Florida Virtualschool v. K12, Inc., 735 F.3d 1271

Florida VirtualSchool (FLVS), a state agency created to provide online K–12 education, registered the marks “FLVS” and “FLORIDA VIRTUALSCHOOL” with the USPTO and used them beginning in 2002.
K12, a private online-education provider participating in a Florida pilot program, used names and marks including “Florida Virtual Academy/FLVA” and later “Florida Virtual Program/FLVP,” and allegedly used paid search listings and a similar website design to cause marketplace confusion.
FLVS sued K12 in federal court under the Lanham Act and Florida common law for trademark infringement; the district court dismissed for lack of standing, concluding FLVS was not the legal owner under Florida law.
Two Florida statutes are in tension: FLVS’s enabling statute authorizes it to “acquire, enjoy, use, and dispose of … trademarks” (suggesting ownership and related rights), while a general statute vests “legal title and every right” in patents/trademarks owned by the state in the Department of State and authorizes the Department to enforce those rights.
The Eleventh Circuit found Florida law ambiguous on whether FLVS’s statutory authority includes the power to sue to protect trademarks or whether that authority rests exclusively with the Department of State, and therefore certified the question to the Florida Supreme Court.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether FLVS’s statutory authority to "acquire, enjoy, use, and dispose of" trademarks includes authority to sue to protect them	FLVS: its statute implies ownership and attendant rights (including enforcement); only the owner can register and protect trademarks; licensing and revenue retention imply authority to act	K12: general statutes vest legal title and enforcement authority in Department of State; FLVS’s statute lacks explicit grant to sue and other agencies have express enforcement provisions	Court: Florida law is ambiguous on this point; question of state law certified to the Florida Supreme Court

Stalley ex rel. United States v. Orlando Reg'l Healthcare Sys., 524 F.3d 1229 (11th Cir. 2008) (standard of de novo review for standing dismissal)
Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008) (plaintiff must hold a valid trademark to bring Lanham Act claim)
Gaia Technologies, Inc. v. Reconversion Technologies, Inc., 93 F.3d 774 (Fed. Cir. 1996) (ownership of intellectual property required for standing)
Quabuag Rubber Co. v. Fabiano Shoe Co., Inc., 567 F.2d 154 (1st Cir. 1977) (exclusive licensee may have Lanham Act standing; nonexclusive licensee may not)
Forgione v. Dennis Pirtle Agency, Inc., 93 F.3d 758 (11th Cir. 1996) (certify unsettled, material state-law questions to state supreme court)