IP Law Daily FLORIDA NATIONAL UNIVERSITY and FNU not confusable with FLORIDA INTERNATIONAL UNIVERSITY and FIU
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Wednesday, July 27, 2016

FLORIDA NATIONAL UNIVERSITY and FNU not confusable with FLORIDA INTERNATIONAL UNIVERSITY and FIU

By Jody Coultas, J.D.

Florida National University, Inc.’s trademarks were not likely to cause confusion with Florida International University Board of Trustees’ (FIU) trademarks, according to the U.S. Court of Appeals in Atlanta. The district court did not err in finding that substantial evidence of similar third-party marks diminished the strength of FIU’s marks. Therefore, a district court’s dismissal of FIU’s trademark infringement, trademark dilution, and unfair competition claims was upheld (Florida International University Board of Trustees v. Florida National University, Inc., July 26, 2016, Marcus, S.).

FIU, South Florida’s only public research university, owns the wordmark "FLORIDA INTERNATIONAL UNIVERSITY," and three design marks featuring the acronym "FIU" in blue and gold alongside a panther or the full name. Florida National College, a for-profit, private higher education institution, also obtained several federal and Florida trademarks relating to that name. In 2012, Florida National College changed its name to Florida National University and filed a federal trademark application for the word mark "Florida National University," as well as for a design mark. FIU opposed the application. Florida National successfully registered these same trademarks with the Florida Department of State Division of Corporations. FIU filed trademark infringement claims against Florida National, seeking to enjoin its use of the marks FLORIDA NATIONAL UNIVERSITY and the acronym FNU.

A Florida district court granted Florida National’s motion for summary judgment on each of FIU’s six claims. FIU appealed.

At the outset, the court noted the district court’s decision was better understood as a judgment entered after a bench trial because the parties agreed that the district court could treat the stipulated record as a record after a bench trial and resolve factual disputes where necessary. The district court’s opinion reads far more like a judgment by a factfinder after a bench trial than a summary judgment ruling.

Strength of the marks. The district court reasonably found as a fact that extensive third party use diminished the strength of FIU’s word mark and acronym, according to the court. Florida National rebutted the presumption of strength of the mark by showing extensive third-party use of the mark. FIU argued on appeal that the third-party use relied on by the district court was both numerically and substantively inadequate to weaken its mark. The number of third-party users is important, but there is no rule establishing a single number that suffices to weaken a mark. Twelve other higher education institutions in the state of Florida use both "Florida" and "University" in their names. The fact that so many other similar institutions in a similar geographic area supported the district court’s determination that the names were not distinct to consumers.

There was not sufficient evidence of commercial strength in the record to require the district court to ignore the substantial third party usage, according to the court. FIU also argued 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, whereas commercial strength measures the marketplace’s recognition value of the mark. However, FIU didn’t offer any direct evidence of commercial strength. FIU’s promotional efforts did 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.

Although the district court’s conclusion that the mark was famous was in conflict with its finding that FIU’s word mark was "relatively weak," it was not proof that the district court erred in holding the mark was weak, according to the court.

Similarity of the marks. The district court properly found that "Florida International University" and "Florida National University" (and the acronyms FIU and FNU) were similar in sound and appearance, but determined that the difference in the meaning of the words "national" and "international" outweighed any similarity. Also, because other universities use very similar acronyms, Florida National’s acronym did not increase the likelihood that a reasonable consumer would be confused as to the source of the services that it represents.

Similarity of the products. Almost half of Florida National’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. However, because there was some overlap in services offered, a reasonable consumer could conclude that the services were attributable to a similar source.

Similarity of consumers and channels of trade. The two schools did not cater to the same individuals, as most students of FIU were seeking a four-year degree and a traditional college experience while Florida National students were mostly night students. There were also striking differences in the schools’ campuses.

Similarity of advertisements and audiences. There was minimal overlap in the audience of the two schools’ advertising. There was no evidence that any of the readers of FIU’s publications were likely to also read magazines or other publications in which Florida National advertised.

Intent. Florida National’s name change was not improperly motivated, according to the court. Florida National’s shifting explanations for its name change, combined with its history of choosing names similar to FIU’s, could have supported a finding of wrongful intent. However, the parties had peacefully coexisted for over twenty years, and Florida National provided a plausible explanation for why it added the word "University" to its name.

Actual confusion. FIU failed to provide sufficient evidence of actual confusion to weigh in favor of finding a likelihood of confusion, according to the court. There had never been a single known instance where a prospective student applied for admission to either school under the impression that Florida National was associated with FIU.

Unfair competition. A Lanham Act unfair competition claims analysis is nearly identical to the likelihood of confusion standard for federal trademark infringement claims, but also covers false advertising or description whether or not it involves trademark infringement. FIU was unable to support its argument that Florida Nationals’ new name was likely to cause people to confuse it with FIU. Therefore, the district court’s dismissal of the claim was affirmed by the court.

FIU also argued that Florida National’s name change, intentional omission of its for-profit status, and 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. Even assuming its false association theory was valid, FIU failed to prove its claim. There was no evidence that FIU was likely to be damaged by the alleged false association.

Dilution. The district court’s conclusion that FIU’s mark was famous, but that Florida National had not diluted FIU’s mark was also upheld by the court.

The case is No. 15-11509.

Attorneys: David Kenneth Friedland (Friedland Vining, PA) and Elaine Dawn Walter (Gaebe Mullen Antonelli & Dimatteo) for Florida International University Board of Trustees. Joel S. Perwin (Joel S. Perwin, PA) for Florida National University, Inc., d/b/a Florida National University Online Learning Campus.

Companies: Florida International University Board of Trustees; Florida National University, Inc., d/b/a Florida National University Online Learning Campus

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