Fla. Int'l Univ. Bd. of Trs. v. Fla. Nat'l Univ., Inc.

Decision Date26 July 2016
Docket NumberNo. 15-11509,15-11509
Citation830 F.3d 1242
PartiesFlorida International University Board of Trustees, Plaintiff–Appellant, v. Florida National University, Inc., d.b.a. Florida National University Online Learning Campus, Defendant–Appellee.
CourtU.S. Court of Appeals — Eleventh Circuit

David Kenneth Friedland, Jaime Rich Vining, Friedland Vining, P.A., Miami, FL, Elaine Dawn Walter, Gaebe Mullen Antonelli & DiMatteo, Coral Gables, FL, for PlaintiffAppellant.

Steven I. Peretz, Michael B. Chesal, Peretz Chesal & Herrmann, PL, Joel S. Perwin, Joel S. Perwin, PA, Miami, FL, for DefendantAppellee.

Before MARCUS, DUBINA and MELLOY,* Circuit Judges

MARCUS

, Circuit Judge:

At issue in this trademark case is whether Florida National University, Inc. (FNU), infringed the trademark rights of Florida International University (FIU) in its registered trademark “FLORIDA INTERNATIONAL UNVERSITY” or committed unfair competition when FNU changed its name from “Florida National College” to “Florida National University.” After thorough review and with the benefit of oral argument, we affirm the district court's entry of final judgment in favor of FNU on all claims.

I.
A.

The parties stipulated to the following basic facts. Founded by the Florida legislature in 1965, FIU is a public body corporate of the State of Florida and part of Florida's State University System. FIU has two major campuses in South Florida, including the 342-acre Modesto A. Maidique Campus in west Miami-Dade County, which features student residences, an eight-story library, a nature preserve, an athletic stadium, and an art museum. FIU is South Florida's only public research university, offering over 180 bachelor's, master's, and doctoral degree programs, as well as a wide variety of non-degree and certificate programs. Its programs include bachelor's degrees in accounting, business administration, criminal justice, health services administration, and nursing, and master's degrees in business administration. FIU serves “traditional” college-bound students, who directly enroll in FIU's bachelor's program after graduating from high school. It has grown to become one of the nation's largest public four-year universities, with over 50,000 full-time students enrolled in the fall of 2012. In 2013, FIU awarded 3,033 masters degrees and 8,460 bachelor's degrees.

FIU owns a “word” trademark for its name, “FLORIDA INTERNATIONAL UNIVERSITY,” and three “design” trademarks featuring the acronym “FIU”:

It has spent substantial resources, time, and effort marketing and promoting its marks locally, nationally, and internationally. FIU promotes its brand through various publications, including FIU Magazine ; its website, www.fiu.edu, which it has operated since 1989; advertisements on the radio and the Internet; campus activities; public service and community outreach activities; and its athletic programs.

FNU is a for-profit, private higher education institution headquartered in Hialeah, Florida. It was founded in 1987 by Dr. Jose Regueiro, Dr. Maria C. Regueiro, and Mr. Omar Sanchez, and initially operated under the name “Florida International Institute.” At its inception, FNU—then operating as Florida International Institute—was accredited to grant associate's degrees as its highest-level offering. In December 1987, FNU changed its operating name from “Florida International Institute” to “Florida International College” in order to reflect the credentials of additional programs it was offering. In March 1989, FIU objected to FNU's name change to Florida International College and filed a trademark infringement action in the United States District Court for the Southern District of Florida. That lawsuit was settled when FIU and FNU stipulated that FNU would change its name from “Florida International College” to “Florida National College.”

From 1989 until 2012, FIU and FNU coexisted “very peacefully” without any confusion caused by FNU's use of the name “Florida National College.” While operating as Florida National College, FNU obtained several federal and Florida trademarks relating to that name. In 2008, FNU—still operating under the name Florida National College—became accredited to offer bachelor's level degree programs, and in December 2011 it became accredited to offer a master's degree in business administration.

