SEALED
ORDER
THIS MATTER is before the Court on Plaintiffs Motion for Summary Judgment
I. Background
Plaintiff Florida International University (hereafter “FIU”) brings this action asserting six claims all stemming from the alleged trademark infringement of Defendant Florida National University (“FNU”) in its use of a similar name [D.E. 1]. This is not the first such dispute between the parties, as will be discussed below.
FIU is a 50-year old public university located in Miami, Florida, serving more than 50,000 students and offering more than 180 bachelor’s, master’s and doctoral degree programs [D.E. 19-2 ¶¶ 1-3]. FIU owns United States Trademark Registrations for several marks, including “Florida International University” and “FIU.” Id. at' ¶ 4. FNU is a Hialeah, Florida-based for-profit higher education institution that began operating under the name Florida International Institute in 1987 [D.E. 42 ¶ 27].
In December 1987, Defendant changed its name from “Florida International Institute” to “Florida International College” [D.E. 42 ¶ 29]. This name change triggered the first litigation between the parties. In 1989, FIU brought a trademark infringement action against Defendant for its use of the name Florida International College [D.E. 25-3]. The parties later entered into a settlement agreement, under which Defendant agreed to take the name Florida National College [D.E. 25-4]. The parties coexisted in this way until 2012, when Defendant changed its name to Florida National University after receiving accreditation to offer a master’s degree [D.E. 25-1 ¶ 11].
On May 3, 2013, FIU filed this Complaint alleging that Defendant has infringed upon FIU’s marks by adopting confusingly similar terms in “Florida National University” and “FNU” [D.E. 1], The Complaint asserts six- causes of action: (1) federal trademark infringement, (2) federal unfair competition, (3) Florida trademark dilution, (4) Florida trademark infringement, (5) common law trademark infringement and unfair competition, and (6) cancellation of State of Florida trademark registration. Id. The parties have submitted cross-motions for summary judgment [D.E. 19 and D.E. 25], each of which is supported by depositions, documents and other evidence placed in the record. The parties have agreed that the Court has before it all of the evidence needed to rule on these motions, and that the Court need not take live testimony before ruling on the motions. The Court heard oral arguments on these motions on December 3, 2014.
II. Standard of Review
Summary judgment is appropriate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). Under this standard, “[o]nly disputes over facts that might affect the outcome of the suit under
In evaluating a motion for summary judgment, the Court considers the evidence in the record, “including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials.... ” Fed.R.Civ.P. 56(c)(1)(A). The Court “must view all the evidence and all factual inferences reasonably drawn from the evidence in the light most favorable to the nonmoving party, and must resolve all reasonable doubts about the facts in favor of the non-movant.” Rioux v. City of Atlanta,
Finally, “[s]ummary judgment for a defendant is appropriate when the plaintiff ‘fails to make a sufficient showing to establish the existence of an element essential to [his] ease, and on which [he] will bear the burden at trial.’ ” Cleveland v. Policy Mgmt. Sys. Corp.,
For issues for which the movant would bear the burden of proof at trial, the party seeking summary judgment “must show affirmatively the absence of a genuine issue of material fact: it must support its motion with credible evidence ... that would entitle it to a directed verdict if not controverted at trial. In other words, the moving party must show that, on all the essential elements of its case on which it bears the burden of proof at trial, no reasonable jury could find for the non-moving party. If the moving party makes such an affirmative showing, it is entitled to summary judgment unless the non-moving party, in response, come[s] forward with significant, probative evidence demonstrating the existence of a triable issue of fact.” Fitzpatrick v. City of Atlanta,
However, in a nonjury case such as this, in which the Court is the trier of fact and there are “no issues of witness credibility,” the Court may make factual determinations and draw inferences at the summary judgment stage based on the affidavits, depositions and other evidence in the record, because “[a] trial on the merits would reveal no additional data” nor “aid the determination.” Nunez v. Superior Oil Co.,
III. Count I: Federal Trademark Infringement
In Count I of its Complaint, FIU alleges that Defendant’s use of the terms “Florida National University” and “FNU”
Courts in the Eleventh Circuit consider seven factors when determining whether or not a likelihood of consumer confusion exists: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties’ trade channels and customers; (5) similarity of advertising media; (6) the defendant’s intent; and (7) actual confusion. Frehling,
In its motion for summary judgment, FIU argues that it has produced evidence as to each of these factors, and that there are no genuine issues of material fact as to the likelihood of confusion created by FNU’s marks [D.E. 19-1 at 5]. FNU argues that FIU has failed to meet its burden on all of these factors, and therefore the court should grant summary judgment in its favor [D.E. 25 at 7-19].
