FCOA LLC v. Foremost Title & Escrow Services LLC

[PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 19-13390
____________________
FCOA LLC,
Plaintiff-Appellant,
versus
FOREMOST TITLE & ESCROW SERVICES LLC,
Defendant-Appellee.
____________________
Appeal from the United States District Court
for the Southern District of Florida
D.C. Docket No. 1:17-cv-23971-KMW
____________________
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2 Opinion of the Court 19-13390
Before BRANCH , G RANT, and TJOFLAT, Circuit Judges.
TJOFLAT, Circuit Judge:
In this trademark infringement case, we must decide
whether the parties’ FOREMOST trademarks at issue could con-
fuse 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 in-
fringement) between the FOREMOST marks of Foremost Insur-
ance 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 infringe-
ment claim.1
I.
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
1 FT&E also appealed the District Court’s denial of attorney’s fees and non-
taxable costs to FT&E in a separate cross-appeal that is not before us.
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19-13390 Opinion of the Court 3
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 Associ-
ation 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
2 One of FIC’s wholly owned subsidiaries, FCOA, owns legal title to FIC’s
FOREMOST trademarks. Although FCOA filed this lawsuit, the real party in
interest is FIC and we refer to these entities collectively as FIC throughout this
opinion.
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4 Opinion of the Court 19-13390
independent insurance agents often use the FOREMOST marks in
their own marketing.
FIC has issued over 3 million FOREMOST-branded insur-
ance policies nationwide, including homeowners’ insurance, prop-
erty 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. How-
ever, 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
3 We need not reach the issue of whether FIC could have created a subsidiary
to sell title insurance under a FOREMOST mark if it had so desired.
4 Title insurance protects home purchasers and lenders from the risks associ-
ated with defects in title, such as issues not discoverable in a title search and
mistakes made in a title search. Fla. Stat. § 624.608 (defining title insurance as
“[i]nsurance of owners of real property or others having an interest in real
property . . . against loss by encumbrance, or defective titles, or invalidity, or
adverse claim to title”).
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19-13390 Opinion of the Court 5
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 Flor-
ida Secretary of State’s online business list, and found no other ac-
tive 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 dis-
tributed magazine, trade shows, public events, and emails to home-
owners.
FT&E received its license to operate as a title insurance
agency in Florida on October 13, 2015, from the Florida
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6 Opinion of the Court 19-13390
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 de-
velopers. 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. How-
ever, 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 Insur-
ance 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
5 Under Florida law, title insurance may only be sold by a “licensed and ap-
pointed title insurance agent employed by a licensed and appointed title insur-
ance agency.” Fla. Stat. § 626.8412(1)(a). A title insurance agency is different
than a title insurer, who underwrites and issues a policy insuring title. The
agent acts on the insurer’s behalf in selling the policy and running a “reasona-
ble title search.”
Id. §§ 627.7845, 627.796. Typically, title insurance agents
must either be attorneys licensed by the state of Florida or pass a licensing
exam.
Id. §§ 626.8417(4) (noting that attorneys are exempt from the licensing
and appointment requirements of title insurance agents), 626.241(7). Like-
wise, title insurance agencies (which employ title insurance agents) must be
licensed by the state and appointed as an agent by a title insurer.
Id.
§§ 626.8418, 626.8417(6) (providing that a title insurance agency owned by
lawyers and not engaged in the practice of law must still comply with licensing
and appointment requirements).
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19-13390 Opinion of the Court 7
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 Flor-
ida. 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 com-
mon 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 re-
quired a showing of likelihood of confusion between FT&E’s and
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8 Opinion of the Court 19-13390
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 be-
tween 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
6 This belief was only partially correct. The District Court correctly recog-
nized that FIC’s trademark infringement and unfair competition claims
(Counts I, II, and IV) do all require a showing of likelihood of confusion.
FCOA, 416 F. Supp. 3d at 1388 & n.4;
Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l
Univ., Inc. (“
FIU ”), 830 F.3d 1242, 1265 (11th Cir. 2016) (citing
Suntree Techs.,
Inc. v. Ecosense Int’l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012));
Custom Mfg.
& Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 652–53 (11th Cir. 2007)
(holding that Florida unfair competition and trademark infringement use the
same likelihood of confusion analysis as the federal Lanham Act test). How-
ever, dilution under federal and Florida law (Counts III and V) do not.
Mose-
ley v. V Secret Catalogue, Inc., 537 U.S. 418, 429, 123 S. Ct. 1115, 1122 (2003);
15 U.S.C. § 1125(c)(1);
Great S. Bank v. First S. Bank, 625 So. 2d 463, 470 (Fla.
1993). As far as we can tell, the District Court never mentioned FIC’s dilution
claims in its order at all despite purporting to decide FIC’s “five claims.”
