CHAPTER 495

495.001

Short title.

History. — s. 1, ch. 2006-191.

495.011

Definitions.

(1) “Abandoned” applies to a mark when either of the following occurs:

(2) “Applicant” means the person filing an application for registration of a mark under this

chapter and the legal representatives, successors, or assigns of such person.

(3) “Certification mark” means any word, name, symbol, or device, or any combination thereof, used by a person other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

(4) “Collective mark” means a trademark or service mark used by the members of a cooperative, an association, or other collective group or organization, and includes marks used to indicate membership in a union, an association, or other organization.

(5) “Department” means the Florida Department of State or its designee charged with the administration of this chapter.

(6) “Dilution” means the lessening of the capacity of a mark to identify and distinguish goods or services, regardless of the presence or absence of:

(7) “Mark” includes any trademark, service mark, certification mark, or collective mark entitled to registration under this chapter, whether or not registered.

(8) “Person,” and any other word or term used to designate the applicant or other party entitled to a benefit or privilege or rendered liable under the provisions of this chapter, means a juristic person as well as a natural person. “Juristic person” includes a firm, partnership, corporation, union, association, or other organization capable of suing and being sued in a court of law.

(9) “Registrant” means the person to whom the registration of a mark under this

chapter is issued and the legal representatives, successors, or assigns of such person.

(10) “Related company” means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.

(11) “Service mark” means any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the services of such person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that the person or the programs may advertise the goods of the sponsor.

(12) “Trade name” means any name used by a person to identify a business or vocation of such person.

(13) “Trademark” means any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish the goods of such person, including a unique product, from those manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown.

(14) “Use” means the bona fide use of a mark in the ordinary course of trade and not used merely for the purpose of reserving a right in a mark. For purposes of this chapter, a mark is deemed to be in use:

History. — s. 1, ch. 67-58; s. 1, ch. 90-222; s. 551, ch. 97-103; s. 2, ch. 2006-191.

495.021 Registrability.

(1) A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it:

(2) Subject to the provisions relating to the registration of trademarks and service marks, so far as they are applicable, collective and certification marks, including indications of regional origin, shall be registrable under this chapter, in the same manner and with the same effect as are trademarks and service marks, by persons, and nations, states, municipalities, and the like, exercising control over the use of the marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided in this

chapter in the case of trademarks and service marks. The Department of State may establish a separate register for such collective marks and certification marks.

History. — s. 1, ch. 67-58; ss. 10, 35, ch. 69-106; s. 1, ch. 87-265; s. 2, ch. 90-222; s. 552, ch. 97-103; s. 3, ch. 2006-191.

495.031 Application for registration.

(1) Subject to the limitations set forth in this chapter, any person who uses a trademark or service mark in this state may file with the department, in a manner and form complying with the requirements of the department, an application for registration of that mark setting forth, but not limited to, the following information:

(2) Every applicant for registration of a certification mark in this state shall file with the department, in a manner and form complying with the requirements of the department, an application setting forth, but not limited to, the following information:

(3) Every applicant for registration of a collective mark in this state shall file with the department, in a manner and form complying with the requirements of the department, an application setting forth, but not limited to, the following information:

(4) The department may also require that a drawing of the mark, complying with the requirements of the department, accompany the application.

(5) Every application under this

section shall be signed and verified by the applicant or by a member of the firm or an officer or other authorized representative of the business entity applying.

(6) Every application under this

section shall be accompanied by three specimens or facsimiles showing the mark as actually used.

(7) Every application under this

section shall be accompanied by a filing fee payable to the department in accordance with s. 495.191.

History. — s. 1, ch. 67-58; s. 1, ch. 67-560; ss. 10, 35, ch. 69-106; s. 5, ch. 71-114; s. 2, ch. 87-265; s. 59, ch. 90-132; s. 4, ch. 90-222; s. 553, ch. 97-103; s. 5, ch. 2006-191.

495.035 Filing of applications.

(1) Upon the receipt of an application for registration and payment of the application fee, the department may cause the application to be examined for conformity with this chapter.

(2) The applicant shall provide any additional pertinent information requested by the department, including a description of a design mark, and may make, or authorize the department to make, such amendments to the application as may be reasonably requested by the department or deemed by the applicant to be advisable to respond to any rejection or objection.

(3) The department may require the applicant to disclaim an unregistrable component of a mark otherwise registrable, and an applicant may voluntarily disclaim a component of a mark sought to be registered. No disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or the applicant’s or registrant’s rights of registration on another application, if the disclaimed matter is or has become distinctive of the applicant’s or registrant’s goods or services.

(4) Amendments may be made by the department upon the application submitted by the applicant upon the applicant’s agreement, or a new application may be required to be submitted. Amendments to an otherwise properly filed application shall not affect the application filing date for purposes of determining the applicant’s or registrant’s filing priority rights.

