Florida International Universi v. Florida National University, I

Filing

Opinion issued by court as to Appellant Florida International University Board of Trustees. Decision: Affirmed. Opinion type: Published. Opinion method: Signed. The opinion is also available through the Court's Opinions page at this link http://www.ca11.uscourts.gov/opinions.

Case: 15-11509

Date Filed: 07/26/2016

Page: 1 of 50

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 15-11509
________________________
D.C. Docket No. 1:13-cv-21604-KMW

FLORIDA INTERNATIONAL UNIVERSITY BOARD OF TRUSTEES,
Plaintiff - Appellant,
versus
FLORIDA NATIONAL UNIVERSITY, INC.,
d.b.a. Florida National University Online Learning Campus,
Defendant - Appellee.
________________________
Appeal from the United States District Court
for the Southern District of Florida
________________________
(July 26, 2016)
Before MARCUS, DUBINA and MELLOY, * Circuit Judges

*

Honorable Michael J. Melloy, United States Circuit Judge for the Eighth Circuit, sitting
by designation.

Case: 15-11509

Date Filed: 07/26/2016

Page: 2 of 50

MARCUS, Circuit Judge:
At issue in this trademark case is whether Florida National University, Inc.
(“FNU”), infringed the trademark rights of Florida International University
(“FIU”)

in

its

registered

trademark

“FLORIDA

INTERNATIONAL

UNVERSITY” or committed unfair competition when FNU changed its name
from “Florida National College” to “Florida National University.” After thorough
review and with the benefit of oral argument, we affirm the district court’s entry of
final judgment in favor of FNU on all claims.
I.
A.
The parties stipulated to the following basic facts. Founded by the Florida
legislature in 1965, FIU is a public body corporate of the State of Florida and part
of Florida’s State University System. FIU has two major campuses in South
Florida, including the 342-acre Modesto A. Maidique Campus in west MiamiDade County, which features student residences, an eight-story library, a nature
preserve, an athletic stadium, and an art museum. FIU is South Florida’s only
public research university, offering over 180 bachelor’s, master’s, and doctoral
degree programs, as well as a wide variety of non-degree and certificate programs.
Its programs include bachelor’s degrees in accounting, business administration,
criminal justice, health services administration, and nursing, and master’s degrees
2

Case: 15-11509

Date Filed: 07/26/2016

Page: 3 of 50

in business administration. FIU serves “traditional” college-bound students, who
directly enroll in FIU’s bachelor’s program after graduating from high school. 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. In 2013, FIU awarded
3,033 masters degrees and 8,460 bachelor’s degrees.
FIU owns a “word” trademark for its name, “FLORIDA INTERNATIONAL
UNIVERSITY,” and three “design” trademarks featuring the acronym “FIU”:

It has spent substantial resources, time, and effort marketing and promoting its
marks locally, nationally, and internationally. FIU promotes its brand through
various publications, including FIU Magazine; its website, www.fiu.edu, which it
has operated since 1989; advertisements on the radio and the Internet; campus
activities; public service and community outreach activities; and its athletic
programs.

3

Case: 15-11509

Date Filed: 07/26/2016

Page: 4 of 50

FNU is a for-profit, private higher education institution headquartered in
Hialeah, Florida. It was founded in 1987 by Dr. Jose Regueiro, Dr. Maria C.
Regueiro, and Mr. Omar Sanchez, and initially operated under the name “Florida
International Institute.”

At its inception, FNU -- then operating as Florida

International Institute -- was accredited to grant associate’s degrees as its highestlevel offering. In December 1987, FNU changed its operating name from “Florida
International Institute” to “Florida International College” in order to reflect the
credentials of additional programs it was offering. In March 1989, FIU objected to
FNU’s name change to Florida International College and filed a trademark
infringement action in the United States District Court for the Southern District of
Florida. That lawsuit was settled when FIU and FNU stipulated that FNU would
change its name from “Florida International College” to “Florida National
College.”
From 1989 until 2012, FIU and FNU coexisted “very peacefully” without
any confusion caused by FNU’s use of the name “Florida National College.”
While operating as Florida National College, FNU obtained several federal and
Florida trademarks relating to that name. In 2008, FNU -- still operating under the
name Florida National College -- became accredited to offer bachelor’s level
degree programs, and in December 2011 it became accredited to offer a master’s
degree in business administration.
4

Case: 15-11509

Date Filed: 07/26/2016

Page: 5 of 50

On March 4, 2012, FNU officially changed its name to “Florida National
University.” Now operating under that name, FNU offers one master’s degree
program, seven bachelor’s degree programs, twenty-two associate’s degree
programs, nine diploma programs, and nine certificate programs. Out of 2,795
students enrolled in a recent winter term at FNU, nearly half were enrolled in either
an Associate of Arts or an Associate of Science program; approximately 20% were
enrolled in a developmental program for English as a Second Language;
approximately 15% were enrolled in a Bachelor of Arts or Bachelor of Science
program; and approximately 1% were pursuing a master’s degree in business
administration. FNU 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. FNU does not offer on-campus housing, and most of its students
commute to school at night after working during the day. FNU has its own
website, www.fnu.edu, and it advertises on the Internet, billboards, television, print
media, and the radio.
On June 26, 2012, FNU filed a federal trademark application for the word
mark “Florida National University,” as well as for a design mark:

5

Case: 15-11509

Date Filed: 07/26/2016

Page: 6 of 50

FIU has opposed registration of these marks, and the United States Patent and
Trademark Office has held the registration in abeyance pending the disposition of
FIU’s opposition proceeding in the Trademark Trial and Appeal Board. However,
FNU has successfully registered these same trademarks with the Florida
Department of State Division of Corporations.

FNU uses the name “Florida

National University” and corresponding logo, as well as the acronym “FNU” to
advertise and promote its educational services. It has used and promoted the
“Florida National” part of its full name since at least 1989, and considers the
“Florida National” brand to represent one of its most important assets.
B.
On May 3, 2013, FIU commenced this lawsuit in the United States District
Court for the Southern District of Florida against FNU for infringement of FIU’s
trademarks, asserting six claims for relief: (1) federal trademark infringement
under the Lanham Act, 15 U.S.C. § 1114; (2) federal unfair competition, also
under the Lanham Act, 15 U.S.C. § 1125(a); (3) Florida trademark dilution and
injury to business reputation, Fla. Stat. § 495.151; (4) Florida trademark
infringement, Fla. Stat. § 495.131; (5) Florida common law trademark
infringement and unfair competition; and (6) cancellation of State of Florida
trademark registration, Fla. Stat. § 495.101. FIU sought several forms of relief,
including treble damages, disgorgement of wrongful profits, and a permanent
6

Case: 15-11509

Date Filed: 07/26/2016

Page: 7 of 50

injunction barring FNU from using the name “Florida National University” and the
acronym “FNU.”
In August 2014, after conducting discovery, the parties filed cross-motions
for summary judgment. While the summary judgment motions were pending, the
parties continued preparing the case for a bench trial, which was scheduled for
December of that year.

