A prevalent issue in business litigation is whether a business’ unregistered name or mark qualifies for trademark protection. Under Florida’s common law, to “prevail on a common law trademark infringement claim, where the mark has not been registered, a plaintiff must show that it has trademark rights on the mark or name at issue distinctive enough to deserve protection; and that the defendant’s use of such mark or name is likely to cause consumer confusion as to the proper origin of the services offered.” PortionPac Chem. Corp. v. Sanitech Sys., Inc., 210 F. Supp. 2d 1302 (M.D. Fla. 2002). Peter Mavrick is a Fort Lauderdale business litigation attorney, and represents clients in Miami, Boca Raton, and Palm Beach. The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment litigation, and other legal disputes in federal and state courts and in arbitration.
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