Infringement of a Florida-Registered Trademark
Si su marca está registrada en Florida, la ley estatal le da su propia acción por infracción.
Owners of marks registered with the Florida Department of State have their own civil action under Fla. Stat. § 495.131, with remedies under § 495.141: injunctions, profits, damages up to three times actual damages, destruction of infringing goods, and attorney's fees to the prevailing party. We bring these claims on their own in Florida circuit courts or, more often, alongside Lanham Act claims in federal court.
Own a federal registration?Federal Trademark Infringement Litigation →
A Florida registration gives its owner a statutory infringement claim
Florida runs its own trademark register under Chapter 495 of the Florida Statutes, administered by the Florida Department of State. A business that registers a mark there gets more than a certificate. Section 495.131 makes anyone who uses a copy or colorable imitation of the registered mark, without the registrant's consent and in a way likely to confuse, "liable in a civil action by the owner of such registered mark" for the remedies listed in section 495.141.
The claim is narrow on purpose. Only the owner of a mark registered under Chapter 495 can bring it. A federal registration alone does not support it, and neither does a fictitious name filing or an unregistered mark. Those owners rely on the Lanham Act and Florida common law instead (see Common Law Trademark Rights in Florida).
In practice, the Chapter 495 count is usually one of several in the same complaint. Florida courts read it alongside federal trademark law, and the Eleventh Circuit has treated it as part of the same analysis. What it adds is a set of Florida-specific remedies, including a court's power to enter judgment for up to three times actual damages, and a fee provision that differs from the Lanham Act's.
When this count belongs in the complaint
- Your mark is registered with the Florida Department of State and the registration is current
- The infringer operates in Florida, or sells or advertises to Florida customers
- You want the Florida remedies, including enhanced damages, in addition to federal ones
- Your federal application is still pending, or the goods or services in your Florida registration are broader than your federal registration
- A dispute is local and you prefer a Florida circuit court
Not registered in Florida yet? See Florida State Trademarks. The claim covers infringement while the registration is in force.
Two kinds of infringement, with different money rules
Section 495.131 describes two kinds of conduct. Both require that the use be "likely to cause confusion, to cause mistake, or to deceive." The difference is in what the registrant can recover.
| Subsection (1): use | Subsection (2): labels and packaging | |
|---|---|---|
| Conduct | Using "any reproduction, counterfeit, copy, or colorable imitation" of the registered mark in connection with the sale, offering for sale, distribution, or advertising of goods or services | Reproducing, counterfeiting, copying, or colorably imitating the mark and applying it to "labels, signs, prints, packages, wrappers, receptacles, or advertisements" intended for use with goods or services |
| Typical defendant | The seller, distributor, restaurant, or service provider using the mark with customers | The printer, label maker, packager, sign shop, or supplier who makes branded materials, even before they reach the market |
| Confusion standard | Likely to cause confusion, mistake, or deception | Same |
| Profits or damages | Available under § 495.141, without a separate knowledge requirement in § 495.131 | Only if the acts were committed "with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive" |
| Injunction and destruction | Available | Available |
◆ marks the row where the two subsections differ.
Both subsections begin "Subject to the provisions of s. 495.161," the section that preserves rights "acquired in good faith at any time at common law." A Florida registration therefore does not defeat a business that used a similar mark in good faith before you, at least in the area where that business built its rights. That is the first thing we check before filing.
The knowledge requirement in subsection (2) matters most when the defendant is a supplier. A label printer that ran a job without knowing the mark was meant to deceive can be enjoined, but the registrant cannot recover profits or damages from it on the subsection (2) theory. The seller that ordered the labels and put the goods on the market is usually the better target for money relief under subsection (1).