The parties submitted an extensive list of pretrial

stipulations, identified the issues of fact that remained to be litigated at trial, and
submitted witness lists. The parties also submitted exhibit lists, motions in limine,
and proposed findings of fact and conclusions of law pursuant to the district court’s
trial scheduling order.
The circumstances surrounding the ensuing procedural history are essential
to understand the resolution of this lawsuit. On November 4, 2014, the district
court held a status conference in anticipation of commencing a bench trial on
December 1, 2014. At the conference, the court directly asked the parties whether
they had any additional evidence to present at trial that was not already “covered in
the many submissions” they had made to the court. FNU’s counsel answered that,
in light of the comprehensive submissions of the parties, the court could resolve
many of the issues in the case on summary judgment, and could greatly narrow the
issues that would be litigated at trial. FIU’s counsel took this plan a substantial
step further, telling the district court that the parties’ evidentiary submissions and
7

Case: 15-11509

Date Filed: 07/26/2016

Page: 8 of 50

accompanying briefing “would allow [the court] to make the same decision that
ultimately [it] could make if [the parties] marched in all these fact and expert
witnesses and put them on the stand,” and thus that the court would not “learn
anything new at trial that [it had] not already seen from both sides.” He further
explained that “there are enough undisputed facts that [the court has] a record
[from] which [it] could make a summary judgment decision that in essence is
going to be a bench trial decision.” FIU’s counsel agreed with the approach
suggested by FNU’s counsel, whereby the parties “could come in and present to
[the court] in the form of either a closing or a summary judgment argument,”
which “would hopefully expedite and consolidate everything.” The district court
agreed to conduct a hearing at which time the parties could “sum up” their
pleadings “instead of” scheduling a bench trial during which the parties would
present live evidence. But the court acknowledged that if, after that hearing, it
determined that “there [was] a genuine issue of fact that need[ed] to be fleshed
out,” it might ask the parties to present additional evidence.
On December 3, 2014, the court heard oral argument -- in the court’s words
-- “on cross motions for summary judgment slash bench trial.” FNU’s counsel
initially suggested that the court, “in the first instance,” evaluate the parties’
arguments and evidence under the Federal Rule of Civil Procedure 56 standard of
review for summary judgment motions, but recognized that some issues “may
8

Case: 15-11509

Date Filed: 07/26/2016

Page: 9 of 50

require a trial standard” of review. FIU’s counsel responded that he had expected
that the court would “tak[e] everything that has been submitted . . . at summary
judgment, and in our pretrial stipulation and proposed findings,” “treat[] that as the
record,” and treat the parties’ arguments as “essentially a summary judgment
argument but also a closing argument type of presentation in a bench trial.” He
continued, “as the finder of fact on those issues that FIU and FNU may disagree on
factually,” the district court would “become a fact finder.” Indeed, FIU’s counsel
did not plan on calling any witnesses, nor did he see the need for witnesses after
the hearing, and thought that the court would be “in a position to make a full and
final ruling after today’s presentations.” At the conclusion of the hearing, the court
said that it understood the parties’ views of the record and did not see any “need
for live testimony” unless either party felt that it “would like to add to or continue
this proceeding.” FIU’s counsel agreed with the district court, and FNU’s counsel
said that he too “would not be adding anything to the record.”
C.
On March 3, 2014, the district court granted FNU’s motion for summary
judgment and denied FIU’s motion for summary judgment in a thorough written
opinion. See Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., 91 F. Supp. 3d 1265
(S.D. Fla. 2015). After explicating the Rule 56 summary judgment standard of
review, the court observed that “in a nonjury case such as this, in which the Court
9

Case: 15-11509

Date Filed: 07/26/2016

Page: 10 of 50

is the trier of fact and there are ‘no issues of witness credibility,’ the Court may
make factual determinations and draw inferences at the summary judgment stage
based on the affidavits, depositions and other evidence in the record, because ‘[a]
trial on the merits would reveal no additional data’ nor ‘aid the determination.’”
Id. at 1273 (alteration in original) (quoting Nunez v. Superior Oil Co., 572 F.2d
1119, 1123–24 (5th Cir. 1978)).
The trial court then addressed each of FIU’s six claims -- just as it would
have done after a bench trial -- granting judgment in favor of FNU on each one.
First, the district court found that FIU had failed to establish that FNU’s marks
created a likelihood of confusion with FIU’s marks, so its trademark claim under
the Lanham Act necessarily failed. Next, the court noted that the legal standard for
unfair competition under the Lanham Act is “essentially the same” as the
likelihood-of-confusion standard under that Act, and, therefore, held that FIU’s
unfair competition claims were unmeritorious because FIU had failed to establish a
likelihood of confusion based on FNU’s mark. The court also rejected FIU’s claim
that FNU committed unfair competition by intentionally attempting to align itself
in the public eye with all of Florida’s public universities because, in its view, the
sole inquiry was whether the public was likely to confuse FNU with FIU.
The court then addressed FIU’s Florida trademark dilution claim, which
required FIU to prove that FNU’s conduct likely diluted its “famous” marks. See
10

Case: 15-11509

Date Filed: 07/26/2016

Page: 11 of 50

Fla. Stat. § 495.151. The court determined that FIU’s marks were famous within
the meaning of § 495.151. However, it found that FNU had not diluted FIU’s
marks for essentially the same reasons that it found FNU’s marks did not create a
likelihood of confusion. Accordingly, the district court granted judgment in favor
of FNU on the dilution claim as well.

The parties agreed that the Florida

trademark infringement and common law infringement claims rose and fell with
the federal trademark infringement claim, and that the claim to cancel FNU’s
Florida trademark registration similarly required FIU to establish a likelihood of
confusion. Therefore, the court concluded, because FIU had failed to establish a
likelihood of confusion, those claims failed as well.
The court entered final judgment in favor of FNU, and FIU timely appealed.
II.
At the outset, it is critical that we decide what we are reviewing today -- a
summary judgment order or a final judgment entered after a bench trial. Indeed,
the applicable standard of review depends precisely on “whether we treat the
district court’s action as a grant of a summary judgment motion or a trial on a
stipulated record,” Vetter v. Frosch, 599 F.2d 630, 631 (5th Cir. 1979), 1 and the
resolution of the case turns on this issue. FNU claims that the district court’s
1

Fifth Circuit decisions issued before the close of business on September 30, 1981, are
binding on the Eleventh Circuit. Bonner v. City of Prichard, 661 F.2d 1206, 1207 (11th
Cir.1981) (en banc).
11

Case: 15-11509

Date Filed: 07/26/2016

Page: 12 of 50

decision was effectively a decision after a bench trial and, therefore, we ought to
apply the deferential “clearly erroneous” standard of review to the district court’s
factual findings. See Fed. R. Civ. P. 52(a)(6). FIU insists, however, that we treat
the district court’s decision as a grant of summary judgment and, therefore, review
it de novo under the exacting summary judgment standard. See Fed. R. Civ. P.
56(a). We agree with FNU that the district court’s opinion is better understood as
a decision made after a bench trial and, therefore, its factfinding requires
deferential review.
The case first came before the district court on cross-motions for summary
judgment. Notably, a district court may grant summary judgment only if “there is
no genuine dispute as to any material fact and the movant is entitled to judgment as
a matter of law.” Fed. R. Civ. P. 56(a). “A genuine issue of material fact does not
exist unless there is sufficient evidence favoring the nonmoving party for a
reasonable jury to return a verdict in its favor.” Chapman v. AI Transp., 229 F.3d
1012, 1023 (11th Cir. 2000) (quotation omitted). In deciding whether a material
disputed fact precludes summary judgment, a court generally must “view all
evidence and make all reasonable inferences in favor of the party opposing
summary judgment.”

Id. (quotation omitted).

We review a district court’s

decision granting summary judgment de novo, Byars v. Coca-Cola Co., 517 F.3d
1256, 1263 (11th Cir. 2008), and will reverse unless “the record taken as a whole
12

Case: 15-11509

Date Filed: 07/26/2016

Page: 13 of 50

could not lead a rational trier of fact to find for the non-moving party,” Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
Many years ago, the former Fifth Circuit observed in dictum that in cases
slated for a bench trial where “there are no issues of witness credibility” the district
court may conclude “on the basis of the affidavits, depositions, and stipulations
before it, that there are no genuine issues of material fact” and grant summary
judgment, “even though [its] decision may depend on inferences to be drawn from
what has been incontrovertibly proved.” Nunez, 572 F.2d at 1123–24. When
“there are neither issues of credibility nor controversies with respect to the
substance of the proposed testimony,” a “trial on the merits would reveal no
additional data,” and “[h]earing and viewing the witnesses subject to crossexamination would not aid the [district court’s] determination.”

Id. at 1124.

Therefore, the district judge, “as trier of fact, is in a position to and ought to draw
his inferences without resort to the expense of trial.” Id. We have since approved
of this dictum from Nunez. See Useden v. Acker, 947 F.2d 1563, 1572-73 (11th
Cir. 1991).