1. Type of mark
Classifying the type of mark requires a determination of whether Plaintiffs mark is strong or weak. Frehling,
The strength of a mark may also be affected by the degree to which third parties make use of the mark; the less that third parties use the mark, the stronger it is, and the more protection it deserves. Id. at 1336. A mark’s strength may also be enhanced if the mark is “incontestable” — that is, if it has been registered for five years with the Patent & Trademark Office, and its holder has filed an affidavit as required by 15 U.S.C. § 1065(3). Id An “incontestable” mark may not be challenged on the grounds that it is merely descriptive and without secondary meaning. Dieter,
FIU asserts that the Florida International University mark is “presumptively strong,” based on its status as an incontestable mark [D.E. 19-1 at 6]. FNU argues that the strength of the mark is diluted because the mark employs geographic and generic terms, and because the field is crowded with other universities using similar names [D.E. 25 at 7-10], In FNU’s view, the Florida International University mark is no more than a “highly descriptive” mark and therefore weak. Id. at 7. FIU argues that the words comprising its mark should not be parsed and assessed individually to determine the distinctiveness of the mark, and that other state universities should not be considered third-party users because of their “affiliation” with FIU [D.E. 32 at 5-7].
The Court agrees that the terms comprising the Florida International University mark are either generic or descriptive when viewed in isolation; however, because this mark is “incontestable,” the Court finds that the mark is descriptive with secondary meaning. See Dieter,
The Court finds little merit in FIU’s arguments. FIU makes the conclusory assertion that the “affiliation among these [state] institutions assures that, despite any name similarity, there is no confusion as to the source of the members’ educational services” without citing any record evidence or legal authority to support this conclusion. The Court fails to see how a consumer would know based on their names alone that, for example, Florida International University and Florida Atlantic
FIU also argues that a third-party user must be “unrelated” to the holder of the mark in this analysis, and therefore the other state universities should not be considered third party users. But, once again, the legal support for this argument is lacking. FIU relies primarily on National Football League Pros., Inc. v. Wichita Falls Sportswear, Inc.,
Next, FIU argues that FNU must show a “substantially higher” number of third-party users to give substantial weight to this factor [D.E. 32 at 7]. Again, FIU has cited no authority for this proposition. There is “no hard-and-fast rule about the number of other users which diminish a mark’s strength.” Stuart J. Kaufman, M.D. & Assocs., P.A. v. Bausch & Lomb Inc., No. 8:13-CV-461-T-33EAJ,
2. Similarity of the Marks
Next, the Court must determine the degree to which the two marks are similar. In making this determination, the Court must consider “the overall impressions that the marks create, including the sound, appearance and manner in which they are used.” Frehling,
“National” is defined by Merriam-Webster as “of or relating to an entire nation or country,” or “owned and controlled or operated by a national government.” In contrast, “international” is defined as something “involving two or more countries: occurring between countries.” While it is true that multiple nations are required to make something “international” in character, it is a reach to suggest that an object defined as “international” necessarily includes those objects describes as “national.” In common usage, “national” and “international” are used to describe the domestic or overseas character of the matter being discussed. Contrary to FIU’s arguments, these terms are not so closely aligned as to create a likelihood of confusion among consumers. And while “FIU” and “FNU” obviously share two letters, FNU’s mark is not any more or less similar to FIU’s mark than FAU, FSU or other universities in this crowded field. Given that most state universities self-identify by using such initialisms, it seems unlikely that the “FNU” mark increases the likelihood that a reasonable consumer would be confused as to the source of the services that it represents. See Frehling,
3. Similarity of the products the marks represent
Next the Court must examine whether the parties’ services “are the kind that the public attributes to a single source.” Id. at 1338 (citing E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imports, Inc.,
FIU argues that consumers are likely to be misled because “both parties are degree-granting institutions of higher learning with a significant overlap in curriculum” [D.E. 19-1 at 9]. Specifically, FIU emphasizes that both schools offer bachelor’s degrees in accounting, business administration, criminal justice, health services administration and nursing, and master’s degrees in business administration and health services administration [see D.E. 19-2 ¶¶ 32-37]. Both schools also offer non-degree instruction in English as a Second Language, though the respective ESL programs appear to have different missions [D.E. 19-2 ¶ 33; D.E. 25-1 ¶ 28].
