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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).

The first factor tests the strength of the mark.  The court evaluates whether the trademark is categorized as generic, descriptive, suggestive, or arbitrary.  A generic trademark is not protectable while an arbitrary mark is the strongest trademark.  A previous article explained in greater detail the distinctions between these categories.  The investment into and use of a mark can improve the strength of the mark.  John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (explaining that a mark may, “by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used”).

The factor of “similarity” “is determined by considering the overall impression created by the mark[s] as a whole rather than simply comparing individual features of the marks.  This consideration includes a comparison of the appearance, sound and meaning of the marks, as well as the manner in which the marks are used.” John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983).  “[T]he question is not whether there is a distinguishing characteristic, but whether the goods are so related that a consumer would believe that a single producer made both.”  PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159 (11th Cir. 2019).  The best evidence of a mark being similar is to show that customers are actually confused between the two marks.  Frehling Enterprises, Inc. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) (“It is undisputed that evidence of actual confusion is the best evidence of a likelihood of confusion”).  For example, a company may show evidence that customers mistakenly call it concerning issues with the company’s products that has a similar mark.

In recent business litigation addressing these issues, PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159 (11th Cir. 2019), evaluated whether the defendant had infringed on the plaintiff’s trademark.  Both companies sold children’s play equipment and the marks both had gorillas in them. Both marks were also registered with the USPTO.  The trial court in Playnation found that the defendant’s use of its trademark was a violation of the plaintiff’s trademark rights.  The Playnation defendant appealed, and asked the court to consider the fact that the infringing mark was also registered with the USPTO.

Playnation disagreed, holding that the USPTO’s determination that mark was distinct enough to warrant registration should not necessarily influence a court that is evaluating that same question in a subsequent proceeding.  Playnation reasoned that the plaintiff had not been party to the prior USPTO registration proceeding and was not precluded from showing to the court that there was a likelihood of confusion between the marks.  Playnation did not explicitly hold that a trial court could not consider the USPTO’s prior finding, it merely held that it was not error for the trial court to not consider it.

A holder of a trademark may nevertheless violate the trademark rights of another party with a higher priority can show that there is a likelihood of confusion between the two marks.  Peter Mavrick is a Miami-Dade business litigation attorney who also practices business litigation in Fort Lauderdale and Palm Beach.  This article does not serve as a substitute for legal advice tailored to a particular situation.

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