But we explained that, even though the district court may draw

inferences against the non-moving party at the summary judgment stage in certain
limited circumstances, our standard of review is “unaffected by any inferential
conclusions reached below.” Id. at 1573 n.14. That is, we still review the district
court’s summary judgment decision de novo, and “review the evidence and all
13

Case: 15-11509

Date Filed: 07/26/2016

Page: 14 of 50

factual inferences arising from the evidence in the light most favorable to the nonmoving party.” Id. at 1572.
On the other hand, there are “limited circumstances wherein the district
court may treat cross-motions for summary judgment as a trial and resolve the case
on the merits.” Ga. State Conf. of NAACP v. Fayette Cty. Bd. of Comm’rs, 775
F.3d 1336, 1345-46 (11th Cir. 2015). In evaluating whether the district court may
do so, we consider these critical factors: whether the district court held “a hearing
on the motions for summary judgment in which the facts were fully developed”;
whether the parties “expressly stipulated to an agreed set of facts”; and whether the
record reflects that the parties had “in effect submitted the case to the court for trial
on an agreed statement of facts embodied in a limited written record, which would
have enabled the [district] court to decide all issues and resolve all factual
disputes.” See id. at 1346 (quotations and emphasis omitted, alteration adopted).
The appellate corollary of this rule is that, in certain circumstances, we will review
a decision that on its face purports to be a summary judgment under the more
deferential standard applied to a judgment following a bench trial. See Vetter,
599 F.2d at 632-33. Under that standard of review, we still review legal questions
de novo, but, importantly, we review factual findings only for clear error, drawing
all inferences in favor of the district court’s decision. Id. at 632. Review under
this decidedly more deferential standard is appropriate when it appears that the
14

Case: 15-11509

Date Filed: 07/26/2016

Page: 15 of 50

parties intended to submit the case to the district court for final resolution, not for
summary judgment, and that the district court in fact decided the case on that basis.
See id. at 632-33.2
In the unique circumstances of this case, we think the district court’s
decision is better understood as a judgment entered after a bench trial. For starters,
the parties “expressly stipulated to an agreed set of facts” and “in effect submitted
the case to the court for trial on an agreed statement of facts embodied in a limited
written record, which would have enabled the [district] court to decide all issues
and resolve all factual disputes.” Ga. State Conf. of NAACP, 775 F.3d at 1346.
At the November 4th and December 3, 2014 hearings, the parties agreed that the
summary judgment submissions, pretrial stipulations, and proposed factual
findings constituted the full record before the court and that the presentation of
additional evidence or live witness testimony would be unnecessary.

FIU’s

counsel understood the December 3rd presentation to be “essentially a summary
2

Accord, e.g., Allen v. United Mine Workers, 726 F.2d 352, 353 (7th Cir.1984) (“When,
as in this case, the trial court with the parties’ acquiescence treats the hearing on cross-motions
for summary judgment as the trial and enters (as it did) findings of fact and conclusions of law as
required in a bench trial . . . , its findings can be overturned on appeal only if they are clearly
erroneous.”); Wilson v. Block, 708 F.2d 735, 745 n.7 (D.C. Cir. 1983) (“We thus find that the
plaintiffs agreed to the disposition of the claim on the written record.”); Nielsen v. W. Elec. Co.,
603 F.2d 741, 743 (8th Cir.1979) (declining to treat the district court’s resolution as a summary
judgment where“[t]he record reflect[ed] that both parties treated the proceedings as a trial on the
factual issues[,] . . . [and p]laintiff’s counsel conceded at oral argument that he presented all
available evidence in support of his position”); Starsky v. Williams, 512 F.2d 109, 112 (9th Cir.
1975) (concluding the district court properly resolved factual disputes without holding a trial
where “the parties in fact agreed that all of the underlying material facts were those reflected by
the written record”).
15

Case: 15-11509

Date Filed: 07/26/2016

Page: 16 of 50

judgment argument but also a closing argument type of presentation in a bench
trial,” and also significantly told the district court that, to the extent that there were
material factual disputes between the parties, it could “become a fact finder to that
extent.” The parties clearly agreed that the district court could treat the stipulated
record as a record after a bench trial and resolve factual disputes where necessary.
“Treating this case as a trial on a stipulated record clearly seems more
consistent with the district court’s actions.” Vetter, 599 F.2d at 632. At the
November 4 status conference, the district court stated that it would hold a hearing
where the parties could “sum up” their pleadings “instead of scheduling a five day
trial.” And, at the beginning of the December 3 hearing, the court explained that it
was conducting a hearing “on cross motions for summary judgment slash bench
trial.” Thus, the December 3 hearing was “a hearing on the motions for summary
judgment in which the facts were fully developed,” Ga. State Conf. of NAACP,
775 F.3d at 1346, which was intended as a substitute for (not a possible precursor
to) a bench trial.
What’s more, the district court’s opinion reads far more like a judgment by a
factfinder after a bench trial than a summary judgment ruling. While the district
court opened with an explication of the Rule 56 summary judgment standard and a
citation to the former Fifth Circuit’s decision in Nunez, it mischaracterized the
Nunez decision as permitting it to “make factual determinations,” which Nunez
16

Case: 15-11509

Date Filed: 07/26/2016

Page: 17 of 50

plainly does not allow a court to do at the summary judgment stage. See Nunez,
572 F.2d at 1123-24 (allowing district court to draw inferences “from what has
been incontrovertibly proved”). If the district court intended to draw inferences
against the non-moving party and resolve factual disputes -- which plainly it did
throughout its opinion -- then it effectively performed the function of conducting a
bench trial on a stipulated record, not a summary judgment ruling under the Nunez
framework. Moreover, after its opening discussion of the summary judgment
standard, the opinion is utterly devoid of any reference to that method of review.
Nowhere did the district court find or imply, as we would have expected in an
opinion granting summary judgment, that “there is no genuine dispute as to any
material fact” or that FNU is “entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a). Rather, it granted judgment in favor of FNU on FIU’s federal
trademark claim (as well as its other claims) because FIU had “failed to establish
that FNU’s mark creates a likelihood of confusion.” Thus, it seems to us that the
district court effectively conducted a bench trial on a stipulated record, making
many critical findings of fact along the way.
Finally, viewing the district court’s decision as a judgment rendered after a
bench trial is consistent with the substance of FIU’s arguments on appeal. In its
appellate briefing, FIU cites the summary judgment standard, but does not argue
that there were material factual disputes that precluded the district court from
17

Case: 15-11509

Date Filed: 07/26/2016

Page: 18 of 50

granting summary judgment in FNU’s favor. Instead, it says, the “overwhelming
material evidence” supported its claims, and the district court “should have
concluded that FNU’s 2012 adoption of Florida National University and FNU
constituted

trademark

infringement,

unfair

competition,

and

dilution.”

Furthermore, and equally significant, FIU does not ask us to remand this case to
the district court in order to conduct a trial on the merits; rather, it only asks this
Court to reverse the district court’s final judgment and remand for the district court
to enter final judgment in its favor. Thus, it seems to us that the crux of FIU’s
argument is that the district court incorrectly assessed the weight of the evidence.
For all of these reasons, we think it more accurate and better to view the
district court’s decision in this case as the entry of judgment after conducting a
bench trial. 3 Accordingly, “we review the district court’s conclusions of law de
novo and the district court’s factual findings for clear error.” Tartell v. S. Fla.

3

In Useden, we declined to apply “a relaxed standard of review for all cases in which the
district court judge, rather than a jury, would be the ultimate trier of fact were the action to
proceed to trial.” 947 F.2d at 1572-73. However, none of the three factors that we rely on today
-- the parties’ consent to allow the district court to find facts and render a final judgment on the
stipulated record, the district court’s and parties’ intent to substitute a final summary judgment
hearing for a bench trial, and the appellant only seeking a remand for entry of final judgment in
its favor -- was present in Useden. Nothing in Useden suggests that the parties had “in effect
submitted the case to the court for trial on an agreed statement of facts embodied in a limited
written record, which would have enabled the [district] court to decide all issues and resolve all
factual disputes.” Ga. State Conf. of NAACP, 775 F.3d at 1346. Moreover, in Useden the
appellant challenged the district court’s grant of summary judgment to the defendants and, unlike
FIU, did not merely urge the appellate court to remand for entry of judgment in its favor. See
Useden, 947 F.2d at 1565, 1569.

