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A trade mark is any word, name, symbol, or device, that is used by a person to identify and distinguish his or her goods from a competitor’s goods. 15 U.S.C.A. § 1127. Registering a trademark with the United States Patent and Trademark Office constitutes prima facie evidence that the trademark is valid and provides constructive notice to all others that the trademark is already owned by another. 15 U.S.C. § 1115. These benefits foreclose many defenses one may assert to defeat a trademark infringement lawsuit. 15 U.S.C. § 1072. However, an unregistered trademark is still valid and enforceable against infringers. Iancu v. Brunetti, 588 U.S. 388 (2019) (“The owner of an unregistered mark may still use it in commerce and enforce it against infringers.”). Peter Mavrick is 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.

Federal law provides the owner of an unregistered trademark with a cause of action to sue for infringement of that mark. A person shall be liable for infringement of an unregistered trademark if he or she:

“uses… any word, term, name, symbol, or device [in connection with any goods or services, or any container for goods]… which— (A) is likely to cause confusion, or… mistake, or to deceive… as to the origin… of his or her goods, services, or commercial activities by another person, or (B) …misrepresents the nature, characteristics, qualities, or geographic origin of his or her goods, services, or commercial activities.

15 U.S.C.A. § 1125.Therefore, the plaintiff must show it has enforceable rights in the mark and that the defendant made unauthorized use of the mark that likely caused consumer confusion in the marketplace. Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F. 3d 641 (11th Cir. 2007). Prior use of an unregistered trademark is one main focal point needed to assess whether misappropriation occurred. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F. 3d 1188 (11th Cir. 2001) (Unregistered trademark rights are “appropriated only through actual prior use in commerce.”). Courts construe evidence demonstrating the plaintiff adopted the mark and the public in a particular relevant market segment identifies the mark with the plaintiff. See New Eng. Duplicating Co. v. Mendes, 190 F.2d 415 (1st Cir. 1951). Prior use might be satisfied if distribution is widespread because the mark is accessible to anyone with internet access, members of a market segment actually associate the mark with the plaintiff’s product, the mark identifies the product’s source, or other potential mark users knew the mark was used in connection with the product in question. Planetary Motion, Inc., 261 F. 3d 1188.

Proving prior use can be difficult. An example of that is Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313 (11th Cir. 2011), In Jurado, the plaintiff claimed it owned the unregistered trademark, Expose, a 1980’s music band name. Id. The plaintiff sued an American girl dance band performing under the same name. Id. The plaintiff presented testimonial evidence from a witness who was one of the founding Expose members. Id. This witness testified that Expose produced a song played on radio stations, played in dance clubs, and performed live. Id. Although the court credited the witness’ testimony, the court ultimately rejected the plaintiff’s prior use argument because the witness was inconsistent on several key issues. Id. Leigh v. Warner Bros., Inc., 212 F.3d 1210 (11th Cir. 2000) is another useful example. In Leigh, the court rejected the plaintiff’s prior use claim relating to an unregistered trademark photograph because the plaintiff did not provide sufficient detail demonstrating actual use in the marketplace. While the plaintiff supplied an affidavit from himself claiming the photograph was used to promote his work since 1994 and referenced an art gallery where the photograph was publicly displayed, the affidavit lacked the detail needed to satisfy the plaintiff’s burden of proof on the issue. The challenges described in these two examples demonstrate the benefits from registering a trade mark generally outweigh disadvantages associated therewith because registering a mark can avoid the need to prove prior use.

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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