The following article appeared in the Sun Sentinel as part of coverage of a case handled by Firm Partners, Oliver Ruiz, Meredith Frank Mendez, and John Cyril Malloy, III.
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 attorneys John Fulton and W. John Eagan will be giving a presentation entitled “Who Owns Your Company's Intellectual Property Rights?”, The event will be on November 15th, beginning at 6:30PM and is done in conjunction with the Venture Cafe Miami #ThursdayGathering!, part of a global partnership to promote start-up communities.#VCMConnects
The Firm is proud to announce that John Fulton, Senior Counsel, received the Equal Justice Pro Bono Clinic Volunteer Award from Legal Services of Greater Miami.
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.”