MIAMI BUSINESS LITIGATION: DESCRIPTIVE TRADEMARKS REQUIRE A SECONDARY MEANING IF THEY ARE NOT INHERENTLY DISTINCT

Trademark infringement claims are common in business litigation. If a trademark application is still pending, or where a mark was never registered at all, then it is not presume that a given mark qualifies for trademark protection under Florida or federal law. Therefore, to establish a claim of trademark infringement, a party “must show that (1) it owns a valid, protectable trademark and (2) there is a likelihood of confusion caused by [another party’s] use of its mark.” Dieter v. B & H Indus. of Southwest Florida, 880 F.2d 332 (11th Cir.1989). An unregistered trademark must always be distinct to qualify. The more descriptive the mark, the greater the likelihood that a Florida court will consider it as a distinct trademark. Peter Mavrick is a Miami business litigation attorney, and represents clients in business litigation in Fort Lauderdale, 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 law, and other legal disputes in federal and state courts and in arbitration.

“A mark is ‘descriptive’ if it is descriptive of: the intended purpose, function or use of the goods, the size of the goods, the class of users of the goods, a desirable characteristic of the goods, or the end effect upon the user.” Great S. Bank v. First S. Bank, 625 So. 2d 463 (Fla. 1993). “Descriptive marks may be simply descriptive, laudatorily descriptive or geographically descriptive.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). If a “descriptive mark is inherently distinctive, it will be afforded legal protection without further proof. If a descriptive mark is not inherently distinctive, it will only be protected if it has become distinctive.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). “This acquisition of distinctiveness is referred to as ‘secondary meaning.’” Bank of Tex. v. Commerce Sw. Inc., 741 F.2d 785 (5th Cir. 1984).

Descriptive marks that are not inherently distinctive require proof of a secondary meaning. “Secondary meaning is the connection in the consumer’s mind between the mark and the provider of the service.” Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir. 1991). The factors to consider in determining whether a name or mark has “acquired secondary meaning are: (1) the length and manner of the mark’s use; (2) the nature and extent of advertising and promotion for the plaintiff’s business; (3) the efforts made by the plaintiff to promote a conscious connection in the public’s mind between the mark and the plaintiff’s business; and (4) the extent to which the public actually identifies the name with the plaintiff’s service.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011).

Courts heavily weigh the alleged “distinctiveness” of a mark when deciding whether it is a protectable trademark. “The more distinctive the mark, the stronger it is.” Anderson v. Upper Keys Bus. Group, Inc., 61 So. 3d 1162 (Fla. 3d DCA 2011). “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties.” John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983).

Under Florida law, the most distinctive marks are fanciful, arbitrary, and suggestive marks. These types of marks are inherently distinctive, and therefore do not require proof of a secondary meaning. On contrary, descriptive marks are not always inherently distinctive. This means that a party will be required to prove a secondary meaning in various circumstances to establish a mark’s distinctiveness and validity. Courts see secondary meaning “as a means by which otherwise unprotectable marks may obtain protection.” Univ. of Ga. Athletic Ass’n. v. Laite, 756 F.2d 1535 (11th Cir. 1985). Indeed, “a plaintiff must show that the primary significance of the term in the mind of the consuming public is not the product but the producer.” Gulf Coast Commercial Corp. v. Gordon River Hotel Associates, 2006 WL 1382072 (M.D. Fla. May 18, 2006). This is not always an easy burden to satisfy. “Where the mark in a trademark suit is descriptive or geographically descriptive, “[a] high degree of proof is necessary to establish secondary meaning for a descriptive term.” Gulf Coast Commercial Corp. v. Gordon River Hotel Associates, 2006 WL 1382072 (M.D. Fla. May 18, 2006).

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.