Trademark Litigation in Florida Federal and State Courts
Litigio de marcas en los tribunales federales y estatales de Florida.
When letters and negotiation do not stop an infringer, a lawsuit can. We bring federal and Florida trademark, trade dress, false advertising, dilution, and unfair competition claims for Florida, Latin American, and European brand owners. This page maps the ten claims and how they fit together in one complaint.
Ten claims, each with its own page
Most trademark complaints combine several of these. Each page explains what you must prove, the evidence that proves it, the remedies, and how the claim fits with the others.
Trademark Infringement
Federally registered marks. Likelihood of confusion under the Eleventh Circuit's seven factors.
§ 43(a)Federal Trade Dress Infringement
Packaging, décor, and product design. Define the dress, prove distinctiveness and non-functionality.
§ 43(a)(1)(B)Federal False Advertising
False or misleading claims about your or a competitor's products that injure sales or reputation.
§ 43(a)(1)(A)False Designation of Origin
The main federal claim for unregistered marks and false affiliation or sponsorship.
§ 43(c)Trademark Dilution
Marks famous to the general U.S. public. Blurring or tarnishment, no confusion needed.
§ 495.131Florida Registration Infringement
Marks registered with the Florida Department of State. Prevailing-party fees.
§ 495.151Florida Dilution
Marks famous in Florida, a lower bar than federal fame. Useful for strong regional brands.
Common lawFlorida Common Law Infringement
Rights from use, in the area where the mark is used and known. No registration needed.
§ 1125(a)Federal Unfair Competition
Passing off, reverse passing off, and false affiliation. Usually pleaded with the claims above.
§ 501.204FDUTPA Claims
Deceptive or unfair acts in trade or commerce. Fees can shift to either side.
How the claims compare
Federal claims arise under the Lanham Act; Florida claims under Chapters 495 and 501 of the Florida Statutes and the common law. The fee rules differ most: Lanham Act fees need an exceptional case, while the Florida statutes let the court award fees to the prevailing party, which can be the defendant.
| Claim | Source | Registration needed? | What you prove | Money remedies | Attorney's fees |
|---|---|---|---|---|---|
| Trademark infringement | 15 U.S.C. § 1114 | Federal registration | Likelihood of confusion | Profits; damages up to 3×; costs | Exceptional cases |
| Trade dress | 15 U.S.C. § 1125(a) | No | Defined dress, distinctiveness, non-functionality, confusion | Profits; damages up to 3×; costs | Exceptional cases |
| False advertising | 15 U.S.C. § 1125(a)(1)(B) | No | False or misleading statement, deception, materiality, injury | Profits; damages; corrective advertising | Exceptional cases |
| False designation of origin | 15 U.S.C. § 1125(a)(1)(A) | No | Protectable rights, priority, confusion | Profits; damages up to 3×; costs | Exceptional cases |
| Federal dilution | 15 U.S.C. § 1125(c) | No; fame required | National fame; likely blurring or tarnishment | Only if willful and use began after Oct. 6, 2006 | Exceptional cases |
| Florida registration infringement | Fla. Stat. §§ 495.131, 495.141 | Florida registration | Likelihood of confusion | Profits; damages up to 3× actual | Prevailing party, either side |
| Florida dilution | Fla. Stat. § 495.151 | Only for money remedies | Fame in Florida; likely dilution | Only with willful intent and a Florida registration | Through § 495.141, when it applies |
| Florida common law | Florida common law | No | Prior use in the area; confusion | Damages; profits through § 1125(a) | Not assumed |
| Federal unfair competition | 15 U.S.C. § 1125(a) | No | Passing off, reverse passing off, or false affiliation | Profits; damages up to 3×; costs | Exceptional cases |
| FDUTPA | Fla. Stat. §§ 501.201–501.213 | No | Deceptive or unfair act, causation, actual damages | Actual damages; injunction for anyone aggrieved | Prevailing party, either side |
Summary only. Lanham Act profits do not require willfulness (Romag, 2020) and reach only the named defendant's profits (Dewberry, 2025); fees in exceptional cases follow the Octane Fitness standard (Tobinick v. Novella, 11th Cir. 2018). Counterfeiting adds treble and statutory damages and ex parte seizure: see Counterfeiting Claims. For valuation, see Damages Evaluations.
The life of a trademark lawsuit
Timing varies by court and judge. Many cases settle after the preliminary injunction ruling or after key depositions and surveys.
- Before suitInvestigate and preserveEvidence of use, confusion, and the defendant's sales; a litigation hold; often a cease and desist or demand letter.
- Day 1ComplaintFederal and Florida counts pleaded together, in the district where the defendant can be sued.
