This case is an appeal from a decision by the Fourth Circuit Court of Appeals in Dewberry Engineers Inc. v. Dewberry Group, Inc., 77 F.4th 265 (4th Cir. 2023). The case involved two real estate development companies litigating over the use of the term “Dewberry” in their names. The plaintiff, Dewberry Engineers Inc. owned trademarks with the Dewberry name and claimed that the defendant, Dewberry Group, Inc., was infringing on those trademarks. After filing suit, the district court granted summary judgment to the plaintiff. The court then held an evidentiary hearing regarding damages, and ultimately awarded the plaintiff about $42 million in damages. The district court based this damage award on a disgorgement of profits from the defendant. However, the defendant argued it did not have any of its own profits. The defendant only provided administrative services to its various affiliates, which had common ownership with the defendant. The defendant’s affiliates were the business entities that actually in the profit-generating activities. The affiliates also were not named defendants in the lawsuit. Nonetheless, the district court accounted for the profits of the defendant’s affiliates in awarding the $42 million judgment to the plaintiff.

On appeal before the Fourth Circuit, the defendant argued the district court erred by considering the the profits of its affiliates without making a finding of piercing the corporate veil to reach those affiliates. However, the Fourth Circuit rejected this argument and affirmed the judgment. The Fourth Circuit reasoned the district court did not need to pierce the veil because it simply “considered the revenues of entities under common ownership with Dewberry Group in calculating Dewberry Group’s true financial gain from its infringing activities that necessarily involved those affiliates.”

The defendant then petitioned for certiorari from the U.S. Supreme Court, which the Supreme Court granted. Oral argument in the case is scheduled for December 11, 2024. An issue that the Court will be considering involves the remedies provision of the Lanham Act, which is the federal law that addresses trademarks. According to the relevant provision:

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.

15 U.S.C. § 1117(a). The question is whether this provision allowing for court discretion to award “just” compensation allows a court to consider an infringer’s affiliates profits. The defendant was essentially arguing that the damages should have been zero because the defendant did not earn profits, but this evidently would have been inadequate for the plaintiff. Could the district court then account for the affiliate’s profits, without piercing the corporate veil, to create a “just award”? The Supreme Court will ultimately decide this issue. This case shows how the damages in trademark infringement cases are complex, and calculating damages can involve many factors.

The Miami business litigation lawyers of the Mavrick Law Firm also represent clients in Fort Lauderdale, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

Federal law provides the owner of an unregistered trademark with a cause of action to sue for infringement of that mark. A person shall be liable for infringement of an unregistered trademark if he or she:

“uses… any word, term, name, symbol, or device [in connection with any goods or services, or any container for goods]… which— (A) is likely to cause confusion, or… mistake, or to deceive… as to the origin… of his or her goods, services, or commercial activities by another person, or (B) …misrepresents the nature, characteristics, qualities, or geographic origin of his or her goods, services, or commercial activities.

15 U.S.C.A. § 1125.Therefore, the plaintiff must show it has enforceable rights in the mark and that the defendant made unauthorized use of the mark that likely caused consumer confusion in the marketplace. Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F. 3d 641 (11th Cir. 2007). Prior use of an unregistered trademark is one main focal point needed to assess whether misappropriation occurred. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F. 3d 1188 (11th Cir. 2001) (Unregistered trademark rights are “appropriated only through actual prior use in commerce.”). Courts construe evidence demonstrating the plaintiff adopted the mark and the public in a particular relevant market segment identifies the mark with the plaintiff. See New Eng. Duplicating Co. v. Mendes, 190 F.2d 415 (1st Cir. 1951). Prior use might be satisfied if distribution is widespread because the mark is accessible to anyone with internet access, members of a market segment actually associate the mark with the plaintiff’s product, the mark identifies the product’s source, or other potential mark users knew the mark was used in connection with the product in question. Planetary Motion, Inc., 261 F. 3d 1188.

Proving prior use can be difficult. An example of that is Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313 (11th Cir. 2011), In Jurado, the plaintiff claimed it owned the unregistered trademark, Expose, a 1980’s music band name. Id. The plaintiff sued an American girl dance band performing under the same name. Id. The plaintiff presented testimonial evidence from a witness who was one of the founding Expose members. Id. This witness testified that Expose produced a song played on radio stations, played in dance clubs, and performed live. Id. Although the court credited the witness’ testimony, the court ultimately rejected the plaintiff’s prior use argument because the witness was inconsistent on several key issues. Id. Leigh v. Warner Bros., Inc., 212 F.3d 1210 (11th Cir. 2000) is another useful example. In Leigh, the court rejected the plaintiff’s prior use claim relating to an unregistered trademark photograph because the plaintiff did not provide sufficient detail demonstrating actual use in the marketplace. While the plaintiff supplied an affidavit from himself claiming the photograph was used to promote his work since 1994 and referenced an art gallery where the photograph was publicly displayed, the affidavit lacked the detail needed to satisfy the plaintiff’s burden of proof on the issue. The challenges described in these two examples demonstrate the benefits from registering a trade mark generally outweigh disadvantages associated therewith because registering a mark can avoid the need to prove prior use.

Peter Mavrick is a Miami business litigation lawyer, and represents clients in Fort Lauderdale, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

Federal courts initially require plaintiffs to prove they have “standing” under the Lanham Act. The United States Supreme Court’s precedent in Lexmart Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), established a two-part inquiry, requiring courts to determine (1) whether a plaintiff’s interests “fall within the zone of interests protected by the law invoked” and (2) whether the injuries suffered by plaintiff were “proximately cause by violations of the statute.” The Supreme Court explained the scope of the “zone of interests as follows: “[T]o come within the zone of interests in suit for false advertising under § 1125(a), a plaintiff must allege an injury to a commercial interest in reputation or sales. A consumer who is hoodwinked into purchasing a disappointing product may well have an injury-in-fact cognizable under Article III, but he cannot invoke the protection of the Lanham Act–a conclusion reached by every Circuit to consider the question…Even a business misled by a supplier into purchasing inferior product is, like consumers generally, not under the Act’s aegis.” Following the Lexmart decision, one federal district court found there was standing, holding in pertinent part, “Diamond’s central allegation is that TET solicited Diamond customers with deceptive advertisements and then induced them to breach their contracts with Diamond, thereby alleging an injury to its commercial interest in sales and bringing Diamond’s claim within the zone of interests protected by the Lanham Act.

Once Lanham Act standing is established, the plaintiff must prove five elements: (1) the advertisements of the opposing party were false or misleading; (2) the advertisements deceived, or had the capacity to deceive, consumers; (3) the deception had a material effect on purchasing decisions; (4) the misrepresented product or service affects interstate commerce; and (5) the movant has been–or is likely to be–injured as a result of the false advertising. Federal courts will often scrutinize the allegedly false and misleading statements made in the sales efforts to determine the extent to which those statement were disseminated to potential customers. For example, in Wyndham Vacation Ownership v. Sussman, No. 6:18-cv-2171-GAP-DCI, 2021 U.S. Dist. LEXIS 208752 (M.D. Fla. Sept. 27, 2021), the federal district court stated that, “[t]he question here is whether Wyndham has supplied any evidence that TET routinely told Wyndham’s timeshare owners to stop making timeshare payments in the [oral sales presentation]s.” The court added that “Wyndham must show that the OSPs directly caused its owners to stop making payments and Wyndham cannot do this if it cannot prove that the OSPs contained the alleged false statements.”

Once a violation is established, the Lanham Act provides that a business litigation plaintiff is entitled, “subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.” 15 U.S.C. § 1117(a). Disgorgement of profits “is appropriate where: (1) the defendant’s conduct was willful and deliberate, (2) the defendant was unjustly enriched, or (3) it is necessary to deter future conduct.” Optimum Techs., Inc. v. Home Depot U.S.A., Inc., 217 F.App’x 899 (11th Cir. 2007). In deciding whether a plaintiff is entitled to both actual and disgorgement damages, courts have considered whether awarding both would amount to an impermissible double recovery. For example, in Choice Hotels Int’l, Inc. v. Key Hotels of Atmore II, 2017 U.S. Dist. LEXIS 222711 (S.D. Ala. Aug. 18, 2017), the court stated that: “One such circumstance when a plaintiff may not be due both an infringing defendant’s profits and any damages suffered is when awarding both amounts to double recovery.”

