If you are a Florida business owner and someone infringes your trademark, you may be able to sue in federal or state court. To file a claim for trademark infringement in Florida state court, you must meet several requirements, including registering your trademark in the state and establishing the elements of a valid cause of action. Your right to bring an action in federal court is discussed here.
In Florida, trademark infringement generally consists of any unauthorized reproduction, counterfeit, copy or colorable imitation of a mark registered under the law that is used in connection with the sale, distribution or advertising of any goods or services that is likely to cause consumer confusion, mistake or deception as to the source of the goods. This definition is similar to the federal definition of trademark infringement under the Lanham Act.
While trademark registration in Florida is not required for a trademark to be considered valid, it does give the trademark owner the right to sue in Florida state court as well as provide prima facie evidence of the validity of the mark. The “Florida Registration and Protection of Trademarks Act” (FRPTA) sets forth the requirements for registration. Similar to the Lanham Act, the trademark owner must demonstrate it has a valid protectable mark and that such mark is used in commerce in order to qualify for registration. However, FRPTA varies in requiring that the mark be used in commerce in Florida.
Overall, Florida law is consistent with the Lanham Act with a few additional differences.
A trademark infringement claim requires that the owner prove:
(1) ownership of a valid, protectable trademark, registered in Florida; and
(2) a likelihood of confusion caused by the defendant’s commercial use in Florida of the trademark at issue.
Courts balance several factors to determine whether there is a likelihood of confusion between the parties’ trademarks. These factors include:
(1) the strength of the plaintiff’s mark;
(2) the similarity between the plaintiff’s mark and the allegedly infringing mark;
(3) the similarity between the products and services offered by the plaintiff and defendant;
(4) the similarity of the sales methods;
(5) the similarity of advertising methods;
(6) the defendant’s intent (e.g., did the defendant adopt the mark in bad faith to gain a competitive advantage)
(7) actual confusion.
Importantly, there are various defenses to trademark infringement, including fair use. The Fair Use Doctrine allows a party to use a trademark as a descriptive term, rather than for its association with a brand, goods or services. The defense also applies where the mark is used in an artistic or editorial parody or in the context of news reporting, commentary or criticism. Generally, these uses only incidentally or nominally involve the use of a trademark and consumer confusion is unlikely.
Generally, it is recommended that owners send a cease-and-desist letter to the alleged infringer before filing a lawsuit. The letter should explain the infringement and demand that the infringement stops within a designated period of time. The benefit of starting with a letter is that it may avoid costly litigation. The infringer may not have realized he was infringing or he was hoping the owner would not discover the infringement. Once notified that the owner will take legal action if the infringement does not stop, the infringer may cease and be willing to negotiate payment of damages.
If sending a letter does not resolve the matter, the owner can file a claim in state court. In that instance, the cease-and-desist letter can be used as evidence that the infringer was given a warning and an attempt was made to negotiate and settle the matter with the infringer.
If the claim is successful, Florida law allows the owner to obtain damages for its losses as well as receive the alleged infringer’s profits in connection with the infringement. In addition, the court may order the defendant to cease its infringement and seize and destroy any infringing goods. Treble damages and attorney’s fees may also be awarded to the plaintiff at the court’s discretion.
Trademark claims can be complex and the stakes are high with potential damage to your business and reputation. If you are the victim of trademark infringement or have been accused of infringing, it is important to have experienced and highly skilled representation. Contact Romano Law for assistance with your matter.