FDUTPA and the Lanham Act: Bringing Parallel Claims in Florida

When a competitor copies a Florida company’s brand, the federal Lanham Act is the obvious claim. But federal trademark law is only one layer. Florida offers a second statutory layer in its Registration and Protection of Trademarks Act (Chapter 495), a third in the Florida Deceptive and Unfair Trade Practices Act (FDUTPA, § 501.201 et seq.), and a fourth in the common law: unfair competition, conversion, trespass to chattels and unjust enrichment.

Pleading these claims in parallel is standard practice in Florida trademark litigation, and for good reason. Each claim has different elements, different standing rules and, most importantly, different rules for recovering attorney’s fees. A Lanham Act plaintiff recovers fees only in an “exceptional case.” FDUTPA, by contrast, allows the court to award fees to the prevailing party in any case involving a FDUTPA violation, and Florida and federal courts have held that the award can cover work on the entire action, not just the FDUTPA count. That difference can change the economics of a dispute. It also cuts both ways: a FDUTPA claim that fails can expose the plaintiff to the defendant’s fees.

This article compares the three statutory claims, explains how FDUTPA’s fee provision works, surveys the common-law claims available to Florida brands, and closes with five recommendations for evaluating a case.

Pleading the Three Statutory Claims

Elements at a glance

Lanham Act (15 U.S.C. §§ 1114, 1125(a)). For infringement of a registered mark under § 32, or of a registered or unregistered mark under § 43(a), the plaintiff pleads: (1) a valid mark it owns with priority, (2) the defendant’s use of the mark in commerce, without consent, and (3) a likelihood of confusion. The Eleventh Circuit applies the same test to both sections and weighs eight factors: strength of the mark, similarity of the marks, similarity of the goods, similarity of trade channels and customers, similarity of advertising, the defendant’s intent, actual confusion, and consumer sophistication when relevant (FCOA LLC v. Foremost Title & Escrow Services LLC, 57 F.4th 939 (11th Cir. 2023)).

Florida Trademark Act (§ 495.131). The plaintiff pleads (1) ownership of a mark registered with the Florida Department of State, (2) the defendant’s use without consent of a reproduction, counterfeit, copy or colorable imitation, (3) in connection with goods or services, (4) in a way likely to cause confusion, mistake or deception. Chapter 495 must be construed consistently with the Lanham Act (§ 495.181), so the confusion analysis is the same. Without a Florida registration, the claim is unavailable. Unregistered marks rely on common law, which § 495.161 expressly preserves.

FDUTPA (§§ 501.204, 501.211). For damages, the plaintiff pleads (1) a deceptive act or unfair practice in trade or commerce, (2) causation and (3) actual damages. For an injunction or declaratory judgment, the plaintiff need only be a person “aggrieved” by the violation. Since the Legislature changed “consumer” to “person” in 2001, Florida courts have held that a competitor need not be a consumer to sue. In trademark cases, courts generally treat conduct that is likely to confuse consumers under the Lanham Act as a deceptive practice under FDUTPA.

Side-by-side comparison

	Lanham Act	Florida Trademark Act (Ch. 495)	FDUTPA
Who can sue	Owner of a registered or unregistered mark	Owner of a Florida-registered mark only	Any “person aggrieved”; damages require actual loss
Registration needed	No for § 43(a); federal registration for § 32	Yes, Florida registration	No
Core liability test	Likelihood of confusion	Likelihood of confusion (federal law persuasive)	Deceptive or unfair practice; courts often track Lanham Act confusion
Monetary relief	Defendant’s profits, actual damages, costs; up to treble damages; statutory damages for counterfeits ($1,000–$2,000,000 per mark per type of goods)	Profits and damages; damages up to three times actual damages	Actual damages only; no profits, no consequential or punitive damages
Injunction	Yes, with a rebuttable presumption of irreparable harm since 2020	Yes	Yes, for any aggrieved person
Attorney’s fees	“Exceptional cases” only; presumptive for intentional counterfeiting	Discretionary, to the prevailing party, “according to the circumstances”	Discretionary, to the prevailing party, in any case involving a violation
Geographic reach	Nationwide (U.S. commerce only)	Florida	Conduct in or affecting Florida trade or commerce
Limitations period	None stated; laches, often measured by Florida’s four-year period	Not stated; generally four years	Four years
Forum	Federal court (or state court, concurrently)	State or federal (supplemental jurisdiction)	State or federal (supplemental jurisdiction)

Pleading pitfalls to avoid

• FDUTPA damages must be actual damages. Courts dismiss FDUTPA damages counts that plead only lost profits, consequential losses or harm to reputation. Plead the injunctive-relief prong separately so the claim survives even if damages are contested.
• Some federal judges apply Rule 9(b) to FDUTPA. Federal courts in Florida are split on whether FDUTPA claims sounding in fraud must be pleaded with particularity. Pleading the who, what, when and where of the deception avoids raising this issue.
• Statutory exemptions. FDUTPA’s exemptions in § 501.212 (for example, conduct expressly permitted by law and certain regulated industries) can defeat the claim. Make sure to check them early.
• Chapter 495 requires a Florida registration in hand. A pending Florida application is not enough to sue under § 495.131.

