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Articles Posted in Trademark Infringement Litigation

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The Lanham Act is a federal statute that protects businesses from various types of unfair competition, including trade dress infringement. The term “trade dress” is defined as “the total image of a product . . . [that] may include features such as size, shape, color or color combinations, textures, graphics, or even particular sales techniques.” Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996). Trade dress infringement claims often arise in business litigation between businesses that produce, design, or use similar products. Businesses can sue for trade dress infringement under the Lanham Trademark Act when the relevant features of the business’ product are non-functional. 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.

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).

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Under federal law, trademark infringement is proscribed by 15 U.S. C. § 1114(1)(a), which prohibits any person from the “use in commerce [of] 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.”  The United States Court of Appeals for the Eleventh Circuit in Burger King Corp. v. Mason, 710 F.2d 1480 (11th Cir. 1983), explained that to prevail on a trademark infringement claim based on a federally registered trademark, “the registrant must show that (1) its mark was used in commerce by the defendant without the registrant’s consent and (2) the unauthorized use was likely to cause confusion, or to cause mistake or to deceive.”  Peter Mavrick is a Fort Lauderdale business litigation attorney, and represents clients in business litigation in Miami, Boca Raton, and Palm Beach.  The Mavrick Law Firm represents businesses and their owners in breach of contract litigation and related claims of fraud, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment law, and other legal disputes in federal and state courts and in arbitration.

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.”

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Under federal law, the term “trade dress” involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.  For example, “[t]he design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 432 U.S. 23, 121 S.Ct. 1255 (2001).  Like trademarks, trade dress is protected under Section 43(a) of the Lanham Act.  Peter Mavrick is a Miami business litigation lawyer, and represents clients in business litigation in Fort Lauderdale, 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.

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).

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A company that successfully has its mark registered with the USPTO does not have immunity from other trademark owners claiming infringement.  A trademark owner with a higher priority may nevertheless sue under the Lanham act if it can show that there is a “likelihood of confusion” between the two marks.  Peter Mavrick is a Miami business litigation lawyer, and also represents clients in business litigation in Fort Lauderdale and Palm Beach.  The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, and other legal disputes in federal and state courts and in arbitration.

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).

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Florida businesses seeking to protect their reputation may need to bring a lawsuit under the Lanham Act to protect their trademarks.  Defendants in business litigation asserting trademark infringement sometimes defend on the grounds that the plaintiff’s trademark is “generic” and therefore cannot be protected under the Lanham Act.  A recent case from the United States Eleventh Circuit Court of Appeals clarified when otherwise generic terms can be considered trademarks protected under the Lanham Act.  The appellate court held that a trade name can be “distinct” when it incorporates two generic terms which are not typically linked together.  Peter Mavrick is a Miami business litigation lawyer, and also represents clients in business litigation in Fort Lauderdale, 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, and other legal disputes in federal and state courts and in arbitration.

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).

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Effective protection of a Florida business’ trademark rights can be critical to the success of the business.  Trademark protection can help a Florida business establish a reputation and prevent imitators from taking advantage of that reputation.  A recent United States Supreme Court business litigation case held which types of generic marks can be registered with the United States Patent and Trademark Office (USPTO).  Peter Mavrick is a Miami business litigation lawyer, and also represents clients in business litigation in Fort Lauderdale and Palm Beach.  The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, and other legal disputes in federal and state courts and in arbitration.

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.

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The judicial remedies for victims of trademark infringement  vary depending upon the intentions of the infringer. A Florida business which has been victimized by a malicious counterfeiter can seek lost profits, treble damages, attorneys’ fees, and other remedies. By contrast, a company which accidentally violated trademark law has significantly less exposure. A recent United States Supreme Court precedent, in Romag Fasteners, Inc v. Fossil, Inc., 140 S. Ct. 1492 (2020), settled whether “lost profits” is an available remedy for unintentional trademark infringement.  Peter Mavrick is a Miami business litigation lawyer.  The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, and other legal disputes in federal and state courts and in arbitration.

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–

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A trademark owner can of course sue the business selling counterfeit copies of the trademark owner’s goods, but it may also sue other businesses that sufficiently provide products or services which the counterfeiter uses.  In Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (2019), the United States Court of Appeals for the Eleventh Circuit recently confirmed that a landlord can be held liable for the trademark infringement of its tenant when the landlord has actual or constructive knowledge of a tenant’s counterfeiting activities.  Peter Mavrick is a Miami business litigation attorney who represents clients in trademark infringement litigation and other unfair competition litigation.

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).

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Under the Lanham Act, a defendant may be liable for trademark infringement, if, without consent, he/she uses “in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark” which “is likely to cause confusion or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1). The Act defines a “counterfeit” as a “spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. However, the test for whether marks are “substantially indistinguishable” is not well-defined by the applicable case law. Peter Mavrick is a Miami business litigation lawyer who represents clients in trademark infringement and other unfair competition litigation.

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.

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The Lanham Act provides that a successful plaintiff may recover: (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) costs of the action. 15 U.S.C. § 1117(a). In exceptional cases, a district court may award attorney fees to the prevailing party. The Lanham Act gives broad discretion to the district court to determine the proper relief due an injured party. See 15 U.S.C. § 1117(a); Burger King v. Weaver, 169 F.3d 1310 (11th Cir.1999).  Peter Mavrick is a Miami business litigation lawyer who represents clients in trademark infringement lawsuits.

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.

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