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents clients in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

One type of trademark infringement claim available under the Lanham Act is for “false designation of origin,” which prohibits what courts refer to as “passing off” or “palming off” of goods or services. The United States Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), described a false designation of origin claim as occurring “when a producer misrepresents his own goods or services as someone else’s.” To establish a prima facie case under § 1125(a) of the Lanham Act, a plaintiff must show (1) that the plaintiff had enforceable trademark rights in the mark or name, and (2) that the defendant made unauthorized use of it such that consumers were likely to confuse the two. Precedent from the Eleventh Circuit Court of Appeals, which governs federal courts in Florida, considers seven factors in assessing whether “likelihood of confusion” exists: (1) the type of mark (in short, whether the “relationship between the name and the service or good it describes” is such that the chosen name qualifies as generic, descriptive, suggestive, or arbitrary); (2) the similarity of the marks (based on “the overall impressions that the marks create, including the sound, appearance and manner in which they are used”); (3) the similarity of the goods (“whether the products are the kind that the public attributes to a single source”); (4) the similarity of the parties’ retail outlets, trade channels, and customers (“consider[ing] where, how, and to whom the parties’ products are sold”); (5) the similarity of advertising media (examining “each party’s method of advertising” to determine “whether there is likely to be significant enough overlap” in the respective target audiences such “that a possibility of confusion could result”); (6) the defendant’s intent (determining whether the defendant had a “conscious intent to capitalize on [the plaintiff’s] business reputation,” was “intentionally blind,” or otherwise manifested “improper intent”); and (7) actual confusion (that is, whether there is evidence that consumers were actually confused). Frehling Enters., Inc. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999).

Business litigation concerning trademark infringement generally centers on whether there is a likelihood of consumer confusion, requiring courts to balance the factors set forth in the Frehling decision. Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833 (11th Cir. 1983), stated in pertinent part: “We note that the district court should not determine whether a likelihood of confusion exists by merely computing whether a majority of the subsidiary facts indicates that such a likelihood exists. Rather, the district court must evaluate the weight to be accorded the individual subsidiary facts and then make its ultimate fact decision.” The most important factors in this analysis are the type of mark and the evidence of actual confusion. Hi-Tech Pharms., Inc. v. Herbal Health Prods., Inc., 132 Fed. Appx. 348 (11th Cir. 2005) (stating that “[t]he type of mark and evidence of actual confusion are the most weighty of considerations”).

Peter Mavrick is a Miami business litigation lawyer, and represents clients in Fort Lauderdale, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

In a reverse-confusion case, the “senior user,” i.e., the party that used and had the trademark first, may suffer harm or consumers may suffer harm. For example, the defendant’s use of the trademark may diminish the value of the plaintiff’s trademark as a source indicator. As another example, consumers may come to believe the smaller, senior user of the mark is itself a trademark infringer. The United States Court of Appeals for the Sixth Circuit in Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960 (6th Cir. 1987), explained in pertinent part that: “[t]he public comes to assume the senior users products are really the junior user’s or that the former has somehow connected to the latter. The result is the senior user loses the value of the trademark—its product identity, corporate identity, control over goodwill and reputation, and ability to move into new markets.”

In a reverse confusion case, the plaintiff argues that the defendant, i.e., the junior but more powerful trademark user, “has been able to commercially overwhelm the market and saturate the public conscience with its own use of the mark, thereby weakening and diminishing the value of the senor user’s mark.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). Courts focus on the relative strengths of the marks to gauge the ability of the junior user’s mark to overcome the senior user’s mark. Important precedent from the United States Court of Appeals for the Third Circuit in Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001), explained that “in a reverse confusion situation, the senior user’s claim may be strengthened by a showing that the junior user’s mark is commercially strong. The greater relative strength of the junior mark allows the junior user to ‘overwhelm’ the marketplace, diminishing the value of the senior user’s mark.”

To evaluate reverse-confusion cases, federal courts compare the competing trademarks and consider “the overall impressions that the marks create, including the sound, appearance, and manner in which they are used.” The Eleventh Circuit in E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525 (11^th Cir. 1985), explained that, “[i]n evaluating the similarity of marks, we must consider the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.” Similarity of any of these elements, i.e., appearance, sound, connotation, and commercial impression, may be sufficient to find the trademarks are similar. In one case, for example, the United States Court of Appeals for the Federal Circuit in Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874 (Fed. Cir. 1992), found that “CENTURY 21” and “CENTURY LIFE OF AMERICA” are similar in part because “consumers must first notice th[e] identical lead word.”

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents clients in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

To establish a claim of trademark or service mark infringement, a party is required to show that: (1) it owns a valid, protectable trademark (or service mark); and (2) there is a likelihood of confusion caused by an opposing party’s use of the mark. Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). Parties typically seek injunctive relief as a remedy for trademark infringement in business litigation. “As a general ground for injunctive relief, the harm does not have to have actually occurred and the remedy is traditionally for protection from threatened or potential future injury likely to occur.” Am. Bank of Merritt Island v. First Am. Bank & Tr., 455 So. 2d 443 (Fla. 5th DCA 1984). However, a party must always allege and prove that a trade mark is distinct to establish common law trademark infringement:

(1) The plaintiff first adopted and used a certain name (or mark or symbol or logo or sign design) in a certain market or trade area, as a means of establishing good will and reputation and to describe, identify or denominate particular services rendered or offered by it (or goods made or sold by it) and to distinguish them from similar services rendered or offered (or similar goods marketed) by others, and

(2) through its association with such services or goods the plaintiff’s tradename (or mark, etc.) has acquired a special significance as the name of the services rendered (or goods marketed) by the plaintiff in its trade area because plaintiff’s tradename (or mark, etc.)

(a) is inherently distinctive (fanciful, novel or arbitrary), or

(b) while generic, descriptive, or geographic, plaintiff’s tradename (or mark, etc.) has, by actual usage, acquired in a certain trade area, a secondary, special or trade meaning as indicating, describing, identifying or denominating the plaintiff as the source of certain services (or goods), and

(3) the defendant has commenced, or intends to commence, the use of an identical or confusingly similar tradename (or mark, etc.) to indicate or identify similar services rendered (or similar goods marketed) by it in competition with plaintiff in the same trade area in which the plaintiff has already established its tradename (or mark, etc.) and

(4) as a consequence of the defendant’s action, or threatened action, customer confusion of source or as to the sponsorship of the services (or goods) offered, or to be offered, by the defendant is probable (likely) or inevitable.

Am. Bank of Merritt Island v. First Am. Bank & Tr., 455 So. 2d 443 (Fla. 5th DCA 1984). The “first two elements—primacy and distinctiveness—establish the validity of the mark; whereas the last two elements establish the likelihood of confusion.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011).

The element of distinctness is typically a contested issue in business litigation. The distinctiveness of the mark refers to “how easily customers identify petitioner’s mark with the represented services.” Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir. 1991). Indeed, when determining whether a mark is distinctive, “the mark must be classified as either: (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful. Gulf Coast Commercial Corp. v. Gordon River Hotel Assocs., 2006 WL 1382072, (M.D. Fla. May 18, 2006). Generic marks are typically incapable of achieving trademark protection because they use overly generic terms and therefore lack distinctiveness. Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519 (11th Cir.1991). By contrast, “fanciful” marks are protected as trademarks because they use terms that have been “coined” and “invented or selected for the sole purpose of functioning as a trademark.” Great S. Bank v. First S. Bank, 625 So. 2d 463 (Fla. 1993). The names Kodak, Polaroid, and Xerox are some examples of fanciful trademarks.

