Trademark Infringement Litigation

Mavrick Law Firm has successfully defended clients in litigation involving trademark infringement, counterfeiting, trademark dilution and unfair competition. A company’s trademarks are critical to their business interests. Companies will typically receive a letter from an attorney demanding that they immediately cease and desist use of a trademark, provide written notice of compliance with the demand, as well as, destruction or surrender the offending goods, and demand for substantial monetary damages and attorney’s fees be paid.

How Unfair Competition and Deceptive Practices Cases are Handled

Mavrick Law Firm begins the representation by meeting with the client to ascertain the client’s objectives and examination of the disputed trademarks. Mavrick Law Firm reviews the critical case documents in a timely manner. Some trademark disputes can be resolved by negotiation. Some disputes, however, require litigation to be resolved. We provide aggressive advocacy at the district court and appellate court levels to ensure our clients’ business interests and legal positions are fully protected.

The Federal Lanham Act

Under federal law, claims involving trademarks, are brought pursuant to the Lanham Act, 15 U.S.C. § 1051. The Lanham Act was enacted by President Harry Truman in 1946 and is the United States’ primary federal trademark statute. The Lanham Act created a national trademark registration system. The Fort Lauderdale trademark litigation attorneys at the Mavrick Law Firm have significant experience with claims under the Lanham Act and are well versed with its requirements and the actions it prohibits. Some of the actions prohibited by the Lanham Act include, inter alia, trademark infringement and false or misleading advertising. The Mavrick Law Firm has obtained excellent results for its clients in federal court litigation involving the Lanham Act encompassed by the United States Court of Appeals for the Eleventh Circuit, which includes Florida, Georgia, and Alabama. The following is a brief overview of how the Eleventh Circuit Court of Appeals has interpreted the Lanham Act in trademark infringement and false advertising cases.

In Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010), the Eleventh Circuit analyzed trademark infringement under the Lanham Act. According to the Eleventh Circuit, a trademark is defined as any word, name, symbol, or device, or any combination thereof, used to identify and distinguish one’s goods from those manufactured or sold by others and to indicate the source of the goods. To establish a prima facie case of trademark infringement under the Lanham Act, a plaintiff must show (1) that it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two. To satisfy the first element of a claim for trademark infringement—proof of a valid trademark—a plaintiff need not have a registered mark. The Eleventh Circuit has recognized that the use of another’s unregistered, i.e., common law, trademark can constitute a violation of the Lanham Act where the alleged unregistered trademarks used by the plaintiff are so associated with its goods that the use of the same or similar marks by another company constitutes a false representation that its goods came from the same source.

Trademark Infringement

To state a case for trademark infringement, a Plaintiff must demonstrate: (1) that it had prior rights to the mark at issue; and (2) that the defendant had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two. The critical question in most actions under § 32(1) of the Lanham Act is whether there is a likelihood of confusion, mistake, or deception between the registered mark and the allegedly infringing mark. The factors considered in analyzing whether there is a likelihood of confusion include: (1) the type of trademark, for example, a chess piece logo on a t-shirt may be considered arbitrary and fanciful because there no relation between the mark and the type of product, (2) the similarity of design, (3) the similarity of the product, (4) the identity of retail outlets and purchasers, (5) the similarity of advertising media used, (6) defendant’s intent, and (7) actual confusion. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983).

Trademark Dilution

Commercial use of a famous trademark to profit from its distinctiveness may cause a person or entity to be liable for trademark dilution. “To prevail on a federal dilution claim, the plaintiff must demonstrate that: (1) the plaintiff’s mark is famous; (2) the defendant used the plaintiff’s mark after the plaintiff’s mark became famous; (3) the defendant’s use was commercial and in commerce; and (4) the defendant’s use of the plaintiff’s mark has likely caused dilution.” Rain Bird Corp. v. Taylor, 665 F.Supp.2d 1258 (N.D.Fla. 2009). A mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. 15 U.S.C. § 1125(c)(2)(A). The non-exhaustive list of factors a court may consider in determining whether a mark is famous includes: (1) “The duration, extent, and geographic reach of advertising and publicity of the mark”; (2) “The amount, volume, and geographic extent of sales of goods or services offered under the mark”; (3) “The extent of actual recognition of the mark”; and (4) whether the mark is registered. 15 U.S.C. § 1125(c)(2)(A); Bentley Motors Ltd. Corp. v. McEntegart, 976 F. Supp. 2d 1297 (M.D. Fla. 2013).

