The Importance of Enforcing Your Trademarks and Service Marks

For Florida retailers, trademarks and service marks are essential business assets. These marks help identify a business and establish its brand and reputation within the community. Once you properly establish and register a mark, you have the legal right to prevent others from using similar marks that might lead to customer confusion or “dilution” of your brand.

Carlo Bay Enterprises, Inc. v. Two Amigo Restaurant, Inc.

Here are two recent examples of how Florida businesses enforced their marks in court. In the first case, a Tampa nightclub sued a competing nightclub. The plaintiff owned and used the service mark “Club Prana.” The defendant used the name “Prana Restaurant & Lounge.” The defendant’s club operated in Sarasota, less than an hour away from the plaintiff’s business.

Club Prana sent Prana Restaurant & Lounge a cease-and-desist letter informing the latter of the former’s service marks. When there was no response, Club Prana filed a lawsuit in federal court. The defendant never appeared to contest the case. U.S. District Judge Virginia M. Hernandez Covington subsequently entered a default judgment for the plaintiff.

As Judge Covington explained, the defendant’s failure to appear did not, in and of itself, require default judgment in favor of the plaintiff. Club Prana still had to prove (1) it held a valid mark misappropriated by the defendant and (2) the defendant’s “unauthorized use” of the mark “was likely to cause confusion” among consumers.

Judge Covington was satisfied Club Prana made its case. The club had properly registered its service mark with the U.S. Patent and Trademark Office and the Florida Department of State. This creates a legal presumption in favor of Club Prana’s right to the mark. Club Prana also showed there was likely dilution of the mark, given both it and the defendant “cater to the same clientele, which could lead consumers to believe that Defendants’ establishment is related or affiliated to Carlo Bay’s business.” Accordingly, Judge Covington issued an injunction against the defendant, preventing it from using the “Prana” mark in the future, and awarding $30,000 in damages to the plaintiff., LLC v. Evertap LLC

In the second case, the plaintiff was an educational software and website developer that markets under the registered mark of “COOLMATH.” Among COOLMATH’s products are math games targeted to children online. Another company later marketed similar online products under the name “Cool Math Games for Fun.”

Like the Club Prana case, COOLMATH responded first by sending a cease-and-desist letter then filing a federal lawsuit. Indeed, this case was also heard by Judge Covington and the defendant never appeared to contest the charges. And like the case above, Judge Covington found COOLMATH sufficiently proved it was the victim of trademark infringement under federal and state law. Judge Covington issued a judgment against the defendant and awarded the plaintiff $15,000 in damages.

One distinguishing factor in this case is COOLMATH also sought relief under the Anticybersquatting Consumer Protection Act, a federal law that protects the use of registered marks in web domains and Internet searches. As part of the relief awarded the plaintiff, Judge Covington said the defendant could not use “any domain name or metatag that includes in whole or in part the term ‘COOLMATH’ or any formative thereof in connection with a website that advertises, promotes, markets, displays, sells or offers for sale or otherwise refers to online math games, or any related goods or services.”

Protecting Your Reputation

These cases illustrate the importance of not only registering, but enforcing trademarks and service marks. As a Florida retailer, you have the right to protect any investment in your business’ name and reputation. If you need advice from an experienced Florida business attorney on how best to protect your intellectual property, contact Naples attorney John S. Sarrett today.

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