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents businesses in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

“A mark is ‘descriptive’ if it is descriptive of: the intended purpose, function or use of the goods, the size of the goods, the class of users of the goods, a desirable characteristic of the goods, or the end effect upon the user.” Great S. Bank v. First S. Bank, 625 So. 2d 463 (Fla. 1993). “Descriptive marks may be simply descriptive, laudatorily descriptive or geographically descriptive.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). If a “descriptive mark is inherently distinctive, it will be afforded legal protection without further proof. If a descriptive mark is not inherently distinctive, it will only be protected if it has become distinctive.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). “This acquisition of distinctiveness is referred to as ‘secondary meaning.’” Bank of Tex. v. Commerce Sw. Inc., 741 F.2d 785 (5th Cir. 1984).

Descriptive marks that are not inherently distinctive require proof of a secondary meaning. “Secondary meaning is the connection in the consumer’s mind between the mark and the provider of the service.” Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir. 1991). The factors to consider in determining whether a name or mark has “acquired secondary meaning are: (1) the length and manner of the mark’s use; (2) the nature and extent of advertising and promotion for the plaintiff’s business; (3) the efforts made by the plaintiff to promote a conscious connection in the public’s mind between the mark and the plaintiff’s business; and (4) the extent to which the public actually identifies the name with the plaintiff’s service.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011).

Courts heavily weigh the alleged “distinctiveness” of a mark when deciding whether it is a protectable trademark. “The more distinctive the mark, the stronger it is.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties.” John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983).

Under Florida law, the most distinctive marks are fanciful, arbitrary, and suggestive marks. These types of marks are inherently distinctive, and therefore do not require proof of a secondary meaning. On contrary, descriptive marks are not always inherently distinctive. This means that a party will be required to prove a secondary meaning in various circumstances to establish a mark’s distinctiveness and validity. Courts see secondary meaning “as a means by which otherwise unprotectable marks may obtain protection.” Univ. of Ga. Athletic Ass’n. v. Laite, 756 F.2d 1535 (11th Cir. 1985). Indeed, “a plaintiff must show that the primary significance of the term in the mind of the consuming public is not the product but the producer.” Gulf Coast Commercial Corp. v. Gordon River Hotel Associates, 2006 WL 1382072 (M.D. Fla. May 18, 2006). This is not always an easy burden to satisfy. “Where the mark in a trademark suit is descriptive or geographically descriptive, “[a] high degree of proof is necessary to establish secondary meaning for a descriptive term.” Gulf Coast Commercial Corp. v. Gordon River Hotel Associates, 2006 WL 1382072 (M.D. Fla. May 18, 2006).

Peter Mavrick is a Miami business litigation lawyer, and represents clients in Fort Lauderdale, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

In addition to monetary damages, the Lanham Act also permits courts the “power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of 15 U.S.C. § 1125.” In “exceptional cases” in business litigation, a prevailing party can also be awarded attorneys’ fees under the Lanham Act. The Lanham Act, thus “provides a broad menu of remedies to a plaintiff claiming infringement” of its trademarks. Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019).

In “ordinary trademark infringement actions . . . complete injunctions against the infringing party are the order of the day.” SunAmerica Corp. v. Sun Life Assurance Co. of Can., 77 F.3d 1325 (11th Cir. 1996). This is typically the case because Courts “the public deserves not to be led astray by the use of inevitably confusing marks,” and injunctive relief is the surest way to prevent future harm. Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008). Indeed, Courts consider that “injunctive relief is the quintessential form of equitable remedy; it does not entitle a plaintiff to a jury trial.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019).

The Lanham Act permits a plaintiff to recover monetary damages, which can be “divided into five rough categories: recovery of the defendant’s profits, actual business damages and out-of-pocket losses (like corrective advertising), lost profits, punitive damages, and attorneys’ fees.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019). In this context, “actual damages” cover “everything from damages from lost sales or licensing fees due to the infringer’s sale of offending goods to intangible harm like reputational damage and loss of good will.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019). A trademark plaintiff “may recover for all elements of injury to the business of the trademark owner proximately resulting from the infringer’s wrongful acts.” Bos. Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 597 F.2d 71 (5th Cir. 1979). As one example, a liable infringer would have to pay the plaintiff for the nonexclusive license to use the trademarks.

Courts have held that the primary limiting principle is that the damages may not be “speculative.” For example, in Ramada Inns, Inc. v. Gadsden Motel Co., the Eleventh Circuit Court of Appeals considered “whether the district court’s assessment of the actual damages or harm suffered by Ramada was speculative.” 804 F.2d 1562 (11th Cir. 1986). Ramada held that “the trademark infringement award must be based on proof of actual damages and that some evidence of harm arising from the violation must exist.” Ramada Inns, Inc. v. Gadsden Motel Co., 804 F.2d 1562 (11th Cir. 1986).

The Lanham Act also “permits recovery of profits because actual damages are often difficult to prove.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019). It “shifts the burden of proving economic injury off the innocent party, and places the hardship of disproving economic gain onto the infringer.” Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 F.2d 1484 (11th Cir. 1987). Indeed, the statute does so by expressly providing that “the plaintiff shall be required to prove defendant’s sales only,” while the “defendant must prove all elements of cost or deduction claimed” against its profits. 15 U.S.C. § 1117(a).

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents businesses in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

Courts must consider the following factors when determining whether a likelihood of confusion exists with respect to the use of a trade mark:

• distinctiveness of the mark alleged to have been infringed;
• similarity of the infringed and infringing marks;
• similarity between the goods or services offered under the two marks;
• similarity of the actual sales methods used by the two parties, such as their sales outlets and customer base;
• similarity of advertising methods;
• intent of the alleged infringer to misappropriate the proprietor’s good will; and
• existence and extent of actual confusion in the consuming public.

Courts within the Eleventh Circuit Court of Appeals must consider each of these factors. However, the “issue of likelihood of confusion is not determined by merely analyzing whether a majority of the subsidiary factors indicates that such a likelihood exists. Rather, a court must evaluate the weight to be accorded the individual factors and then make its ultimate decision.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). “The appropriate weight to be given to each of these factors varies with the circumstances of the case.” a court, however, is “required to consider each of the seven factors.” Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007).

To determine the distinctiveness of a mark, the Court only focuses on the conceptual strength of the plaintiff’s mark. Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999). “This is because in a forward-confusion case, the plaintiff’s theory is that the defendant—a newer user of the mark at issue—is attempting to profit off the plaintiff’s goodwill and reputation.” For the second factor, in “evaluating the similarity of marks, [Courts] must consider the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525 (11th Cir. 1985). Indeed, similarity in any of the elements of appearance, sound, connotation, or commercial impression may be sufficient to find the marks similar.

An analysis of the similarity of the products “requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). “The question, however, is not whether the purchasing public can readily distinguish [between the products,] but whether the products are the kind the public attributes to a single source.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525 (11th Cir. 1985).

When considering the similarity of the products’ sales, the Courts consider where, how, and to whom the parties’ products are sold. “Direct competition between the parties is not required for this factor to weigh in favor of a likelihood of confusion, though evidence that the products are sold in the same stores is certainly strong. The parties’ outlets and customer bases need not be identical, but some degree of overlap should be present.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). For determining the similarity of advertising, the standard “is whether there is likely to be significant enough overlap in the readership of the publications in which the parties advertise that a possibility of confusion could result.”

The intent factor asks whether the “defendant adopted [the] plaintiff’s mark with the intention of deriving a benefit from the plaintiff’s business reputation.” Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999). Finally, “evidence of actual confusion is the best evidence of a likelihood of confusion.” Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999). However, “it is not necessary to show actual confusion. One merely has to show that the likelihood of confusion exists.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022).