18

Case: 15-11509

Date Filed: 07/26/2016

Page: 19 of 50

Sinus & Allergy Ctr., Inc., 790 F.3d 1253, 1257 (11th Cir. 2015) (quotation
omitted). “‘A finding is ‘clearly erroneous’ when although there is evidence to
support it, the reviewing court on the entire evidence is left with the definite and
firm conviction that a mistake has been committed.’”

Sovereign Military

Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Fla. Priory
of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem,
Knights of Malta, The Ecumenical Order (“Sovereign Military”), 809 F.3d 1171,
1180 (11th Cir. 2015) (quotation omitted) (quoting United States v. U.S. Gypsum
Co., 333 U.S. 364, 395 (1948)). “Where there are two permissible views of the
evidence, the factfinder’s choice between them cannot be clearly erroneous.”
Holladay v. Allen, 555 F.3d 1346, 1354 (11th Cir. 2009) (quoting Anderson v.
Bessemer City, 470 U.S. 564, 574 (1985)) (quotation omitted).
III.
Under the Lanham Act, 15 U.S.C. § 1114(1), a defendant is liable for
trademark infringement if, without consent, he uses “in commerce any
reproduction, counterfeit, copy, or colorable imitation of a registered mark” that “is
likely to cause confusion, or to cause mistake, or to deceive.” Our case law makes
it clear that, in order to prevail on a federal trademark infringement claim under
§ 1114, FIU had to demonstrate (1) that its marks had priority over FNU’s marks,
and (2) that FNU’s marks were likely to cause consumer confusion. See Frehling
19

Case: 15-11509

Date Filed: 07/26/2016

Page: 20 of 50

Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). The
parties agree that FIU’s marks had priority over FNU’s marks, so we need only ask
whether the district court clearly erred in finding that FIU failed to establish that
FNU’s marks created a likelihood of confusion.
We consider seven factors in assessing whether or not a likelihood of
consumer confusion exists: (1) the strength of the allegedly infringed mark; (2) the
similarity of the infringed and infringing marks; (3) the similarity of the goods and
services the marks represent; (4) the similarity of the parties’ trade channels and
customers; (5) the similarity of advertising media used by the parties; (6) the intent
of the alleged infringer to misappropriate the proprietor’s good will; and (7) the
existence and extent of actual confusion in the consuming public.

Tana v.

Dantanna’s, 611 F.3d 767, 774-75 (11th Cir. 2010). Of these factors, the type of
mark and the evidence of actual confusion are the most important. See Aronowitz
v. Health-Chem Corp., 513 F.3d 1229, 1239 (11th Cir. 2008). Notably, we review
the district court’s findings as to each factor and its ultimate conclusion regarding
the likelihood of confusion only for clear error. See N. Am. Med. Corp. v. Axiom
Worldwide, Inc., 522 F.3d 1211, 1220 (11th Cir. 2008). Moreover, a district
court’s error “in its analysis of one of the subsidiary factors in the likelihood of
confusion test is not enough to allow us to overturn the district court’s decision.”
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1545 (11th Cir. 1986). “Rather, we
20

Case: 15-11509

Date Filed: 07/26/2016

Page: 21 of 50

must be convinced that the district court’s ultimate conclusion -- that the plaintiff
established a likelihood of confusion -- is clearly erroneous.” Id.
In analyzing the likelihood of confusion in this case, we are also mindful
that “sophisticated consumers [of complex goods or services] . . . are less likely to
be confused than casual purchasers of small items.”

Welding Servs., Inc. v.

Forman, 509 F.3d 1351, 1361 (11th Cir. 2007); see also Freedom Sav. & Loan
Ass’n v. Way, 757 F.2d 1176, 1185 (11th Cir. 1985) (“The sophistication of a
buyer certainly bears on the possibility that he or she will become confused by
similar marks.”). Importantly, the district court recognized that students looking
for a college to attend are likely to be relatively sophisticated and knowledgeable
because of the nature, importance, and size of the investment in a college
education. As one court has observed: “[I]t is hard to imagine a more important or
expensive purchase than a college education. The degree of care and thought
involved in choosing a college is undoubtedly higher than that required for most
purchases.” Savannah Coll. of Art & Design, Inc. v. Houeix, 369 F. Supp. 2d 929,
956 (S.D. Ohio 2004).
In its complaint, FIU claimed that four of its trademarks were violated by
FNU’s name change and adoption of new logos: its word mark for the name
“Florida International University,” and its three design marks featuring the initials
“FIU” in blue and gold alongside a panther or the full name. The district court did
21

Case: 15-11509

Date Filed: 07/26/2016

Page: 22 of 50

not analyze whether the two schools’ logos were confusingly similar, but instead
focused on their names and acronyms. On appeal, FIU argues only that FNU’s use
of its new name and acronym is likely to cause confusion with FIU’s word mark
and acronym. FIU has thus abandoned any claim that the design marks (which
bear no resemblance to each other) are confusingly similar. See Little v. T-Mobile
USA, Inc., 691 F.3d 1302, 1306 (11th Cir. 2012) (claims not raised in appellate
briefing are deemed abandoned). Accordingly, we analyze only whether FNU’s
use of its new name and acronym is likely to cause confusion with FIU’s word
mark and acronym. 4
1. Strength of FIU’s Mark
The allegedly infringed mark’s strength is the second most important factor
in the seven-factor balancing test. Sovereign Military, 809 F.3d at 1182. “The
stronger the mark, the greater the scope of protection accorded it[;] the weaker the
mark, the less protection it receives.” Frehling Enters., 192 F.3d at 1335. Our case
law instructs us that a factfinder should assess the strength of a mark in two ways.
See id. First, it classifies the mark as “generic,” “descriptive,” “suggestive,” or

4

FIU does not own a separate word mark for the acronym “FIU.” But abbreviations of
registered trademarks, including “acronyms or abbreviations made up of the first letters of a
corporate or business name,” are “just as entitled to legal protection as the original full
trademark.” 1 McCarthy on Trademarks and Unfair Competition § 7:18 (4th ed. 2016). “If the
public has come to shorten a trademark into a nickname, then the nickname is entitled to
independent legal protection as a mark.” Id. FNU does not contest that FIU’s acronym is
entitled to at least some level of legal protection.
22

Case: 15-11509

Date Filed: 07/26/2016

Page: 23 of 50

“arbitrary” based on the relationship between the mark and the service or good it
describes. Id. Generic marks are the weakest and are not entitled to protection -they refer to a class of which an individual product is a member (for example,
“liquor store” used in connection with the sale of liquor). Descriptive marks
describe a characteristic or quality of an article or service (for example, “vision
center” denoting a place where glasses are sold).

Suggestive marks suggest

characteristics of the goods and services and require imaginative effort by the
consumer in order to be understood as descriptive (such as “penguin” being
applied to refrigerators). Finally, arbitrary marks -- the strongest of the four
categories -- bear no relationship to the product (e.g., “Sun Bank” is arbitrary when
applied to banking services). Id. Not surprisingly, then, arbitrary marks are the
strongest of the four categories. Id. at 1335-36. Then, after categorizing the nature
of the mark, the factfinder considers “the degree to which third parties make use of
the mark.” Id. at 1336. “The less that third parties use the mark, the stronger it is,
and the more protection it deserves.” Id.
A mark’s strength is enhanced if it has “incontestable” status. See id. A
mark is “incontestable” if it has been registered for five years with the Patent &
Trademark Office (“PTO”), its holder has filed the affidavit required by 15 U.S.C.
§ 1065(3) with the PTO, and the PTO has accordingly declared the mark
“incontestable.” Id. “An incontestable mark is presumed to be at least descriptive
23

Case: 15-11509

Date Filed: 07/26/2016

Page: 24 of 50

with secondary meaning, and therefore a relatively strong mark.”

