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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

(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.

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