Unfair Competition

Section 43(a) of the Lanham Act created a federal cause of action for any person injured by another’s use of a mark that “is likely to cause confusion, or to cause mistake, or to deceive” as to the origin of a product or service, otherwise known as unfair competition. 15 U.S.C. § 1125(a)(1)(A). In order to prevail on a federal claim of unfair competition under § 43(a), a trademark owner “must show (1) that it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.” Florida Int’l Univ. Bd. of Trustees v. Florida Nat’l Univ., Inc., 830 F.3d 1242 (11th Cir. 2016); Suntree Techs., Inc. v. Ecosense Int’l, Inc., 693 F.3d 1338 (11th Cir. 2012) While nearly identical to the likelihood-of-confusion standard discussed above for trademark infringement claims, § 43(a) of the Lanham Act is broader in that it covers false advertising or description whether or not it involves trademark infringement. Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161 (11th Cir. 1994).

Defenses to Trademark Infringement, Trademark Dilution, and Unfair Competition Claims

Defenses frequently raised in trademark infringement, trademark dilution and unfair competition lawsuits include fair use (descriptive and nominative), laches, unclean hands and trademark misuse, fraud in obtaining the trademark registration, and application of the First Amendment. Descriptive fair use occurs when there is use of a descriptive term that fairly describes a product or service. Examples of descriptive fair use include using the term “Sweet Tart” to describe a dried pomegranate product despite the existence of a candy company’s “SweeTarts” trademark for candy; or a man named Jack Daniel using the domain name jackdanielsbar.com for his bar despite the existence of a liquor company’s “Jack Daniels” trademark. Nominative fair use occurs when a trademark is used to refer to the actual product identified by a trademark. Some examples of nominative fair use include an internet website’s use of the trademark “Starbucks” to poll internet users about how they identify popular coffee chains, or when a news station displays the trademark “Super Bowl” in order to report on the sporting event; and a late night comedic talk show’s use of “Barbie” dolls in parody videos that criticize the values represented by the toy. Some other defenses include, laches, which is unreasonable delay by the trademark owner in filing its lawsuit. The delay can prejudice a defendant’s access to witnesses and documents. Unclean hands is also a defense, because equitable relief (injunctions) is the primary relief requested in infringement, unfair competition and dilution actions. Courts require trademark owners “to do equity to receive equity.” The trademark owner’s actions or inactions can, therefore, form an affirmative defense to lawsuits for infringement, dilution, and unfair competition. Intentional deceitfulness by the applicant for a trademark registration constitutes fraud in obtaining a registration. If a court finds that the trademark owner engaged in deceitful conduct, it likely will preclude the trademark owner from obtaining court relief. The application of the First Amendment may sometimes be considered by a court to balance against the rights of a trademark owner. Commercial speech, however, entails a lesser degree of protection, than non-commercial speech.

Other Causes of Action

False Advertising

In Hickson Corp. v. N. Crossarm Co., Inc., 357 F.3d 1256 (11th Cir. 2004), the Eleventh Circuit discussed the requirements for claims of false advertising under the Lanham Act and explained that a plaintiff must establish that (1) the advertisements of the opposing party were false or misleading; (2) the advertisements deceived, or had the capacity to deceive, consumers; (3) the deception had a material effect on purchasing decisions; (4) the misrepresented product or service affects interstate commerce; and (5) the movant has been—or is likely to be—injured as a result of the false advertising. As an initial matter, the plaintiff must show that the statements at issue were either (1) commercial claims that are literally false as a factual matter or (2) claims that may be literally true or ambiguous but which implicitly convey a false impression, are misleading in context, or likely to deceive consumers.