Sovereign

Military, 809 F.3d at 1183 (quotation omitted). In this case, the parties stipulated
that FIU’s word mark was incontestable.
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.”
On appeal, FIU argues that its word mark is “strong and distinctive,”
challenging the district court’s conclusion on three grounds: first, FNU’s evidence
of third-party use was inadequate to effect the strength of FIU’s mark; next, the
trial court erred by focusing only on FIU’s mark’s “conceptual strength” and
ignoring evidence of their “commercial strength”; and, finally, it could not
logically have found that FIU’s mark was weak in light of the court’s subsequent
conclusion that it was “famous” within the meaning of the Florida Anti-Dilution
Act, Fla. Stat. § 495.151. We remain unpersuaded.
24

Case: 15-11509

Date Filed: 07/26/2016

Page: 25 of 50

For starters, FIU attacks the district court’s heavy reliance on third-party use
to diminish the strength of its mark because, in its view, the evidence of third-party
use was both numerically and substantively inadequate to weaken its mark. This
Court has long recognized that the extent of third-party use of a mark is an
essential factor in determining a mark’s strength. See John H. Harland Co. v.
Clarke Checks, Inc., 711 F.2d 966, 975 (11th Cir. 1983). Indeed, we’ve said that a
“strong trademark is one that is rarely used by parties other than the owner of the
trademark, while a weak trademark is one that is often used by other parties.” Id.
at 973-74 (quotation omitted). Thus, the number of third-party users is important,
but there is no hard-and-fast rule establishing a single number that suffices to
weaken a mark. Rather, in assessing the impact of third-party uses, we consider
“the entire name a third party uses, as well as the kind of business in which the
user is engaged.” Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d
1160, 1165 (11th Cir. 1982).
In this case, the district court reasonably found as a fact that extensive third
party use diminished the strength of FIU’s word mark and acronym. Excluding
FIU and FNU, twelve other higher education institutions in the state of Florida use
both “Florida” and “University” in their names (and the letters “F” and “U” in their
initials): Florida A&M University (FAMU), Florida Atlantic University (FAU),
Florida Christian University (FCU), Florida Gulf Coast University (FGCU),
25

Case: 15-11509

Date Filed: 07/26/2016

Page: 26 of 50

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). 5 Indeed, eleven of these twelve
universities are members of Florida’s State University System, like FIU. Twelve
third-party uses can be sufficient to diminish the distinctiveness of a mark. See
AmBrit, 812 F.2d at 1539 (affording lesser protection where 8 third-party users in
the same market employed similar trade dress); see also El Chico, Inc. v. El Chico
Café, 214 F.2d 721, 725 (5th Cir. 1954) (finding 27 instances of third-party use of
“Chico,” “El Chico,” and similar names “for various products and articles” was
sufficient to classify “El Chico” mark as weak); Homes & Land Affiliates, LLC v.
Homes & Loans Magazine, LLC, 598 F. Supp. 2d 1248, 1261 (M.D. Fla. 2009)
(finding “widespread third-party use” based on 18 instances).
Considering the frequency of third-party use and in context, it seems to us
that FIU operates in a crowded field of similar names. Looking at the full name
the third parties use, see Safeway Stores, 675 F.2d at 1165, all twelve of the other
universities use two of the three words that FIU uses in its name. And five of them
have three-word names that differ by only one word, and acronyms that differ by

5

The district court said that there were thirteen such universities, presumably because it
included FIU in its total.
26

Case: 15-11509

Date Filed: 07/26/2016

Page: 27 of 50

only one letter. And in considering the “kind of business in which the user[s] [are]
engaged,” id., we cannot help but observe that all of these similarly named
businesses operate in the same general field that FIU occupies: post-secondary
education.

Moreover, all of the third-party users are located in, and target

customers in the same general geographic area: Florida. In fact, one of them -Florida Memorial University -- operates in Miami-Dade County, along with FIU
and FNU. These factors amply support the district court’s determination that FIU
operates in a crowded field of three-word university names that involve the words
“Florida” and “University,” and that these names, therefore, are not particularly
distinct to consumers. There was nothing in the record to suggest that potential
students and others were prone to distinguish FIU’s name from the others in this
crowded field. Accordingly the district court’s conclusion was reasonable.
Next, FIU claims that the district court erroneously disregarded evidence of
its mark’s “commercial strength,” evaluating only its “conceptual strength.”
Conceptual strength evaluates a mark’s placement on the spectrum of marks
(arbitrary or generic), whereas commercial strength measures the marketplace’s
recognition value of the mark.

2 McCarthy on Trademarks and Unfair

Competition (“McCarthy”) § 11:83 (4th ed. 2016). It is surely true that focusing
solely on conceptual strength is an “incomplete” method of analysis, since we are
also required to examine “the marketplace strength of the mark at the time of
27

Case: 15-11509

Date Filed: 07/26/2016

Page: 28 of 50

litigation or at the time registration is sought.” Id. Thus, as we’ve explained,
“even if [a] mark initially was weak, it may . . . subsequently acquire[] strength
through [its owner’s] promotional efforts.” John H. Harland, 711 F.2d at 974 n.13.
Indeed, an initially weak mark “may, by reason of subsequent use and promotion,
acquire such distinctiveness that it can function as a significant indication of a
particular producer as source of the goods with which it is used.” Id. (quotation
omitted). “Determining the strength of any mark requires weighing either or both
circumstantial evidence of advertising and promotion and direct evidence of
consumer recognition, such as by a survey.” 2 McCarthy § 11:83.
The practical problem with FIU’s argument, however, is that FIU didn’t
offer any direct evidence of commercial strength. To be sure, FIU has spent
substantial time, energy, and effort in promoting its mark, and has continually
educated students over the past 50 years under the name FIU.

The parties

stipulated that FIU spends approximately $15 million annually on marketing and
community outreach and engagement efforts, including advertising and promoting
its mark through its athletic programs, radio advertisements, its website, and by
publishing FIU Magazine. But, in isolation, evidence of promotion efforts is not
sufficient to establish a mark’s commercial strength because it 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
28

Case: 15-11509

Date Filed: 07/26/2016

Page: 29 of 50

substantially more on advertising than its competitors in the field of higher
education, or “direct evidence of consumer recognition,” 2 McCarthy § 11.83,
FIU’s promotional efforts do not establish that its mark has acquired “such
distinctiveness that it can function as a significant indication of a particular”
university among others in the same market. John H. Harland, 711 F.2d at 974 n.
13 (quotation omitted). There simply was not sufficient evidence of commercial
strength in the record to require the district court to ignore the substantial thirdparty usage.6
FIU also claims that the district court reached inconsistent conclusions
when, on the one hand, it found that FIU’s word mark was relatively weak but, on
the other hand, in a subsequent assessment of FIU’s state law trademark dilution
claim, determined that the mark was “famous” within the meaning of the Florida
Anti-Dilution Act, Fla. Stat. § 495.151. Florida’s anti-dilution statute provides a
cause of action for owners of marks that are “famous in [Florida]” against
defendants whose “use of a mark or trade name . . . is likely to cause dilution of the
distinctive quality of the famous mark,” and it lists eight non-exhaustive factors
that the courts should consider in determining whether a mark is famous. Id. §
6

Evidence of commercial strength would likely have been particularly important in this
case. For example, it’s difficult to imagine a more generic name for a university in Florida than
“University of Florida” or “Florida State University,” but few people who have turned on a
television on a Saturday afternoon would think that those names lack recognition in the
marketplace of post-secondary education.
29

Case: 15-11509

Date Filed: 07/26/2016

Page: 30 of 50

495.151(1). As the district court recognized, courts interpreting Florida’s antidilution statute have concluded that to be “famous” a mark must be very strong and
distinctive. See, e.g., MPS Entm’t, LLC v. Abercrombie & Fitch Stores, Inc., No.
11-24110-CIV, 2013 WL 3288039, at *16 (S.D. Fla. June 28, 2013) (“To be
‘famous’ in the context of a trademark dilution claim, ‘[t]he mark must have a
degree of distinctiveness and strength beyond that needed to serve as a trademark;
it must be ‘truly prominent and renowned.’” (quoting HBP, Inc. v. Am. Marine
Holdings, Inc., 290 F. Supp. 2d 1320, 1338 (M.D. Fla. 2003)); accord 4 McCarthy
§ 24:104 (“A trademark cannot be ‘famous’ unless it is ‘distinctive,’ but it can
certainly be ‘distinctive’ without being ‘famous.’”). In discussing FIU’s dilution
claim, the court found that FIU’s marks were famous based on FIU’s
“longstanding and widespread use of the marks . . . combined with [their] federal
registration.”
We agree with FIU that the district court’s fame finding is in some tension
with its conclusion that FIU’s word mark is “relatively weak,” particularly because
the main factor the court relied on in finding that the mark was relatively weak -the extent of third-party use -- also cuts against a finding of fame. See Fla. Stat. §
495.151(1)(g). But we don’t think this flaw in the court’s reasoning proves that
there’s anything erroneous about the court’s ultimate conclusion that FIU’s mark
was weak. The district court only referenced three of the statutory factors in
30