In its cross-motion, FNU emphasizes the schools’ seemingly different missions: while FIU describes itself as a “top-tier research institution,” FNU aims to “prepare its students for immediate gainful employment upon graduation” [D.E. 25 at 13]. In support of this argument, FNU highlights the differences in the student populations. For example, almost half of FNU’s students are seeking associate’s degrees — a degree that FIU does not offer— and another 21 percent of FNU’s students attend only ESL courses [see D.E. 26-4], It is clear to the Court that a significant portion of FNU’s student population is receiving a wholly different kind of education than that offered by FIU. However; it is also clear that FNU offers several degree programs that overlap with those offered by FIU. As discussed above, the question for the Court is whether the services “are so related in the minds of consumers that they get the sense that a single producer is likely to” offer both services. See Frehling,
4. Similarity of the Parties’ Trade Channels and Customers
“Dissimilarities between the retail outlets for and the predominant customers of plaintiffs and defendant’s goods [or services] lessen the possibility of confusion, mistake or deception.” Frehling,
FIU’s retail outlets include a website, two main campuses in Miami-Dade County and facilities elsewhere in South Florida [D.E. 42 ¶¶ 10-11]. Students traditionally apply to the school through its website without a formal interview. Id. at ¶ 25. In addition to traditional on-campus classes, FIU also offers online courses in both undergraduate and graduate level programs. Id. at ¶ 17. FNU also operates two campuses in Miami — Dade County — one of which is about two miles from FIU’s main campus — and a website, and it offers online courses to its students. Id. at ¶¶ 57-63. FIU argues that the similarities in the parties’ outlets weigh in favor of finding a likelihood of confusion [D.E. 19-1 at 10-11]. FIU also notes that it “offers nearly every advanced degree ... that FNU offers and both schools provide ESL [English as a Second Language] and dual-enrollment opportunities” [D.E. 32 at 11], In response, FNU emphasizes the differences in the schools — noting, for example, that FNU does not provide on-campus housing — and argues that the two schools appeal to different customer bases: while FIU primarily serves “traditional” college-bound students, FNU focuses largely on “non-traditional” students, most of whom have been out of high school for 10 years or more before enrolling [D.E. 25 at 14-15],
Clearly, the differences between the schools’ respective student populations are significant. As discussed above, about 70 percent of FNU’s students are seeking either associate’s degrees or attending ESL programs that are not offered by FIU [see D.E. 26-4], In other words, FNU’s predominant customers are in the market for educational services that FIU simply doesn’t provide. Moreover, while FIU “recruits first time college students directly out of high school and targets students who are seeking four-year degrees” [D.E. 42 ¶ 14], most of FNU’s students have been out of high school for an average of 10 years [D.E. 25-1 ¶ 57]. And unlike FIU, FNU does not require students to submit SAT or ACT test scores prior to admission. Id. at ¶ 58. Because it is clear that the vast majority of customers of FNU’s services are highly dissimilar from FIU’s customer base, the possibility of mistake or confusion is lessened in this case. See Frehling,
However, because both schools offer identical bachelor’s and master’s degrees,
5. Similarity of the Parties’ Advertising Media
FIU markets to potential students through self-published magazines and other marketing material; internet marketing, including FIU’s website and search-engine advertisements; internet search-engine optimization methods; advertising on English- and Spanish-language radio stations, including WLRN, the regional public radio station; licensing agreements with third-parties; athletic programs; and on-campus activities open to the public [D.E. 42 ¶ 21]. FNU also maintains a website and advertises on the internet, as well as in print media and with several local television stations and WLRN. Id. at ¶¶ 63-68. FIU argues that there is sufficient evidence of overlap in the two schools’ advertising methods to weigh in favor of a likelihood of confusion [D.E. 19-1 at 11]. FNU concedes that it uses some advertising methods similar to Fill’s, but argues that its method of procuring students relies less on advertising than on personal referrals and face-to-face interviews with students, which “virtually eliminates” the likelihood of confusion [D.E. 25 at 15]. In contrast, nearly all prospective FIU students apply for admission online without interviewing on campus [D.E. 42 ¶ 25]. FNU further argues that the likelihood of confusion is minimal because Internet searches using the term “Florida National University” are unlikely to generate information about FIU [D.E. 25 at 15-16].
