Court of appeals says FU to state university’s TM claim

Florida International University Board of Trustees v. Florida
National University, Inc., 2016 WL 4010164, — F.3d —-, No. 15-11509 (11th
Cir. Jul. 26, 2016)
FIU sued FNU for changing its name from Florida National
College to Florida National University; the district court rejected FIU’s
claims and the court of appeals affirmed. 
FIU is a public university founded in 1965.  “It has grown to become one of the nation’s
largest public four-year universities, with over 50,000 full-time students
enrolled in the fall of 2012.”  FNU is a
for-profit higher education institution that, when founded in 1987, offered
only associate’s degrees.  It began as
Florida International Institute, changed to Florida International College, then
changed again to Florida National College when FIU sued for trademark
infringement.  In the 21st
century, Florida National College became accredited to offer bachelor’s degrees
and a master’s degree, and in 2012 it changed its name to FNU.  It had 2,795 students enrolled in a recent
winter term; it currently operates two campuses in Miami-Dade County – one of
which is less than two miles from FIU’s main campus – and also offers online
courses.  FIU has opposed FNU’s 2012
applications for the word mark “Florida National University” and a related
design mark.
In the confusion analysis, the strength of the accusing mark
is the second most important factor.  In
the 11th Circuit, incontestability enhances strength, and FIU’s word
mark was incontestable.  The reasoning
here is not logical but the result is sensible:
The district court observed that,
viewed in isolation, the terms comprising FIU’s word mark were either generic
or descriptive. But, in light of its incontestable status, the court
appropriately presumed that FIU’s mark was relatively strong. Nonetheless, it
determined that FNU had rebutted the presumption of strength by showing
extensive third-party use of the mark, explaining that FNU had identified “13
other entities using the terms ‘Florida’ and ‘University’ – all of which are
aimed at the same education marketplace as FIU.” Thus, the district court
adjudged FLORIDA INTERNATIONAL UNIVERSITY and the attendant acronym to be
“relatively weak.”
Note: it seems a little odd to treat incontestability, which
is an irrebuttable presumption of
distinctiveness, as creating a rebuttable
presumption of “relative” strength, but not a lot odder than treating it as an
uptick in strength.
The court of appeals agreed that the evidence of third-party
use was “an essential factor in determining a mark’s strength.”  Here, the district court’s findings of
diminished strength of the name and acronym were reasonable.  Florida A&M University (FAMU), Florida
Atlantic University (FAU), Florida Christian University (FCU), Florida Gulf
Coast University (FGCU), Florida Memorial University (FMU), Florida Polytechnic
University (FPU), Florida State University (FSU), University of Central Florida
(UCF), University of Florida (UF), University of North Florida (UNF),
University of South Florida (USF), and University of West Florida (UWF), were geographically
proximate and offered the same services, which was sufficient to weaken the FIU
marks.  “[I]n context, it seems to us
that FIU operates in a crowded field of similar names.”
FIU argued that the district court focused too much on
conceptual strength and not on commercial strength.  “The practical problem with FIU’s argument,
however, is that FIU didn’t offer any direct evidence of commercial strength.”  Yes, FIU spends millions annually on
marketing, but that “tells us precious little about the efficacy of those
efforts in creating marketplace recognition of FIU’s mark. Absent comparative
evidence establishing that FIU has spent substantially more on advertising than
its competitors in the field of higher education, or ‘direct evidence of
consumer recognition,’” FIU’s promotional efforts didn’t count as evidence of
commercial strength that would require the district court to ignore third-party
The district court also, inconsistently, accepted FIU’s
claim to own a famous mark within the meaning of the Florida Anti-Dilution Act,
which requires  that a mark be very
strong and distinctive. Third-party use cuts against a finding of fame, but
there was no error in the court’s ultimate conclusion that FIU’s mark was
weak.  The court relied in its dilution
reasoning on FIU’s duration and extent of use, duration and extent of advertising,
and federal registration, ignoring the other five factors identified by the
state legislature in the statute. Also, the district court didn’t give full
attention to the fame inquiry because it found FIU’s dilution claim failed on
other grounds.  There was no clear error
in the finding that FIU’s mark was relatively weak.
Similarity of marks: The district court reasoned that there
were similarities in sound and appearance, but that the antonymic meaning of
the words “national” and “international” outweighed any similarity. This was a
reasonable conclusion,
especially in a field where so many
competitors have names that appear and sound similar. Moreover, in a crowded
field of similar acronyms, the district court reasonably found that the
addition of one more school identifying itself with an acronym containing the
letters F and U would not materially add to the confusion. This is especially
true in a field like post-secondary education, where the primary consumers –
potential students (and likely their parents too) – generally spend a
substantial amount of time and energy learning about their options before
choosing a school and are, therefore, unlikely to be confused by similar names.
Note: consumer sophistication comes in here because the 11th
Circuit doesn’t have that as a separate factor.
Similarity of goods/services: Favored FIU. 
Similarity of retail outlets and customers: The district