What the registrant must prove
The statute and the cases reduce the claim to five points. The first three are usually documents; the last two are where cases are won or lost.
| Element | How it is proved | Typical evidence |
|---|---|---|
| 1. A mark registered under Chapter 495 | Certified copy of the Florida registration, showing it was in force when the infringement occurred | Department of State certificate; renewal filings; assignment records if ownership changed |
| 2. The plaintiff owns it | The claim belongs to "the owner of such registered mark"; the registrant must be the party suing or its successor | Corporate records, assignments recorded with the Department, license agreements |
| 3. Use without consent | Defendant used, or applied to labels or packaging, a reproduction, copy, or colorable imitation without the registrant's consent | Test purchases, photographs, screenshots, invoices, ads, menus, social media posts |
| 4. In connection with goods or services | Use tied to selling, offering, distributing, or advertising goods or services | Listings, storefront signs, price lists, delivery-app pages, marketplace orders |
| 5. Likelihood of confusion | Weighing of the confusion factors used in Florida and federal courts | Side-by-side comparisons, evidence of actual confusion, surveys, channel and customer overlap, the defendant's knowledge of the mark |
| For money under (2): knowledge | Acts committed with knowledge that the mark was intended to be used to confuse or deceive | Prior notice or cease-and-desist letters, emails, order instructions, artwork files |
Florida courts use the federal confusion analysis
Florida's appellate courts have said that the gist of an infringement claim, under both the common law and § 495.131, is likelihood of confusion. In Tio Pepe, Inc. v. El Tio Pepe de Miami Restaurant, Inc., 523 So. 2d 1158 (Fla. 3d DCA 1988), the Third District, which sits in Miami, weighed the type of mark, the similarity of the marks, the similarity of the services, retail outlets and purchasers, advertising media, the defendant's intent, and actual confusion. It drew those factors from Eleventh Circuit decisions under the Lanham Act and treated actual confusion as especially weighty. It also noted the statute's language is very similar to the federal infringement provision, 15 U.S.C. § 1114(1).
The Eleventh Circuit's current list is the same seven factors set out in Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999), which calls the type of mark and actual confusion the most important. Federal courts in Florida generally use the federal infringement analysis as a "measuring stick" for state-law trademark claims, as in Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008). The practical result: a Chapter 495 count usually succeeds or fails with the Lanham Act count beside it.
One point specific to Florida registrations: in Tally-Ho, Inc. v. Coast Community College District, 889 F.2d 1018 (11th Cir. 1989), the court treated a Florida registration as prima facie evidence of the registrant's right to use the mark in Florida, subject to the defendant's common-law rights. Proof of earlier good-faith use by the defendant can still carry the day.
The seven Eleventh Circuit factors
- Type of markHow distinctive and commercially strong your mark is.
- Similarity of the marksSight, sound, meaning, and overall impression.
- Similarity of goods or servicesWhether customers would expect one source.
- Trade channels and customersSame stores, platforms, neighborhoods, buyers.
- Advertising mediaSame outlets, social channels, or search terms.
- Defendant's intentWhether it meant to benefit from your reputation.
- Actual confusionMisdirected calls, orders, reviews, or deliveries.
Frehling, 192 F.3d 1330 (11th Cir. 1999)
Six remedies the court may grant
Section 495.141(1) lists the relief available to "any owner of a mark registered under this chapter." Every money remedy is discretionary, and the fee provision can favor either side.
Injunction
The court may enjoin the manufacture, use, display, or sale of counterfeits or imitations, on terms it deems "just and reasonable." This is often the most valuable relief for a local brand, and it is available under both subsections of § 495.131.
§ 495.141(1)Defendant's profits
The court may require the defendant to pay all profits derived from the wrongful use. The registrant proves the defendant's sales only; the defendant must prove every cost or deduction it claims. If an award based on profits is inadequate or excessive, the court may enter judgment for the sum it finds just.
§ 495.141(1)Damages
The registrant may recover the damages it suffered from the wrongful manufacture, use, display, or sale: lost sales, price erosion, and harm to reputation, if supported by evidence. The statute allows profits "and/or" damages.
