Trademark infringement is when a competitor or other business uses your trademark or a similar one so that it creates confusion amongst consumers about the goods or services they’re buying. When necessary, you will want to file your claim before the expiration of Florida’s trademark infringement statute of limitations.
Filing before the statute of limitations preserves your ability to protect your trademark and recoup any available remedies against infringing parties. Here, we explain the importance of knowing your statute of limitations for various types of intellectual property, starting with your trademarks.
What Is the Trademark Infringement Statute of Limitations?
Your trademark rights in Florida exist under statutory law and in common law trademark protection. Whether or not you registered your trademark, you may be able to assert a civil action for trademark infringement. However, the statute of limitations establishes the period within which a party may file a trademark infringement complaint.
Florida’s state law does not provide a specific statute of limitations for trademark infringement under Chapter 495, which covers trademark protection and registration. Rather, the limitation period for filing a claim is a four-year statute of limitations under Florida’s general limitation statute section 95.11(3)(f)&(p).
While Florida has a limitation period, trademark infringement cases brought under federal law through the Lanham Act do not have a limit for filing suit. This means you may be able to bring a wide variety of trademark claims available under the Lanham Act in addition to trademark infringement such as:
- Trademark dilution: A special type of infringement claim that only applies to cases where a defendant misuses a “famous” trademark in commerce that likely results in its weakened value.
- Unfair competition claim: A broader trademark infringement claim that also includes claims for false advertising or description.
- False advertising: Communications from a defendant that are false or misleading so that they deceive consumers through misrepresentations about a produce or service.
- Trade dress infringement: This is a claim closely related to traditional trademark infringement that expands to cover how your product appears to consumers through features like colors, textures, graphics, sizes, shapes, or other particular sales techniques.
- Cybersquatting claims: A type of cybercrime that involves a claim for the bad faith use of a domain name that is confusingly similar to another’s trade name.
Despite no explicit statute of limitations, it is not wise to prolong claims for trademark infringement after their discovery because of the possibility a defendant could rely on a defense of laches or other equitable defenses to avoid liability.
What Happens If the Trademark Infringement Statute of Limitations Deadline Is Missed?
Several negative consequences can occur when you fail to bring a timely claim for trademark infringement by missing Florida’s statute of repose vs statute of limitations. The primary consequence is that a court in Florida will likely dismiss your claim, unless some valid reason may exist for the missed deadline. A dismissed claim means you lose some of your remedies otherwise available under Florida law.
Additionally, the defendant may point to the missed deadline as evidence of a laches defense if your claim were to somehow proceed or if you were to file a federal claim for your trademark infringement. The doctrine of laches is a common law defense where aggrieved parties lose some of their fighting power because they ignore a potential claim. The idea is that if you were actually harmed from another party’s conduct, then you would have complained about it sooner.
Beyond laches defenses, the subsequent consequences of being unable to enforce your trademark rights under Florida law are threefold. For starters, you won’t be able to get a court to order any injunctive relief that prevents the infringing party’s continued use of the trademark. Second, you miss out on the opportunity to collect any compensation that may be available to reimburse your damages. Florida courts can award financial judgments to plaintiffs of trademark infringement for the following items:
- Any profits the defendant received as a result of using the infringing trademark.
- The plaintiff’s lost profits that result from the unfair competition.
- Any other damages the district court may find equitable to remedy the plaintiff.
Finally, a trademark infringement claim barred from moving forward because of an expired statute of limitations creates the risk of diluting your trademark’s value moving forward. From a business perspective, this can mean further lost profit and lost goodwill value should you ever try to sell or raise capital.
When Does the Clock Start Running on a Trademark Statute of Limitations?
The clock starts to run on the statute of limitations when all of the trademark infringement elements are met to successfully state a cause of action in state or federal court. Additionally, the plaintiff must know the infringing activity or should have reasonably known about it.
