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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.”

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.

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