§ 495.141(1)Up to three times actual damages
In assessing damages, the court may enter judgment, according to the circumstances, for any sum above actual damages, "not exceeding three times such amount." The statute says the enhanced sum is compensation, not a penalty. The text does not condition the increase on a finding of bad faith; it leaves the amount to the court "according to the circumstances of the case."
§ 495.141(1)Delivery and destruction
The court may order counterfeits or imitations in the defendant's possession or control delivered to an officer of the court, or to the registrant, to be destroyed. Costs of the action may also be awarded.
§ 495.141(1)Attorney's fees, to the prevailing party
The court "may also award reasonable attorney's fees to the prevailing party." Unlike the Lanham Act's "exceptional case" standard in 15 U.S.C. § 1117(a), the Florida text has no exceptional-case limit, but the award is discretionary and can go to a defendant that wins.
§ 495.141(1)Subsection (2) of § 495.141 preserves the registrant's right to seek criminal prosecution under Florida law. For how profits and damages are modeled and proved, see Damages Evaluations; for counterfeit seizures and federal statutory damages, see Counterfeiting Claims.
What a Florida registration does, and what it does not
A Florida registration is a simpler filing than a federal application, and it supports this claim. It is not a substitute for a federal registration.
| Florida registration (Ch. 495) | Federal registration (USPTO) | |
|---|---|---|
| Basis | Applicant must be using the mark in Florida and state the dates of first use, with three specimens (§ 495.031) | Use in commerce, or an intent-to-use or foreign-filing basis |
| Term | 5 years from registration; renewable for 5-year terms on an application filed within 6 months before expiration, with a verified statement of continued use in Florida (§ 495.071) | 10-year renewals, with maintenance filings |
| Geographic reach | Florida only | Nationwide; filing date is constructive use with nationwide priority once registered (15 U.S.C. § 1057(c)) |
| Infringement claim | § 495.131, with remedies under § 495.141 | 15 U.S.C. § 1114, with remedies under §§ 1116–1117 |
| Customs recordation | Not eligible | Eligible: CBP records trademarks registered by the USPTO, other than Supplemental Register marks (19 C.F.R. § 133.1) |
| Amazon Brand Registry | Not eligible; Amazon requires a mark issued by a country's designated government trademark office | Eligible, including pending applications |
| Incontestability | No equivalent | Available after 5 years' continuous use (§ 1065) |
◆ marks rows where a Florida registration gives less than a federal one.
For many Florida businesses, the right answer is both. A Florida registration can issue while a federal application is still being examined, and it adds a state-law count and remedy. A federal registration is what reaches the rest of the country, the border, and the major marketplaces. See Florida State Trademarks, Federal Trademark Registration, Customs Recordation, and Amazon Brand Registry.
Keep the registration alive. If the term lapses, the infringement claim for conduct after the lapse goes with it. Calendar the six-month renewal window, and keep using the mark in Florida, because each renewal requires a verified statement and specimen of current use in the state.
Florida circuit court or federal court
A Chapter 495 claim can be filed in a Florida circuit court on its own, or in federal court alongside a Lanham Act claim. The choice changes the injunction standard, the judges, and the speed.
Federal court. Federal district courts have original jurisdiction over "a claim of unfair competition when joined with a substantial and related claim under the ... trademark laws" (28 U.S.C. § 1338(b)), and other state claims arising from the same facts are heard under supplemental jurisdiction (28 U.S.C. § 1367). When a federal registration or a § 1125(a) claim is in the case, we usually file in the Southern, Middle, or Northern District of Florida and plead the Chapter 495 count with it. If the federal claim is dismissed early, the court may decline to keep the state claims.
The injunction presumption is federal. Since the Trademark Modernization Act of 2020, a plaintiff seeking an injunction for violation of a federally registered mark's rights, or under § 1125(a), (c), or (d), is entitled to a rebuttable presumption of irreparable harm on a showing of likely success (15 U.S.C. § 1116(a)). That statutory presumption does not attach to a Chapter 495 count standing alone.