Case: 15-11509

Date Filed: 07/26/2016

Page: 31 of 50

support of its fame finding -- duration and extent of use, duration and extent of
advertising, and federal registration -- and ignored the other five factors identified
by the state legislature in the statute. See id. § 495.151(a) (distinctiveness of mark
in Florida); id. § 495.151(d) (geographic area in which mark is used); id. §
495.151(e) (trade channels); id. § 495.151(f) (degree of recognition); id.
§ 495.151(g) (third-party use). Moreover, the district court may not have fully
considered whether FIU’s mark was famous because, as we explain below, it
concluded that FIU’s dilution claim failed for other reasons. Quite simply, the
district court’s brief and unnecessary analysis of FIU’s mark’s fame does not cast a
long shadow on the rest of its careful analysis.
In sum, we can discern no clear error in the district court’s finding that
FIU’s word mark is relatively weak. However, relatively weak marks are still
entitled to a narrow range of protection. See John H. Harland, 711 F.2d at 975.
Therefore, we are also obliged to examine the other six factors in order to
determine whether, as a whole, the district court’s likelihood-of-confusion
determination was sound.
2. Similarity of marks
The second factor in the likelihood-of-confusion analysis requires the
factfinder to compare the plaintiff’s marks with the defendant’s marks and measure
their similarity. Sovereign Military, 809 F.3d at 1186. The greater the similarity,
31

Case: 15-11509

Date Filed: 07/26/2016

Page: 32 of 50

the greater the likelihood of confusion. Id. Two marks need not be identical to
support a finding of infringement, and the key question remains whether the marks
are sufficiently similar “to deceive the public.” Saxlehner v. Eisner & Mendelson
Co., 179 U.S. 19, 33 (1900). We consider the overall impression created by the
marks, and do not simply compare isolated features. Sovereign Military, 809 F.3d
at 1186.

Relevant points of comparison include “the appearance, sound and

meaning of the marks, as well as the manner in which the marks are used.” John
H. Harland, 711 F.2d at 975. If a trademark operates in a crowded field of “similar
marks on similar goods or services,” slight differences in names may be
meaningful because consumers “will not likely be confused between any two of
the crowd and may have learned to carefully pick out one from the other.”
2 McCarthy § 11:85.
The district court acknowledged that “Florida International University” and
“Florida National University” (and the acronyms FIU and FNU) are similar in
sound and appearance, but determined that the difference in the meaning of the
words “national” and “international” outweighed any similarity. It explained that,
in common usage, the two terms are used as antonyms to describe the domestic or
overseas character of something and, therefore, they are not “so closely aligned as
to create a likelihood of confusion among consumers.” Moreover, the court found,
other universities use very similar acronyms and, therefore, FNU’s acronym does
32

Case: 15-11509

Date Filed: 07/26/2016

Page: 33 of 50

not increase the likelihood that a reasonable consumer would be confused as to the
source of the services that it represents. FIU disagrees because, it argues, the
names are quite similar and certain dictionaries define “national” as a subset of
“international.”
Again we remain unpersuaded.

For starters, the parties stipulated that

Merriam-Webster’s On-line Dictionary classifies “international” as a “near
antonym” of national. The district court reasonably attributed more weight to the
meanings than to the appearance and sound of the marks, 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. See Welding Servs., 509 F.3d
at 1361.

Accordingly, we can find no clear error in the district court’s

determination that the names and acronyms were not confusingly similar.
3. Similarity of products

33

Case: 15-11509

Date Filed: 07/26/2016

Page: 34 of 50

The third factor asks whether the parties’ services “are the kind that the
public attributes to a single source.” Frehling Enters., 192 F.3d at 1338. The test
is not whether the products can be readily distinguished, but rather whether the
goods are “so related in the minds of consumers that they get the sense that a single
producer is likely to put out both goods.” Id. The focus is on “the reasonable
belief of the average consumer as to what the likely source of the goods [is].” Id.
The district court recognized that almost half of FNU’s students were seeking
associate’s degrees, which FIU does not offer, and another 21% were taking only
ESL classes, which FIU generally offers only to prepare students for their full-time
enrollment. Nevertheless, because FNU offers several bachelor’s degree programs
and one master’s program that overlap with those offered by FIU, the court found
that a reasonable consumer could conclude that the services provided by FIU and
FNU are attributable to a similar source. The parties agree that this factor weighs
in favor of FIU’s infringement claim, so we accept the district court’s
determination.
4. Similarity of retail outlets and customers
The fourth factor takes into consideration where, how, and to whom the
parties’ products are sold. See Frehling Enters., 192 F.3d at 1339. Dissimilarities
between the manner of sale and the typical customers of the parties’ services lessen
the possibility of confusion. Id. Direct competition between the parties is not
34

Case: 15-11509

Date Filed: 07/26/2016

Page: 35 of 50

required for this factor to weigh in favor of a likelihood of confusion. Id. That is,
the parties’ outlets and customer bases need not be identical, but some degree of
overlap should be present for this factor to support a finding of likelihood of
confusion. Id.
The district court found that there were significant differences in the students
looking to attend the two schools because: 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. However, the court also noted that both schools offer
identical bachelor’s and master’s degrees as well as online courses and, therefore,
they have some potential overlap in prospective students.

In light of these

competing considerations, the court found that this factor weighed in favor of
finding a likelihood of confusion, but did not merit much weight in the overall
analysis. FIU says that the district court erred in discounting the significance of
this factor because there is significant overlap in the two schools’ potential
students and their campuses are “virtually identical.”
First, it seems plain to us that there simply isn’t much of an overlap in the
two schools’ potential student bodies. It is undisputed that nearly 50% of FNU’s
35

Case: 15-11509

Date Filed: 07/26/2016

Page: 36 of 50

students are enrolled in an Associate of Arts or Associate of Science Program -- a
type of degree that FIU does not even offer. And over 21% of FNU’s students are
enrolled in a developmental program for ESL. While FIU says that it, too, offers
ESL programs, its programs are intended only for students “seeking to enter
college or professional schools” -- a distinction the district court found meaningful.
To be sure, both schools offer overlapping bachelor’s and master’s degrees. But
90% of FIU’s bachelor’s degree candidates matriculate straight from South Florida
high schools, whereas most of FNU’s students have been out of high school for a
decade on average. Moreover, while FIU generally offers a “traditional” four-year
college experience for recent graduates, which includes living on campus, almost
all of FNU’s students commute to class at night after work. In short, the district
court reasonably found that the two schools do not “cater to the same general kinds
of individuals.” Safeway Stores, 675 F.2d at 1166.
We also see little resemblance in the “retail outlets” of the two schools, i.e.,
the campuses and websites where students can take classes. FIU has two major
campuses in South Florida: the Modesto A. Maidique Campus in west MiamiDade County and the Biscayne Bay Campus in North Miami Beach. FIU has
described the Maidique Campus as a “342-acre metropolis” containing residential
halls, an eight-story library, a nature preserve, an athletic stadium, and an art
museum. FNU also has two main campuses in South Florida, each consisting of a
36

Case: 15-11509

Date Filed: 07/26/2016

Page: 37 of 50

single building: the “Hialeah Campus” in Hialeah, and the smaller “South
Campus,” which is located approximately two miles from FIU’s Maidique
Campus. FNU’s single-building campuses do not offer any on-campus housing for
students. Considering these striking differences in the two schools’ campuses, the
district court reasonably concluded that potential students were unlikely to confuse
an FNU single-building campus for an FIU “metropolis.” It’s also true that the two
schools offer online courses, but they each do so through their own website, which
“would dispel rather than cause confusion . . . because the websites are separate
and distinct, suggesting two completely unrelated [] entities.” Tana, 611 F.3d at
778. Considering these differences, we can find no clear error in the district
court’s decision to discount the weight of this factor.
5. Similarity of advertising media
Controlling law also requires that we compare the parties’ advertisements
and the audiences they reach. Sovereign Military, 809 F.3d at 1188. “The greater
the similarity, the greater the likelihood of confusion.”

