Questions About Our Trademark Practice

MiamiTrademarkLaw.com is the trademark practice of Allen Dyer Doppelt + Gilchrist, an intellectual property law firm with a long Florida practice. Our Miami-based trademark team handles clearance, registration, enforcement, and defense for Florida businesses, brand owners across Latin America, Europe, and Canada, and the law firms that represent them. Our trademark team is Robert H. Thornburg, Susan J. Latham, Melissa Dangond Crews, and James R. Leahy. See About Us.

U.S. trademark and brand protection from start to finish: clearance searches, federal and Florida filings, trade dress, Madrid Protocol filings in both directions, maintenance and renewals, U.S. Customs recordation, Amazon Brand Registry, domain name disputes, oppositions and cancellations before the Trademark Trial and Appeal Board, and trademark litigation in Florida's federal courts.

For decades. USPTO records show the firm's attorneys on 75 trademark applications for Florida citrus and agriculture organizations alone, including the Florida Department of Citrus, Florida's Natural, Dundee Citrus Growers, and the National Watermelon Association, with marks first filed as early as 1948 that the firm still maintains.

Our core trademark team is Robert H. Thornburg, Susan J. Latham, Melissa Dangond Crews, and James R. Leahy, and matters featured on this site have also been led by Ava K. Doppelt and Allison Imber, supported by paralegals and docketing staff. Every matter has a U.S.-licensed attorney responsible for it, and you always know who is handling each step. See About Us.

Our attorneys work in English and Spanish. Portuguese, French, German, and Italian documents and correspondence are handled through qualified translators, and U.S. filings themselves are prepared in English, as the USPTO requires.

Our trademark team works from our office at 121 Alhambra Plaza in Coral Gables, in greater Miami, and also meets clients in Orlando. USPTO and TTAB work is national and handled electronically, so we act for clients across Florida, the United States, Latin America, Europe, and Canada. In litigation, we appear in the Southern and Middle Districts of Florida, from Key West to Orlando. See Florida Local Counsel.

Robert H. Thornburg is a past chair of The Florida Bar's Intellectual Property Law Committee and a past president of the Intellectual Property Law Association of Florida. He currently serves on the Florida Bar Federal Courts Practice Committee, co-chairs an advocacy subcommittee of INTA's Brand Restrictions Committee, serves as a U.S. delegate to ASIPI, the Inter-American intellectual property association, and is a Master of the Bench of the Florida IP American Inn of Court. Melissa Dangond Crews is also an ASIPI U.S. delegate, James R. Leahy serves on the Intellectual Property Owners Association's AI, Data & Emerging Technologies Committee, and our attorneys serve on committees of INTA, the Intellectual Property Owners Association, and The Florida Bar. In all, the team holds or has held 21 bar and industry leadership roles. See About Us.

More than 50 years combined. Robert H. Thornburg and Susan J. Latham have each practiced intellectual property law for more than 20 years, and they are joined by Melissa Dangond Crews, who focuses on U.S. and international trademark filings, and James R. Leahy, who has worked on more than fifty federal, state, arbitration, and TTAB matters. Mr. Thornburg alone has assisted with more than 1,000 trademark filings and handled more than 200 intellectual property disputes.

Yes. All four serve as trustees of the Coral Gables Chamber of Commerce. Our attorneys are also active in the Colombian American Chamber of Commerce, the Spain-US Chamber of Commerce, the South Florida Irish-American Chamber of Commerce, and the Dade County and Coral Gables bar associations. Mr. Thornburg teaches intellectual property litigation as an adjunct professor at the University of Florida Levin College of Law and founded the Miami chapter of the Copyright Society. See About Us.

The USPTO does not search for you before you file, and it never looks at unregistered brands already in use. An earlier user can oppose your application or sue after you launch. Our clearance searches cover federal and state registrations, common-law use, domain names, and marketplaces, and you receive a written risk assessment.

Nationwide priority from your filing date, legal presumptions of validity and ownership, access to federal court and stronger remedies against counterfeiters, eligibility for U.S. Customs recordation and Amazon Brand Registry, and a base for filing abroad through Madrid. After five years of continuous use, a registration can become incontestable. See Federal Trademark Applications.