Florida circuit court. For a local dispute with no federal claim, a circuit court in the county where the defendant does business is the usual forum. A Florida temporary injunction requires a substantial likelihood of success, irreparable harm, no adequate remedy at law, and service of the public interest, as restated in Florida Department of Health v. Florigrown, LLC, 317 So. 3d 1101 (Fla. 2021). Rule 1.610(b) of the Florida Rules of Civil Procedure requires a bond before a temporary injunction is entered.
A quick forum check
Usually federal court, with the Chapter 495 count added under §§ 1338(b) and 1367.
Personal jurisdiction and enforcement favor federal court, where nationwide relief on the federal claims is also available.
A circuit court may be faster and less expensive.
Compare the federal presumption with the Florida standard and bond requirements before choosing.
Why add a Chapter 495 count to a Lanham Act complaint
Because the confusion analysis is shared, the Chapter 495 count costs little to plead. Whether it is worth pleading depends on what it adds and what it risks.
It can cover what the federal registration does not
A Florida registration may list goods or services that the federal registration does not, or may exist while a federal application is pending. The count lets the registered status of the mark carry weight in Florida even before the USPTO acts.
§ 495.131Enhanced damages under Florida law
The court may enter judgment for up to three times actual damages, as compensation. Federal law has a similar enhancement in § 1117(a); pleading both gives the court two routes to adequate compensation.
§ 495.141(1)A different fee standard
Lanham Act fees require an exceptional case. The Chapter 495 provision lets the court award fees to the prevailing party. That helps a strong plaintiff and hurts a weak one.
§ 495.141(1)A claim against label and packaging makers
Subsection (2) reaches parties that apply the mark to labels, signs, and packaging. Money relief against them requires knowledge of the intended deception, but an injunction does not.
§ 495.131(2)Other claims usually travel with it: federal infringement under § 1114, false designation of origin under § 1125(a), Florida common-law infringement and unfair competition, and sometimes FDUTPA. Each adds something and each has its own risks; see Federal Trademark Infringement Litigation, False Designation of Origin Claims, FDUTPA Litigation, and the overview at Florida Unfair Competition. Robert H. Thornburg focuses on Lanham Act litigation, and our attorneys work with clients and evidence in English and Spanish, which matters in Miami-area disputes where the infringing ads, menus, or listings are in Spanish.
How a Chapter 495 case moves from letter to judgment
The stages are the same in state and federal court, though the rules and timing differ.
- Pre-suitInvestigate and preserveConfirm the registration, test-buy, capture evidence, send a letter if it helps.
- FilingComplaintChapter 495 with federal and common-law counts, in the chosen court.
- EarlyTemporary or preliminary injunctionEvidence of confusion and harm; bond if ordered.
- Mid-caseDiscoverySales records, intent, suppliers, channels; Rule 26 in federal court.
- ExpertsSurveys and damagesConfusion survey if useful; profits and damages model.
- MotionsSummary judgmentOwnership, validity, and sometimes confusion decided on the record.
- EndTrial, remedies, appealInjunction, profits or damages, enhancement, fees, destruction.
Timing is typical planning, not a promise; most cases resolve before trial. Pre-suit steps: Cease and Desist Letters, Demand Letters, Preservation Notices, and Infringement Opinions.
What the defendant will argue, and how we prepare
Defendants raise a predictable set of arguments to Chapter 495 claims. We look for each one before filing.
"We were there first"
Section 495.131 is subject to § 495.161, which protects good-faith common-law rights. We trace the defendant's first use and where it operated before suit.
§ 495.161"No one is confused"
Different goods, prices, or neighborhoods. We gather actual-confusion evidence and map channel overlap, and consider a survey.
