Trademark and Trade Dress Infringement

What is trademark and trade dress infringement?  

Trademark and trade dress infringement are forms of intellectual property infringement that occur when one party uses a trademark or trade dress that is confusingly similar to another party’s trademark or trade dress. A trademark is a symbol, word, or phrase used to identify and distinguish the goods or services of one company from those of others. Trade dress is the overall visual appearance of a product or its packaging, including its shape, color, graphics, and overall design.  

Trademark and trade dress protections give the owner the exclusive right to use the trademark or trade dress in connection with goods or services. This exclusivity helps to ensure that consumers can trust that the quality of the goods or services associated with the trademark will remain consistent. Therefore, by protecting trademarks and trade dresses, the law encourages companies to invest in creating strong, recognizable brands, which benefits consumers by making it easier for them to identify and purchase the products and services they want. Both trademark and trade dress infringement occurs when a party uses a mark or dress that is likely to confuse consumers regarding the source of the goods or services. 

Need help with trademark or trade dress claims? Schedule your consultation today with a top business-litigation attorney.  

What legal issues typically arise related to trademark and trade dress infringement?  

The following disputes are among the most common to trademark and trade dress infringement: 

• Likelihood of confusion: One of the critical issues in an infringement case is whether the defendant’s use of a similar trademark or trade dress is likely to confuse consumers regarding the source of the goods or services. 

• Dilution: Another common issue in infringement cases is whether the defendant’s use of a similar trademark or trade dress dilutes the distinctive character of the original owner, weakening its ability to function as an identifier of a brand or product. 

What are relevant laws related to trademark and trade dress infringement in Florida? 

Federal, Florida, and the common law all inform the legal understanding of trademark and trade dress infringement claims.  Federally, the Lanham Act (also known as the Trademark Act of 1946) provides for the registration and protection of trademarks. It protects the owner of a registered trademark against the use of similar marks.  

Florida offers additional protection through the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”) which aims to protect consumers and businesses from deceptive and unfair trade practices like trademark infringement. Section 495.131 of Florida Statutes also creates civil liability for producing, copying, or imitating goods, services, or advertising.   

Finally, trademark and trade dress law is part of the common law doctrine of unfair competition. This doctrine encompasses a variety of practices that are considered to be unfair to consumers or other businesses and includes trademark infringement.  

What is required to prove trademark and trade dress infringement case in Florida? 

In Florida, the following elements must be satisfied to prove trademark and trade dress infringement:  

• The plaintiff must own a valid and enforceable trademark or trade dress; 
• The defendant must be using a similar mark or trade dress in connection with goods or services that are similar to those offered by the plaintiff; 
• The defendant’s use of the mark or trade dress must be likely to cause confusion, mistake, or deception among consumers as to the origin or sponsorship of the goods or services; and 
• The plaintiff must have suffered or be likely to suffer injury due to the defendant’s infringement. 

When a set of facts is appropriate to meet the requirements of trademark or trade dress infringement, there are many paths a claimant may take. We are value-based attorneys at Jimerson Birr, which means we look at each action with our clients from the point of view of costs and benefits while reducing liability. Then, based on our client’s objectives, we chart a path forward to seek appropriate remedies, such as:  

• Injunctive Relief 
• Damages 

To see what actions may be available for your unique situation, please contact our office to set up your initial consultation. 

What are common defenses to trademark and trade dress infringement in Florida? 

The primary defenses to trademark and trade dress infringement in Florida include:  

• Trademark misuse: If a plaintiff’s use of trademark results in unfair competitive practices, it may be an affirmative defense to infringement claims. 
• Fair use: The defendant is using the mark in a fair use manner. Fair use of a trademark generally requires showing that its use is (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. 
• First use: The defendant used the mark before the plaintiff’s first use. 
• Material misrepresentations: Misrepresentations using a trademark or trade dress can defeat the owner’s right against infringement. For example, the defendant may show that the owner used the trademark to deceive consumers as a defense against infringement claims. 
• Laches: In some cases, the plaintiff may have waited too long to bring the infringement claim. The plaintiff may not bring their claim because they have “slept on their rights.” 
• Acquiescence: The plaintiff has consented to the use of their mark by the defendant. Consent generally requires a showing that (1) the plaintiff actively represented it would not assert a right or claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.  
• Abandonment: The plaintiff has abandoned the trademark, and the work belongs to the public domain. 

To see what defenses may be available for your unique situation, please contact our office to set up your initial consultation. 

Have more questions about a trademark infringement-related situation?  

Crucially, this overview of trademark and trade dress infringement does not begin to cover all the laws implicated by this issue or the factors that may compel the application of such laws. Every case is unique, and the laws can produce different outcomes depending on the individual circumstances. 

Jimerson Birr attorneys guide our clients to help make informed decisions while ensuring their rights are respected and protected. Our lawyers are highly trained and experienced in the nuances of the law, so they can accurately interpret statutes and case law and holistically prepare individuals or companies for their legal endeavors. Through this intense personal investment and advocacy, our lawyers will help resolve the issue’s complicated legal problems efficiently and effectively. 

Having a Jimerson Birr attorney on your side means securing a team of seasoned, multi-dimensional, cross-functional legal professionals. Whether it is a transaction, an operational issue, a regulatory challenge, or a contested legal predicament that may require court intervention, we remain a tireless advocate every step of the way. Being a value-added law firm means putting the client at the forefront of everything we do. We use our experience to help our clients navigate even the most complex problems and come out the other side triumphant. 

If you want to understand your case, the merits of your claim or defense, potential monetary awards, or the amount of exposure you face, you should speak with a qualified Jimerson Birr lawyer. Our experienced team of attorneys is here to help. Call Jimerson Birr at (904) 389-0050 or use the contact form to set up a consultation.