News

Latest firm news

Seizure of Counterfeit Dietary Supplements, Case Resolved

Seizure of Counterfeit Dietary Supplements, Case Resolved

Earlier this year, Firm Associate, W. John Eagan, alongside the U.S. Marshals Service and City of Hollywood Police Department, participated in the successful execution of an ex parte seizure order against counterfeiters trading in illegitimate OMEGAXL® Omega-3 dietary supplements. Of grave concern, genuine OMEGAXL® is produced according to a patented methodology which results in a formula that is known to be free from shellfish allergens, and is relied upon by allergy sufferers to avoid severe reactions. Evidence seized during the raid, which caught the counterfeiters in the midst of their activities, included a cache of counterfeit products along with inchoate counterfeit products being assembled from generic fish oil capsules. Working from there, the Firm was able to resolve the case, resulting in an order awarding statutory damages of $400,000 to the favor of the registration owner.

Firm Wins Trademark Verdict For Badia’s “COMPLETE SEASONING®” and “SAZÓN COMPLETA®” Brands

Firm Wins Trademark Verdict For Badia’s “COMPLETE SEASONING®” and “SAZÓN COMPLETA®” Brands

 

The Firm obtained a jury verdict of trademark infringement in favor of Miami-based Badia Spices, Inc., for its brands “Complete Seasoning®” and “Sazón Completa®.” The jury found that use of the name “Sazón Complete Mix Seasoning” by Gel Spice Company, Inc., constituted willful infringement, and awarded Badia $564,000. The verdict also confirmed that Badia’s trademarks are brands, not generic terms. Firm Partner, Oliver Ruiz, acted as lead trial counsel, assisted by Partners, Meredith Mendez and John Cyril Malloy, III. Associates, W. John Eagan and Jessica McDonald, played critical roles as well.

From a tiny room in Miami’s Little Havana neighborhood, Badia introduced its signature product in 1969 under the brands “Complete Seasoning®” and “Sazón Completa®” and grew over the years to national success. Badia owns federal trademark registrations that have achieved incontestable status. In 2012, Gel introduced a competitive product as part of its “Spice Supreme” line, but prominently displayed the name “Sazón Complete Mix Seasoning” on the bottle. Gel’s product, like Badia’s, included a green cap and depictions of vegetables on the bottom of the label. Gel defended by claiming that “Complete Seasoning®” and “Sazón Completa®” had become generic names for spice blends and on that basis sought cancellation of Badia’s trademark registrations. Gel also argued that its name was dissimilar overall, that no consumers had come forward to complain of confusion, and that Badia suffered no damage because Badia’s sales never decreased. Mr. Ruiz countered with aggressive cross-examination of Gel’s witnesses, eliciting admissions that an average person would shorten Gel’s long name to “Sazón Complete,” the infringing sales were accomplished with very little advertising, and the description of “all-purpose seasoning” on Gel’s own label undercut the genericness claim. Ms. Mendez also introduced evidence of the Firm’s enforcement of Badia’s trademarks rights against other infringers.

Oliver Ruiz said, “Our client spent decades building these brands through hard work, the owner [Joseph ‘Pepe’ Badia] having filled bottles by hand and making deliveries himself, so it was very personal that the defendant claimed the trademarks should be canceled as generic. We were pleased to see the jury return a resounding verdict that acknowledged the strength of our client’s brands with a finding of willful infringement and an award of punitive damages against the defendant.”

Recent Study Suggests That Patent Holders Should Consider Filing Suit in the Middle and Southern District of Florida

Based upon certain criteria including win rate and the time involved to get to trial, a 2018 study by PricewaterhouseCoopers (“PWC”) suggests that patent owners seeking to enforce their rights should file suit either in the Middle District of Florida (encompassing Jacksonville, Ocala, Orlando, Tampa, and Fort Myers), or the Southern District of Florida (which includes the South Florida metropolitan areas of West Palm Beach, Fort Lauderdale, Miami, and the Florida Keys).  Breaking down those factors using case studies and empirical data, PWC found that a patent owner who tried their case in the Middle District of Florida had a remarkable 50% statistical likelihood of prevailing (ranked 2nd in the United States), with the Southern District of Florida not too far behind (ranked 8th in the country).  In terms of the amount of time it took to get to trial –a significant factor in terms of the overall costs and expenses involved for the patent holder – cases brought in the Middle District of Florida were tried in 1.9 years (3nd in the United States), whereas lawsuits filed in the Southern District were tried in 2.1 years (6th in the United States).  Averaging all of the other underlying criteria involved, the PWC survey found that the Middle District of Florida had an “overall rank” of 6th in the entire United States, with the Southern District of Florida closing the gap at 11th in the country. 

Having focused its practice exclusively on patent law and other intellectual property areas since 1959, Malloy & Malloy, P.L. can assist you in filing a patent application or otherwise enforcing your rights, if necessary, through the litigation process.  Malloy & Malloy has an office in Jacksonville, Florida overseen by firm partner, Jennie S. Malloy, as well as offices in South Florida.  Please click the following for full contact information:   https://malloylaw.com/contact

Link to PWC study:   http://www.ipwatchdog.com/wp-content/uploads/2017/05/2017-Patent-Litigation-Study_PwC.pdf