Tio Pepe (Fla. 3d DCA 1988)"The registration is weak"
Attacks on distinctiveness, ownership, lapse, or the use claimed in the application. We audit the file, specimens, and renewals first.
§§ 495.031, 495.071"We did not know"
Under subsection (2), money relief requires knowledge. A prior letter, and records of what the supplier was told, address this.
§ 495.131(2)"You waited too long"
Delay can support laches and limit relief. The Eleventh Circuit uses the analogous Florida limitations period as a laches touchstone.
AmBrit v. Kraft (11th Cir. 1986)"Fees should go to us"
The prevailing-party fee clause runs both ways. We weigh the count's strength before pleading it.
§ 495.141(1)An unpublished Eleventh Circuit decision, Martin v. E.C. Publications, Inc. (11th Cir. 2021), applied Florida's four-year catch-all period in § 95.11(3) as the touchstone for federal and Florida trademark claims. Unpublished decisions are not binding precedent, and the paragraph letters in § 95.11(3) were changed in 2023.
Five most common mistakes in Chapter 495 claims
Most come from treating a Florida registration as if it were a federal one.
Letting the registration lapse
A Florida registration runs five years. Owners who miss the six-month renewal window lose the statutory claim for later conduct.
§ 495.071Docket renewals and keep specimens of current Florida use on file.
Expecting statewide rights to work like federal ones
A Florida registration does not support Customs recordation, Amazon Brand Registry, or claims for conduct outside Florida.
19 C.F.R. § 133.1Pair Florida registration with a federal application if you sell beyond Florida or online.
Seeking damages from a label printer without proof of knowledge
Subsection (2) bars profits or damages unless the acts were done knowing the mark was meant to deceive.
§ 495.131(2)Put suppliers on notice early, and target money claims at the seller.
Ignoring the defendant's earlier local use
A registration is subject to good-faith common-law rights. A defendant with earlier use in its area can defeat the claim there.
§ 495.161Investigate the defendant's history before filing, not after the answer.
Forgetting the fee clause runs both ways
The court may award fees to the prevailing party. A weak Chapter 495 count can expose the registrant to the defendant's fees.
§ 495.141(1)Plead it when the facts are strong, and reassess if discovery changes the picture.
How this claim fits a lawsuit
Claims usually pleaded together
- Federal Trademark Infringement LitigationSame confusion analysis for a federally registered mark under § 1114
- False Designation of Origin ClaimsCovers unregistered marks and false affiliation under § 1125(a)
- Common Law Trademark Rights in FloridaRights from use, measured by the Lanham Act standard
- Florida Trademark Dilution ClaimsFor marks famous in Florida; no confusion required
- FDUTPA LitigationWhere consumers are deceived; fees can run both ways
Remedies at a glance
| Injunction | Against making, using, displaying, or selling imitations (§ 495.141(1)) |
|---|---|
| Defendant's profits | Plaintiff proves sales; defendant proves costs |
| Damages | Actual damages, enhanceable up to three times |
| Destruction | Imitations delivered to the court or registrant to be destroyed |
| Fees and costs | Reasonable fees to the prevailing party, discretionary |
What a claim may be worth: see Damages Evaluations.
We bring these claims in the U.S. District Courts for the Southern, Middle, and Northern Districts of Florida, and in Florida circuit courts. A Chapter 495 claim can be filed alone in a Florida circuit court, or in federal court with a Lanham Act claim under 28 U.S.C. §§ 1338(b) and 1367. Out-of-state firms with a Florida case: see Local Counsel Representation and MiamiTrademarkLocalCounsel.com.
This page is written for the party bringing the claim. If you have been sued or threatened, see Trademark Infringement Defense, or upload the complaint and note your response deadline.
Frequently asked questions
Can I sue under Chapter 495 if my mark is registered only with the USPTO?
No. Section 495.131 protects marks "registered under this chapter," meaning registered with the Florida Department of State. A federal registrant sues under 15 U.S.C. § 1114, and can add Florida common-law claims. See Federal Trademark Infringement Litigation.
