West Palm Beach Trademark Litigation Lawyer
At Perkins Law, Brand Protection starts with taking proactive steps to establish and secure your intellectual property rights through means such as trademark registration. Long after registration, though, continual use, monitoring and enforcement of your trademark are crucial to maintaining the value of your brand. Sometimes, actively enforcing your trademark rights includes taking the matter to court. The West Palm Beach trademark litigation lawyers at Perkins Law is an experienced litigator prepared to try your case in Florida state and federal courts. From sending cease and desist letters to filing suit, we’ll work to resolve your trademark litigation matter efficiently and effectively while vigorously defending and protecting your valuable rights. Call Perkins Law for help with trademark disputes in West Palm Beach, including claims involving infringement or dilution of a trademark.
Trademark Infringement in West Palm Beach
Florida statutes section 495.131 defines infringement as using another’s registered mark without their consent in a way that is likely to cause confusion or mistake or deceive. Such an infringer is liable for the full range of remedies outlined in section 495.141. These remedies include:
- Sue for an injunction to restrain or stop the infringing use
- Recover all profits the infringer derived from the infringement
- Recover compensation for any damages suffered by the trademark holder because of the infringement
- Order the destruction of all counterfeits or imitations under the infringer’s control
When recovering the infringer’s profits derived from the infringement, the plaintiff need only prove the defendant’s sales as the basis for determining profits. The burden lies on the defendant to prove any elements of cost or deductions which could factor into the calculation of profits. The court in its discretion can modify a recovery if the judge believes it is inadequate on the one hand or unjust on the other.
When suing to recover monetary damages the trademark holder suffered, the plaintiff has to prove actual damages (business losses). The court can award up to three times the amount of actual damages suffered.
Monetary awards are meant as compensation and not a penalty. Depending on the circumstances, the plaintiff might be required to prove the defendant intended to confuse or deceive in order to recover profits or damages.
The court can order the losing party in trademark infringement litigation to pay the attorney’s fees of the prevailing party.
Trademark Dilution
In Florida, the owner of a mark that is famous in the state is entitled to an injunction and relief if another’s mark or trade name begins after the first mark is famous and is likely to cause dilution of the distinctive quality of the famous mark. Florida statutes section 495.151 describes eight factors the court can look at to decide whether a mark is distinctive and famous. However, the court is not limited to considering these factors only. The eight factors are:
- The degree of inherent or acquired distinctiveness of the mark in Florida
- 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 the 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 Florida 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 Florida state registration or a federal registration under the Lanham Act or prior federal trademark laws
A plaintiff who proves trademark dilution is entitled to an injunction to stop and prohibit the diluting use. If the plaintiff can prove that the defendant willfully intended to trade on the plaintiff’s reputation or cause dilution of the famous mark, then the plaintiff can recover the defendant’s profits or the plaintiff’s damages from the dilution as well. It is within the judge’s discretion whether to award monetary relief.
The following exceptions in the law could keep the defendant from being sued for trademark dilution:
- Fair use of a famous mark in comparative advertising or promotion to identify competing goods or services
- Noncommercial use
- Use in news reporting or news commentary
Your Source for Trademark Litigation Advice and Representation in West Palm Beach
At Perkins Law, you’ll find a Florida Supreme Court Certified Circuit Civil Mediator and an experienced litigator ready to take on your case, put a stop to any trademark infringement or dilution, and recover a full and fair monetary award on your behalf. For help with trademark litigation in West Palm Beach, call Perkins Law at 561-467-4001 or contact us online to schedule a consultation with an experienced and dedicated Florida brand protection attorney.
