Pollard PLLC is a litigation boutique focused on competition law. The firm and its attorneys have extensive experience litigating a variety of unfair competition matters, including various trademark claims and other claims under the Lanham Act.
The firm prosecutes and defends against claims for Lanham Act violations, including trademark infringement, trade dress infringement, trademark dilution, false advertising, and cybersquatting.
Trademark Infringement—The Lanham Act
The Lanham Act, also referred to as the Trademark Act, creates a cause of action against any person that uses a reproduction, counterfeit, copy, or imitation of a trademark belonging to another in commerce if that use is likely to cause confusion or mistake. Further, the Act creates a cause of action against anyone that reproduces, counterfeits, copies, or imitates a trademark.
Most assume that a trademark’s protection arises from its registration with the United States Patent & Trademark Office (“PTO”); this is not the case. Although formal registration with the PTO is preferable, continuous use of a specific mark in commerce can give rise to protectable common law trademark rights.
To succeed on a claim for trademark infringement under the Lanham Act, a plaintiff must establish:
- The mark is valid and protectable;
- The plaintiff owns the mark; and
- The defendant’s use of the mark is in commerce and likely to create consumer confusion.
The crux of trademark litigation is often whether the infringer’s use is likely to cause consumer confusion. In the case of directly competing litigants, this is an easy case to make.
When the trademark’s owner and the infringer do not compete directly, however, the analysis is significantly more complex. Pollard PLLC solves complex problems.
Over the past century, courts have developed lists of factors to help evaluate the likelihood of consumer confusion. Although there is no list of factors that is nationally accepted and the factors vary by jurisdiction, there is significant consensus and consistency. In the Eleventh Circuit, the federal judicial circuit that presides over Florida, the following factors are considered:
- The mark’s strength;
- The infringing mark’s similarity;
- The similarity between the goods or services covered by the two marks
- The similarity of the parties’ sales methods (e.g., marketing tactics, sales outlets, customer bases);
- The similarity of the holder’s advertising methods;
- The alleged infringer’s intent, or lack thereof, to misappropriate or otherwise unfairly benefit from the holder’s goodwill; and
- The existence and extent of actual consumer confusion.
With our focus on unfair competition, Pollard PLLC is deeply entrenched in the field of intellectual property litigation. Continuously on the front line, the firm relies on its experience to provide our clients with the best representation possible. Both prosecuting and defending against claims for trademark infringement under the Lanham Act, Pollard PLLC works to ensure that the competitive marketplace is fair for our clients.
As the Lanham Act affords various remedies to the holder of an infringed trademark, Pollard PLLC takes advantage of its intellectual property experience to determine which types of relief best solve our clients’ problems.
Among the Lanham Act’s available remedies are both preliminary and permanent injunctive relief. Furthermore, the Lanham Act recognizes the following theories for calculating damages:
- The aggrieved trademark holder’s lost profits that are provable with reasonable certainty;
- The infringer’s profits attributable to the unfair use of the mark;
- The statutory damages for counterfeiting;
- The award of treble or punitive damages for intentional or willful violations;
- The award of attorneys’ fees and court costs.
Pollard PLLC resolves trademark disputes however is most beneficial for our clients, whether through trial, arbitration, mediation, or settlement. Our team of attorneys are zealous advocates in all arenas. We are experienced litigators, having found success at both the trial and appellate levels, and we are adept negotiators with numerous favorable resolutions through mediation and settlement discussions. The firm leverages its experience and comfort in these arenas to find the avenue to success that best suits our clients’ needs.
Pollard PLLC has litigated numerous complex Lanham Act claims, including:
ESP Systems, LLC v. Nightingale Nurses, LLC, Case No. 16-81263 (Southern District of Florida, 2017) (prosecuting Lanham Act claims for false advertising in the medical staffing industry)
Racing Sports Concepts, LLC v. Dickinson et al., Case No. 13-20428 (Southern District of Florida, 2013) (prosecuting Lanham Act claims for false advertising and trademark infringement in the aftermarket auto parts industry)
In the News, Inc. v. Controneo, Case No. 15-CA-009602 (Florida’s Thirteenth Judicial Circuit – Hillsborough County, 2016) (defending against Cybersquatting claims in litigation between rival media companies)