The USPTO's first examination now comes about four and a half months after filing (4.45 months in the first half of fiscal year 2026, down from 5.6). A use-based application with no refusals often registers in about a year; 12 to 18 months is common once refusals, oppositions, or an intent-to-use basis are involved.

The USPTO base fee is $350 per class, with surcharges of $100 for missing information and $200 or more for free-form goods and services wording. Intent-to-use applications add $150 per class for the Statement of Use, plus $125 for each six-month extension. Attorney fees are separate.

Distinctiveness. Invented words such as KODAK and arbitrary words such as APPLE for computers are the easiest to register and enforce. Suggestive marks come next. Descriptive names, place names, and laudatory terms are refused or pushed to the weaker Supplemental Register, and generic terms can never be registered.

Yes. An intent-to-use application under Section 1(b) secures your nationwide priority date now. You prove use later, before the registration issues, and up to five six-month extensions are available after the Notice of Allowance.

Most refusals come from a conflict with an earlier mark, a descriptive or geographic name, goods and services wording that is too broad, or a weak specimen. Fewer than half of Florida applications filed in 2021 to 2023 have registered. Most of these problems are avoidable before filing, and many cannot be fixed afterward.

Yes, as trade dress, if it is not functional and buyers recognize it as yours. Packaging and restaurant décor can be inherently distinctive; product shapes need proof of recognition. We file federal and Florida trade dress applications. See Federal Trade Dress.

Anyone may use ™ with a mark they claim, registered or not. The ® symbol may be used only after the USPTO issues a federal registration, and only for the goods and services it covers. Using ® on an unregistered mark can block recovery in a lawsuit and give a competitor grounds to challenge your application.

The examining attorney issues an office action explaining the refusal. You have three months to respond, extendable once by three more months for a $125 fee. Depending on the refusal, we argue against it with evidence, narrow the goods and services, add a disclaimer, amend to the Supplemental Register, or appeal to the Trademark Trial and Appeal Board.

Yes, if each works as a brand rather than as information or decoration. Slogans register when they identify you rather than praise the product. Logos are filed as design marks, often alongside a standard character filing for the name. A single color can be registered only with proof that buyers already associate it with you.

A treaty system administered by WIPO that lets a brand owner seek protection in up to 133 countries, through 117 members, with one international application. It is not a worldwide trademark: each country examines the mark under its own law. See Madrid Protocol Overview.

Yes. We file Madrid applications based on your U.S. application or registration, which since October 1, 2026 are filed through WIPO's Madrid e-Filing system, and coordinate national filings through foreign associates in countries outside Madrid, such as Argentina and Peru. See Madrid: Filing Abroad from the U.S..

Not always. It is usually cheaper and simpler for three or more member countries. Direct national filings are better for non-members, for marks that need broader wording than U.S. practice allows, or when the U.S. basic filing is vulnerable, because for five years the international registration depends on it.

Mexico, Colombia, Brazil, and Chile, along with Cuba and several Caribbean states, including Antigua and Barbuda, Trinidad and Tobago, Jamaica, Belize, and Grenada since March 15, 2026. Argentina, Peru, Venezuela, Uruguay, Ecuador, Panama, Costa Rica, and Guatemala are not members, so owners there file directly with the USPTO.

The U.S. individual fee is CHF 460 per class, paid to WIPO, on top of the WIPO basic fee of CHF 653 (CHF 903 for a color mark). The USPTO then examines the designation like any U.S. application. See Madrid: Designations of the U.S..

Six months from the date of the office action. The three-month response period the USPTO adopted in 2022 does not apply to Madrid designations. The response must be filed by a U.S.-licensed attorney for a foreign-domiciled holder.

Ten years from the international registration date, renewable for further ten-year periods with a single renewal at WIPO that covers every designated country. Each country's protection also depends on meeting that country's own use and maintenance rules, including the U.S. Section 71 declaration.

The international registration is cancelled to the same extent, in every country. This is called dependency, or central attack. You can then transform each lost designation into a national application within three months, keeping the original date, but that requires local filings and fees in each country.

Yes. A subsequent designation can add any Madrid member at any time while the international registration is in force. Protection in the new country runs from the date of the subsequent designation, not the original filing date.

