Florida International University Board of Trustees v. Florida National University, Inc.
91 F. Supp. 3d 1265
S.D. Fla.2015Background
- FIU sues FNU alleging six trademark-related claims based on confusingly similar names Florida International University and Florida National University.
- FIU owns registrations for Florida International University and FIU; FNU operates in Florida as a for-profit institution that formerly used Florida International Institute/College before adopting Florida National University.
- Historically, the parties litigated in 1989; a settlement required FNU to change its name to Florida National College, later to Florida National University after accreditation for master’s programs.
- Allegations include Lanham Act infringement, unfair competition, Florida dilution, Florida infringement, common-law infringement/unfair competition, and Florida registration cancellation.
- The court addresses summary judgment motions, accepting record evidence without live testimony, and issues rulings on all counts.
- The court ultimately denies FIU’s summary-judgment motion and grants FNU’s summary-judgment motion on all counts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does FIU establish likelihood of confusion (Lanham Act §1114)? | FIU asserts strong marks and overlap cause confusion. | FNU contends similarity is insufficient and market is crowded. | FIU fails; no likelihood of confusion established |
| Does FIU prevail on federal unfair competition under §1125(a) based on likelihood of confusion? | Unfair competition duplicative of infringement; also seeks broader affiliation misrepresentation. | Same standard as infringement; no confusion; additional theories lack proof. | FIU fails; count denied; FNU prevails |
| Does FIU establish dilution of FIU marks under Florida law? | FNU’s use dilutes FIU’s famous marks through similarity. | Marks are not sufficiently famous or likely to dilute; similarities weak. | FIU fails to show likelihood of dilution; count denied; FNU prevails |
| Do FIU’s Florida trademark/infringement and related claims survive given the Lanham Act result? | Florida and common-law claims mirror federal claims; may still succeed. | If federal claim fails, Florida claims fail as well. | GRANTED for FNU; counts IV–VI resolved in favor of FNU |
Key Cases Cited
- Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (seven-factor likelihood of confusion test; weight of factors varies)
- Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d 322 (11th Cir. 1989) (incontestable marks; secondary meaning; third-party use affects strength)
- Suntree Tech., Inc. v. Ecosense Int’l, Inc., 693 F.3d 1338 (11th Cir. 2012) (evaluating overall balance of likelihood of confusion factors)
- Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007) (likelihood-of-confusion framework; weight by overall balance)
- AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1987) (third-party use in market; impact on mark strength)