Trade Dress Infringement

The term “trade dress” refers to a product’s appearance when it is used to identify the creator of that product. Trade dress comprises of the total image of a product and may include features such as size, shape, color, texture, graphics, or particular sales techniques. AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). The party seeking trade dress protection bears the burden of proving that the features of the trade dress sought to be protected are not functional in nature. The functionality doctrine prevents trademark law from inhibiting legitimate competition by allowing businesses to compete through imitation of a useful product feature.

To state a trade dress infringement claim under the Lanham Act, a plaintiff must establish three elements: (1) consumer confusion among the competing trade dresses, (2) the features of the trade dress are primarily non-functional, and (3) the trade dress is inherently distinctive or has acquired secondary meaning. Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197 (11th Cir. 2004). In Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, Dippin’ Dots, Inc. (DDI) sold brightly-colored, small beads of ice cream called “dippin’ dots.” DDI’s dippin’ dots were created through a six-step process involving, among other things, dripping, freezing and storing an ice cream composition into beads. The district court analyzed the size, color and shape of dippin’ dots. The district court made the following findings: (1) the color was functional, because it indicates which flavor of the ice cream was in each piece, i.e., pink for strawberry, white for vanilla, and brown for chocolate; (2) the size of pieces was functional because it contributed to the product’s creamy taste, as compared to a larger piece; and the shape of dippin’ dots was functional because dripping the ice cream composition into the freezing chamber, creates a “bead” that produces the product’s free flowing nature. The appellate court affirmed the district court’s granting of summary judgment in favor of the defendant.

Cybersquatting Claims Under the Lanham Act

Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d) (the “Anticybersquatting Consumer Protection Act” or “ACPA”) establishes liability for a person who “has bad faith intent to profit” from the trademark that another person owns, and “registers, traffics in, or uses a domain name that” is “identical or confusingly similar” to a mark that is “distinctive at the time of registration of the domain name.” 15 U.S.C. § 1125(d)(1)(A). A defendant violates the ACPA if it registers, trafficks in, or uses a domain name, in bad faith, that is identical or confusingly similar to a distinctive mark. The statute provides a list of nine factors that courts may consider when determining whether the defendant had a bad faith intent to profit from the mark, including but not limited to: (1) the defendant’s trademark or other intellectual property rights in the domain name, (2) the extent to which the domain name consists of the legal name of the defendant or a name that is otherwise commonly used to identify the defendant, (3) the defendant’s prior use, if any, of the domain name in connection with commerce conducted in good faith, (4) the defendant’s non-commercial or fair use of the mark, conducted in good faith, in a site accessible under the domain name, (5) the defendant’s intent to divert consumers from the trademark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the trademark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site, (6) the defendant’s offer to transfer, sell, or otherwise assign the domain name to the trademark owner or to any third party for financial gain without having used, or having an intent to use, the domain name in a good faith offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct, (7) the defendant’s provision of material and misleading false contact information when applying for the registration of the domain name, the defendant’s intentional failure to maintain accurate contact information, or the defendant’s prior conduct indicating a pattern of such conduct, (8) the defendant’s registration or acquisition of multiple domain names which the defendant knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties, and (9) the extent to which the trademark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c). 15 U.S.C.A. § 1125(d)(1)(B); Casa Dimitri Corp. v. Invicta Watch Company of America, Inc., 270 F.Supp.3d 1340 (S.D. Fla. 2017).

If you or your business has been accused of a violation of the Lanham Act, or you simply would like more information about the Lanham Act or enforcement of trademarks, the Fort Lauderdale trademark litigation attorneys at the Mavrick Law Firm are available to assist. Peter Mavrick has successfully represented clients in trademark litigation and has substantial trial and arbitration experience, obtaining favorable jury trial, bench trial, and arbitration verdicts.