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Federal law prohibits trademark infringement, which typically is enforced via the Lanham Act.  The Lanham Act, at 15 U.S.C. section 1127, defines a trademark as “any word, name, symbol, or device, or any combination thereof,” which is used by a person to “identify and distinguish his or her goods…from those manufactured by others.”  As the United States Court of Appeals for the Eleventh Circuit stated in Univ. of Florida v. KPB, Inc., 89 F.3d 773 (11th Cir. 1996),”Section 43(a) of the Lanham Act creates a federal cause of action for unfair competition” in interstate commerce, and “forbids unfair trade practices involving infringement of…trademarks, even in the absence of trademark registration.”  The key to liability under the Lanham Act is not simply whether there is unauthorized use of a protected trademark, but whether such use is likely to cause consumer confusion.  An important decision from the United States Court of Appeals for the Second Circuit, in B&L Sales Assocs. v. H. Daroff & Sons, Inc., 421 F.2d 352 (2d Cir. 1970), explained that “the federal remedy against trademark infringement is not plenary, and is only available when the plaintiff can show a likelihood of confusion, mistake or deception arising in the market as a result of defendant’s use of the mark registered to plaintiff.”  Peter Mavrick a Miami business litigation attorney, and represents clients in Fort Lauderdale, 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 litigation, and other legal disputes in federal and state courts and in arbitration.

One type of trademark infringement claim available under the Lanham Act is for “false designation of origin,” which prohibits what courts refer to as “passing off” or “palming off” of goods or services.  The United States Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), described a false designation of origin claim as occurring “when a producer misrepresents his own goods or services as someone else’s.”  To establish a prima facie case under § 1125(a) of the Lanham Act, a plaintiff must show (1) that the plaintiff had enforceable trademark rights in the mark or name, and (2) that the defendant  made unauthorized use of it such that consumers were likely to confuse the two.  Precedent from the Eleventh Circuit Court of Appeals, which governs federal courts in Florida, considers seven factors in assessing whether “likelihood of confusion” exists: (1) the type of mark (in short, whether the “relationship between the name and the service or good it describes” is such that the chosen name qualifies as generic, descriptive, suggestive, or arbitrary); (2) the similarity of the marks (based on “the overall impressions that the marks create, including the sound, appearance and manner in which they are used”); (3) the similarity of the goods (“whether the products are the kind that the public attributes to a single source”); (4) the similarity of the parties’ retail outlets, trade channels, and customers (“consider[ing] where, how, and to whom the parties’ products are sold”); (5) the similarity of advertising media (examining “each party’s method of advertising” to determine “whether there is likely to be significant enough overlap” in the respective target audiences such “that a possibility of confusion could result”); (6) the defendant’s intent (determining whether the defendant had a “conscious intent to capitalize on [the plaintiff’s] business reputation,” was “intentionally blind,” or otherwise manifested “improper intent”); and (7) actual confusion (that is, whether there is evidence that consumers were actually confused).  Frehling Enters., Inc. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999).

Business litigation concerning trademark infringement generally centers on whether there is a likelihood of consumer confusion, requiring courts to balance the factors set forth in the Frehling decision.  Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833 (11th Cir. 1983), stated in pertinent part: “We note that the district court should not determine whether a likelihood of confusion exists by merely computing whether a majority of the subsidiary facts indicates that such a likelihood exists.  Rather, the district court must evaluate the weight to be accorded the individual subsidiary facts and then make its ultimate fact decision.”  The most important factors in this analysis are the type of mark and the evidence of actual confusion.  Hi-Tech Pharms., Inc. v. Herbal Health Prods., Inc., 132 Fed. Appx. 348 (11th Cir. 2005) (stating that “[t]he type of mark and evidence of actual confusion are the most weighty of considerations”).

Peter Mavrick is a Miami business litigation lawyer, and represents clients in Fort Lauderdale, 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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