(5) If the applicant is found not to be entitled to registration, the department shall advise the applicant of the rejection and of the reasons for rejection. The applicant shall have 3 months in which to reply or amend the application, in which event the application shall be reexamined. This procedure may be repeated until:

(6) If the department makes final its refusal to register the mark, the applicant may seek review of such decision in accordance with ss. 120.569 and 120.57.

(7) In the event of multiple applications concurrently being processed by the department which seek registration of the same or confusingly similar marks for the same or related goods or services, the department shall grant priority to the applications in order of receipt. If a prior-received application is granted a registration, the other application or applications shall then be rejected. The applicant of a rejected application may bring an action for cancellation of the registration upon grounds of prior or superior rights to the mark, in accordance with the provisions of s. 495.101(3).

History. — s. 6, ch. 2006-191.

495.041 Use by related companies.

History. — s. 1, ch. 67-58; s. 7, ch. 2006-191.

495.051 Disclaimers.

(1) The Department of State may require the applicant for registration to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.

(2) No disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or her or his right of registration on another application if the disclaimed matter be or shall have become distinctive of her or his goods or services.

History. — s. 1, ch. 67-58; ss. 10, 35, ch. 69-106; s. 554, ch. 97-103.

495.061 Certificate of registration.

(1) Upon compliance by the applicant with the requirements of this chapter, the department shall cause a certificate of registration to be issued and delivered to the applicant.

The certificate of registration shall be issued under the signature of the Secretary of State and the seal of the state, and it shall show the name and business address and, if a business entity, the place of incorporation or organization, of the person claiming ownership of the mark in this state, the date claimed for the first use of the mark anywhere and the date claimed for the first use of the mark in this state, the class or classes of goods or services and a description of the goods or services on or in connection with which the mark is used, a reproduction of the mark, the registration date and the term of the registration.

(2) Any certificate of registration issued by the department under the provisions hereof or a copy thereof duly certified by the department shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceedings in any court of this state, and shall be prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in this state on or in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein.

History. — s. 1, ch. 67-58; ss. 10, 35, ch. 69-106; s. 5, ch. 90-222; s. 8, ch. 2006-191.

495.071 Duration and renewal.

(1) Registration of a mark hereunder shall be effective for a term of 5 years from the date of registration and, upon application filed within 6 months prior to the expiration of such term, in a manner and form complying with the requirements of the department, the registration may be renewed for a like term beginning at the end of the expiring term. Every application under this

section shall be accompanied by a filing fee, payable to the department in accordance with s. 495.191.

(2) A registration may be renewed for successive periods of 5 years in like manner.

(3) Any registration in effect on January 1, 2007, shall continue in effect for the unexpired term thereof and may be renewed by filing an application for renewal with the department in a manner and form complying with the requirements of the department and paying the renewal fee therefor within 6 months prior to the expiration of the registration.

(4) All applications for renewal under this chapter, whether of registrations made under this act or of registrations made under any prior acts, shall include a verified statement that the mark is still in use in this state, and shall include a specimen showing actual use of the mark on or in connection with the goods or services subject to the renewal application, or shall state that its nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.

History. — s. 1, ch. 67-58; s. 2, ch. 67-560; ss. 10, 35, ch. 69-106; s. 6, ch. 71-114; s. 8, ch. 89-359; s. 60, ch. 90-132; s. 4, ch. 99-218; s. 9, ch. 2006-191.

495.081 Assignments; changes of name; security interests.

(1) A registered mark or a mark for which an application for registration has been filed shall be assignable with the goodwill of the business in which the mark is used or with that part of the goodwill of the business connected with the use of and symbolized by the mark. Assignments shall be by an instrument in writing duly executed and may be recorded with the department upon the payment of the applicable fee. A photocopy of an assignment shall be accepted for recording if it is certified by any of the parties thereto, or their successors, to be a true and correct copy of the original.

Upon recording of the assignment, the department shall issue in the name of the assignee a new certificate for the remainder of the term of the registration or of the last renewal thereof.

(2) An assignment of any registration under this

chapter shall be void against any subsequent purchaser for valuable consideration without notice, unless such assignment is recorded with the department within 3 months after the date of the assignment or prior to the subsequent purchase.

(3) A registrant or applicant for registration effecting a change of the name may record a certificate of change of name of the registrant or applicant with the department upon the payment of the recording fee payable to the department in accordance with s. 495.191. In the case of a pending application for a mark that becomes approved for registration, the department shall issue a certificate of registration in the registrant’s new name.

In the case of a registered mark, the department shall issue a new certificate of registration in the registrant’s new name for the remainder of the term of the registration or last renewal thereof. A person’s failure to record a name change in accordance with this subsection shall not affect the person’s substantive rights in the mark or its registration.

(4) Acknowledgment shall be prima facie evidence of the execution of an assignment or other instrument and, when recorded by the department, the record shall be prima facie evidence of execution.

