Royal Palm Properties, LLC v. Pink Palm Properties, LLC
950 F.3d 776
| 11th Cir. | 2020Background
- Royal Palm Properties (plaintiff) is a Boca Raton real-estate broker focused on Royal Palm Yacht & Country Club; it registered the service mark "Royal Palm Properties" in 2012 under Lanham Act §2(f) (claiming acquired distinctiveness) and spent about $1.6M on local marketing.
- Pink Palm Properties (defendant) is a competing broker; it used a website link labeled "Royal Palm Properties" to show listings in the subdivision, prompting suit.
- Royal Palm sued for trademark infringement; Pink Palm counterclaimed to cancel the 2012 registration.
- A jury upheld the validity of the mark but found no infringement. The district court then granted Pink Palm’s Rule 50(b) renewed JMOL on the counterclaim and cancelled the registration, holding the mark lacked both inherent and acquired distinctiveness and was confusingly similar to prior PTO registrations.
- On appeal, the Eleventh Circuit reviewed de novo whether Pink Palm carried the heavy Rule 50(b) burden and concluded the district court erred—reversing the JMOL and reinstating the jury’s validity finding.
Issues
| Issue | Plaintiff's Argument (Royal Palm) | Defendant's Argument (Pink Palm) | Held |
|---|---|---|---|
| Whether JMOL overturning jury verdict was proper | JMOL improper; jury verdict upholding registration should stand unless evidence overwhelmingly favors cancellation | JMOL proper because evidence showed mark was descriptive, lacked secondary meaning, and was confusingly similar to earlier marks | Reversed JMOL; jury verdict could stand — evidence was not so overwhelming as to preclude reasonable jury verdict in favor of validity |
| Distinctiveness / acquired distinctiveness (secondary meaning) | Registered under §2(f) → presumption of acquired distinctiveness; presented substantial advertising and targeted use to support secondary meaning | Mark is descriptive/geographically descriptive; third-party use of same phrase shows lack of exclusivity and rebuts secondary meaning | Pink Palm did not rebut presumption of acquired distinctiveness as a matter of law; reasonable jury could credit Royal Palm’s advertising/use evidence |
| Inherent distinctiveness | If rebut succeeds, Royal Palm could then attempt to prove inherent distinctiveness | Royal Palm’s phrase is descriptive/geographic and not inherently distinctive | Court treated §2(f) presumption as intact; did not grant JMOL invalidating mark on inherent-distinctiveness basis |
| Confusing similarity to prior PTO registrations ("Royale Palms") and standing to raise it | Even if PTO previously rejected a composite application, Pink Palm lacks standing to cancel based on third-party registrations; and no proof of likelihood of confusion | Pink Palm has statutory standing and relied on PTO rejection and similarity to show likelihood of confusion | Pink Palm has statutory standing to challenge based on third-party registrations, but it failed to prove likelihood of confusion as a matter of law—the record lacked evidence on several likelihood-of-confusion factors (including actual confusion, customer overlap, channels, use history) |
Key Cases Cited
- Welding Servs., Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) (distinguishes inherent vs. acquired distinctiveness and presumption rules)
- Coach House Rest., Inc. v. Coach and Six Rests., Inc., 934 F.2d 1551 (11th Cir. 1991) (sets elements for cancelling a registration under §2(d) and lists likelihood-of-confusion factors)
- Conagra, Inc. v. Singleton, 743 F.2d 1508 (11th Cir. 1984) (four-factor test for evaluating secondary meaning via circumstantial evidence)
- Tartell v. S. Fla. Sinus & Allergy Ctr., 790 F.3d 1253 (11th Cir. 2015) (consumer-survey vs. circumstantial evidence for secondary meaning)
- Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (actual confusion is strongest evidence of likelihood of confusion)
- Richardson v. Leeds Police Dep’t, 71 F.3d 801 (11th Cir. 1995) (standard of review for JMOL under Rule 50(b))