Id. (quotation and

alteration omitted). Our cases do not require identity of advertising methods; “the
standard is whether there is likely to be significant enough overlap in the [audience
of the advertisements] that a possibility of confusion could result.”
Enters., 192 F.3d at 1340.

37

Frehling

Case: 15-11509

Date Filed: 07/26/2016

Page: 38 of 50

The district court found that there was minimal overlap in the audience of
the two schools’ advertising. Even though both parties advertise in the same types
of printed publications, the court found that 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. However, the court found one aspect of
overlap in the parties’ advertising methods: both FIU and FNU advertise on the
same South Florida radio station, WLRN, a National Public Radio member station.
The court adjudged this overlap sufficient to create some likelihood that the same
consumers would be exposed to both schools’ marks, but, again, found this factor
to merit little weight in the overall scheme of things. Again, the district court’s
assessment was a reasonable one. The key question in assessing similarity of
advertising media is whether the parties’ ads are likely to reach the same audience.
The evidence tended to show substantial overlap in the types of advertising
methods used by the parties (magazines, Internet banner ads, and print media), but,
as far as we can tell, the only evidence of overlap in the audience was in the radio
advertisements. Accordingly, the district court reasonably concluded that this
factor weighed only slightly in favor of finding a likelihood of confusion.
6. FNU’s intent
“If it can be shown that a defendant adopted a plaintiff’s mark with the
intention of deriving a benefit from the plaintiff’s business reputation, this fact
38

Case: 15-11509

Date Filed: 07/26/2016

Page: 39 of 50

alone may be enough to justify the inference that there is confusing similarity.”
Frehling Enters., 192 F.3d at 1340; see also AmBrit, 812 F.2d at 1542.

In

examining this factor, the district court had to determine whether FNU “had a
conscious intent to capitalize on the plaintiff’s business reputation, was
intentionally blind, or otherwise manifested improper intent” in adopting its new
name and acronym. Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d
641, 648 (11th Cir. 2007) (quotations and alteration omitted).
The district court found that FNU’s prior knowledge of FIU’s marks was
insufficient to create an inference of improper intent, and that the prior litigation
between FIU and FNU related to FNU’s name change to “Florida International
College” was not persuasive evidence of improper intent because the parties had
peacefully coexisted for more than twenty years after settling that lawsuit.
Accordingly, the court found that the intent factor weighed against finding a
likelihood of confusion.
FIU argues, in essence, that the district court drew the wrong inference from
the parties’ litigation history, and that the prior trademark suit requires a
presumption that FNU acted improperly in changing its name. We acknowledge
that FNU’s shifting explanations for its name change,7 combined with its history of

7

At the outset of this litigation, FNU contended that it changed its name to include
“university” because it believed its accrediting body required the name change once FNU began
(continued on next page)
39

Case: 15-11509

Date Filed: 07/26/2016

Page: 40 of 50

choosing names similar to FIU’s, could have supported a finding of wrongful
intent. But, as the district court observed, the parties had peacefully coexisted for
over twenty years after their prior litigation, and FNU has provided a plausible
explanation for why it added the word “University” to its name. Considering these
mixed indicia of FNU’s intent in adopting its new name, we think that there were
at least two permissible ways to view the evidence. Therefore, the district court’s
finding that FNU’s name change was not improperly motivated was not clearly
erroneous. See Anderson, 470 U.S. at 574.
7. Actual confusion
Evidence of confusion by actual or potential customers is, of course, the best
evidence of a likelihood of confusion. Frehling Enters., 192 F.3d at 1340. “[T]he
quantum of evidence needed to show actual confusion is relatively small.” See
Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d
931, 937 (11th Cir. 2010) (quotation omitted). In assessing the weight of evidence
of actual confusion, we must consider who was confused and how they were
confused: “Short-lived confusion or confusion of individuals casually acquainted
with a business is worthy of little weight, . . . while confusion of actual customers
of a business is worthy of substantial weight.” Safeway Stores, 675 F.2d at 1167;
offering master’s degrees. When this explanation was revealed to be false, FNU explained that it
changed its name because attending a “university” is more appealing to foreign students than
attending a “college.”
40

Case: 15-11509

Date Filed: 07/26/2016

Page: 41 of 50

see also Aronowitz, 513 F.3d at 1239-40 (“With regard to actual confusion, we
have specifically accorded ‘substantial weight’ to evidence that actual customers
were confused by the use of a mark as opposed to other categories of people.”).
We’ve found that even two instances of actual confusion is “worthy of some
consideration” when the right people are confused in the right way. See Safeway
Stores, 675 F.2d at 1167.
The parties stipulated that “[t]here has never been a single known instance
during the application process where a prospective student has applied for
admission to either FNU or FIU under the impression that FNU was associated
with FIU.” However, FIU produced evidence of two instances of alleged actual
customer confusion: a July 7, 2014 email from a FedEx employee to an FIU
administrator asking whether FNU “is accredited with FIU”; and a May 28, 2014
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. FIU
also provided hearsay testimony from its Rule 30(b)(6) designee that some of its
employees were “confused” by FNU’s new name. And FIU submitted evidence
that, on one occasion, a WLRN radio announcer who was reading an FNU
advertisement said “Florida Int -- Florida National University.”
41

Case: 15-11509

Date Filed: 07/26/2016

Page: 42 of 50

The district court determined that the FedEx employee’s email was entitled
to little weight because it was unclear whether she was an actual consumer of
higher education services. It found that the high school student’s letter merited
greater consideration because she was a potential FIU applicant, but determined
that “a sole, de minimis instance of consumer confusion is not enough to militate in
favor of [] finding a likelihood of confusion.” The court did not credit FIU’s
hearsay evidence regarding employee confusion, and found that the broadcaster’s
“flub[]” was not persuasive evidence of actual confusion. Thus, it concluded that
FIU had provided insufficient evidence of actual confusion to weigh in favor of
finding a likelihood of confusion.
FIU does not take issue with any of the district court’s specific findings, but
nonetheless asserts that its evidence of actual confusion tips this factor in favor of a
finding of likelihood of confusion. Again, we’re unpersuaded and find no clear
error in the district court’s assessment of this factor.
First, the district court was well within its right to disregard FIU’s hearsay
evidence of confusion among its employees, which was no more than references by
FIU’s Rule 30(b)(6) representative to ambiguous statements by unidentified
employees at some point in the past. It was likewise reasonable to discount the
radio announcer’s error, which was, after all, the type of “[s]hort-lived” confusion
by an individual “casually acquainted with [FNU that was] worthy of little
42

Case: 15-11509

Date Filed: 07/26/2016

Page: 43 of 50

weight.” Safeway Stores, 675 F.2d at 1167. We also think that the district court,
as the finder of the facts, could reasonably afford little weight to the letter from the
FedEx employee because there was nothing in the record that suggested she was a
potential applicant for either school. The probative value of the letter was “low
because of the uncertainty about what might have prompted the inquiries,” and
because “the nature of [FIU and FNU’s] business . . . requires that the purchasers
of the services . . . be sophisticated consumers.” Welding Servs., 509 F.3d at 1361.
We are thus left with the email from a single California high school student. As an
actual prospective student who was actively looking at potential college options,
she was undoubtedly an “actual customer” for purposes of the likelihood of
confusion analysis.