court found that the student populations were significantly different: “most
FNU students are seeking associate’s degrees or ESL programs that FIU doesn’t
provide; FIU targets students who are directly out of high school and seeking a
four-year degree, whereas most FNU students have been out of high school for an
average of ten years; and, unlike FIU, FNU doesn’t require students to submit
standardized test scores prior to admission.”  But, both schools offer bachelor’s and
master’s degrees as well as online courses and, therefore, they have some
potential overlap in prospective students. This favored confusion but not
heavily so.
FIU argued that the district court underweighed this factor
because of the substantial overlap in students and campuses.  The court of appeals disagreed, because
nearly half of FNU’s students sought an associate degree, which FIU doesn’t
offer.  (If FIU is like many other state
schools, though, it admits plenty of students with associate degrees.)  Over 21% were enrolled in ESL programs; though
FIU offered ESL as well, that was only for students “seeking to enter college
or professional schools.” Also, while FIU generally offers a “traditional”
four-year college experience, including living on campus, almost all of FNU’s
students commute to class at night after work.  The campuses and websites for students were
also dissimilar. FIU has a “342-acre metropolis” containing residential halls,
an eight-story library, a nature preserve, an athletic stadium, and an art
museum. FNU has two main campuses, each consisting of a single building.  And each offers online courses through their
own websites, which “would dispel rather than cause confusion … because the
websites are separate and distinct, suggesting two completely unrelated [ ]
entities.” The district court didn’t clearly err in assigning little weight to
this factor.
Similarity of advertising media: the parties advertised in
the same types of printed publications, “there was no evidence that any of the
readers of FIU’s publications were likely to also read magazines or other publications
in which FNU advertises.” They do advertise on the same South Florida NPR station.  Again, the district court reasonably found
that this favored confusion, but had little weight overall.
FNU’s intent: The district court found that FNU’s knowledge
of FIU’s marks, and the prior litigation between the parties, wasn’t evidence
of improper intent because the parties had peacefully coexisted for more than
twenty years after settling that lawsuit. FNU’s shifting explanations for its
name change—it first said that it had to do so to be accredited, and when that
proved false it said that “university” was more attractive to foreign students—could
support a finding of bad intent.  But the
district court’s finding to the contrary was not clear error, given FNU’s
reasonable explanation for adopting “university.”
Actual confusion: There was no evidence of actual confusion
among prospective students at either institution.  However, there was one email from a FedEx
employee to an FIU administrator asking whether FNU “is accredited with FIU”;
and one letter sent to FNU from a California high school student who requested
information regarding “both admission to and programs at Florida International
University” because she was investigating “the various colleges and
universities [that she was] considering attending” as part of a sophomore class
project. Also, a radio announcer who was reading an FNU advertisement once said
“Florida Int — Florida National University.” 
The district court found that the FedEx employee wasn’t shown to be an
actual consumer; that the student’s letter was de minimis evidence; and that
the announcer’s “flub” wasn’t evidence of confusion. Thus, actual confusion
didn’t weigh in favor of FIU, and this conclusion wasn’t clear error, especially
given the sophistication that a reasonable consumer would exercise in deciding
among institutions of higher education.
Given all this, there was no clear error in the district
court’s balancing of the factors.
Along with its classic trademark infringement claim, FIU
argued that “FNU’s name change, its intentional omission of its for-profit
status, and its adoption of the course numbering system of Florida’s state
universities were all part of an attempt to falsely associate itself in the
public eye with Florida’s state universities.” 
The district court recognized that “a significant portion of the public
may be confused about FNU’s affiliation with the State of Florida,” but
concluded that this confusion had not resulted in confusion over FNU’s
affiliation with FIU.  (Sounds like a job for the Florida AG—except the
Florida AG doesn’t have a great record of pursuing for-profit educational
The court of appeals affirmed on other grounds.  “The district court’s construction of Section
43(a) of the Lanham Act would render that cause of action wholly duplicative of
a trademark infringement action for trademark holders, when in fact the language
of Section 43 is much broader.”  The
language of §43(a) “seems to encompass FIU’s false association theory that FNU
has used a name, symbol (its logo), and device (the course naming and numbering
system) that create the false impression that FNU is associated with the State
of Florida.”  But the court of appeals
didn’t resolve the issue, because FIU didn’t explain how it was harmed by FNU’s
acts associating itself with Florida public universities.  FNU’s expert testified that 30% to 50% of
survey respondents thought that the State of Florida or some other government
entity operates FNU, but less than 1% of survey respondents associated FNU with

Dilution: Lack of similarity; lack of intent to piggyback on
FIU’s name or goodwill; and lack of risk of association doomed the claim. 

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