage.

Beyond trademark registration, Florida businesses often register fictitious names (also known as “doing business as” or “d/b/a”) under Fla. Stat. §865.09. Although fictitious name registration is required for certain business operations in Florida, it should not be confused with trademark protection. Registering a fictitious name alerts the public to the entity behind a name but does not, by itself, secure rights in a brand under trademark law.

Trademark Searching, Florida-Specific Factors, and Likelihood of Confusion

A best practice is to perform a thorough search of both federal and Florida databases. It can also be helpful to examine common law rights, including: social media, domain name registrations, and other publicly available sources. This step reduces the risk of encroaching on someone else’s rights and of future enforcement disputes.

Under Florida law (and federal law), businesses may bring infringement claims when consumers could be misled into believing goods or services come from a different source, also known as likelihood of confusion. Florida courts generally look at factors like the similarity of marks, the relatedness of the goods or services, marketing channels used, and the distinctiveness of the prior mark. The state imposes a four-year statute of limitations on trademark infringement claims, though the doctrine of laches can bar an action if the trademark owner unreasonably delayed enforcement to the detriment of the alleged infringer.

In addition to a trademark infringement claim, some Florida business owners also allege violations of Florida’s Deceptive and Unfair Trade Practices Act (FDUTPA) (Fla. Stat. §501.201 et seq.). Under FDUTPA, businesses that engage in deceptive or unfair practices harming consumers can face liability. Although primarily aimed at consumer protection, FDUTPA claims sometimes appear in IP disputes when the infringer’s actions potentially mislead the public in a manner that violates Florida consumer-protection principles.

Enforcement and Remedies

In Florida, trademark owners facing infringement can petition courts for injunctions, damages, and possibly profits earned by the infringer. Evidence of deliberate misuse can justify broader monetary awards and, in select instances, attorney’s fees. When a company becomes aware of possible infringement, prompt action can help prevent further confusion in the marketplace. Florida courts may also consider FDUTPA or unfair competition claims, providing additional remedies for owners.

Licensing and Assignments of Trademarks

Trademark owners can profit from their goodwill by licensing rights to others. Licensing contracts should include proper quality-control provisions, particularly because a mark can lose its distinctiveness if standards are not maintained. The licensor typically dictates usage guidelines to ensure the brand’s reputation remains intact.

Assignment, on the other hand, constitutes a complete transfer of ownership and enforcement rights. In Florida, as elsewhere, recording this assignment with the USPTO (for federally registered marks) or with the Florida Department of State (for a Florida-registered mark) helps avoid chain-of-title confusion. If the company’s trademark portfolio changes hands, clarity over who can enforce the mark is crucial to prevent unauthorized usage and potential legal complications.

Patents 

Patents grant inventors exclusive rights to produce, sell, or use their inventions for a specified term, fostering innovation and investment. Although patents are federally governed by the USPTO, Florida entrepreneurs can incorporate state-level strategies—such as pairing patent protection with Florida-based business measures—to reinforce their competitive edge in sectors ranging from technology development to agriculture.

Types of Patents

• Utility Patents: These protect new and useful processes, machines, or compositions of matter. Examples might include novel mechanical devices, specialized medical equipment, or unique software systems.
• Design Patents: These secure rights in ornamental designs. A furniture designer in Miami, for instance, might obtain a design patent on a distinctive chair shape to prevent copycat versions. 
• Plant Patents: These apply to new, asexually reproduced plant varieties. This can be relevant for Florida nurseries, as well as citrus or berry producers who cultivate new strains adapted to Florida’s climate.

Patent Application Process (Including Provisional Patent Applications)

Conducting a patent search is often the initial step to assess whether any prior art may impact patentability. Inventors then decide whether to file a provisional (placeholder) application: a lower-cost, temporary filing providing a twelve-month window, before submitting a formal (non-provisional) application.  Or an inventor can start with a non-provisional application. 

The non-provisional application lays out the invention’s details, supported by claims, drawings, and a thorough explanation in the specification. After filing, the USPTO assigns an examiner who reviews novelty, usefulness, and non-obviousness. If approved, the patent is issued, and the inventor or assignee can enforce exclusive rights should others infringe. Inventors often use the provisional patent application period to refine prototypes or secure funding. If the invention proves viable, transitioning to a non-provisional filing cements stronger legal rights.

