Articles Posted in Trademark Infringement Litigation

Under federal law, trademark infringement claims mainly governed by the Lanham Act.  The Lanham Act imposes civil liability on “[a]ny person who … 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 misrepresentation of fact, which … in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.”  One type of Lanham Act trademark infringement claim is called “reverse confusion” infringement.  As a leading treatise on the law of trademark and unfair competition law has explained, the “paradigm case [of reverse confusion] is that of a knowing junior user with much greater economic power who saturates the market with advertising of a confusingly similar mark, overwhelming the marketplace power and value of the senior user’s mark.”  MCarthy on Trademarks and Unfair Competition § 23:10 (5^th ed.).   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.

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.”

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

Trademark infringement claims are common in business litigation. If a trademark application is still pending, or where a mark was never registered at all, then it is not presume that a given mark qualifies for trademark protection under Florida or federal law. Therefore, to establish a claim of trademark infringement, a party “must show that (1) it owns a valid, protectable trademark and (2) there is a likelihood of confusion caused by [another party’s] use of its mark.” Dieter v. B & H Indus. of Southwest Florida, 880 F.2d 332 (11th Cir.1989). An unregistered trademark must always be distinct to qualify. The more descriptive the mark, the greater the likelihood that a Florida court will consider it as a distinct trademark. Peter Mavrick is a Miami business litigation attorney, 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 law, and other legal disputes in federal and state courts and in arbitration.

“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).

The Lanham Act is a federal statute that protects businesses from various types of unfair competition, including trademark infringement. In business litigation, the Lanham Act permits trademark owners to sue other businesses or individuals for violating their trademark rights. The Lanham Act provides that “[w]hen a violation of any right of the registrant of a mark … shall have been established in any civil action arising under this chapter, the plaintiff shall be 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.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019). 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.

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 is a federal statute that protects businesses from various types of unfair competition, including trademark infringement. In business litigation, the Lanham Act permits trademark owners to sue other businesses or individuals for violating their trademark rights. To prevail on a claim of trademark infringement, a plaintiff must show: (1) that its marks were entitled to protection, and (2) that the defendant used marks that were either identical with the plaintiff’s marks, or so similar that they were likely to confuse consumers. The “likelihood of confusion occurs when a later user uses a trade-name in a manner which is likely to cause confusion among ordinarily prudent purchasers or prospective purchasers as to the source of the product.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). In business litigation, the issue of whether a likelihood of confusion exists is typically a question of fact. 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.

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;

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).

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.”

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).

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).

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).