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents businesses in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

The term trade dress refers to “the appearance of a product when that appearance is used to identify the producer.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004). “‘Trade [d]ress’ involves the total image of a product and may include features such as size, shape, color . . . , texture, graphics, or even particular sales techniques.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). To prevail on a claim for trade dress infringement, a party must prove that: “(1) the product design of the two products is confusingly similar; (2) the features of the product design are primarily non-functional; and (3) the product design is inherently distinctive or has acquired secondary meaning.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004).

Business litigation under the Lanham Act focuses on protecting trade dress for a product’s non-functional features. Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996). Indeed, “trade dress protection may not be claimed for product features that are functional.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). “There is no bright line test for functionality.” Dollar Only Wholesale, LLC v. Transnational Foods, Inc., 2014 WL 11944275 (S.D. Fla. Apr. 23, 2014). “[T]he person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.” 15 U.S.C. § 1125(a)(3). The issue of functionality is treated as a question of fact. Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996).

To determine whether a product’s features are functional, federal courts review each element of the trade dress as a whole. The Eleventh Circuit Court of Appeals noted that the line between functionality and non-functionality is not brightly drawn. Vital Pharm., Inc. v. Am. Body Bldg. Products, LLC, 511 F. Supp. 2d 1303 (S.D. Fla. 2007). “Functional features are by definition those likely to be shared by different producers of the same product and therefore are unlikely to identify a particular producer.” Vital Pharm., Inc. v. Am. Body Bldg. Products, LLC, 511 F. Supp. 2d 1303 (S.D. Fla. 2007). Moreover, the “features cannot be appropriated; otherwise, competitors would be prevented from duplicating the new product even to the extent permitted by the branches of the law of intellectual property that protect innovation rather than designations of source.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004).

The Eleventh Circuit Court of Appeals applies two tests to determine a product’s functionality. The first test is commonly referred to as the “traditional test.” Under the traditional test, “‘a product feature is functional . . . if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). Under the second test, or the “competitive necessity test,” a “functional feature is one the ‘exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.’” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). If a product’s design is functional under the traditional test, then the Court does not need to further analyze whether there is a competitive necessity for the feature. That said, the Supreme Court of the United States has stated that “a design is legally functional, and thus unprotectable, if it is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents businesses in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

The starting point in business litigation over trademark infringement is to demonstrate an unauthorized “use” of the plaintiff’s mark in commerce. For a mark to be “used in commerce” the mark must be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” 15 U.S.C. § 1127. If such an unauthorized “use” is shown by the plaintiff, the first prong of a trademark infringement action has been satisfied. Federal courts have interpreted the term “use” to extend to situations where the alleged use does not fall literally within the wording of the federal trademark statute. For example, in Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 (9th Cir. 1982), the United States Court of Appeals for the Ninth Circuit held that where a restaurant gave store customers Coca-Cola when they asked for Pepsi, and indicated on store receipts that its customers were getting “Coke” when they were in fact getting “Pepsi,” that “[t]aken alone, such conduct … appears to present a clear-cut case of trademark infringement.”

In Optimum Technologies, Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231 (11th Cir. 2007), the Eleventh Circuit decided a federal trademark infringement lawsuit filed by a manufacturer of a home consumer produce called “Lok-Lift Rug Gripper,” consisting of a two-sided adhesive product that can be applied in strips to the backs of rugs and mats to secure them in place an prevent slippage on various surfaces. The manufacturer (Optimum) sued its former distributor (HCA) for trademark infringement following termination of their business relationship. Optimum claimed that HCA created a competing product called “Hold-It,” and sold that product at various hardware stores, including Home Depot, throughout the southeastern part of the United States. The business litigation concerned whether the statutory term “use” applied to HCA when the Home Depot stores make the mistake of placing Hold-It products on its shelves with the incorrect name “Lok-Lift Rug Gripper” underneath it. In addition, Home Depot stores had display cases that were labeled “Lok-Lift” when, to the contrary, the products displayed were the “Hold-It” products. In addition, Optimum alleged that some consumers who purchased Hold-It products at Home Depot were given printed store receipts that instead referenced “Lok-Lift.” The federal appellate court determined that there clearly was an unauthorized use in commerce of Optimum’s trademark. However, the court explained that “the pivotal question for us on appeal is whether these alleged unauthorized ‘uses’ of the mark at the retail level should be attributable to … HCA, as distributor of both the Lok-Lift and Hold-It products.”

The court concluded that any infringement at the retail level was not attributable to HCA. HCA did not have control over Home Depot’s databases and therefore could not itself print a shelf tag to apply in Home Depot retail stores. Specifically, HCA was not responsible for generating the Home Depot pricing stickers or shelving labels, nor for placing the allegedly infringing stickers on the shelves. Nor did it appear that HCA was responsible for what Home Depot printed on its customers’ receipts. The court concluded that “[w]hile there is some evidence that the replacement of the Lok-Lift product with the Hold-It product at retail stores may have resulted in confusion” in some Home Depot stores, “and while that confusion may have resulted in the unintentional co-mingling and mislabeling of the Hold-It product with the Lok-Lift mark on some shelves, there is no evidence that HCA itself ‘misused’ the Lok-Lift mark on ‘goods’ or ‘displays’” at Home Depot stores with in the meaning of the federal trademark statute, 15 U.S.C. § 1127.

Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents business litigation clients in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

The United States Court of Appeals for the Eleventh Circuit explained in Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004), that a business seeking to prove trade dress infringement must demonstrate that “(1) the product design of the two products is confusingly similar; (2) the features of the product design are primarily non-functional; and (3) the product design is inherently distinctive or has acquired secondary meaning.” Business litigation over trade dress uses the same spectrum of distinctiveness found in trademark law: trade dress can be generic, descriptive, suggestive, arbitrary, or fanciful. Federal courts examine trade dress to determine whether it is inherently distinctive. In the Eleventh Circuit (i.e., the federal appellate court governing federal trial courts in the State of Florida), the legal standard for the distinctiveness of trade dress depends on facts that include, “[w]hether it [is] a ‘common’ basic shape or design, whether it [is] unique or unusual in a particular field, [and] whether it [is] a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.” Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). Courts do not assess trade dress elements piecemeal, but instead assess the full context. As the United States District Court for the Southern District of Florida explained in Carillon Importers Ltd. v. Frank Pesce Group, Inc., 913 F.Supp. 1559 (S.D. Fla. 1996), “it is the combination of elements and the total impression that the dress gives to the observer that should be the focus of a court’s analysis of distinctiveness.”

For example, in one remarkable lawsuit litigated in federal court in Palm Beach, an operator of several restaurants sued a competitor for trade dress infringement. The plaintiff business operated under the name “Miller’s Ale House,” and sued a competing restaurant operating under the name “Carolina Ale House.” The competitor argued that Miller’s trade dress is generic and unprotectable. Miller argued in response that its trade dress is distinct, especially when considering the overall impression conveyed by Miller’s restaurant interior, its red logo signage, and the use of “ale house” in various menu items. The federal court disagreed with Miller and held that Miller’s restaurants lacked inherent distinctiveness. The Judge concluded “there is nothing unique or unusual about the interior elements Miller claims as its trade dress. Numerous restaurants have a centrally located bar, two hosts at the host station, an open kitchen, servers with dark Polo shirts and khaki lower garments, and wood on the walls. There is also nothing particularly noteworthy about the design or placement of Miller’s menu, red restaurant signage, or promotional materials. These interior characteristics, when viewed in combination, are simply too generic to be protectable.” Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F.Supp.2d 1359 (S.D. Fla. 2010).

Miller also argued it can still pursue its trade dress infringement claim because the trade dress acquired secondary meaning. Federal courts use the term “secondary meaning” to mean that trade dress which lacks inherent distinctiveness can sometimes still be protectable trade dress because it has acquired distinctiveness in the eyes of the public. In denying Miller’s secondary meaning argument, the Judge noted that Millers presented no compelling evidence such as a “systematic survey of relevant consumers” and instead relied on “witness testimony and employee-created confusion logbooks” which the Judge found unpersuasive.

