Florida International University Board of Trustees v. Florida National University, Inc.
2016 U.S. App. LEXIS 13612
| 11th Cir. | 2016Background
- FIU is a longstanding public research university in Florida that owns an incontestable federal word mark "FLORIDA INTERNATIONAL UNIVERSITY" and uses the acronym FIU. FIU serves mostly traditional full‑time undergraduates and has substantial campus facilities and marketing.
- FNU is a private, for‑profit institution (formerly Florida National College) that in March 2012 changed its name to "Florida National University" and began using the acronym FNU; it serves many part‑time, commuting, ESL, and associate‑level students and operates small campuses near FIU.
- FIU sued FNU alleging federal trademark infringement (15 U.S.C. § 1114), federal unfair competition (15 U.S.C. § 1125(a)), Florida dilution and state/common‑law infringement, and sought cancellation of FNU’s Florida registration and injunctive/monetary relief.
- The parties filed cross‑motions for summary judgment but stipulated to a full written record and agreed the court could decide factual disputes without live testimony; the district court issued a detailed opinion resolving factual issues and entered final judgment for FNU.
- The district court found no likelihood of consumer confusion (and therefore rejected related claims), held FIU’s word mark was relatively weak (in part due to extensive third‑party use), found limited actual confusion, and denied FIU’s dilution and unfair‑competition theories.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standard of review: treat district decision as summary judgment (de novo) or bench trial (clear‑error for facts) | FIU: decision was a summary judgment; appellate review should be de novo. | FNU: parties submitted a stipulated record and agreed to trial‑on‑the‑papers; review should be deferential (clear error) for factual findings. | Court treated the district court’s disposition as a bench trial on a stipulated record and applied clear‑error review to factual findings. |
| Lanham Act § 1114 — likelihood of confusion between "Florida International University/FIU" and "Florida National University/FNU" | FIU: marks and acronyms are similar; FNU’s adoption likely causes confusion and should be enjoined. | FNU: names/acronyms differ in meaning; consumers are relatively sophisticated; crowded field weakens FIU’s mark; little actual confusion. | No likelihood of confusion. Court found FIU’s mark relatively weak, limited actual confusion, and that most likelihood factors did not support infringement. |
| § 43(a) federal unfair competition — including false‑association theory (FNU sought to appear affiliated with Florida state universities) | FIU: beyond trademark confusion, FNU falsely implied affiliation with Florida public universities (omitting for‑profit status, copying course numbering) harming FIU. | FNU: any public confusion about state affiliation did not translate into harm to FIU or confusion with FIU specifically. | Court rejected the confusion theory (coextensive with infringement) and held FIU failed to show harm from the broader false‑association theory. |
| Florida dilution statute — whether FNU’s use diluted FIU’s famous mark | FIU: its mark is famous in Florida and FNU’s adoption dilutes distinctiveness. | FNU: no dilution because marks are not sufficiently similar in context and public will not associate FNU with FIU. | Court (agreeing with district court) denied dilution: even if FIU’s mark was found famous, the risk of dilution was not established. |
Key Cases Cited
- Nunez v. Superior Oil Co., 572 F.2d 1119 (5th Cir. 1978) (district court may draw inferences from an agreed written record in nonjury cases)
- Useden v. Acker, 947 F.2d 1563 (11th Cir. 1991) (standard for reviewing factual inferences drawn at summary judgment)
- Ga. State Conf. of NAACP v. Fayette Cty. Bd. of Comm’rs, 775 F.3d 1336 (11th Cir. 2015) (factors for treating summary‑judgment briefing as a trial on the record)
- Vetter v. Frosch, 599 F.2d 630 (5th Cir. 1979) (appellate corollary for reviewing decisions treated as trials on stipulated records)
- Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (elements for § 1114 infringement and priority/likelihood framework)
- Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010) (seven‑factor likelihood‑of‑confusion test guidance)
- John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (third‑party use bears on mark strength)
- AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986) (errors on subsidiary factors do not mandate reversal absent clear error on ultimate likelihood conclusion)
- Anderson v. Bessemer City, 470 U.S. 564 (U.S. 1985) (standard for reviewing trial court factual findings for clear error)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (U.S. 1986) (summary judgment standard; record must not permit reasonable jury to find for non‑movant)