Florida Patent Lawyer Blog

Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages.

Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of punitive damages is not to compensate the plaintiff. The plaintiff in a trademark infringement case, however, will in fact receive the punitive damage award. Often, punitive damages are awarded where compensatory damages are deemed an inadequate remedy. The public policy behind punitive damages is that the court may impose them to prevent under-compensation of plaintiffs, to allow redress for undetectable torts.

HAPPY THANKSGIVING!!

Consequently, a Plaintiff in a trademark infringement suit (federal or Florida state) may elect damages under 15 U.S.C. § 1117 and Florida common law, wherein Plaintiff's financial information is irrelevant. Therefore, the financial data of the Plaintiff may not be discoverable by the Defendant in a trademark infringement suit and such attempts by the Defendant should be resisted in compliance with the Federal Rules of Civil Procedure. This is especially concerning in cases where the financial information being sought can be used by the Defendant to gain a competitive edge over the Plaintiff.

Does the type of advertising employed by a Defendant in a trademark infringement case matter? Yes it does. In fact, it is one of several key factors that are central to a trademark infringement case. As a Miami Trademark Attorney currently representing litigants in multiple trademark infringement cases in the Southern District of Florida, advertising and its relation to the trademark infringement analysis are subjects that have come up more than once in a dispute.

It is standard in a trademark infringement case to discover information about advertising employed by the Defendant, since similarity in advertising media is one of the seven factors used in assessing whether likelihood of consumer confusion - the touchstone of trademark infringement - has occurred. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.1997).In determining the likelihood of confusion between two marks, the 11th Circuit requires a district court to analyze the following seven factors:
(1) type of mark,
(2) similarity of mark,
(3) similarity of the products the marks represent,
(4) similarity of the parties' retail outlets and customers,
(5) similarity of advertising media used,
(6) defendant's intent and
(7) actual confusion.

As such, the type of advertising (element 5 in the seven factor test above) employed by the infringing party is probative of whether there was similarity between the advertising used by the infringer, as compared to that of the Plaintiff. Frehling Enterprises v. Int'l Group Select, 192 F.3d 1330, 1339 (11th Cir., 1999). Consequently, it is important that all information pertaining to the advertising used by the Defendant in a trademark infringement case is requested and produced during the discovery period of a lawsuit, since similarity in advertising media is crucial to the trademark infringement inquiry

How do you reverse a Patent Examiner's 35 U.S.C. 103 rejection of your design patent application based on obviousness? That was the issue in the Ex parte Kellerman (BPAI 2009-009310) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Miami Patent Attorney with a sizable docket of design patent cases, this case taught an important lesson on the anatomy of an obviousness rejection in a design patent case.

This teaches us two things with regard to a 35 U.S.C. 103 obviousness rejections in a design case: 1) the shape of orifice can be a significant distinction that affects an obviousness determination and 2) modifying a prior art reference to meet the ornamental characteristic of a claimed design must be obvious to one of ordinary skill in the art. Thus, when appealing an Examiner's obviousness rejection in a design case, it is important to discuss the significance of any difference in shape - especially if it pertains to the shape of an orifice. Second, it is important to contest the Examiner's assertion that modifying the prior art to meet the ornamental characteristic of the claimed design is obvious. This can be done many ways, but one of my favorites is to use a 37 C.F.R. 1.132 Affidavit.