Software-Related Patents and Inventive Concepts

Florida’s technology scene includes software startups, gaming studios, and online service providers. Securing patents for software may require framing claims around a specialized, inventive application that goes beyond a mere algorithm or abstract idea. Detailing how the software addresses a technical challenge often strengthens the odds of surviving subject-matter eligibility tests. Thorough claim drafting is key: describing how software-based processes function in a particular industry can differentiate an invention from generic computerized steps. As Florida’s tech sector matures, the push for robust software patent coverage continues to grow.

Enforcement and Litigation

When faced with unauthorized use, a patent holder can sue for infringement in federal court. Potential remedies include injunctions, compensatory damages, and, in cases of willful misappropriation, enhanced damages. Marking the patent number on products can preserve the patent holder’s access to past damages.  The cost and complexity of patent litigation, however, often prompt businesses to seek negotiated solutions, licensing agreements, or settlement. Florida-based companies have also turned to specialized mediation or arbitration options to resolve disputes more quickly, particularly when trade secrets or joint ventures are involved.

Licensing and Commercialization

Licensing a patent provides multiple options for expanding a business’s market footprint. For instance, a Florida biotech firm might license a patented pharmaceutical process to a national manufacturer. Common licensing considerations include up-front fees, royalties, field-of-use restrictions, and oversight to ensure the licensee is exploiting the invention in agreed ways.

A patent assignment, in contrast, transfers ownership. The party taking assignment will generally assume maintenance fee responsibilities. Given the rapid development of Florida’s medical device, agricultural, and aerospace sectors, businesses frequently weigh the pros and cons of licensing (generating revenue while retaining some control) against full assignment (an immediate monetary gain but ceding future ownership).

Copyrights 

Copyrights grant creators exclusive rights over original works fixed in a tangible form. Businesses that develop content—from marketing materials to web-based media—instantly obtain copyright protection upon creation. Although registration with the U.S. Copyright Office is not mandatory, it is required to file a federal copyright infringement lawsuit, and offers notable legal benefits, including eligibility for statutory damages and attorney’s fees under certain conditions.

Protected Works and Ownership

Copyright extends to literary works, music, choreography, software, architecture, and more, provided the work is original and captured in some medium. Florida businesses using in-house teams or external contractors should confirm who holds ownership. Work-for-hire provisions or signed assignments can clarify that the company, rather than the individual creator, owns the resulting work.

Rights Conferred by Copyright

Copyright owners control reproduction, creation of derivative works, distribution, public performance, and display. By licensing or assigning these rights, a business can generate licensing revenue, co-branding opportunities, or cross-promotional deals. For instance, a Florida-based educational publisher might license materials to universities or professional training programs, retaining the ability to approve or disapprove any adaptations.

Fair Use Considerations

Under the fair use doctrine, some otherwise-infringing actions may be allowable, especially for commentary, news reporting, or teaching. Courts analyze factors such as whether the new usage is commercial, the nature of the work being copied, how much of it is used, and whether the copycat version competes with the original in the marketplace. Businesses should remain mindful that fair use is a fact-intensive analysis. Overstepping these boundaries can result in litigation for infringement, even if the business believed it was engaging in permissible referencing or commentary.

Enforcement, Statutory Damages, and Registration Deadlines

If a company detects unauthorized copying, prompt registration of the work with the U.S. Copyright Office can be critical to preserving the right to awarded statutory damages—ranging up to $30,000 per infringed work, or possibly $150,000 per work for willful infringement. Digital enforcement options, including the Digital Millennium Copyright Act (DMCA) takedown process, can remove infringing content hosted on websites or social media platforms. In practice, businesses often serve DMCA takedown notices to web hosting services, online marketplaces, or social media outlets. Speedy action helps avoid ongoing losses and reduces confusion about who the rightful owner is.

Licensing and Assignment of Copyright

Businesses can maximize the value of creative output through licensing. A software developer might license portions of code libraries to multiple clients, each paying a recurring fee. Similarly, a video production agency might sell exclusive usage rights for an advertisement to a single client. These arrangements can be flexible, allowing copyright owners to adapt the same content for different audiences or media.

Assignments fully transfer ownership. In such scenarios, the new holder steps into the shoes of the original copyright owner, with the right to enforce or license the content further. For clarity and to protect against conflicting claims, many companies record assignments with the U.S. Copyright Office and maintain thorough records of each transaction.

