Shutts & Bowen LLP is pleased to announce a precedential appellate victory for Deltona Transformer Corporation, owner of the Battery Tender® brand of battery chargers. In a published, precedent-setting opinion, the U.S. Court of Appeals for the Eleventh Circuit affirmed the core of Deltona's trademark win over competitor The NOCO Company (Deltona Transformer Corp. v. The NOCO Company, No. 24-13590).
The court confirmed that the Battery Tender® marks are not generic - they are protectable, federally registered brands, and registration puts "a heavy thumb on the scale" against any genericness attack. It affirmed infringement based on NOCO's use of the mark in its ads, product descriptions, and customer communications, holding that a product description can infringe even if a shopper never scrolls down to read it.
On remedies, the court upheld a $12,135,943.70 disgorgement of NOCO's profits for willful infringement and sustained the permanent injunction crafted to close off the loopholes NOCO might otherwise exploit, protecting the brand from further infringement; with the separate $5.75 million punitive award which NOCO did not appeal, roughly $17.85 million in monetary relief stands undisturbed.
The decision also breaks new ground twice over: it clarifies - a key issue at oral argument - that a Lanham Act unfair-competition violation is itself an unfair act under Florida's Florida Deceptive and Unfair Trade Practices Act (FDUTPA), and, as a matter of first impression, it holds that bidding on a rival's mark as a search keyword isn't by itself infringement, because what matters is what the resulting ad actually says. Notably, Deltona did not dispute the keyword issue, even though the Eleventh Circuit took the opportunity to clarify the law.
“The takeaway for brand owners is a hopeful one: the marketplace has moved online, and the law moved with it," said Patricia Flanagan, a partner in Shutts & Bowen's Intellectual Property Practice Group. "The court confirmed that co-opting a rival's mark in ad copy or product listings to divert shoppers is actionable and that willful infringement carries a real price.”
Deltona was represented by a Shutts & Bowen LLP team led by Patricia M. Flanagan, with Jodi-Ann Tillman and Camila Chediak.
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