College Rivalry No Basis for Trademark Claim

ATLANTA, Ga. (CN) — The 11th Circuit weighed into the rivalry between two Florida universities, ruling that the similarity in their names was not enough to sustain a trademark infringement case.

In the underlying lawsuit, Florida International University had claimed rival school Florida National University Inc. had infringed on its trademark with its similar name.

The state-run FIU was founded in 1965, with two campuses, and it is the state's only public research university.

Founded in 1987, Florida National is a for-profit university that had changed its moniker several times over the years.

It once went by the name Florida International College, but when FIU objected and filed a lawsuit, the for-profit school changed its name to Florida National College.

In 2012, however, Florida National again changed its name, this time to Florida National University, and filed for trademark protection on its FNU design.

FIU opposed the trademark that same year. Federal patent officials held FNU's application, but Florida State had registered FNU marks.

A lawsuit followed in 2013, with Florida International claiming four instances of trademark infringement.

In 2014 a federal judge in Manhattan ruled in favor of Florida National, saying it confusion between the two trademarked colleges was unlikely. The court also rejected the argument that FNU was trying to insinuate with the public that it was part of Florida's state university system.

Florida International appealed the federal court's decision, but the 11th Circuit earlier this week upheld that decision, reasoning that when it came to education choices, prospective students were likely to research their options well enough to avoid confusing the two universities.

"The district court reasonably attributed more weight to the meanings than to the appearance the sound of the marks, especially in a field where so many competitors have names that appear and sound similar," U.S. Circuit Judge Stanley Marcus wrote, noting that "12 other higher education institutions in the state of Florida use both 'Florida' and 'University' in their names."

Marcus added in the 50-page opinion that "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."

The 11th Circuit also took issue with the fact that Florida International had called no witnesses nor provided any evidence of its trademark's commercial strength. The court noted the $15 million the school spends on marketing and community outreach, but that "evidence of promotion efforts is not sufficient to establish a mark's commercial strength because it tells us precious little about the efficacy of those efforts in creating marketplace recognition of FIU's mark."

The court was similarly unimpressed by evidence by FIU that a radio announcer had once confused the two universities and that a FedEx employee had e-mailed an FIU administrator asking whether FNU was accredited with the other school.

Florida National's trademark with Florida remains intact, and it application with the U.S. Patent and Trademark Office can proceed.

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