FCOA LLC v. Foremost Title & Escrow Servs. LLC
| Decision Date | 12 January 2023 |
| Docket Number | 19-13390 |
| Parties | FCOA LLC, Plaintiff-Appellant, v. FOREMOST TITLE & ESCROW SERVICES LLC, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Eleventh Circuit |
William D. Horgan, Pennington, PA, Tallahassee, FL, Adrienne C. Love, Stearns Weaver Miller Weissler Alhadeff & Sitterson, PA, Tallahassee, FL, for Plaintiff-Appellant.
Robert A. Stok, Natasha Shaikh, Stok Kon & Braverman, Fort Lauderdale, FL, for Defendant-Appellee.
Before Branch, Grant, and Tjoflat, Circuit Judges.
In this trademark infringement case, we must decide whether the parties' FOREMOST trademarks at issue could confuse consumers into thinking that a relationship exists between the parties. Here, the District Court found at summary judgment that there was no likelihood of confusion (and thus no trademark infringement) between the FOREMOST marks of Foremost Insurance Company ("FIC"), a multi-billion dollar insurance company which for 70 years has sold many different lines of insurance, and Foremost Title and Escrow ("FT&E"), a shell company set up to sell title insurance for a law firm. After reviewing the record and with the benefit of oral argument, we disagree with the District Court's likelihood of confusion analysis and thus reverse the Court's grant of summary judgment on FIC's trademark infringement claim.1
In 1952, FIC was founded and started using FOREMOST-branded marks to market and sell its insurance products. After FIC operated independently for several decades, Farmers Insurance Group acquired FIC in 2000. Now a subsidiary of Farmers, FIC continues to sell insurance in the United States and Florida under its FOREMOST-branded marks.2
In total, FIC owns 21 registered trademarks with the word "Foremost." On its website, FIC displays a FOREMOST mark in the following way:
FIC also uses its FOREMOST marks on its online advertisements, social media, emails, magazines, and brochures. From 2011 to 2017, FIC spent an average of $6,765,627 per year to advertise and promote its FOREMOST marks. Moreover, the American Association of Retired Persons ("AARP") endorsed FIC in 1989. Thus, FIC also advertises to AARP members using its FOREMOST marks through AARP's website, email and mailing lists, and the AARP magazine. AARP has 2.7 million Florida members; of these, FIC sent FOREMOST-branded emails or mail solicitations to over 120,000 AARP members in 2016 and 2017. Additionally, FIC's independent insurance agents often use the FOREMOST marks in their own marketing.
FIC has issued over 3 million FOREMOST-branded insurance policies nationwide, including homeowners' insurance, property insurance, fire insurance, business building insurance, landlord insurance, and mobile home insurance. In Florida alone, FIC has over 95,000 customers. FIC primarily sells its insurance policies through its over 33,000 independent agents at 77,000 locations. FIC generated over $2 billion in insurance premiums nationwide in 2017, of which $80 million came from Florida policies. However, one thing FIC does not offer is title insurance. Under Florida law, entities that issue title insurance are prohibited from selling any other type of insurance, and vice versa.
Fla. Stat. § 627.786.3
Enter FT&E. In 2015, two partners of the law firm Stok Folk + Kon, Robert Stok and Joshua Kon, set up FT&E as a Florida-based limited liability company. Stok and Kon created FT&E to do one thing: take over the real estate closings and title insurance4 sales that Stok Folk + Kon previously performed. FT&E shares with Stok Folk + Kon both a physical address in Aventura, Florida (a suburb of Miami), and a phone number.
In preparing to open FT&E, Stok and Kon conducted a search for potential business names. As part of this process, they brainstormed the term "foremost," searched the term on the Florida Secretary of State's online business list, and found no other active title insurance businesses with "foremost" in their name. So, Stok and Kon settled on the name "Foremost Title & Escrow."
FT&E adopted the following mark, which it displays on its website:
FT&E derives its clients from the Stok Folk + Kon law firm and realtor referrals. Still, FT&E markets its title insurance and closing services through online advertisements, social media, a locally distributed magazine, trade shows, public events, and emails to homeowners.