(5) Security interests in marks shall be created and perfected in accordance with

chapter 679.

History. — s. 1, ch. 67-58; s. 3, ch. 67-560; ss. 10, 35, ch. 69-106; s. 7, ch. 71-114; s. 3, ch. 87-265; s. 10, ch. 2006-191.

495.091 Records.

History. — s. 1, ch. 67-58; ss. 10, 35, ch. 69-106; s. 11, ch. 2006-191.

495.101 Cancellation.

(1) Any registration for which the department has received a voluntary request for cancellation by the registrant, which request shall be in a manner and form complying with the requirements of the department.

(2) All registrations granted under this

chapter and not renewed in accordance with the provisions hereof.

(3) Any registration for which a court of competent jurisdiction finds that:

(4) When a court of competent jurisdiction shall order cancellation of a registration on any ground.

History. — s. 1, ch. 67-58; ss. 10, 35, ch. 69-106; s. 6, ch. 90-222; s. 555, ch. 97-103; s. 12, ch. 2006-191.

495.111 Classification.

(1) The following general classes of goods and services, conforming to the classification adopted by the United States Patent and Trademark Office, are established for convenience of administration of this chapter:

(2) The establishment of the classes of goods and services set forth in subsection (1) is not for the purpose of limiting or extending the rights of the applicant or registrant. A single application for registration of a mark may include any or all goods upon which, or services with which, the mark is actually being used comprised in one or more of the classes listed, but in the event that a single application includes goods or services in connection with which the mark is being used which fall within different classes of goods or services, a fee equaling the sum of the fees for registration in each class shall be payable.

History. — s. 1, ch. 67-58; s. 4, ch. 87-265; s. 13, ch. 2006-191; s. 1, ch. 2019-74.

495.121 Fraudulent registration.

History. — s. 1, ch. 67-58; ss. 10, 35, ch. 69-106; s. 556, ch. 97-103.

495.131 Infringement.

(1) Use any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this

chapter in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, to cause mistake, or to deceive; or

(2) Reproduce, counterfeit, copy, or colorably imitate a mark registered under this

chapter and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, to cause mistake, or to deceive;

History. — s. 1, ch. 67-58; s. 14, ch. 2006-191.

495.141 Remedies.

(1) Any owner of a mark registered under this

chapter may proceed by suit to enjoin the manufacture, use, display, or sale of any counterfeits or imitations thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be by the said court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display, or sale and to pay the costs of the action; and such court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in such case be delivered to an officer of the court, or to the complainant, to be destroyed.

In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case.

Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court may also award reasonable attorney’s fees to the prevailing party according to the circumstances of the case.

(2) The enumeration of any right or remedy herein shall not affect a registrant’s right to prosecute under any penal law of this state.

History. — s. 1, ch. 67-58; s. 15, ch. 2006-191.

495.145 Forum for actions regarding registration.

History. — s. 16, ch. 2006-191; s. 18, ch. 2022-190.

495.151 Dilution.

(1) The owner of a mark that is famous in this state shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction and to obtain such other relief against another person’s commercial use of a mark or trade name if such use begins after the mark has become famous and is likely to cause dilution of the distinctive quality of the famous mark, as provided in this section. In determining whether a mark is distinctive and famous, a court may consider factors, including, but not limited to:

(2) In an action brought under this section, the owner of a famous mark shall be entitled only to injunctive relief in this state unless the person against whom the injunctive relief is sought willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark. If such willful intent is proven, and the mark is registered in this state, the owner shall also be entitled to all remedies set forth in this chapter, subject to the discretion of the court and the principles of equity.

(3) The following shall not be actionable under this section:

History. — s. 1, ch. 67-58; s. 557, ch. 97-103; s. 17, ch. 2006-191.

495.161 Common-law rights.

History. — s. 1, ch. 67-58; s. 18, ch. 2006-191.

495.171 Effective date; repeal of conflicting acts.

(1) This chapter, as amended by this act, shall be in force and take effect January 1, 2007, but shall not affect any suit, proceeding, or appeal then pending.

(2) Sections 506.06-506.13 are repealed on January 1, 2007, provided that as to any suit, proceeding, or appeal, and for that purpose only, pending at the time this chapter, as amended by this act, takes effect such repeal shall be deemed not to be effective until final determination of said pending suit, proceeding, or appeal.

History. — s. 1, ch. 67-58; s. 19, ch. 2006-191.

495.181 Construction of chapter.

History. — s. 7, ch. 90-222; s. 20, ch. 2006-191.

495.191 Fees.

(1) Application filing fee: $87.50 per class.

(2) Renewal application fee: $87.50 per class.

(3) Assignment filing fee: $50 per class.

(4) Certificate of name change filing fee: $50.

(5) Voluntary cancellation filing fee: $50.

(6) Certificate of registration under seal: $8.75.

(7) Certified copy of application file: $52.50.

History. — s. 21, ch. 2006-191.