Florida Patent Lawyer Blog

Under the Federal Trademark Dilution Act, a famous trademark is one that has established a strong connection, in the minds of the consumers, between a specific good or service and the source of that good or service. For example, the Coca Cola brand has been determined to be a strong and famous mark. And with a valuation of over $67 billion, the Coca Cola brand is one of the most valuable and long lasting trademarks in the U.S.

Have you ever wondered what the original Coca Cola trademark registration looks like? Well, I looked it up at the U.S. Patent and Trademark Office and it's over one hundred years old.

Click here to see the first Coca Cola registration. There are a couple of interesting things to note about this trademark registration dating back to 1893. First, it is classified under "nutrient or tonic beverages." Clearly, people had a different idea of what constituted a nutritious food back then. Second, you can see that the stylized words are slightly different from the way they are used today on soda cans. Lastly, you can see the signatures of the original filers on the registration - a practice you don't see anymore at the Trademark Office.

As a trademark owner, we can only aspire to have a trademark with a value anywhere close to the value of Coca Cola's trademark. But it is telling that even in 1893, the owners of the Coca Cola Company knew the importance of registering their mark. Thus, my recommendation to any brand owner is to give serious thought to registering their trademark with the U.S. Patent and Trademark Office.

Continue reading "The Famous Coca Cola Trademark" »

What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow.

You are well aware that last year's Bose decision - In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) - has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: "in order to prove fraud, [the charging party] must show that [1] a statement was false, [2] the falsity was intentional, and that [3] the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven [4] to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch "Polmos" SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).

In light of the above, it is no surprise that since the Bose decision, there is not one reported District Court or Federal Circuit case regarding fraud on the Trademark Office (as of early Dec. 2010). Further, since Bose, there have been 43 cases involving fraud at the TTAB (as of early Dec. 2010), and of those 43, none have resulted in a finding of fraud. This illustrates how difficult it has become post-Bose to succeed in cancelling a registration based on fraud. As a result, a finding of fraud in any District Court or TTAB case could be negative legal history for Bose, would almost certainly be a reported decision and would surely be written about and scrutinized by the legal journals. But don't hold your breath, I suspect it will be a very long time before we see any forum find fraud after Bose.

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I'm often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an "exceptional case." See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys' fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case "exceptional").

How to determine attorney's fees is another matter altogether. The Court normally applies the "lodestar" approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party's attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that "a party should be entitled to retain the most competent counsel available" because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).

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