Two elements must be met to state a claim of trademark infringement. The first is that you have prior rights to the trademark in use. Showing you have prior rights as the trademark owner can be done informally through continued commercial use, which generally involves the following types of activity:
- Use of the mark on a website or other advertising.
- Affixing or using the trademark in conjunction with your products or services (e.g., showing it on labeling).
- Using the mark on apparel or other branding opportunities.
However, you can more formally establish your rights through trademark registration at the federal level with the U.S. trademark office or register a trademark in Florida with the Florida Department of State Division of Corporations.
Registering your trademark effectively places others on notice of your rights to its exclusive use and creates a presumption that your mark was the first in commercial use. The reach of that presumption will depend on how you registered the mark. Federal registration gives you wider rights across all states while state registration only extends to the geographic boundary of Florida.
The second element to successfully state a claim of trademark infringement is that the defendant used the same trademark or used a confusingly similar mark. A defendant’s trademark creates a likelihood of confusion for purposes of establishing a trademark infringement claim if a consumer would confuse the two trademarks in a commercial setting.
Claim Periods on Trademark Statute of Limitations
The state statute of limitations is not always the same for different types of intellectual property. While the four-year statute of limitations applies to trademark claims, the period for filing suit over other intellectual property claims could be shorter or longer. Below we discuss the applicable statute of limitations for other common types of IP under state law and federal statute.
Statute of Limitations for Copyright Infringement Claims
Copyrights are your rights over various works that you create, license, buy, or otherwise own such as books, music, art, videos, etc. Like trademarks, your copyrights exist under federal, state, and common law. The copyright statute of limitations for federal cases in the U.S. is 3 years.
Statute of Limitations for Patent Infringement Claims
Patents are rights you have to the commercial use methods, procedures, and designs you create. Federal law governs the application and rights you have over a patent, including the statute of limitations for an infringement case, which has a six-year limitation period when you discover the infringing activity.
The Limitation Period for Trade Secret Violations in Florida
Trade secrets are pieces of business information essential to your company’s success. When others (like former employers or competitors) steal or misappropriate your trade secrets in Florida, they are liable for damages. The Florida statute of limitations to bring a claim is 3 years from discovery.
Need Help with Trademark Infringement Statute of Limitations Federal Law?
The Miami trademark attorneys at Cueto Law Group welcome the opportunity to help businesses and people with their trademark matters. We offer guidance and legal advice on how to properly register your trademark and protect its use in commerce, including through IP licensing.
When conflict arises because of another’s infringing use of your trademark, our litigation attorneys are here to provide support in filing a suit and representing your interests in court or settlement negotiations. If you have any questions about the limitations period for your trademark case, please do not hesitate to schedule a consultation with our office.
Contact Cueto Law Group today to meet with an attorney about your trademark infringement case.
Our Final Points
Trademarks are a key piece of intellectual property for businesses that provide brand recognition to consumers and give them confidence in the quality of the goods or services they’re buying. At its core, your trademark is a physical representation of your company’s goodwill. Your trademark is also how your customers differentiate you from any competitors who offer similar goods or services.
Naturally, establishing your trademark and protecting your rights associated with it are essential for the continued success of your business. As a general rule, registering your trademark at the Federal and state trademark offices is often the first step in establishing and protecting those rights. Having your trademark registered makes it easier to prove your prior ownership in case you need to pursue an infringement action.
If you don’t register your mark, establishing your rights under common law doctrine for trademark law can be complex and expensive because of the required fact-finding. Common law trademark rights are usually limited to the geographic area where you use the trademark. This means the same or similar trademarks can coexist under common law if there is no overlap of geographic use.
After registering your trademark, the next best thing you can do to protect your related rights is to monitor for any misuse of your trademark by another party or for any use of a confusingly similar mark.
You can search the USPTO database for new filings, use search engines to check for internet activity, and other monitoring methods. When you spot alleged infringement, the next step may be speaking with one of our trademark attorneys to take appropriate action such as sending a cease-and-desist letter, for example.
