FCOA LLC v. Foremost Title & Escrow Services LLC
57 F.4th 939
11th Cir.2023Background
- Foremost Insurance Company (FIC) has used FOREMOST marks since 1952, owns multiple FOREMOST registrations, advertises heavily (millions/year), and issued millions of FOREMOST-branded policies nationwide; FIC does not sell title insurance (Florida law bars combining title underwriting with other insurance).
- Foremost Title & Escrow (FT&E) was formed in 2015 by partners of a law firm to provide real‑estate closings and title‑insurance agency services under the name “Foremost Title & Escrow”; it acts as agent for national title insurers and completed about 20 closings by late 2018.
- FIC sent a cease‑and‑desist to FT&E and then sued for Lanham Act trademark infringement (and related claims); both parties moved for summary judgment after discovery.
- The district court granted summary judgment to FT&E, holding as a matter of law there was no likelihood of consumer confusion (strength, similarity, channels, advertising, intent, actual confusion, and sophistication factors weighed against FIC).
- On appeal, the Eleventh Circuit reversed the grant of summary judgment on FIC’s trademark‑infringement claim, finding genuine disputes on multiple likelihood‑of‑confusion factors and that a reasonable juror could find confusion; case remanded for trial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Strength of mark | FIC: FOREMOST is an incontestable, commercially strong mark (advertising, sales, AARP endorsement, survey). | FT&E: Extensive third‑party FOREMOST registrations/business names show weakness. | Held: Dieter presumption unrebutted; FIC’s mark may be "relatively strong." |
| Similarity of marks | FIC: Dominant element "Foremost" is identical and used alone; overall commercial impression similar. | FT&E: Different fonts/colors/logos and generic words "Title & Escrow" make marks dissimilar. | Held: Marks sufficiently similar that a reasonable juror could find likelihood of confusion. |
| Similarity of goods, channels, customers | FIC: Both offer insurance‑related services to homebuyers/homeowners and advertise via overlapping media; customer overlap is plausible. | FT&E: FT&E provides title only, via referrals and local office; title is monoline in Florida so no meaningful overlap. | Held: Genuine dispute exists; overlap of customers/channels plausible — factor favors FIC. |
| Advertising overlap & audience | FIC: Both advertise online, in magazines, email, social media; FT&E also targets homeowners. | FT&E: Targets real‑estate professionals, different advertising "universe." | Held: Advertising audiences overlap sufficiently to create triable issue. |
| Actual confusion & consumer sophistication | FIC: Lack of actual confusion is weak because FT&E had limited time/exposure; surveys indicate potential confusion. | FT&E: No actual confusion reported; customers (real‑estate professionals/homebuyers) are sophisticated. | Held: Lack of actual confusion is not dispositive given limited exposure; consumer sophistication is mixed and could favor confusion; triable issue remains. |
| Defendant's intent | FIC: Implicitly argues FT&E intended to capitalize on FIC goodwill. | FT&E: No intent to confuse; choose name after searching registries. | Held: Intent not contested on appeal (forfeited); district court finding of no intent stands but absence of intent does not preclude confusion. |
Key Cases Cited
- Tana v. Dantanna's, 611 F.3d 767 (11th Cir. 2010) (summary‑judgment standard for likelihood of confusion).
- Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (outlines two‑step likelihood‑of‑confusion test and factors).
- Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., Inc., 830 F.3d 1242 (11th Cir. 2016) (multifactor likelihood‑of‑confusion framework; treating factors as separate inquiries).
- Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d 322 (11th Cir. 1989) (incontestable/descriptive marks presumed relatively strong).
- Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019) (lack of actual confusion may be probative where ample exposure/time exists).
- J‑B Weld Co., LLC v. Gorilla Glue Co., 978 F.3d 778 (11th Cir. 2020) (applying summary‑judgment standard to likelihood‑of‑confusion factors).
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (strength categories of marks; descriptive vs. suggestive/arbitrary).
- John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (conceptual/commercial strength analysis).