There are valid claims of trade dress infringement. However, as one may expect, there also are invalid claims designed to create the appearance of unfair competition when none exists. Peter Mavrick is a Miami-Dade business litigation attorney who also practices business litigation in Fort Lauderdale, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

The Lanham Act permits trademark owners to sue other companies for violating their trademark rights. 15 U.S.C.A. § 1114(1) (“Any person who shall, without the consent of the registrant use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark 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, or to cause mistake, or to deceive […] shall be liable in a civil action [however] the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive”). To prevail on such a claim, “a plaintiff must demonstrate (1) that its mark has priority and (2) that the defendant’s mark is likely to cause consumer confusion.” Frehling Enterprises, Inc. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999).

In business litigation concerning the issue of whether there is sufficient “likelihood of confusion” between two marks to support a claim of trademark infringement, federal courts analyze seven factors. These factors include the“(1) type of mark, (2) similarity of mark, (3) similarity of the products the marks represent, (4) similarity of the parties’ retail outlets and customers, (5) similarity of advertising media used, (6) defendant’s intent and (7) actual confusion.” Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379 (11th Cir. 1997). “Of these factors, the type of mark and the evidence of actual confusion are the most important in this circuit.” Dieter v. B & H Indus. of Sw. Florida, Inc., 880 F.2d 322 (11th Cir. 1989). There is no “bright line” test setting forth the quantum of evidence of confusion to warrant a finding of trademark infringement. Rather, the court “must take into consideration the circumstances surrounding each particular case.” Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379 (11th Cir. 1997).

The first factor tests the strength of the mark. The court evaluates whether the trademark is categorized as generic, descriptive, suggestive, or arbitrary. A generic trademark is not protectable while an arbitrary mark is the strongest trademark. A previous article explained in greater detail the distinctions between these categories. The investment into and use of a mark can improve the strength of the mark. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (explaining that a mark may, “by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used”).

The factor of “similarity” “is determined by considering the overall impression created by the mark[s] as a whole rather than simply comparing individual features of the marks. This consideration includes a comparison of the appearance, sound and meaning of the marks, as well as the manner in which the marks are used.” John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983). “[T]he question is not whether there is a distinguishing characteristic, but whether the goods are so related that a consumer would believe that a single producer made both.” PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159 (11th Cir. 2019). The best evidence of a mark being similar is to show that customers are actually confused between the two marks. Frehling Enterprises, Inc. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) (“It is undisputed that evidence of actual confusion is the best evidence of a likelihood of confusion”). For example, a company may show evidence that customers mistakenly call it concerning issues with the company’s products that has a similar mark.

In recent business litigation addressing these issues, PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159 (11th Cir. 2019), evaluated whether the defendant had infringed on the plaintiff’s trademark. Both companies sold children’s play equipment and the marks both had gorillas in them. Both marks were also registered with the USPTO. The trial court in Playnation found that the defendant’s use of its trademark was a violation of the plaintiff’s trademark rights. The Playnation defendant appealed, and asked the court to consider the fact that the infringing mark was also registered with the USPTO.

Playnation disagreed, holding that the USPTO’s determination that mark was distinct enough to warrant registration should not necessarily influence a court that is evaluating that same question in a subsequent proceeding. Playnation reasoned that the plaintiff had not been party to the prior USPTO registration proceeding and was not precluded from showing to the court that there was a likelihood of confusion between the marks. Playnation did not explicitly hold that a trial court could not consider the USPTO’s prior finding, it merely held that it was not error for the trial court to not consider it.

A holder of a trademark may nevertheless violate the trademark rights of another party with a higher priority can show that there is a likelihood of confusion between the two marks. Peter Mavrick is a Miami-Dade business litigation attorney who also practices business litigation in Fort Lauderdale and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

The federal Lanham Act provides protection for businesses to protect their name from its use by competitors. “The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985).

“A plaintiff seeking to prevail on a trademark infringement claim must show 1) that he had a valid trademark and 2) that the defendant had adopted an identical or similar mark such that consumers were likely to confuse the two.” Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792 (11th Cir. 2003). A business litigation defendant can prevail against a trademark infringement claim by showing that the trade name at issue is not a valid trademark. A mark that is not sufficiently “distinct” is not protected by trademark law. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (holding that a mark must be “distinctive” to be covered under trademark law).

While registration of a trademark with the USPTO can provide a presumption of distinctiveness, a plaintiff in business litigation over trademark infringement must prove the mark’s distinctiveness. Engineered Tax Services, Inc. v. Scarpello Consulting, Inc., 958 F.3d 1323 (11th Cir. 2020) (“Registration with the PTO entitles a mark’s holder to a presumption of either inherent or acquired distinctiveness, depending on the ground on which registration was obtained”). “[A] mark can be ‘distinctive’ in one of two ways: It can be ‘inherently’ distinctive, or it can ‘acquire’ distinctiveness over time.” Royal Palm Properties, LLC v. Pink Palm Properties, LLC, 950 F.3d 776 (11th Cir. 2020).

Courts classify the distinctiveness of a trademark into four categories: arbitrary, suggestive, descriptive, and generic. Royal Palm Properties, LLC v. Pink Palm Properties, LLC, 950 F.3d 776 (11th Cir. 2020) (describing the various categories of mark and their respective distinctiveness). A trademark which is made-up, like “Google,” or a term that has no connection with what it sells, like “Apple” computers, are considered to be inherently distinctive based on their name alone. “A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to the product.” Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007). A mark which is suggestive are those that bear only an oblique connection with the product. An example of a suggestive mark is “Igloo” coolers. Like arbitrary marks, “[a] suggestive term requires no proof of secondary meaning in order to receive trade name protection.” Vision Ctr. v. Opticks, Inc., 596 F.2d 111 (5th Cir. 1979).

A descriptive trademark is one which “the customer who observes the term can readily perceive the nature of plaintiff’s services, without having to exercise his imagination.” Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519 (11th Cir. 1991). An example of a descriptive mark would be “Books Books Books.” A Miami resident who was not familiar with the independent bookstore would still have a good idea as to what is sold in “Books Books Books.”

These descriptive terms can only be protected if the term has developed a secondary meaning for customers. Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519 (11th Cir. 1991) (“Because a descriptive service mark is not inherently distinctive, it may be protected only if it acquires a secondary meaning”). A name has acquired secondary meaning when “the primary significance of the term in the minds of the [consuming] public is not the product but the producer.” Am. Television & Communications Corp. v. Am. Communications & Television, Inc., 810 F.2d 1546 (11th Cir.1987). Generic terms, like “liquor store” for a store that sells alcohol is generic, and can never be trademarked.

The recent business litigation case Engineered Tax Services, Inc. v. Scarpello Consulting, Inc., 958 F.3d 1323 (11th Cir. 2020) (ETS), evaluated whether the plaintiff’s term “Engineered Tax Services” was suggestive or descriptive. The defendant in ETS had been using the term “Engineered Tax Services” in its Google AdWords term and in a URL. The district court entered summary judgment against the plaintiff because it had found that the trademark was merely descriptive. As the plaintiff submitted evidence of secondary meaning, a finding that the mark was merely descriptive (as opposed to suggestive) was fatal to the plaintiff’s trademark claim.

The federal appellate court in ETS reversed, explaining that the district court’s analysis was too narrow when it focused heavily on how the word “engineered” was not distinct. ETS explained that the district court should have considered “engineered” together with “tax services” in evaluating whether the mark was suggestive rather than descriptive. “[O]rdinary words can be combined in a novel or unique way and thereby achieve a degree of protection denied to the words when used separately.” Vision Ctr. v. Opticks, Inc., 596 F.2d 111 (5th Cir. 1979). ETS explained that the distinctiveness of the plaintiff’s mark was heightened particularly because “tax services aren’t the sort of thing that ordinarily calls for engineering.” Engineered Tax Services, Inc. v. Scarpello Consulting, Inc., 958 F.3d 1323 (11th Cir. 2020). Because a reasonable jury could conclude that the trademark was suggestive rather than descriptive, summary judgment against the plaintiff was unwarranted.