In examining the similarity of the parties’ advertising, the relevant inquiry is whether there is likely to be a significant overlap in the audience of the media in which the parties advertise, such that a possibility of confusion could result. See Frehling,
Regarding the parties’ online channels of advertising, it does not appear that their websites would create a likelihood of confusion; in fact, the respective websites are more likely to lead consumers to believe the two schools are distinct enterprises. See Tana v. Dantanna’s,
FIU argues that “[b]oth parties also extensively advertise through printed publications including magazines, brochures, view books and flyers,” but there is little evidence that these advertising channels are likely to reach the same audience. For example, Terry Witherell, FIU’s vice president of external relations, emphasized in his deposition FIU’s self-published magazine, which reaches roughly 120,000 readers “all over the world” [D.E. 19-4 at 9-10]. But there is nothing in the record indicating that any of these readers scattered around the world are likely to also read magazines or other local media in which FNU advertises. See Frehling,
There is one aspect of their advertising where the Court does find an overlap in audience: Both FIU and FNU have advertised on the same local radio station, WLRN. The Court finds that this is sufficient to create a likelihood that the same consumers would be exposed to both marks. But once again the Court does not believe that this factor merits significant weight in its analysis, for the reasons discussed above.
6. Defendant’s Intent
In determining whether consumer confusion is likely, the Court must also examine the defendant’s intent, to determine whether the defendant “had a conscious intent to capitalize on the plaintiffs business reputation, was intentionally blind, or otherwise manifested improper intent.” Custom Manufacturing,
FNU asserts that it changed its name from “Florida National College” to “Florida National University” in a good faith effort to reflect the fact that the school now offers graduate level courses [D.E. 25 at 16].
“[P]rior knowledge of a senior user’s trade mark does not necessarily give rise to an inference of bad faith and may be consistent with good faith.” Michael Caruso,
7. Actual Confusion
As previously discussed, evidence of actual confusion — though not necessary to a finding of a likelihood of confusion — is the best evidence of the likelihood of confusion, and “the quantum of evidence needed to show actual confusion is relatively small.” Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC,
FIU also points to a May 28, 2014, letter sent to FNU from Denise Gumboc, a California high school student who requested “any information that you could send me with regards to both admission to and programs at Florida International University” [D.E. 19-6 at 86]. According to the letter, Gumboc sought this information because she was “investigating the various colleges and universities [that] I am considering attending” as part of a sophomore class project. Id. The Court finds that this evidence does qualify as an instance of actual consumer confusion which merits greater weight than the email from Puig. However, a sole, de minimis instance of consumer confusion is not enough to militate in favor of a finding a likelihood of confusion. See Tana,
FIU has cited other evidence of confusion, including confusion among FIU employees over what, if any, affiliation FNU has with FIU, and one incident in which a radio announcer flubbed-an advertisement for Florida National University by inadvertently calling it “Florida International” [D.E. 19-1 at 15]. But these are either the type of “short-lived confusion” that carries little weight, or simply too vague to credit in this analysis.
