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Weber Law Blog

August 24, 2017


PROTECTING YOUR TRADEMARK UNDER FEDERAL LAW

A business’s name is a key part of its brand, and is often its most valuable asset.  Federal law may provide significant protection to a business’s name or trademark.  However, as a recent case demonstrates, choosing and registering a strong trademark does not necessarily result in a swift victory in court.

Recently, the Southern District of Florida denied a motion for summary judgment in a case that involved a trademark infringement claim under the Lanham Act, 15 U.S.C. § 1114(1) because, although the factors considered weighed slightly in the plaintiff’s favor, there were some factors for which additional evidence still needed to be developed.  As such, the Court allowed the case to proceed to trial.   In the case, the plaintiff alleged that the defendant was unlawfully using the word “Setai.”  The United States Patent and Trademark Office issued a trademark registration for “The Setai,” and that mark included real estate management, real estate development and construction, and hotel and resort services.  In evaluating the plaintiff’s trademark infringement claim, the court initially considered whether the plaintiff’s mark had priority.  The court found that it did because of a certificate of registration for the mark.  Next, the court considered seven different factors on whether the use of the mark was likely to cause consumer confusion and made findings with respect to four of them. First, the court found that the mark carried the strongest protection because the word “Setai” has no meaning in the English language and does not suggest any particular services or product.  Second, the court found that the manner in which the mark was used created similarity between the Setai Mark and the defendants because, inter alia, the defendants used the term “Setai” in their marketing even though their business does not appropriate or incorporate the term “Setai.”  Third, the court found a similarity of the products the marks represent because the plaintiff and the defendants offer accommodations for short-term visitors. Fourth, the court found only the slightest indication of actual confusion by customers because the plaintiff provided evidence of only one confused customer in more than ten years that the defendants appeared to be using the mark.  While these four factors weighed slightly in favor of a finding of infringement, the Court denied the motion for summary judgment reasoning that additional evidence was needed to analyze the remaining three factors of the test (i.e., the defendants’ intent, similarity of the parties’ retail outlets and customers, and similarity of the advertising media used).

For more information about the topic of this blog post, please contact Weber Law, P.A.’s Steven D. Weber at 305-377-8788 or sweber@weberlawpa.com.


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