Attorney’s Fees: Why FDUTPA Matters

Under the American Rule, each side pays its own lawyers unless a statute or contract says otherwise. Trademark litigation is expensive, so the fee-shifting rules attached to each claim often matter as much as the damages.

The Lanham Act: “exceptional cases”

Section 35(a) of the Lanham Act allows fees only “in exceptional cases.” The Eleventh Circuit applies the Supreme Court’s Octane Fitness standard: a case is exceptional if it stands out from others in the substantive strength of a party’s position or the unreasonable manner in which it was litigated, judged on the totality of the circumstances (Tobinick v. Novella, 884 F.3d 1110 (11th Cir. 2018)). Ordinary infringement, even when the plaintiff wins, usually is not exceptional.

The major exception is intentional counterfeiting. Under § 1117(b), a court must award treble damages and reasonable attorney’s fees for knowing use of a counterfeit mark unless it finds extenuating circumstances.

The Florida Trademark Act: discretionary, registration required

Section 495.141(1) lets the court award reasonable attorney’s fees to the prevailing party “according to the circumstances of the case.” The standard is more flexible than the Lanham Act’s, but the claim is available only to owners of Florida-registered marks.

FDUTPA: the broadest opportunity

Section 501.2105(1) provides that in any civil litigation resulting from an act or practice involving a FDUTPA violation, the prevailing party, after judgment and exhaustion of appeals, may receive reasonable attorney’s fees and costs from the non-prevailing party. Three features make it the most valuable fee provision for brand owners:

1. No “exceptional case” threshold. The prevailing party need not show bad faith or an unusually weak opposing position. The award is discretionary—the Legislature made it so in 1994—but the bar is far lower than under the Lanham Act.
2. Fees can cover the whole case. The Eleventh Circuit, applying Florida law, has held that recoverable fees are those devoted to the entire action, not merely the FDUTPA claim, unless the attorney’s services clearly were not related in any way to establishing or defending the FDUTPA violation (Chow v. Chak Yam Chau, 640 F. App’x 834 (11th Cir. 2016)). In a trademark case where the FDUTPA count rests on the same infringing conduct as the Lanham Act counts, that can mean recovering fees for nearly all the work.
3. Courts use defined factors. Florida courts guide their discretion with the seven Humane Society factors: the scope and history of the litigation; the opposing party’s ability to pay; whether an award would deter others; the merits of the respective positions, including culpability or bad faith; whether the claim was frivolous, unreasonable or groundless; whether a defense was raised mainly to frustrate or stall; and whether the claim resolved a significant legal question under FDUTPA (Humane Society of Broward County, Inc. v. Florida Humane Society, 951 So. 2d 966 (Fla. 4th DCA 2007)). Fee motions that ignore these factors are routinely denied.

The two-edged sword

FDUTPA’s fee provision applies to the prevailing party, not just the plaintiff. A brand owner that adds a FDUTPA count and then loses—or dismisses it late—can be ordered to pay the defendant’s fees for the entire related action. Federal courts in Florida have awarded fees to prevailing trademark defendants under both FDUTPA and the Lanham Act where the claims were baseless. Add a FDUTPA count only when the deception theory is solid.

Florida Common-Law Claims

Chapter 495 expressly preserves common-law rights in marks (§ 495.161), and Florida courts recognize several common-law claims that can supplement the statutory counts. They rarely change the outcome on liability, but they can fill gaps—particularly where the defendant took or interfered with physical goods, accounts or digital assets rather than simply copying a mark.

Common-law trademark infringement and unfair competition

These are the most common companions to a Lanham Act claim. In the Eleventh Circuit, the test for Florida common-law trademark infringement is the same as for federal infringement, and common-law unfair competition based on trademark infringement turns on the same likelihood-of-confusion analysis. Their value lies in protecting unregistered marks used in Florida and in preserving a state-law claim if a federal registration is challenged.

Conversion

Conversion is an unauthorized act that deprives another of property permanently or for an indefinite time. The plaintiff pleads (1) its right to possession of specific property and (2) the defendant’s wrongful exercise of dominion over it, inconsistent with the plaintiff’s ownership. A demand and refusal is often pleaded as evidence of the wrongful act.

Where it fits in brand disputes: a former distributor or licensee that keeps branded inventory, packaging, molds or marketing materials after termination; a former employee or contractor who keeps control of the company’s social media accounts, domain names or e-commerce storefronts. Where the property is money, Florida law requires a specific, identifiable fund rather than a general debt.

