Marketing is an essential component of promoting a Florida business. Owners often develop unique logos and associated phrases to help their service or product stand out. There are thousands of registered trademarks being used in the state, and it’s important to ensure that you are not inadvertently using another company’s protected mark. Therefore, you need to know: How do I avoid trademark infringement?
What is Trademark Infringement?
Under Florida law, trademark infringement occurs when a party, without the consent of the trademark registrant:
(1) Uses “any reproduction, counterfeit, copy, or colorable imitation of a mark registered” in Florida “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, to cause mistake, or to deceive;” or
(2) Reproduces, counterfeits, copies, or colorably “imitates a mark registered in Florida and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, to cause mistake, or to deceive.”
A Florida trademark registration is not required for a party to have a valid mark. However, when a party registers their mark with the state, they will have the right to pursue legal remedies in state court. Registering also provides evidence of the mark’s ownership and validity.
To prove another party committed Florida trademark infringement, the mark’s owner must prove that they had a valid, protectable Florida trademark; and that the infringing party adopted a mark or name that was the same or confusingly similar to its mark, such that Florida consumers were likely to confuse the two.
How is a Mark’s Distinctiveness Determined?
Florida courts examine numerous factors to decide whether a mark is distinctive or famous. These may include but are not limited to:
- The degree of inherent or acquired distinctiveness of the mark in this state.
- The duration and extent of use of the mark in connection with the goods and services with which the mark is used.
- The duration and extent of advertising and publicity of the mark in this state.
- The geographical extent of the trading area in which the mark is used.
- The channels of trade for the goods or services with which the mark is used.
- The degree of recognition of the mark in the trading areas and channels of trade in this state used by the mark’s owner and the person against whom the injunction is sought.
- The nature and extent of use of the same or similar mark by third parties.
- Whether the mark is the subject of a state registration in this state or a federal registration under the Federal Trademark Act of March 3, 1881, or the Federal Trademark Act of February 20, 1905, or a principal register registration under the Federal Trademark Act of July 5, 1946.
How is Confusion Established?
Courts will also examine how likely there would be confusion between the two trademarks but evaluating factors such as:
- How strong the allegedly infringed upon mark is,
- How similar the two marks may be to one another,
- If the parties have similar products or services
- Their sales and advertising methods,
- The allegedly infringing party’s intent, and
- If there was actual confusion.
Defenses to Trademark Infringement Claims
A party accused of trademark infringement may have a defense against the allegation. For instance, if a party uses the mark in an artistic or descriptive manner that is unlikely to cause consumer confusion, these may be valid defenses.
Trademark infringement can have serious repercussions, and you don’t want to risk making a mistake. If you are concerned about trademark infringement, your best course of action is to contact an experienced Florida business attorney to review your situation and determine your next steps.
Contact an Experienced Florida Business Lawyer
Attorney Richard Sierra at the Florida Small Business Center assists clients like you with commercial leasing, business, and litigation matters. As always, Our Goal Is to Help You Succeed™. For an appointment, you may call us at 1-866-842-5202 or use the contact form on our website. We represent clients throughout the State of Florida, including Coral Springs, Coconut Creek, Boca Raton, Delray Beach, Pompano Beach, Sunrise, Fort Lauderdale, Miami, West Palm Beach, Jupiter, Deerfield Beach, Stuart, Port St. Lucie, Orlando, Naples, Fort Myers, Sarasota, Tampa, and surrounding communities.