The more distinct a trademark is, the more likely it will be protected under trademark law. The holding in ETS shows that a plaintiff business can prove distinctiveness by arguing that the mark includes terms that are not commonly connected. Peter Mavrick is a Miami business litigation attorney who also practices business litigation in Fort Lauderdale and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

Trademark law allows businesses to cultivate a reputation by allowing trademark owners to protect the marks that help consumers identify the origin of a product or service. Trademark owners sometimes need to initiate business litigation to defend against trademark infringement. The most well-known method to protect a trademark is federal registration with the USPTO under the Lanham Act, 15 U.S.C. § 1051 et seq. “The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). This method provides nationwide protection and the most remedies for registrants, but it can be time consuming and costly. Federal registration provides the registering business “‘prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.’” Matal v. Tam, 137 S. Ct. 1744 (2017).

Registration of a mark with the USPTO can provide the most protection, but it can be difficult. Before a trademark may be registered, the USPTO must agree that the trademark is relatively distinct. Marks that resemble other marks such that there is a likelihood of confusion cannot be registered. 15 U.S.C. § 1052(d). Accordingly, generic names for goods and services cannot be registered. United States Patent & Trademark Office v. Booking.com B. V., 19-46, 2020 WL 3518365 (U.S. June 30, 2020) (“Indeed, generic terms are ordinarily ineligible for protection as trademarks at all”). Generally, “[t]he more distinctive the mark, the more readily it qualifies for the principal register.” Id.

On June 30, 2020, the United States Supreme Court issued its decision in United States Patent & Trademark Office v. Booking.com B. V., 19-46, 2020 WL 3518365 (U.S. June 30, 2020). The Booking.com case decided whether a generic term can nevertheless be registerable with the USPTO when it is put within the context of a website URL. Particularly, the company Booking.com sought trademark registration of its name. The USPTO initially refused to register the mark based on the principle that merely adding a corporate designation to a generic term does not confer trademark eligibility, as established in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888). According to the USPTO, Booking.com could not be a registered trademark or the reasons that “Booking Company” would not be able to be registered. Because its corporate marketing strategy relies so heavily on its name vis-a-vis its competitors, Booking.com B.V. initiated business litigation against the USPTO to ensure the name “Booking.com” is a registered trademark

The Supreme Court disagreed with the USPTO, holding that whether a trademark is distinctive enough to be registered does not depend on whether there was a generic corporate identifier. Booking.com explained that the important question is whether consumers perceive the mark as distinct, despite the mark appearing to be two generic terms together. “[F]or a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation.” Id. Booking.com held that, “[w]hether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” As plaintiff business was able to show that consumers recognized “Booking.com” to refer to a distinct company’s services rather than “booking” as a whole, “Booking.com” could be registered with the USPTO.

A business that is able to show that its mark has gained a distinctive meaning can seek federal registration with the USPTO, even if the mark is a combination of generic terms. Peter Mavrick is a Miami business litigation attorney who also practices business litigation in Fort Lauderdale and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.

The Lanham Act makes it unlawful for a party to sell goods which appear to originate from a trademark holder. Specifically,

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which– (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or […]

15 U.S.C. § 1125 (a)(1)(A).

To prevail on a federal claim of trademark infringement and unfair competition, a trademark owner “must show (1) that it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.” Suntree Techs., Inc. v. Ecosense Intern., Inc., 693 F.3d 1338 (11th Cir. 2012). “In determining whether a likelihood of confusion exists, the fact finder evaluates a number of elements including: the strength of the trade[mark], the similarity of [the marks], the similarity of the product[s], the similarity of retail outlets and purchasers, the similarity of advertising media used, the defendant’s intent, and actual confusion.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir.1986)

The Lanham Act provides different remedies to victims of trademark infringement that depend on the mental state of the infringer. Generally, trademark infringers who purposefully violate a trademark are subject to greater penalties than those who only inadvertently violate a trademark. Whether a victim of trademark infringement can recover its attorneys’ fees depends on the infringer’s intentions. 15 U.S.C.A. § 1117(a) (“The court in exceptional cases may award reasonable attorney fees to the prevailing party”). “Exceptional cases” when attorneys’ fees should be awarded occur when “the infringing party acts in a ‘malicious, fraudulent, deliberate, or willful manner.’” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001). In addition, intentionally counterfeiting a trademark can cause an infringer to be subject to treble damages. 15 U.S.C. § 1117 (b)(1).

In Romag Fasteners, Inc v. Fossil, Inc., 140 S. Ct. 1492 (2020), the United States Supreme Court settled the question whether someone unintentionally selling goods which infringe on a trademark is potentially subject to a claim of lost profits under 15 U.S.C. § 1125(a). The plaintiff, a seller of magnetic snap fasteners, had a contract with the defendant, Fossil, for the plaintiff’s fasteners to be used in Fossil’s fashion products. The plaintiff discovered that Fossil’s manufacturing facilities in China were manufacturing the products with counterfeit fasteners without Fossil’s knowledge. Fossil, however, was not actually aware that the manufacturing facility was imitation fasteners that appeared to be the plaintiff’s product rather than purchasing authentic fasteners for the use in Fossil’s products lawfully.

The Romag plaintiff claimed that it should be able to collect its lost profits against Fossil, even though Fossil had been unaware it was selling infringing goods. Fossil claimed that it could not be liable because 15 U.S.C. § 1116(a) provides that lost profits can only be awarded “according to the principles of equity.” Fossil claimed that “equity,” as referred to in the statute, means that unintentional violators of trademark law under 15 U.S.C. § 1125(a) are not liable for “lost profits.” As asserted by Fossil, “equity courts historically required a showing of willfulness before authorizing a profits remedy in trademark disputes.”

The Supreme Court disagreed. Romag explains that the Lanham Act does not contain a reference to this rule. As there are several references to the state of mind in other sections, the absence of the rule in the text indicates that there is no requirement of willfulness before lost profits may be awarded. While the intention of infringer is not a threshold matter in determining whether lost profits should be awarded to victims of trademark infringement under 15 U.S.C. § 1116(a), a violator’s state of mind is still relevant. The Supreme Court explained that, “we do not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.” The state of mind of an infringer is an important factor in determining whether to award lost profits, but the lack of intention on behalf of an infringer to violate trademark rights does not bar a plaintiff’s claim for lost profits.

Peter Mavrick is a Miami business litigation attorney. This article does not serve as a substitute for legal advice tailored to a particular situation.

The Lanham Act allows trademark owners to sue businesses that “use in commerce any reproduction, copy, or […] imitation” of a mark when that use is “likely to cause confusion” with the trademark owner’s mark. 15 U.S.C. § 1114(1)(a); Dieter v. B & H Indus. of S.W. Fla., Inc., 880 F.2d 322 (11th Cir.1989). In such a situation, a trademark owner can recover the profits that the infringer earned and the damages that the owner suffered due to the infringement. 15 U.S.C. § 1117(a). When the product being sold has a mark that is “identical” or “substantially indistinguishable” from the trademark owner’s mark, it may be considered as a “counterfeit.” 15 U.S.C. § 1127. The stakes are much higher for sellers of counterfeit products – a counterfeiter will likely be required to pay attorneys’ fees and either treble damages or statutory damages, which could be up to $2,000,000. 15 U.S.C. 1117(b)-(c). When a business is selling counterfeits, it is not necessary to prove that the violating business was acting in bad faith. Chanel, Inc. v. Italian Activewear of Florida, Inc., 931 F.2d 1472 (11th Cir. 1991).