Limits: conversion protects property, not the abstract right to use a mark. Courts generally will not let a plaintiff relabel infringement as “conversion of goodwill.” A conversion claim that rests only on copying protected expression may also be preempted by the Copyright Act (17 U.S.C. § 301).

Trespass to chattels

Trespass to chattels is the lesser cousin of conversion: an intentional interference with another’s personal property that causes harm short of a total deprivation. It requires actual damage to the property, impairment of its condition or value, or deprivation of its use for a substantial time.

Where it fits: unauthorized access to or tampering with a brand owner’s online seller account or listings; interference with a company’s servers or systems; temporary seizure or alteration of goods in transit or in a warehouse. Its value is in capturing harmful interference that does not rise to outright taking.

Unjust enrichment

The plaintiff pleads that (1) it conferred a benefit on the defendant, (2) the defendant knew of the benefit, and (3) the defendant accepted and retained it under circumstances that make retention without payment inequitable. The Florida Supreme Court has held that the benefit must be conferred directly on the defendant (Kopel v. Kopel, 229 So. 3d 812 (Fla. 2017)).

Where it fits: a former licensee that keeps selling under the mark after the license ends without paying royalties; a party that obtained branded goods, designs or marketing from the plaintiff and exploited them without paying.

Limits: unjust enrichment is an equitable claim. It is typically dismissed when an express contract covers the same subject matter, and many courts reject it in pure infringement cases because a stranger who copies a mark received nothing directly from the brand owner. Plead it in the alternative, and only where a direct benefit can be shown.

Common-law claims at a glance

Claim	Key elements	Best brand scenario	Main limit	Fees?
Common-law infringement and unfair competition	Prior use, likelihood of confusion	Unregistered marks used in Florida	Duplicates federal claim	No, absent a statute or contract
Conversion	Right to possession; wrongful dominion	Retained inventory, accounts, domains	No conversion of the abstract mark; copyright preemption	No
Trespass to chattels	Intentional interference; actual harm	Account tampering, system interference	Must show actual damage	No
Unjust enrichment	Direct benefit, knowledge, inequitable retention	Ex-licensees, unpaid use of supplied materials	Barred by express contract; direct benefit required	No

None of these common-law claims carries its own fee-shifting provision. That is one more reason the FDUTPA count often does the heavy lifting on fees—and, under Chow, fees for related work on the common-law counts may be recoverable through it.

Five Key Recommendations for Florida Brands

1. Build the FDUTPA claim on real consumer deception and real damages

FDUTPA is the most valuable fee tool, but only if the claim survives. Tie the theory to deception of the buying public—confused purchasers, misdirected inquiries, counterfeit goods sold as genuine—rather than harm to the brand owner alone. Identify a measurable actual-damages figure before filing, and plead the injunctive-relief prong separately so the count stands even if damages are contested.

2. Weigh the fee upside against the two-way risk

Because FDUTPA fees go to the prevailing party, an unsupported FDUTPA count can turn into a fee award for the defendant covering the entire related action. Before filing, assess the claim against the seven Humane Society factors as if you were the defendant moving for fees. If the deception theory is thin, it may be better to rely on the Lanham Act and Chapter 495 alone—or to drop the FDUTPA count early, before significant fees accrue.

3. Register in Florida and federally to unlock every statutory claim

A Chapter 495 claim exists only for Florida-registered marks, and a § 32 Lanham Act claim requires a federal registration. A Florida registration costs $87.50 per class, is backed by prima facie evidence of validity and ownership in Florida courts (§ 495.061), and adds a second discretionary fee provision. Federal registration supplies nationwide constructive notice, the counterfeiting remedies of § 1117(b) and (c), and border enforcement. For Florida brands, holding both is inexpensive insurance.

4. Match common-law claims to the facts, not to a template

Add conversion when the defendant holds specific property—inventory, accounts, domains. Add trespass to chattels when the defendant interfered with accounts or systems and caused measurable harm. Add unjust enrichment only when the plaintiff conferred a direct benefit, as with a former licensee. Boilerplate common-law counts invite motions to dismiss, add cost and weaken credibility with the court. Claims that track copying alone risk Copyright Act preemption.

5. Document fees and plan the fee motion from day one

Fee awards depend on proof. Keep contemporaneous, task-specific time records. The FDUTPA statute requires the prevailing party’s attorney to submit a sworn affidavit of time and costs. Track which work relates to the FDUTPA violation, so you can show it overlaps with the Lanham Act and common-law work. Preserve evidence of willfulness and litigation misconduct, which supports both an “exceptional case” finding under the Lanham Act and the culpability and bad-faith Humane Society factors. And remember that FDUTPA fees are awarded only after judgment and exhaustion of appeals—factor that timing into settlement strategy.