Florida Record

Tuesday, November 12, 2019

Courts and trademark attorneys agree: Confusion between FIU, FNU unlikely

By Carrie Salls | Aug 19, 2016

Trademark 01

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 infringement claim.


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.

“In 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 opinion.


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.”

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Florida International University