Trade Secrets 

Trade secrets can provide long-term competitive advantage if managed appropriately. Under Florida’s Uniform Trade Secrets Act (Fla. Stat. Chapter 688), misappropriation of proprietary information—like formulas, customer data, business strategies, or specialized software—can lead to civil liability. The key to success is establishing and maintaining secrecy through contractual and operational safeguards.

Establishing and Maintaining Secrecy

Company decision-makers in Florida typically start with measures such as:

• Non-Disclosure Agreements (NDAs): These bind employees, contractors, or visitors to confidentiality, often specifying the types of information deemed confidential. 
• Physical Security: Restricted office areas, locked file cabinets, security cameras, and identification badges.
• Electronic Protections: Passwords, encryption, and intrusion detection systems, coupled with consistent monitoring of access logs. 
• Employee Training: Regular seminars on data confidentiality ensure that staff understand their obligations.
• Clear Labeling and Document Control: Marking documents as “Confidential” or “Trade Secret” puts recipients on notice about restricted information.

Enforcement Under FUTSA and the Defend Trade Secrets Act (DTSA)

Florida laws (Fla. Stat. Chapter 688) allow business owners to sue in state court for an injunction preventing further misuse and to collect damages for actual loss or unjust enrichment. Willful and malicious misappropriation may result in punitive damages and attorney’s fees. The federal Defend Trade Secrets Act (DTSA) can also apply if the information or its misappropriation crosses state lines. By invoking DTSA, Florida businesses may bring an action in federal court. This dual pathway—FUTSA in state court or DTSA in federal court—often provides flexibility, as companies weigh which forum is more efficient or has the most desirable procedural rules.

Non-Disclosure Agreements in Florida and the Inevitable Disclosure Doctrine

Florida-based NDAs generally remain enforceable if they meet certain requirements: the scope must be reasonable, the subject matter must constitute a legitimate business interest, and the duration cannot be excessive. Florida law does not strongly embrace the “inevitable disclosure” doctrine, under which an employer could block an employee from joining a competitor merely because trade secret exposure occurred in the prior role. Instead, Florida courts typically expect detailed evidence showing that specific information will almost certainly be misused. Proving actual or imminent misappropriation is generally critical. Vague assumptions that the employee will rely on proprietary knowledge are often insufficient.

Digital IP Considerations 

Florida companies engaged in e-commerce, software-as-a-service, or online content distribution must anticipate unique digital challenges. Properly registering and enforcing intellectual property online can protect vital business assets against misuse.

IP Audits and Ongoing Management 

Businesses gain considerable benefit from regularly auditing their intellectual property. Identifying vulnerabilities—like unregistered marks, patchy NDA coverage, or expired registrations—allows companies to prioritize corrective action. These audits also help ensure that newly created or acquired IP is integrated into the broader portfolio.

Purpose and Value of an IP Audit

An IP audit invites a comprehensive review of a company’s intangible assets. By evaluating whether trademark registrations are current, whether valuable patents have lapsed, or whether trade secret measures remain reliable, a business can safeguard profitability and brand reputation. Florida-based enterprises that undergo rapid expansion—like a growing agricultural business or an entertainment startup—may discover that some new innovations or creative works have not yet been protected.

Key Steps in an IP Audit

• Inventory Existing IP: Compile a list of trademarks (state or federal), patents (granted or pending), copyrighted materials, and trade secrets in active use.
• Verify Ownership and Registration: Confirm that chain-of-title is correct and registrations are not about to expire. Any changes in the company’s corporate structure (including mergers, name changes, or relocations within Florida) should be mirrored in updated IP records. 
• Evaluate Existing Agreements: Analyze licensing arrangements or NDAs for any inconsistencies or outdated clauses. For Florida businesses with seasonal workforce fluctuations (e.g., hospitality or agricultural operations), ensuring every short-term hire signs the appropriate confidentiality agreements proves critical.
• Assess Confidentiality Measures: Check whether confidentiality markings, restricted access, and employee training keep pace with expansions or shifting technology platforms. 
• Monitor Infringement Risks: Confirm that staff regularly surveys the market—including online searches and competitor analysis—to detect infringements at an early stage.

Updating and Adjusting Strategies

After the audit, companies can troubleshoot gaps and refine their IP management approach. They might decide to file additional state or federal trademark applications, commence patent filings for newly developed technology, or adjust license terms in response to new market conditions. A robust IP audit process, repeated periodically, keeps a company’s intangible assets in line with growth objectives.