Does the defendant have to know about my Florida registration?
Not for an injunction, and § 495.131 states no knowledge requirement for profits or damages under subsection (1). For subsection (2), applying the mark to labels, signs, packaging, or ads, profits or damages require that the acts were committed with knowledge that the mark was intended to be used to confuse or deceive.
Can the court really award three times my damages?
Section 495.141(1) lets the court enter judgment, according to the circumstances, for any sum above actual damages up to three times that amount. It is discretionary, the statute calls it compensation rather than a penalty, and you still need proof of actual damages to multiply.
Will the defendant pay my attorney's fees if I win?
The court may award reasonable attorney's fees to the prevailing party. The award is discretionary, and the same language allows a defendant that wins to seek its fees from you.
How long does a Florida registration last?
Five years from registration, renewable for five-year terms on an application filed within six months before expiration, with a verified statement and specimen showing the mark is still in use in Florida (§ 495.071). See Florida State Trademarks.
Is a Florida registration enough to stop counterfeits at the border or on Amazon?
No. CBP records marks registered by the USPTO, and Amazon Brand Registry requires a mark from a country's designated trademark office. A federal registration is needed for both. See Customs Recordation and Amazon Brand Registry.
Should I file in state court or federal court?
If you also have a federal registration or a § 1125(a) claim, most cases go to federal court, with the Chapter 495 count heard under 28 U.S.C. §§ 1338(b) and 1367. A purely local dispute with only Florida rights can be filed in a Florida circuit court.
Is there a deadline to sue?
Chapter 495 does not state its own limitations period. Courts look to Florida's general limitations statute, § 95.11, and to laches. Delay can also weaken a request for an injunction, so it is better to act once the infringement is known.
I was sued for infringing a Florida-registered mark. Can you help?
Yes. Prior common-law use, lack of confusion, weaknesses in the registration, and the knowledge requirement for packaging claims are common defenses. See Trademark Infringement Defense.
Discuss your case
Send your Florida registration certificate, any federal registration or application, photos or screenshots of the infringing use, test purchases, and any letters exchanged. Spanish-language material is welcome.
- Review of your Florida registration, renewals, and ownership
- Investigation of the defendant's first use and territory
- Claim selection across Chapter 495, Lanham Act, and common law
- Injunction and damages strategy in state or federal court
Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.
- Fla. Stat. § 495.131 (2026), Infringement
- Fla. Stat. § 495.131, text after subsection (2) (FindLaw)
- Fla. Stat. § 495.141 (2026), Remedies
- Fla. Stat. § 495.141, full text and annotations (Syfert)
- Fla. Stat. § 495.161 (2026), Common-law rights
- Fla. Stat. § 495.071, Duration and renewal
- Fla. Stat. § 495.031, Application for registration (FindLaw)
- Case annotations to Fla. Stat. § 495.131 (Tally-Ho, American Bank of Merritt Island, Sepmeier)
- Tio Pepe, Inc. v. El Tio Pepe de Miami Restaurant, Inc., 523 So. 2d 1158 (Fla. 3d DCA 1988)
- Frehling Enterprises, Inc. v. International Select Group, Inc. (11th Cir. 1999)
- Natural Answers, Inc. v. SmithKline Beecham Corp. (11th Cir. 2008)
- Martin v. E.C. Publications, Inc. (11th Cir. 2021) (unpublished), on laches and § 95.11(3)
- 15 U.S.C. § 1116, Injunctive relief
- 15 U.S.C. § 1117, Recovery for violation of rights
- 28 U.S.C. § 1338 (GovInfo)
- 19 C.F.R. § 133.1, Trademarks eligible for recordation
- Amazon Brand Registry, eligibility
- Florida temporary injunction elements, citing Florigrown (Fla. 2021) and Fla. R. Civ. P. 1.610
General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.