A business can also be held liable for the enhanced counterfeiter penalties for supplying goods or services to counterfeiters. Particularly, a business can be contributing to counterfeiting if it “provid[es] goods or services necessary to the commission of a [counterfeiting], with the intent that the recipient of the goods or services would put the goods or services to use in [counterfeiting].” 15 U.S.C.A. § 1117(b)(2).

A business can contribute in the commission of counterfeiting, subjecting itself to significant penalties, if it sufficiently contributes to another’s violation of trademark law. The United States Supreme Court established in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), that a drug company legitimately selling a generic drug can be held liable for counterfeiting when pharmacists mislabeled the drug company’s generic pills to appear to be the brand name capsules. The Supreme Court found that when a “manufacturer or distributor […] continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.” Id. at 854. Even though the drug manufacturer did not make any additional money for counterfeiting, the act of providing the generic medicine when it knew it would be mislabeled was sufficient to find liability as a contributor to counterfeiting of a trademark.

The doctrine of contributory trademark infringement has expanded since the Supreme Court’s decision in Inwood Laboratories. In Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019), a landlord leased stores and booths to tenants at a discount mall. Several incidents occurred that should have indicated to the landlord that its tenants were counterfeiting products. Some of the tenants were raided by law enforcement and had thousands of counterfeit sunglasses and other goods seized. Id. at 1308. The landlord knew about the raids, and its property manager walked through the mall to inventory what was taken. Id. at 1309. The landlord received a letter from the owner of the trademark which identified the booths which were selling counterfeit goods. Id. at 1310. The Luxottica court also found that a person may receive constructive knowledge of trademark infringement when the person notices a product sold for significantly less than its normal retail value. In that case, the landlord should have been able to notice that Oakley sunglasses, which normally retail for $140-$220 a pair, were being sold for $15-$20 by a few of the tenants.

The federal appellate court in Luxottica determined that “turning a blind eye” can be sufficient for a finding of contributory trademark infringement. To be liable, “a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.” Id., quoting Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010). The landlord in Luxottica was found liable for $1.9 million in damages because of its contributory trademark infringement.

Although a businesses does not have a general duty to investigate everything that a customer or tenant is doing, a business risks violating the Lanham Act if it provides any goods or services to a business that it knows, or should know, is counterfeiting goods. To avoid liability, a business may have to cease selling to a customer or terminate a lease if it discovers that its customer or tenant is counterfeiting products. To be safe, a business would be prudent to investigate claims that its customers or tenants are counterfeiting products.

Peter Mavrick is a Miami business litigation lawyer. This article is not a substitute for legal advice.

In Coach, Inc. v. Chung Mei Wholesale, Inc., 2016 WL 7470001 (S.D. Fla. June 17, 2016), Plaintiffs, Coach, Inc. and Coach Services, Inc.’s (collectively “Coach”), was a luxury consumer goods company that specialized in the design, manufacturing, and sale of, among other things, handbags and wallets. Coach owned a variety of trademarks, which it used in connection with the advertisement and sale of its products. Shen Biao Huang (“Huang”) and his wife, Lian Xiao Fu (“Fu”) operated a business called Chung Mei Wholesale, Inc. (“Chung Mei”) out of a warehouse in Hialeah, Florida. Chung Mei imported goods from China and sold them to retailers and wholesalers. Huang primarily selected merchandise himself, but sometimes his friend, Hung Jain Ke (“Jain Ke”) ordered goods on Huang’s behalf. During the course of their dealings, Huang instructed Jain Ke not to send him any goods that might be counterfeit.

There were two shipments ordered by Jain Ke on behalf of Chung Mei that were seized by the U.S. Customs and Border Protection (“CBP”) seized two shipments imported by Chung Mei from China, which CBP determined contained about 3,000 “Coach Design Handbags,” identified as constituting “counterfeit copies” of the Coach Trademarks. A Coach employee trained to identify counterfeits, examined CBP’s photographs of these bags and concluded the pictured items were counterfeit and bore counterfeit representations of four registered Coach trademarks as well as trade dresses, and were substantially indistinguishable from the Coach trademarks and trade dresses.

Coach filed a lawsuit against Chung Mei, Fu, and Huang (collectively, “Defendants”) for, among other causes of action, trademark counterfeiting. Coach filed a Motion for Summary Judgment as to Defendants’ liability for all of its claims. “[T]he plain language of Rule 56 [of the Federal Rules of Civil Procedure] mandates the entry of summary judgment against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.” Jones v. UPS Ground Freight, 683 F.3d 1283, 1292 (11th Cir. 2012).

Defendants argued that Coach did not carry their burden on summary judgment because they failed to conclusively establish the seized handbags constituted counterfeit products. Coach’s Motion for Summary Judgment relied solely on the affidavits of its employees, Eric and Melissa Berger. The Bergers’ testimony consisted of their opinions of whether the handbags were counterfeit products. Defendants also argued that Coach failed to establish that the seized products were likely to cause consumer confusion.

Coach argued that it did not need to demonstrate Defendants’ products were likely to cause consumer confusion because the products’ counterfeit nature creates a presumption of confusion. Coach relied on the case of Fila U.S.A. Inc. v. Kim, 884 F. Supp. 491 (S.D. Fla. 1995), which held “[w]here a counterfeit item is virtually identical to the genuine item, the very purpose of the individuals marketing the cheaper [counterfeit] items is to confuse the buying public into believing that it is buying the true article.” The trial court disagreed.

The trial court found that there was a genuine issue of material fact whether the seized products and the genuine products can be considered “identical” or “substantially indistinguishable” for the seized products to qualify as counterfeits under the Lanham Act. The trial court further held that summary judgment was unwarranted on Coach’s trademark infringement claim, as it was unclear: (1) whether Defendants’ products qualified as counterfeit under the Lanham Act; and (2) if not, whether they were likely to cause consumer confusion. The trial court, therefore, denied Coach’s Motion for Summary Judgment.

Peter Mavrick is a Miami business litigation attorney. This article does not serve as a substitute for legal advice tailored to a particular situation.

In Optimum Technologies, Inc. v. Home Depot U.S.A., Inc., 217 Fed.Appx. 899 (11th Cir. 2007), Optimum Technologies, Inc. (“Optimum”) sued Home Depot, Inc. (“Home Depot”) alleging that Home Depot committed trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114, and false advertising in violation of 15 U.S.C. § 1125(a). Optimum sold a variety of floor related products, including the Lok–Lift Gripper (“Lok–Lift”). Lok-Lift was applied in strips to the back of rugs and mats to prevent slippage on hard floors and carpets. Optimum owned the Lok–Lift mark. Optimum sold the Lok–Lift product to Home Depot through a joint venture partnership between Optimum and Henkel Consumer Adhesives, Inc. (“Henkle”). Henkle purchased the Lok–Lift product from Optimum then distributed it to Home Depot, among other retailers.

Henkle later developed its own similar product called Hold–It for Rugs (“Hold–It”); however, the Hold–It product was only intended for use on floors, not on carpets. Henkle notified Home Depot that it intended to substitute its Hold–It product in the place of the Lok–Lift product. Henkle sent Home Depot the Hold–It product with the same product number and tracking information as the Lok–Lift product. Home Depot’s computer system did not reflect that the products had changed, so the cash register receipts showed Hold-It purchases to be Lok-Lift purchases. Home Depot also did not update its shelf tags, which still displayed the name Lok–Lift. The Hold–It product that was sold at Home Depot, however, was packaged and marked with the Hold–It name with no reference to Lok–Lift.

Optimum filed a lawsuit against Home Depot alleging that Home Depot committed trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114, and false advertising in violation of 15 U.S.C. § 1125(a). Home Depot moved for partial summary judgment as to Optimum’s claim for monetary damages under both statutes. The district court granted Home Depot’s motion. The district court found that Optimum’s claim for monetary damages, which included Home Depot’s profits, attorney fees, and enhanced damages were not appropriate under the facts of this case. Optimum filed an appeal.