But with only a single probative instance of consumer

confusion in the years since FNU’s name change, the district court reasonably
decided that this factor did not weigh in favor of a likelihood of confusion.
8. Balancing
Having found the district court’s assessment of each of the seven likelihoodof-confusion factors to be reasonable, it should come as no surprise that we find no
clear error in its ultimate conclusion that FIU failed to establish a likelihood of
confusion.

Three of the seven factors -- similarity of services, overlap in

customers and trade channels, and similarity in advertising methods -- weigh,
albeit only slightly, in favor of finding a likelihood of confusion, but the two most
43

Case: 15-11509

Date Filed: 07/26/2016

Page: 44 of 50

important factors -- evidence of actual confusion and the strength of the mark -- do
not. Moreover, FIU’s burden of establishing a likelihood of confusion was higher
than usual in this case because, we repeat, potential college students are relatively
sophisticated consumers who are unlikely to be easily or meaningfully confused by
similar-sounding university names.

Considering these factors, in concert, the

district court reasonably concluded that FNU’s adoption of its new name and
acronym did not and would not likely cause consumer confusion. We, therefore,
affirm the court’s denial of FIU’s federal trademark claim.
IV.
Section 43(a) of the Lanham Act creates a federal cause of action for any
person injured by another’s use of a mark that “is likely to cause confusion, or to
cause mistake, or to deceive” as to the origin of a product or service. 15 U.S.C.
§ 1125(a)(1)(A). In order to prevail on a federal claim of unfair competition under
§ 43(a), a trademark owner “must show (1) that it had trademark rights in the mark
or name at issue and (2) that the other party had adopted a mark or name that was
the same, or confusingly similar to its mark, such that consumers were likely to
confuse the two.” Suntree Techs., Inc. v. Ecosense Int’l, Inc., 693 F.3d 1338, 1346
(11th Cir. 2012) (quotation omitted). While nearly identical to the likelihood-ofconfusion standard that we’ve already discussed for federal trademark
infringement claims, § 43(a) of the Lanham Act “is broader . . . in that it covers
44

Case: 15-11509

Date Filed: 07/26/2016

Page: 45 of 50

false advertising or description whether or not it involves trademark infringement.”
Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir. 1994).
In the district court, FIU broadly advanced two theories of liability in
support of its federal unfair competition claim: FNU’s use of its new name was
likely to cause people to confuse FNU with FIU; and 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 rejected the first theory based on its determination that FIU had failed
to establish a likelihood of confusion with respect to its trademark claim. And it
rejected the false association theory because it understood our precedent to only
allow FIU to pursue an unfair competition claim based on the likelihood that
FNU’s use of its new name would confuse consumers with FIU. While the court
recognized that a significant portion of the public may be confused about FNU’s
affiliation with the State of Florida, it concluded that this confusion had not
resulted in an appreciable increase in confusion over FNU’s affiliation with FIU.
FIU advances the same two theories of unfair competition on appeal. The
parties agree that FIU’s first theory -- that FNU’s marks create a likelihood of
confusion with FIU’s marks -- is coextensive with FIU’s trademark infringement
claim. For the reasons we’ve already discussed, at some length, we can find no
45

Case: 15-11509

Date Filed: 07/26/2016

Page: 46 of 50

clear error in the district court’s determination that FNU’s marks did not create a
likelihood of confusion and we, therefore, agree with the district court that FIU’s
first theory of unfair competition fails.
We also reject FNU’s false association theory of liability, although for
different reasons than were offered by the district court. In concluding that FIU
could only assert an unfair competition claim based on the potential that consumers
would confuse FNU with FIU, the district court relied on our statement in Suntree
Technologies that an unfair competition claim requires a trademark owner to show
that “the other party had adopted a mark or name that was the same, or confusingly
similar . . . , such that consumers were likely to confuse the two.” 693 F.3d
at 1346 (emphasis added). However, in that case, we were simply reciting our
longstanding definition of unfair competition, see, e.g., Lone Star Steakhouse &
Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir.), opinion
modified on reh’g, 122 F.3d 1379 (11th Cir. 1997), not addressing the distinct
theory of liability asserted by FIU in this case. 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:
Any person who . . . uses in commerce any . . . name, symbol, or
device, or any combination thereof . . . , which . . . . is likely to . . .
deceive as to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or approval of
46

Case: 15-11509

Date Filed: 07/26/2016

Page: 47 of 50

his or her goods, services, or commercial activities by another person
. . . shall be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1). This language 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.
However, we needn’t definitively decide whether FIU’s broader false
association rationale falls within the scope of Section 43(a) because FIU has not
explained how -- let alone pointed to any evidence establishing -- that it “is likely
to be damaged” by FNU’s actions associating itself with Florida public
universities. The district court reasonably credited FNU’s expert testimony that,
while 30% to 50% of survey respondents thought that the State of Florida or some
other government entity operates FNU, less than 1% of survey respondents
associated FNU with FIU. In short, FIU has not shown how it could have been
harmed by people wrongly thinking that FNU is a Florida public university,
especially when any such association did not lead them to associate FNU with FIU.
Accordingly, even assuming its false association theory was valid, FIU still has
failed to prove its claim.
V.
A.

47

Case: 15-11509

Date Filed: 07/26/2016

Page: 48 of 50

The Florida trademark dilution statute provides a cause of action for owners
of marks that are “famous in [Florida]” against defendants whose “use of a mark or
trade name . . . is likely to cause dilution of the distinctive quality of the famous
mark.” Fla. Stat. § 495.151(1). The statute contains a non-exhaustive list of eight
factors that we may consider in determining “whether a mark is distinctive and
famous,” which largely overlap with the factors employed by the federal
likelihood-of-confusion analysis. See id. However, under Florida law, “[d]ilution
differs from infringement in that it does not necessarily depend on either
competing goods or likelihood of confusion.” Great S. Bank v. First S. Bank, 625
So. 2d 463, 470 (Fla. 1993). Rather, “[a] violation of Florida’s dilution statute . . .
occurs where a designation resembles the highly distinctive mark of another in a
manner likely to cause a reduction in the distinctiveness of the other’s mark or
‘tarnishes’ the images associated with the other’s mark.” Anderson v. Upper Keys
Bus. Grp., Inc., 61 So. 3d 1162, 1171 (Fla. Dist. Ct. App. 2011). In deciding
whether dilution has occurred, Florida’s courts “look to the distinctiveness of the
two services or products, the duration and extent of [the mark’s] use and
advertising, and the degree of recognition by prospective purchasers.” Id.
The district court found that FIU’s mark was famous within the meaning of
the Florida trademark dilution statute. However, it also found that FNU had not
diluted FIU’s mark for largely the same reasons it had rejected FIU’s federal
48

Case: 15-11509

Date Filed: 07/26/2016

Page: 49 of 50

trademark infringement claim: the marks were not similar enough to create a
likelihood of dilution; FIU did not provide “compelling or persuasive evidence of
[FNU’s alleged] intent to piggyback on FIU’s name or goodwill”; and there was no
significant risk that the public would associate FNU with FIU.

FIU’s sole

argument on appeal is that the district court should have found a likelihood of
dilution for the same reasons it should have found a likelihood of confusion.
Having already rejected FIU’s challenges to the district court’s likelihood of
confusion analysis, we affirm the district court’s denial of its dilution claim for the
same reasons.
B.
FIU correctly acknowledges that its Florida trademark infringement claim
(Claim Four) and its common law infringement and unfair competition claim
(Claim Five) rise or fall with its federal trademark infringement and unfair
competition claims. See Suntree Techs., 693 F.3d at 1345. And in Claim Six, FIU
sought “cancellation” of FNU’s Florida trademark under Florida Statute § 495.101,
which requires cancellation of any Florida registered trademark that is “so similar”
to a previously registered federal trademark “as to be likely to cause confusion or
mistake or to deceive.” Id. § 495.101(3)(f). FIU raises the same “likelihood of
confusion” arguments in support of its cancellation claim that we’ve already

49

Case: 15-11509

Date Filed: 07/26/2016

Page: 50 of 50

rejected. Therefore, we find that the district court did not err in granting final
judgment in FNU’s favor on these last three claims as well.
Accordingly, we affirm the final judgment of the district court.

AFFIRMED.

50