- Early weeksTRO or preliminary injunctionA rebuttable presumption of irreparable harm applies once likely success is shown (15 U.S.C. § 1116(a)).
- Months 1–3Pleadings and schedulingMotions to dismiss, the Rule 26 conference, and a court schedule.
- Months 3–12Discovery, surveys, expertsDocuments, depositions, sales data, confusion surveys, and damages experts.
- After discoverySummary judgment and mediationIn the Southern District of Florida, Local Rule 16.2 sends nearly every civil case to mediation.
- Trial and afterTrial, remedies, appealJury or bench trial; injunction, profits, damages, and fees; appeal to the Eleventh Circuit.
Many disputes are decided before a complaint
A well-built letter, an investigation, or a valuation often settles a dispute or shapes the lawsuit that follows. Our Enforcement & Disputes pages cover the steps that come first, and an aggressive letter can let the other side sue first in its home court for a declaratory judgment, so the order of steps matters.
Where you sue matters too. Lanham Act claims can be brought in federal or state court, and Florida claims can ride along in federal court under supplemental jurisdiction (28 U.S.C. §§ 1338, 1367). We bring claims in the Southern, Middle, and Northern Districts of Florida and in Florida circuit courts.
Our litigation team
Robert H. Thornburg leads our Lanham Act litigation and counterfeit enforcement. Susan J. Latham litigates trademark, trade dress, dilution, false advertising, and copyright cases in Florida, New York, and New Jersey. James R. Leahy handles technology and e-commerce disputes, and Melissa Dangond Crews handles TTAB proceedings and works with Spanish-speaking clients.
We work in English and Spanish. For out-of-state firms, we act as Florida local counsel on the same claims.
These pages are written for the party bringing the claim. If you have been sued or threatened, start with our Defense pages, or upload the complaint and note your response deadline. In federal court an answer or motion is generally due 21 days after service.
Frequently asked questions
Which claims go into a typical trademark complaint?
Usually several at once: federal infringement under § 1114 if the mark is registered, federal unfair competition and false designation of origin under § 1125(a), Florida common-law infringement, and often FDUTPA or a Chapter 495 count. Each claim page lists the claims it is usually pleaded with.
Do I need a federal registration to sue?
Not for every claim. Section 1114 requires a federal registration, but § 1125(a) protects unregistered marks and trade dress, and Florida common law protects marks in the area where they are used and known. A registration adds presumptions of validity and ownership and nationwide priority. See Federal Trademark Applications.
Should I sue in federal or state court?
Most trademark cases are filed in federal court, where Lanham Act and Florida claims can be heard together. A Florida circuit court can hear both kinds of claims, and a state-only case may suit a purely local dispute. We weigh speed, the judge pool, and the remedies you need.
Can I recover my attorney's fees?
Under the Lanham Act, only in exceptional cases. Under Chapter 495 and FDUTPA, the court may award fees to the prevailing party, and that can be the defendant if your claim fails. We consider that risk before adding Florida counts.
How long does a trademark lawsuit take?
A preliminary injunction can be decided within weeks. A case that goes through discovery and trial usually takes a year or more. Many cases settle earlier, often after the injunction ruling.
Can you represent us if our case is outside Florida?
We litigate in Florida's federal and state courts. For cases elsewhere we work with local counsel, and out-of-state firms with Florida cases can retain us as local counsel.
Discuss your case
Send the key facts: your mark and registrations, the infringing use, when you learned of it, and any letters exchanged. If you have been sued, include the complaint and the date you were served.
- Lanham Act and Florida claims in one complaint
- TROs and preliminary injunctions
- Discovery, surveys, and damages experts
- Trial and appeal to the Eleventh Circuit
Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.
- 15 U.S.C. § 1114, Remedies; infringement (Cornell LII)
- 15 U.S.C. § 1125 (Cornell LII)
- 15 U.S.C. § 1116 (Cornell LII)
- 15 U.S.C. § 1117 (Cornell LII)
- Fla. Stat. § 495.141 (2026), Remedies
- Fla. Stat. § 501.2105 (2026), Attorney's fees
- 28 U.S.C. § 1338 (GovInfo)
- 28 U.S.C. § 1367 (GovInfo)
- Tobinick v. Novella, 884 F.3d 1110 (11th Cir. 2018)
- Dewberry Group v. Dewberry Engineers (U.S. 2025) (Debevoise)
- Romag Fasteners v. Fossil (U.S. 2020) (Loeb & Loeb)
- Federal Rules of Civil Procedure, Rule 12 (Cornell LII)
- S.D. Fla. Local Rule 16.2, Court Annexed Mediation
General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.