On March 4, 2012, FNU officially changed its name to “Florida National University.” Now operating under that name, FNU offers one master's degree program, seven bachelor's degree programs, twenty-two associate's degree programs, nine diploma programs, and nine certificate programs. Out of 2,795 students enrolled in a recent winter term at FNU, nearly half were enrolled in either an Associate of Arts or an Associate of Science program; approximately 20% were enrolled in a developmental program for English as a Second Language; approximately 15% were enrolled in a Bachelor of Arts or Bachelor of Science program; and approximately 1% were pursuing a master's degree in business administration. FNU currently operates two campuses in Miami-Dade County—one of which is less than two miles from FIU's main campus—and also offers online courses. FNU does not offer on-campus housing, and most of its students commute to school at night after working during the day. FNU has its own website, www.fnu.edu, and it advertises on the Internet, billboards, television, print media, and the radio.

On June 26, 2012, FNU filed a federal trademark application for the word mark “Florida National University,” as well as for a design mark:

FIU has opposed registration of these marks, and the United States Patent and Trademark Office has held the registration in abeyance pending the disposition of FIU's opposition proceeding in the Trademark Trial and Appeal Board. However, FNU has successfully registered these same trademarks with the Florida Department of State Division of Corporations. FNU uses the name “Florida National University” and corresponding logo, as well as the acronym “FNU” to advertise and promote its educational services. It has used and promoted the “Florida National” part of its full name since at least 1989, and considers the “Florida National” brand to represent one of its most important assets.

B.

On May 3, 2013, FIU commenced this lawsuit in the United States District Court for the Southern District of Florida against FNU for infringement of FIU's trademarks, asserting six claims for relief: (1) federal trademark infringement under the Lanham Act, 15 U.S.C. § 1114

; (2) federal unfair competition, also under the Lanham Act, 15 U.S.C. § 1125(a) ; (3) Florida trademark dilution and injury to business reputation, Fla. Stat. § 495.151 ; (4) Florida trademark infringement, Fla. Stat. § 495.131 ; (5) Florida common law trademark infringement and unfair competition; and (6) cancellation of State of Florida trademark registration, Fla. Stat. § 495.101. FIU sought several forms of relief, including treble damages, disgorgement of wrongful profits, and a permanent injunction barring FNU from using the name “Florida National University” and the acronym “FNU.”

In August 2014, after conducting discovery, the parties filed cross-motions for summary judgment. While the summary judgment motions were pending, the parties continued preparing the case for a bench trial, which was scheduled for December of that year. The parties submitted an extensive list of pretrial stipulations, identified the issues of fact that remained to be litigated at trial, and submitted witness lists. The parties also submitted exhibit lists, motions in limine, and proposed findings of fact and conclusions of law pursuant to the district court's trial scheduling order.

The circumstances surrounding the ensuing procedural history are essential to understand the resolution of this lawsuit. On November 4, 2014, the district court held a status conference in anticipation of commencing a bench trial on December 1, 2014. At the conference, the court directly asked the parties whether they had any additional evidence to present at trial that was not already “covered in the many submissions” they had made to the court. FNU's counsel answered that, in light of the comprehensive submissions of the parties, the court could resolve many of the issues in the case on summary judgment, and could greatly narrow the issues that would be litigated at trial. FIU's counsel took this plan a substantial step further, telling the district court that the parties' evidentiary submissions and accompanying briefing “would allow [the court] to make the same decision that ultimately [it] could make if [the parties] marched in all these fact and expert witnesses and put them on the stand,” and thus that the court would not “learn anything new at trial that [it had] not already seen from both sides.” He further explained that “there are enough undisputed facts that [the court has] a record [from] which [it] could make a summary judgment decision that in essence is going to be a bench trial decision.” FIU's counsel agreed with the approach suggested by FNU's counsel, whereby the parties “could come in and present to [the court] in the form of either a closing or a summary judgment argument,” which “would hopefully expedite and consolidate everything.” The district court agreed to conduct a hearing at which time the parties could “sum up” their pleadings “instead of” scheduling a bench trial during which the parties would present live evidence. But the court acknowledged that if, after that hearing, it determined that “there [was] a genuine issue of fact that need[ed] to be fleshed out,” it might ask the parties to present additional evidence.

On December 3, 2014, the court heard oral argument—in the court's words—“on cross motions for summary judgment slash bench trial.” FNU's counsel initially suggested that the court, “in the first instance,” evaluate the parties' arguments and evidence under the Federal Rule of Civil Procedure 56

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