Background On Florida’s Trademark Dilution Statute – Section 495.151

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Many states have adopted trademark dilution statutes that serve as grounds for the initiation of a civil action in trademark law. One such state is the State of Florida, which uses Florida Statute Section 495.151 as its Dilution Act.

What Does Florida Statute Section 495.151 Concern?

The title of Chapter 495 of the Florida Statutes is, “Registration and Protection of Trademarks.” Within that Chapter is Section 495.151, simply titled, “Dilution.” This is separate from the more commonly known trademark-related action of infringement.

What Is Trademark Dilution?

In the State of Florida, trademark dilution occurs where a third party uses a trademark that resembles the highly distinctive trademark of another in a manner that is likely to cause a reduction in the distinctiveness of the other’s trademark or tarnishes the images associated with the other’s trademark.

Stated another way, trademark dilution occurs when the use of a trademark by a subsequent users lessens the uniqueness of the prior user’s trademark with the possibility that a strong trademark may become a weak trademark. Dilution can also be a likelihood of injury to the prior user’s business reputation.

What Is The Important Language Contained Within Florida Statute Section 495.151?

Section 495.151 has three main subsections. The first states that the owner of a trademark that is famous (more on that later) in the State of Florida may be entitled to an injunction and other relief against another person’s commercial use of a trademark or trade name if the other person’s use began after the trademark has become famous and is likely to cause dilution of the distinctive quality of the famous mark.

The State of Florida has set forth a number of factors to consider in determining whether the trademark has acquired distinctiveness and is famous. Those factors include, but are not limited to:

  1. The degree of inherent or acquired distinctiveness of the trademark in the State of Florida;
  2. The duration and extent of use of the trademark in connection with the goods and services with which the trademark is used;
  3. The duration and extent of advertising and publicity of the trademark in the State of Florida;
  4. The geographical extent of the trading area in which the trademark is used;
  5. The channels of trade for the goods or services with which the trademark is used;
  6. The degree of recognition of the trademark in the trading areas and channels of trade in the State of Florida used by the trademark’s owner and the person against whom the injunction is sought;
  7. The nature and extent of use of the same or similar trademark by third parties; and
  8. Whether the trademark is the subject of a State of Florida registration or a federal registration under the Federal Trademark Act.

The second subsection of Section 495.151 states that the owner of a famous trademark is only entitled to injunctive relief unless the third party willfully intended to trade on the owner’s reputation or cause dilution of the famous trademark. If willful intent is proven, and the trademark is registered in the State of Florida, then the owner may also be entitled to all other remedies set forth in Chapter 495 of the Florida Statutes, beyond an injunction, and it is subject to the discretion of the court and principles of equity.

Finally, the third subsection of Section 495.151 provides examples of instances where a potential plaintiff may not bring a civil action under the statute. Those instances are when:

  1. The use is considered fair use in comparative commercial advertising or the use is promotional to identify competing goods or services of the owner of the famous trademark;
  2. It is a noncommercial use of the trademark; or
  3. The use is a part of news reporting and news commentary.

Florida’s Trademark Dilution Statute Also Doesn’t Apply When A Similar Mark Is Used On Similar Goods.

In a federal court case from 2002 titled, PortionPac Chemical Corp. v. Sanitech Systems, Inc., the court held that Florida Statute Section 495.151 is meant to apply to similar marks on dissimilar products, and that it does not apply to the use of a similar mark on similar goods.

While trademark infringement claims concern use of a similar trademark with similar goods and services, that is not true for a dilution claim under Section 495.151. Citing other precedent, the court explained that the doctrine “has no application when the question is whether the marks being used on goods of substantially the same descriptive properties are similar enough to cause confusion in the mind of consumers with respect to the source of the goods” and that the statute “is a broader claim than infringement, protecting the distinctiveness of the mark by prohibiting its use on products and services completely different from the original.”

That “completely different” language was extended in a 2002 federal case titled, Monsanto Co. v. Campuzano, which said that Florida Statute Section 495.151 should only be applied when a trademark is used on a product so dissimilar from the original product “that there is no possibility of confusion of the products, but instead a potential loss in uniqueness of the prior user’s mark.”

For another case on this subject, one can look to Harley-Davidson Motor Co. v. Iron Eagle of Cent. Florida, Inc., a federal case, which highlighted that the Florida dilution statute “is not intended to apply to the use of a similar mark on similar goods.”

What It Means In Florida For A Trademark To Be Famous.

As stated above, a dilution claim under Florida Statute Section 495.151 will only withstand scrutiny if it can be established that the owner’s trademark is famous. But how does one prove that the trademark has achieved famous status?

The 2013 federal case of MPS Entm’t, LLC v. Abercrombie & Fitch Stores, Inc. sheds some light on this particular issue. In that case, the court indicated that, in order for a trademark to be deemed famous for a trademark dilution claim, the trademark “must have a degree of distinctiveness and strength beyond that needed to serve as a trademark; it must be ‘truly prominent and renowned.’

If a trademark is famous, then it is distinctive. However, a trademark can be distinctive and still not achieve recognition as being famous for the purposes of a trademark dilution action in Florida.

Why Geography Is Particularly Important For A Florida Trademark Dilution Action.

In Florida, one needs to prove that prior use of a trademark at issue was actually used in the state. The burden is then extended, as the plaintiff must show that the third party allegedly diluting the plaintiff’s brand competes in the same trade area as the plaintiff (i.e. Florida). Absent such a showing, a Florida trademark dilution action is almost certain to fail.

Other Things That Can Hurt A Trademark Dilution Claim.

If numerous third parties are using trademarks that are identical or similar to the prior user’s mark, or even started using their marks before the potential plaintiff’s mark, then it makes it unlikely that consumers will form a single mental association with the potential plaintiff’s mark. Furthermore, if a mark is deemed to be generic or descriptive, then it is more likely than not that it will not be deemed worthy of dilution protection.