After examining all of the Frehl-ing factors and the relevant evidence and arguments, the Court finds that FIU has not established that Florida National University’s mark creates a likelihood of confusion. Though “Florida National University” and “Florida International University” sound similar, there is little else about the two marks or the two
IV. Count II: Federal Unfair Competition
In Count II of the • Complaint, FIU alleges that FNU’s use of its mark falsely represents to the public that FNU is affiliated with FIU, in violation of 15 U.S.C. § 1125(a) [D.E. 1 ¶¶ 42-47], FIU seeks summary judgment in its favor on this claim [D.E. 19-1 at 15-16], FNU argues that in this claim FIU essentially seeks to assert a claim on behalf of the entire state university system, and therefore the motion should fail for lack of standing and for exceeding the scope of the pleadings [D.E. 27 at 11-18].
Section 43(a) of the Lanham Act provides that:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-
(A) is likely to cause confusion, or to cause mistake, or to deceive as to ■ the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a) (emphasis added). Plaintiff asserts that it has established a “false endorsement” claim under 15 U.S.C. § 1125(a)(1)(A) [D.E. 31 at 9], To prove a federal unfair competition claim under 15 U.S.C. § 1125(a)(1)(A), a plaintiff must show (1) that it had prior rights to the mark at issue and (2) that the defendant adopted a mark or name that was the same, or confusingly similar, to plaintiffs mark such that consumers would likely confuse the two. See Suntree Technologies,
However, FIU has advanced an additional theory of unfair competition. FIU alleges that FNU has violated the Lanham Act “by creating the false impression that it is a public university associated with the State University System of Florida, of which FIU is a member, and thus creating the appearance that FIU and FNU are ‘sister institutions’ ” [D.E. 19-1 at 16]. As evidence of this, FIU relies on the following facts: (1) that FNU “purposefully omits identifying itself as ‘for-profit’ or ‘private’ in its promotional materials”; (2) that FNU has adopted the “naming convention” of FIU and other state universities; (3) that FNU has adopted the course numbering system used by state universities, including FIU; and (4) that FNU falsely represented in course catalogs that it has a “transfer and articulation agreement” with FIU. Id. Though FIU has not articulated how these additional facts should be applied under the Frehling likelihood of confusion test, it appears FIU is offering this evidence as further proof of actual confusion, and proof of FNU’s allegedly improper intent.
These additional arguments do not tip the scale in Fill’s favor. In support of its argument, FIU relies primarily on the survey conducted by FNU’s expert, Gerald Ford, who found that anywhere from 30 to 50 percent of those surveyed believed that Florida National University was affiliated with the state of Florida or some other government entity [see D.E. 19-6 at 38-56]. In Plaintiffs view, this is evidence that “the public is confused as to whether FNU is operated by or affiliated with the State of Florida or another governmental entity, just like FIU” [D.E. 19-1 at 17]. However, the relevant inquiry is whether FNU’s use of the mark is likely to lead consumers to confuse FNU with FIU. See Suntree Technologies,
Y. Count III: Florida Trademark Dilution and Injury to Business Reputation
With this claim, FIU alleges that FNU has wrongly diluted the distinctiveness of the FIU marks by using a confusingly similar mark, in violation of Fla. Stat. § 495.151 [D.E. 1 ¶¶ 48-52], Dilution under Florida law “differs from infringement in that it does not necessarily depend on either competing goods or likelihood of confusion.” Anderson v. Upper Keys Bus. Grp., Inc.,
A. Determining whether FIU’s marks are “famous”
“To be ‘famous’ in the context of a trademark dilution claim, the mark must have a degree of distinctiveness and strength beyond that needed to serve as a trademark; it must be truly prominent and renowned.” MPS Entm’t, LLC v. Abercrombie & Fitch Stores, Inc., No. 11-24110-CIV,
(a) The degree of inherent or acquired distinctiveness of the mark in this state;
(b) The duration and extent of use of the mark in connection with the goods and services with which the mark is used;
(c) The duration and extent of advertising and publicity of the mark in this state;
(d) The geographical extent of the trading area in which the mark is used;
(e) The channels of trade for the goods or services with which the mark is used;
(f) The degree of recognition of the mark in the trading areas and channels of trade in this state used by the mark’sowner and the person against whom the injunction is sought;
(g) The nature and extent of use of the same or similar mark by third parties; and
(h) Whether the mark is the subject of a Florida or federal registration.
