Find Lawyers in Orlando, Florida for Trademark Law
Practice Area Overview
A mark is deemed protectable if it is distinctive, meaning that it is capable of identifying the source of a particular good. In determining whether a mark is distinctive, trademark law uses four separate classifications based on the relationship between the mark and the associated product: (1) arbitrary or fanciful (marks such as KODAK® and APPLE® that bear no inherent relationship to their associated products); (2) suggestive (marks such as COPPERTONE® that evoke a characteristic of the associated products); (3) descriptive (marks such as HOLIDAY INN® that directly describe a characteristic or feature of the associated products); or (4) generic (terms that describe the general category of the associated products, e.g., “phone,” “keyboard,” etc.). The first two categories of marks are protectable without proof that they have acquired distinctiveness in the minds of consumers, while descriptive marks require evidence that the consuming public has come to associate the term with its specific source. Generic terms are never protectable as trademarks, as they are necessary for general identification of a particular product category.
Once a trademark owner has acquired protectable rights in a mark, it may enforce its rights by preventing the use and/or registration of all subsequent infringing marks. The standard for infringement in the United States is “likelihood of confusion,” which means that consumers viewing the respective marks on their associated products are likely to be confused as to the source of those products or as to the sponsorship or approval of such products. In other words, determining infringement is not as simple as merely comparing the marks to see if they are identical; rather, courts will employ a multifactor test. While the precise factors vary slightly by jurisdiction, courts generally consider the following elements: (1) the strength of the plaintiff’s mark; (2) the relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of care exercised by the typical purchaser; (7) the defendant’s intent; and (8) the likelihood of expansion of the product lines.
Protecting and enforcing trademarks is critical to the success of any company. Trademarks allow consumers to distinguish a company’s products and services from those of its competitors, and also serve as indicators of the quality of such products and services. Indeed, many companies’ trademark portfolios constitute the majority of the value of their businesses. Please consult with an experienced trademark lawyer to explore how to best to protect your company’s trademarks.
Lisa M. Martens, Principal
Elizabeth E. Brenckman, AssociateFish & Richardson
Corporate Law & Commercial Litigation Legal Guide 2023View Legal Guide
Shareholder Ava Doppelt is Board Certified by the Florida Bar in Intellectual Property Law. She manages trademark and copyright portfolios, and has substantial litigation experience in federal and state courts and administrative agencies, advising clients on trademark, publishing, entertainment, and licensing, franchising, and copyright matters. Ms. Doppelt speaks frequently on intellectual property, publishing and entertainment law. She has served as an expert witness. Ms. Doppelt was former...
Managing Shareholder Brian Gilchrist is Board Certified by The Florida Bar in the area of Intellectual Property Law. Certification is the highest level of evaluation by The Florida Bar for competency, experience professionalism and ethics in an area of law. He has substantial experience in all phases of intellectual property litigation, including patents, trademarks, copyrights, trade secrets, deceptive trade practices and restrictive covenants. Mr. Gilchrist has been attorney of record in ov...
Registered Patent Attorney, Shareholder Chris Regan Is a Registered Patent Attorney who practices in the area of patent prosecution, patent infringement studies, litigation, and client counseling. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment and cables, laser and optical devices, semiconductor devices, semiconductor processing, mechanical devices and medical equipment. Mr. Regan’s representative clients include: Crystal Pho...
Terry Sanks, a registered patent attorney, has developed a reputation in guiding clients with developing strategies to best utilize and protect their intellectual property. Terry’s diverse practice also includes developing and managing patent portfolios and trademark portfolios for Fortune 500 companies to regional companies to start-up companies. His practice is not limited to the Orlando area as he represents clients throughout Florida, Silicon Valley, Chicago, other high-tech innovat...
Registered Patent Attorney, Shareholder David Sigalow practices in the area of trademarks, copyrights and licensing. He has extensive experience in matters concerning publishing, computer hardware and software, consumer products, toys, games and virtually all other forms of consumer products. He is a speaker to trade groups and attorneys on intellectual property protection and licensing, including the annual Toy and Game Inventor’s Forum and the Food Service Consulting Industry.
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