Famous trademarks are marks used in business that create an immediate connection in consumers’ minds with specific goods or services. For example, it is almost impossible not to associate the term Cola-Cola® with a dark-colored soft drink.
What does Florida law consider a famous trademark? Read on to find out.
Trademark Dilution vs. Famous Trademarks – Explaining the Concept
The dilution of a trademark occurs when a third party uses a mark that resembles a highly distinctive mark of another owner that will likely:
- Reduce the distinctiveness of the original mark, or
- Tarnish the image associated with the original mark
In essence, the use of the mark by a subsequent user adversely affects the uniqueness of the prior user’s mark, which results in a likelihood of injury due to the weakening of the mark.
When compared to standard trademarks, famous trademarks are more exposed to the risk of dilution. The term “famous” refers to a high degree of distinctiveness beyond that needed for a standard trademark, which makes that particular trademark stronger, more prominent, and renowned.
Florida Statutes §495.151 (1) provides that “the owner of a mark that is famous in this state shall be entitled (…) to an injunction and to obtain such other relief against another person’s commercial use of a mark or trade name if such use begins after the mark has become famous and is likely to cause dilution of the distinctive quality of the famous mark.”
Another important element of famous trademark dilution lawsuits is the geographic area. Hence, the plaintiff must show that the defendant’s actions occurred in the same area where the plaintiff conducts their business activities.
How Do I Know If a Florida Trademark is Considered as Famous? – As Provided by Law
Florida law specifies that a famous trademark owner’s right to an injunction is “subject to the principles of equity and upon such terms as the court deems reasonable.”
Under Florida Statutes §495.151 (1), “in determining whether a mark is distinctive and famous, a court may consider factors, including, but not limited to:
- The degree of inherent or acquired distinctiveness of the mark in this state
- The duration and extent of use of the mark in connection with the goods and services with which the mark is used
- The duration and extent of advertising and publicity of the mark in this state
- The geographical extent of the trading area in which the mark is used
- The channels of trade for the goods or services with which the mark is used
- The degree of recognition of the mark in the trading areas and channels of trade in this state used by the mark’s owner and the person against whom the injunction is sought
- The nature and extent of use of the same or similar mark by third parties
- Whether the mark is the subject of a state registration in this state or a federal registration under the Federal Trademark Act of March 3, 1881, or the Federal Trademark Act of February 20, 1905, or a principal register registration under the Federal Trademark Act of July 5, 1946″