Fla. Stat. § 495.151(l)(a)-(h). FIU argues that its marks have become famous by virtue of the university’s widespread use of the marks for 50 years, and its regular advertising and promotion using the marks [D.E. 19-1 at 19]. Based on Plaintiffs longstanding and widespread use of the marks “Florida International University” and “FIU,” combined with the federal registration of these marks, the Court finds that Plaintiff has established that its marks have achieved the requisite level of fame within the meaning of the statute.
B. The Likelihood of Dilution
FIU argues that FNU is committing “dilution by blurring” — that is, that FNU is “impermissibly creating an association” arising from the similarity between its mark and FIU’s marks, thus diluting the distinctiveness of FIU’s marks [D.E. 32 at 19]. In determining whether a mark is likely to cause dilution by blurring, the Court may consider all relevant factors, including the following: (i) the degree of similarity between the mark and the famous mark; (ii) the degree of inherent or acquired distinctiveness of the famous mark; (iii) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) the degree of recognition of the famous mark; (v) whether the user of the mark intended to create an association with the famous mark; and (vi) any actual association between the mark and the famous mark. Rain Bird,
In support of its motion on this claim, FIU raises arguments similar to those raised in its infringement claim. FIU argues that FNU’s marks are “strikingly similar in appearance, sound and meaning,” that FIU has exclusively used its marks, and that FNU has “demonstrated an intent to create an association with [FIU] and the State University System, of which FIU is a member” [D.E. 19-1 at 20]. However, the Court has already rejected the most potent of these arguments in the context of FIU’s infringement claim. While “Florida International University” and “Florida National University” may indeed sound the same, the words “international” and “national” have different meanings, and though only two syllables distinguishes the two marks, those two syllables are not insignificant. And given the brevity of the initialisms “FIU” and “FNU,” the one-letter distinction between the two is substantial, making a difference in both the sound and the appearance of these two marks. Therefore, the Court finds that the degree of similarity between the marks does not favor a finding of a likelihood of dilution.
As evidence of intent to create an association, FIU argues that FNU included in its course catalogue a reference to a “transfer and articulation agreement” with FIU [D.E. 19-1 at 20]. As discussed above, FIU is one of 19 colleges and universities listed in FNU’s course catalogue as schools with a “transfer and articulation agreement” with FNU, allowing transfer of credits among the schools [see D.E. 27 at 8]. According to FNU, FIU was inadvertently referenced in the catalogue after the transfer and articulation agreement expired in 2010.
VI. Counts IV, Y and VI: Florida Trademark Infringement, Common Law Infringement and Unfair Competition, and Cancellation of Florida Trademark Registration
FIU has also asserted a trademark infringement claim under Fla. Stat. § 495.131 and a common law claim for infringement and unfair competition [D.E: 1 ¶¶ 53-65]. The parties agree that the test for Florida and common law trademark infringement and unfair competition is the same as that for federal trademark infringement and unfair competition [D.E. 19-1 at 18; D.E. 25 at 20]. See also Investacorp. Inc. v. Arabian Inv. Banking Corp.,
Finally, FIU has asserted a claim to cancel FNU’s State of Florida trademark including the term “Florida National University” pursuant to Fla. Stat. § 495.101(3)(f), based on the alleged likelihood of confusion with FIU’s marks [D.E. 1 ¶¶ 66-70]. Because FIU has failed to establish a likelihood of confusion, this claim also fails. Accordingly, FNU’s motion for summary judgment as to Counts IV, V and VI is GRANTED.
