MIAMI – Florida International University (FIU) lost the
latest round in its trademark infringement case against Florida National
University (FNU) when the 11th U.S. Circuit Court of Appeals entered
a ruling in favor of FNU in July.
FIU’s trademark infringement lawsuit was filed after FNU
changed its name from Florida National College in 2012. FIU appealed the case
to the 11th Circuit Court after a U.S. District Court denied FIU’s
The appeals court noted in its opinion that 12 other
post-secondary schools in Florida used the words Florida and University in
their names, and that those other schools’ names also included some variation
of the words international and national.
“In a crowded field of similar acronyms, the district court
reasonably found that the addition of one more school identifying itself with
an acronym containing the letters F and U would not materially add to the
confusion,” 11th Circuit Judge Stanley Marcus said in his decision.
11th Circuit Senior Judge Joel Dubina and Judge Michael Melloy
joined Marcus in the appeals court ruling in favor of FNU.
Miami patent and trademark attorney Mark Terry said the
blame for the dispute falls on FIU because it chose an especially generic name
for the school.
“This is FIU’s own fault,” Terry told the Florida Record. “They should have come
up with something more unique.”
Terry said the decision in a trademark infringement case
like the one filed by FIU depends largely on the level of confusion caused by
the allegedly infringing mark.
“The touchstone of trademark infringement is the likelihood
of confusion,” Terry said.
Robert Thornburg, the lead trademark attorney at Allen,
Dyer, Doppelt, Milbrath & Gilchrist, PA, echoed Terry’s sentiments about
the importance of confusion in deciding an infringement case.
“The standard is whether there is a likelihood of consumer
confusion,” Thornburg told the Florida
Record. “Both courts gave considerable analysis and appropriate analysis.”
Both attorneys agreed with the court’s conclusion that the
decision of where to attend college is not one taken that is taken lightly.
a field like post-secondary education, where the primary consumers – potential
students (and likely their parents too) – generally spend a substantial amount
of time and energy learning about their options before choosing a school and
are, therefore, unlikely to be confused by similar names,” Marcus said in his
Thornburg said the differences between FIU and FNU are
likely also clear to perspective students because FNU traditionally grants more
associate degrees than four-year degrees. In fact, he said more than 70 percent of the
degrees awarded by FNU have been associate degrees.
“The level-of-purchase decision to go to a two-year college
rather than a four-year college is substantial,” Thornburg said.
Even if a prospective student originally mistakes one school
for the other, Thornburg said the confusion would quickly be cleared up later
in the process.
“People knew if they walked into the place that it wasn’t
FIU,” Thornburg said.
Terry also said confusion, solely based on the names of the
universities, is not likely.
“This is not some impulse shopping situation,” Terry said. “Consumers
will know the difference.”