FT&E received its license to operate as a title insurance agency in Florida on October 13, 2015, from the Florida Department of Financial Services ("DFS").5 In May 2016, FT&E began conducting closings within the Tri-County area of South Florida (Miami-Dade, Broward, and Palm Beach counties) and marketing to real estate agents, bankers, mortgage brokers, and developers. FT&E had completed seven closings by October 2017 (when FIC filed this lawsuit) and at least 20 closings by November 2018 (when the parties moved for summary judgment). Obtaining title insurance is an integral part of FT&E's closing services. However, FT&E does not underwrite title insurance itself. Instead, FT&E conducts a title search as a title insurance agent for Fidelity National Title Insurance Company and Old Republic Title Insurance Company based on agency agreements executed in May 2016. Fidelity National and Old Republic then decide whether to issue a policy insuring the purchaser's title to real estate at closing. FT&E earns revenue by charging a fee for closing services and collecting a portion of the insurance premium for the policies it procures.
Seven months after FT&E started conducting closings and obtaining title insurance, FIC sent FT&E a cease-and-desist letter claiming that FT&E's use of the term "foremost" infringed on FIC's FOREMOST marks. FT&E insists that this letter was the first time it learned of FIC and its numerous lines of insurance in Florida. FT&E responded to FIC's letter by disputing the allegations of trademark infringement in both a phone call and a letter to FIC.
On October 4, 2017, FIC filed a five-count complaint against FT&E. FIC alleged trademark infringement under the Lanham Act, 15 U.S.C. §§ 1114 and 1116 (Count I); false designation of origin, a form of unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) (Count II); dilution under the Lanham Act, 15 U.S.C. § 1125(c) (Count III); unfair competition under Florida common law (Count IV); and antidilution under Fla. Stat. § 495.151 (Count V). Following discovery, both parties moved for summary judgment on November 2, 2018.
In August 2019, the District Court issued its order denying FIC's motion for summary judgment and granting FT&E's motion for summary judgment. FCOA, LLC v. Foremost Title & Escrow Servs., LLC , 416 F. Supp. 3d 1381, 1395 (S.D. Fla. 2019). Because the District Court believed that each count of FIC's complaint required a showing of likelihood of confusion between FT&E's and FIC's marks,6 it began (and ended) its analysis there. Id. at 1387–88. The District Court held that the two marks did not create a likelihood of confusion by consumers that a relationship exists between the parties as a matter of law. Id. at 1394. Accordingly, the Court ruled that FIC had no cognizable claim and granted FT&E's motion for summary judgment. Id . at 1394–95. FIC then timely appealed the Court's final judgment as to Count I, its trademark infringement claim.7
On summary judgment, we review district court decisions de novo using the same standard as the district courts. Tana v. Dantanna's , 611 F.3d 767, 772 (11th Cir. 2010). We view all the evidence and draw all reasonable inferences in favor of the non-moving party. Id. A grant of summary judgment is proper where 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).8
We have recognized that district courts deciding summary judgment motions may occasionally draw inferences against the non-movant when "there are no genuine issues of material fact," "no issues of witness credibility," and the district court must decide the motion based on a cold record consisting of "affidavits, depositions, and stipulations." Useden v. Acker , 947 F.2d 1563, 1572 (11th Cir. 1991) (quoting Nunez v. Superior Oil Co. , 572 F.2d 1119, 1123–24 (5th Cir. 1978) ). However, our standard of review on appeal is "unaffected by any inferential conclusions reached below" under the Nunez standard of review. Id. at 1573 & n.14.
Trademark infringement under the Lanham Act occurs when a defendant, without consent, uses "in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" that "is likely to cause confusion" that a relationship exists between the parties. 15 U.S.C. § 1114(1).9 For a trademark infringement claim, a plaintiff must demonstrate (1) that it owns a valid mark with priority, and (2) that the defendant's mark is likely to cause consumer confusion with the plaintiff's mark. See Frehling Enters., Inc. v. Int'l Select Grp., Inc. , 192 F.3d 1330, 1335 (11th Cir. 1999). The parties agree that at least some of FIC's FOREMOST marks have priority over FT&E's. So, because the District Court granted summary judgment to FT&E, the sole issue10 before us is whether a reasonable jury could find that FT&E's FOREMOST mark is likely to cause confusion with FIC's marks.11
The likelihood of confusion analysis involves two steps. At step one, the court considers several factors which can provide circumstantial evidence of likelihood of confusion. See Fla. Int'l Univ. Bd. of Trs. v. Fla. Nat'l Univ., Inc. ("FIU "), 830 F.3d 1242, 1255 (11th Cir. 2016). Or, to put it another way, the court conducts several separate inquiries on the factors which yield "circumstantial facts" that shed light on the likelihood of confusion as a whole.12 Of course, on a motion for summary judgment, these separate inquiries must view all the evidence and draw all reasonable inferences in favor of the non-moving party. This Court has recognized seven...
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