VII. Conclusion
For the reasons stated above, Plaintiff Florida International University’s Motion for Summary Judgment [D.E. 19] is DENIED, Defendant Florida National University, Inc.’s Motion for Summary Judgment [D.E. 25] is GRANTED. Defendant shall file a proposed Order of Final Judgment within 10 days of the date of this Order.
Notes
. The Court notes that Florida National University's logo indicates that the school has been operating since 1982, not 1987 [see, e.g., D.E. 27 at 4]. Though the record is not entirely clear, it appears that the school was originally founded under the name Compu-Tech, before changing its name to Florida International Institute in 1987 [see D.E. 25-3 ¶ 15],
. Decisions of the Fifth Circuit handed down prior to the close of business on September 30, 1981, are binding precedent in the Eleventh Circuit. Bonner v. City of Prichard, Ala.,
. In oral arguments, FIU seemed to suggest that any NFL team may sue to protect the trademark of any other team, and that, by analogy, in this case the other state schools using "Florida” and "University” should be regarded in a similar vein. Therefore, according to FIU, these schools should not be considered third-party users diminishing the strength of FIU's marks. This argument takes quite a leap from the facts of NFL Properties. According to NFL Properties, each NFL team owns its trademarks, which are then licensed by the teams to an NFL subsidiary, National Football League Properties, Inc., which in turn contracts with manufacturers to make NFL-licensed products using the team marks. National Football League Properties,
. An educational institution doing business as Florida International College also operates in Florida [D.E. 42 ¶ 94].
. FNU offers what it describes as a "developmental program for English as a Second Language,” which is apparently aimed at students who are not otherwise enrolled at the school. FIU, on the other hand, offers an English as a Second Language Program as an "academic preparation course” aimed at international students already attending the university [see D.E. 19-5 at 2],
. FNU bases this argument on the report of its expert, Dr. Robert Frank, who conducted Internet searches to determine the frequency of overlap on the web when users search using the FIU and FNU terms [D.E. 25 at 15-16]. FIU filed a motion in limine to exclude Frank’s report, on the grounds that, Franks was not offering expert testimony because the search results of such "rudimentary Internet searches” are within the understanding of the average lay person [D.E. 51 at 13-14]. However, the Court finds that it need not consider Dr. Frank’s report in deciding on these motions, for the reasons discussed above.
. In its cross-motion for summary judgment, FNU also asserts that it changed its name because "in various foreign countries the word 'college' is viewed with disfavor as compared to ‘university’ ” [D.E. 25 at 16-17], This argument is based on a declaration from FNU’s President and CEO, Maria C. Reguiero [D.E. 25-1 ¶¶ 69-70; D.E. 25-2 ¶¶ 41-42], FIU asks that the Court disregard this declaration on the grounds that it contradicts previous explanations for the name change, and the statements contained in the declaration were not adduced during discovery [D.E. 32 at 13-14; D.E. 43 at 4-5]. If the Court were
. FNU asserts that it has since removed any reference to the “transfer and articulation agreement” from its online catalogue [D.E. 27 at 7],
. FIU argues that the Court should disregard FNU’s "good faith” argument because "good faith is not a defense to trademark infringement” [D.E. 32 at 14 (citing Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha,
. The evidence of confusion among FIU employees cited by Plaintiffs is the deposition testimony of Rafael Paz, FIU’s Rule 30(b)(6) designee. In his deposition, Paz stated that he had “received information from employees indicating that they, themselves, have seen an application of the mark and were confused or that they were questioned by someone who was asking about FNU and was confused” [D.E. 19-4 at 47], Paz did not identify these employees, and he could not say how many employees made these observations. Id. at 57. One alleged instance of confusion involved “someone in the community” who approached an FIU employee, who then reported the exchange to Paz. Id. at 57-58. The Court does not credit Paz’s hearsay statements.
. Effective January 1, 2007, the Florida Legislature amended Fla. Stat. § 495.151 to track 15 U.S.C. § 1125(c), the Federal Trademark Dilution Act. See Samson Distrib., Inc. v. Kreger, No. 8:07-cv-290-T-24-MSS,
. FIU has not stipulated to the existence of a previous articulation agreement with FNU