Record your federal registration with U.S. Customs and Border Protection. Officers at every port of entry can then detain and seize infringing imports. Recordation costs $190 per class and requires a registration on the Principal Register; pending applications and Florida registrations cannot be recorded. See U.S. Customs Recordation.

A trademark from the USPTO for the U.S. store. A pending application is often enough to start enrollment, but state registrations and most foreign registrations are not accepted for Amazon.com. We file the mark the way Amazon expects to see it and help you enroll and enforce. See Amazon Brand Registry.

Usually you can recover it without a lawsuit under the UDRP, typically decided in about two months, or about one month on WIPO's priority track. The remedy is transfer or cancellation only. For damages, including statutory damages of up to $100,000 per domain, a federal cybersquatting lawsuit is needed. See UDRP Complaints.

Domains on new extensions such as .shop or .online can be suspended in weeks under the Uniform Rapid Suspension System. Country-code domains such as .mx, .co, .com.br, and .es each have their own procedures, and we use the fastest one that fits. See URS and Country-Code Disputes.

Act on the deadline first. A UDRP response is due 20 days after the case formally begins. Many complaints can be defeated, settled, or turned back with a finding of reverse domain name hijacking. See Responding to a Domain Name Complaint.

Yes. We file and defend oppositions and cancellations before the Trademark Trial and Appeal Board, letters of protest, and expungement or reexamination petitions against registrations for marks that were never used. Our team has served as counsel of record in TTAB proceedings for portfolios such as E11EVEN.

Yes, in the Southern and Middle Districts of Florida at courthouses in Miami, Fort Lauderdale, West Palm Beach, Fort Pierce, Key West, Orlando, Tampa, and Fort Myers. In the Southern District, a lawyer appearing pro hac vice must designate local counsel, who files every paper. See Florida Local Counsel.

Pro hac vice and special admission motions, CM/ECF filing and service, local-rule and judge-specific compliance review, hearing and deposition coverage, and emergency TRO and seizure filings. Send the parties, court, case number, and deadline, and we aim to clear conflicts within one business day.

Do not ignore it, and do not rebrand in a panic. We check who has priority, whether confusion is likely, and whether the sender's registration is vulnerable. Many letters end with a negotiated coexistence agreement. When a threat is weak, a declaratory judgment action can settle the question on your terms, as it did for our Venezuelan car rental client in Miami.

The Lanham Act allows statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods, up to $2,000,000 when the counterfeiting is willful, or treble damages and profits, plus attorney's fees in exceptional cases. Courts can also order ex parte seizure of counterfeit goods, temporary restraining orders, and asset freezes.

Schedule A cases are lawsuits against hundreds of online sellers listed on an attached schedule, often filed with a sealed request to freeze marketplace accounts. Our attorneys defend sellers in these cases, starting with the frozen funds and the strength of the plaintiff's evidence, and many defendants resolve them quickly once represented.

In many cases, yes. In the BFL Metal (Fume) cases, our team obtained a ruling that a Florida federal court had personal jurisdiction over a China-based counterfeiter, and the court allowed service by email and Facebook. Abroad, we coordinate actions before the trademark offices and courts of other countries through foreign associates.

Tell us the mark, what you sell or plan to sell, and where. We check conflicts, recommend the right filing (Florida, federal, Madrid, or a combination), and give you a written estimate before any work begins. Contact us or message us on WhatsApp.

No. Contacting us or submitting a form does not create an attorney-client relationship. We run a conflict check before any substantive work, and an engagement letter sets out the scope of each matter.

We docket every deadline from filing onward: office-action responses, Statements of Use, Section 8 and Section 71 declarations, renewals, Florida renewals every five years, and WIPO renewals, in one calendar for U.S., Florida, and international registrations. We also warn clients about fake invoices that imitate the USPTO and WIPO.

Yes. Our office is at 121 Alhambra Plaza, Suite 1250, in Coral Gables, and our attorneys also meet with clients in Orlando. See About Us to meet the team. Most clients outside South Florida work with us by video call and email, in English or Spanish.

The mark as you use it, including any logo files; the goods and services you sell or plan to sell; the date you first used it and where; the countries that matter to you; any registrations you already own; and any letters, refusals, or complaints you have received. If you are writing for a client of your firm, include the client's name so we can clear conflicts.