An accounting of a defendant’s profits is appropriate where: (1) the defendant’s conduct was willful and deliberate, (2) the defendant was unjustly enriched, or (3) it is necessary to deter future conduct. See Howard Johnson Co., Inc. v. Khimani, 892 F.2d 1512, 1521 (11th Cir.1990). The Eleventh Circuit held that there was insufficient record evidence that suggested Home Depot’s conduct was willful. Burger King v. Mason, 855 F.2d 779, 781 (11th Cir.1988) stated that a willful violation of a trademark occurred where the infringer was “knowingly and deliberately cashing in upon the good will of [the infringed].” Optimum argued that Home Depot’s actions were willful because after Home Depot was put on notice of the infringement, Home Depot initially took no steps to rectify the situation. Optimum further argued that when Home Depot did take steps to rectify the situation, those steps came about too slowly.

The Eleventh Circuit disagreed and held that the record showed that Home Depot began to change its outdated store tags and cash register receipts after receipt of Optimum’s second letter which directly accusing it of infringing upon the Lok–Lift mark. Home Depot began to rectify the situation before the lawsuit was filed and continued the process until all outdated store tags were changed and the cash register receipts reflected the proper item being sold. The Eleventh Circuit reasoned that Optimum’s desire for Home Depot to move a more rapid pace was not evidence that Home Depot’s alleged infringement was willful. The appellate court further stated that there was no evidence that the existence of outdated store tags and inaccurate store receipts was based on Home Depot’s attempt to deliberately cash in on Optimum’s good will. Optimum Technologies, Inc. v. Home Depot U.S.A., Inc. found that Home Depot’s actions of alleged infringement were not willful.

Pursuant to 15 U.S.C. § 1117(a), a trial court may, in its discretion, reduce or enhance the resulting award up to three times the amount of profits or damages, whichever is greater, as justice shall require. “Such an award is discretionary, but it may not be punitive, and must be based on a showing of actual harm.” Babbit Electronics. Inc. v. Dynascan Corp., 38 F.3d 1161 (11th Cir.1994) Optimum Technologies, Inc. v. Home Depot U.S.A., Inc. held that since Optimum is not entitled to Home Depot’s profits and has not shown any actual harm, it is not entitled to any enhanced damages.

In addition, a trial court has discretion, in “exceptional cases,” to “award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). An exceptional case is “where the infringing party acts in a malicious, fraudulent, deliberate, or willful manner.” Burger King v. Pilgrim’s Pride Corp., 15 F.3d 166, 168 (11th Cir.1994) (internal quotation marks omitted). The Eleventh Circuit agreed with the district court’s determination that there was no evidence to suggest that this was an exceptional case. The Eleventh Circuit, therefore, found that the district court did not abuse its discretion in finding that attorney fees was not an appropriate remedy. The Eleventh Circuit Court of Appeals (“Eleventh Circuit”), therefore, affirmed the district court’s decision.

Peter Mavrick practices business litigation in Miami, Florida. This article does not serve as a substitute for legal advice tailored to a particular situation.

In the case of Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, Plaintiff Dippin’ Dots, Inc. (“DDI”) sued Defendant Frosty Bites Distribution, LLC (“FBD”) for trade dress infringement of DDI’s product and logo design, in violation of the Lanham Act, 15 U.S.C. § 1125. Plaintiff DDI sold brightly-colored, small beads of ice cream called “dippin’ dots.” DDI’s dippin’ dots were created through a six-step process involving, among other things, dripping, freezing and storing an ice cream composition into beads.

FBD was secretly started by a group of retail dealers who terminated their contracts with DDI. FBD sold a competing brightly-colored, small, popcorn-shaped and spherical-shaped ice cream product called “frosty bites.” FBD’s frosty bites were created, in part, by streaming and dripping an ice cream solution into liquid nitrogen where it freezes and forms beads and clusters of frozen ice cream.

DDI primarily sold dippin’ dots at kiosks or stands at amusement parks, sporting venues, and shopping malls. DDI identified itself using a distinctive logo made up of an oval of blue, yellow, and pink spheres surrounding the product name, “dippin’ dots,” in blue letters. Below the oval of spheres was a tag line advertising dippin’ dots as the “Ice Cream of the Future.” FBD primarily sold frosty bites from booths and kiosks at various venues. FBD identified itself using a distinctive logo that consisted of an ice-like background upon which the words “Frosty Bites” are written in blue letters shadowed in pink. The “o” in the word “Frosty” was the torso of a cartoon caricature of a penguin holding a cup of yellow, green, blue, and red nuggets of ice cream. Below the words was a tag line advertising frosty bites as “The Ultimate Ice Cream Sensation!”.

DDI filed suit against FBD alleging trade dress infringement of DDI’s unique, flash-frozen ice cream product, and its unique logo design. FBD moved for summary judgment. The district court granted summary judgment in favor of FBD on both claims. DDI appealed the decision.

To prevail on a claim for trade dress infringement under Section 43(a) of the Lanham Act, a plaintiff must prove that (1) the product design of the two products is confusingly similar; (2) the features of the product design are primarily non-functional; and (3) the product design is inherently distinctive or has acquired secondary meaning. Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996). All three elements are necessary a court to make a finding of trade dress infringement. Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC held that DDI did not meet its burden of establishing the non-functionality of its product design.

There are two tests for determining functionality: (1) the traditional test and (2) competitive necessity test. Under the traditional test, a product feature is functional, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. The district court analyzed the size, color and shape of dippin’ dots. The district court made the following findings: (1) the color was functional, because it indicates which flavor of the ice cream was in each piece, i.e., pink for strawberry, white for vanilla, and brown for chocolate; (2) the size of pieces was functional because it contributed to the product’s creamy taste, as compared to a larger piece; and the shape of dippin’ dots was functional because dripping the ice cream composition into the freezing chamber, creates a “bead” that produces the product’s free flowing nature.

Under the competitive necessity test, the courts examine whether the exclusive use of a functional feature would put competitors at a significant non-reputation-based disadvantage. This test was not considered because, “[w]here the design is functional under the traditional test, ‘there is no need to proceed further to consider if there is a competitive necessity for the feature.’” Dippin’ Dots, Inc. quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). The appellate court, therefore, concluded that the dippin’ dots design features were functional as a whole because any flash-frozen ice cream product will inherently have many of the same features as dippin’ dots.

The appellate court further concluded that no reasonable jury could find that the two logos are confusingly similar because the lack of visual similarity between the two designs was overwhelming. To determine whether a likelihood of confusion exists, the court evaluates a number of elements including the following seven factors: (1) the strength of the trade dress, (2) the similarity of design, (3) the similarity of the product, (4) the similarity of retail outlets and purchasers, (5) the similarity of advertising media used, (6) the defendant’s intent, and (7) actual confusion. AmBrit, Inc. v. Kraft, Inc., supra. The appropriate weight given to each of these factors varies with the circumstances of the case. The trial court makes the ultimate decision on how much weight is given to each of these factors.

DDI argued that the district court failed to consider all the factors relevant to the issue of whether two marks are confusingly similar. The appellate court, however, was not bound by the district court’s analysis, because the standard of appellate review was de novo. After reviewing the record in the light most favorable to DDI, the appellate court concluded that the remaining six factors all weigh in favor of DDI. Nonetheless, the greatest weight was applied to the similarity of design. The appellate court concluded that no reasonable jury could find that the two logos were confusingly similar because the lack of visual similarity between the two designs was overwhelming. The appellate court affirmed the district court’s grant of summary judgment in favor of FBD.

Peter Mavrick practices business litigation in Broward, Miami-Dade, and Palm Beach Counties, Florida. This article does not serve as a substitute for legal advice tailored to a particular situation. Peter T. Mavrick can be reached at: Website: www.mavricklaw.com; Telephone: 954-564-2246; Address: 1620 West Oakland Park Boulevard, Suite 300, Fort Lauderdale, Florida 33311.