Pollard PLLC has extensive experience litigating false advertising claims under a variety of theories, including the false advertising provisions of the federal Lanham (Trademark) act and state defamation laws. Representative matters include:
Aquila Inspection Services v. Weintraub Engineering (M.D. Fla. 2020): Prosecuting claims for false advertising in violation of the Lanham Act arising from allege false representations in the construction and inspection industry. Motion to dismiss denied.
Matonis v. Care Holdings Grp., (S.D. Fla. 2019): Prosecuting claims for false advertising in violation of the Lanham Act and defamation claims on behalf of an independent contractor against her former company in the healthcare management consulting industry. Motion to dismiss denied. See 2019 WL 3386378.
Taslidzic v. Luther, (S.D. Fla. 2018): Prosecuting claims for false advertising in violation of the Lanham Act and defamation claims against industry rival in the industrial coatings business. Motion to dismiss denied. See 2018 WL 3134419.
ESP Systems v. Nightingale Nurses (S.D.Fla. 2016): Prosecuting Lanham Act claims for false advertising on behalf of medical staffing company against industry rival. Motion to dismiss denied.
Racing Sports Concept, LLC v. Dickinson (S.D. Fla. 2013): Prosecuting Lanham Act claims for trademark infringement and false advertising by manufacturer of after-market car parts and accessories against former employee and industry rival.
The Lanham Act
The Lanham Act is a federal statute codified at 15 U.S.C. § 1051. It also is referred to as the Trademark Act. But the Lanham Act contains a number of different provisions and does much more than simply protect registered trademarks. The Lanham Act prohibits trademark infringement, trademark dilution, false advertising and cybersquatting.
Trademark Infringement – 15 U.S.C. 1114
The Lanham Act prohibits trademark infringement. Many people assume that a mark cannot be protected unless it is registered. This is false. Common law trademark rights can exist and arise from the continuous use of a specific mark in commerce. That said, formally registering a trademark with the United States Patent & Trademark Office (“PTO”) is preferable, as it affords the registrant a number of benefits.
To establish a Lanham Act violation for trademark infringement, the plaintiff must demonstrate the following: (1) it has a legally protectable trademark (2) it owns the mark (3) the defendant’s use of the mark in commerce causes a likelihood of consumer confusion.
The terms “use” and “in commerce” are given a broad construction. As a result, the real issue in most trademark cases is whether or not the allegedly infringing mark creates a likelihood of consumer confusion. In cases where the trademark owner and alleged infringer offer competing goods and services, the question is not a difficult one: If the two marks are sufficiently similar such that one could expect consumer confusion, it is easy to find infringement.
If the owner of the mark and the alleged infringer do not compete directly in the same market, then the analysis becomes much more complicated. In evaluating the likelihood of confusion, courts apply a list of numerous factors. It is important to note that there is no universally accepted list of factors. Over the years, different Circuits have developed different multifactor tests. There is a great deal of overlap, but it does vary by Circuit. The United States District Courts for the Southern, Middle and Northern Districts of Florida are part of the Eleventh Circuit. The Eleventh Circuit Court of Appeals evaluates the following seven factors:
1) strength of the mark alleged to have been infringed;
2) similarity of the infringed and infringing marks;
3) similarity between the goods and services offered under the two marks;
4) similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base;
5) similarity of advertising methods;
6) intent of the alleged infringer to misappropriate the proprietor’s good will; and
7) the existence and extent of actual confusion in the consuming public.
Remedies for Trademark Infringement
Under the Lanham Act, a party may seek both preliminary and permanent injunctive relief. With respect to damages, Lanham Act plaintiffs have can advance a number of different damages theories. For instance, Lanham Act plaintiffs can recover damages in the form of:
- Their own lost profits that they can prove with reasonable certainty.
- Defendant’s profits attributable to wrongful use of the mark
- Statutory damages for specific violations (e.g. counterfeiting or cybersquatting)
- Treble or punitive damages for intentional or willful violations
- Attorneys’ fees and costs
False Advertising Under the Lanham Act
In addition to prohibiting various forms of trademark and trade dress infringement, the Lanham Act also contains provisions that broadly prohibit false and deceptive advertising. In recent years, the Supreme Court has clarified that standing under the Lanham Act is incredibly broad. A plaintiff suing for false advertising under 15 U.S.C. § 1125(a) must (1) allege an injury to a commercial interest in reputation or sales; and (2) show that such injury was proximately caused by defendant’s misrepresentations. Such a broad test confers Lanham Act standing on a variety of market participants and for a variety of claims. A competitor can pursue claims against an industry rival who makes misrepresentations of material facts about either the competitor’s products or its own. As with claims for trademark infringement, false advertising claims under the Lanham Act also allow for a variety of remedies including actual damages, disgorgement of profits, corrective advertising and attorneys fees.