See
FCOA, 416 F. Supp. 3d at 1386. Since FIC only appealed its trademark in-
fringement claim, we need not address this matter further.
7 FIC failed to mention the unfair competition and dilution claims (Counts II
through V) in its initial appellate brief beyond noting that its complaint alleged
these claims in the facts section of FIC’s brief. Appellant Br. at 3. By failing to
provide any argument or citation that the District Court erred in deciding
these claims in its initial appellate brief, FIC forfeited them.
United States v.
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19-13390 Opinion of the Court 9
II.
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
Campbell, 26 F.4th 860, 873 (11th Cir. 2022) (en banc) (holding that the “failure
to raise an issue in an initial brief on direct appeal” results in forfeiture).
8 FT&E urges us to treat the proceedings below as a bench trial because the
District Court implicitly (and wrongly) decided questions of fact as a matter of
law. In other words, FT&E seeks to shift our standard of review from the
more exacting summary judgment standard—whether any issues of material
fact remain—to the more deferential standard for factual determinations in a
bench trial—whether the District Court’s determinations were clearly errone-
ous. We refuse to do so. Cross-motions for summary judgment may be
treated on appeal as a bench trial only in rare “limited circumstances,” consid-
ering whether (1) there was a hearing on the merits of the motions where the
facts were fully developed; (2) the parties “expressly stipulated to an agreed set
of facts”; and (3) the record shows that the parties “in effect submitted the case
to the court for trial on an agreed statement of facts embodied in a limited
written record, which would have enabled the [district] court to decide all is-
sues and resolve all factual disputes.”
FIU, 830 F.3d at 1252–53 (alterations in
original);
see also Ga. State Conf. of NAACP v. Fayette Cnty. Bd. of Comm’rs,
775 F.3d 1336, 1345–46 (11th Cir. 2015). None of these circumstances are pre-
sent here.
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10 Opinion of the Court 19-13390
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, deposi-
tions, 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.
III.
Trademark infringement under the Lanham Act occurs
when a defendant, without consent, uses “in commerce any repro-
duction, 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 in-
fringement 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
9 That relationship can take two forms. First, a consumer could be confused
about the source of the marks, thinking that the goods or services associated
with a second mark are produced by the original mark holder. Second, a con-
sumer may be confused as to the existence of an affiliation, connection, or
sponsorship between the parties.
Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d
1535, 1546–47 (11th Cir. 1985) (citing
Bos. Pro. Hockey Ass’n v. Dallas Cap &
Emblem Mfg., Inc., 510 F.2d 1004, 1012–13 (5th Cir. 1975)).
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19-13390 Opinion of the Court 11
FOREMOST marks have priority over FT&E’s. So, because the
District Court granted summary judgment to FT&E, the sole is-
sue10 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 cir-
cumstantial 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 sev-
eral separate inquiries on the factors which yield “circumstantial
facts” that shed light on the likelihood of confusion as a whole.12
10 The number of FIC’s marks that have priority over FT&E’s mark is insignif-
icant to our analysis because only one mark needs priority to reverse the grant
of summary judgment.
11 FT&E also provided our panel with its application to register its mark,
FOREMOST TITLE & ESCROW, with the Patent and Trademark Office
(“PTO”), and with the record of the PTO’s subsequent actions. However, the
PTO’s
ex parte decision is not entitled to even persuasive weight in the likeli-
hood of confusion analysis, so it is irrelevant to our decision.
PlayNation Play
Sys., Inc. v. Velex Corp., 924 F.3d 1159, 1169 (11th Cir. 2019).
12 This Court has usually discussed the likelihood of confusion test in terms of
evaluating factors, not as separate inquiries yielding “circumstantial facts.”
See, e.g., FIU, 830 F.3d at 1255;
Tana, 611 F.3d at 774–75;
Frehling, 192 F.3d at
1335. In this opinion, we discuss the multifactor likelihood of confusion test
in these terms to reinforce the idea that
each of these factors is analytically a
separate factual inquiry relevant to, but ultimately independent of, likelihood
of confusion. Therefore, our use of the terms separate inquiries and “circum-
stantial facts” throughout this opinion is meant as a stylistic choice only and
does not substantively change our caselaw.
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12 Opinion of the Court 19-13390
Of course, on a motion for summary judgment, these separate in-
quiries must view all the evidence and draw all reasonable infer-
ences in favor of the non-moving party. This Court has recognized
seven factors as relevant:
(1) the strength of the allegedly infringed mark; (2)
the similarity of the infringed and infringing marks;
(3) the similarity of the goods and services the marks
represent; (4) the similarity of the parties’ trade chan-
nels and customers; (5) the similarity of advertising
media used by the parties; (6) the intent of the alleged
infringer to misappropriate the proprietor’s good
will; and (7) the existence and extent of actual confu-
sion in the consuming public.
Id. Additionally, this Court has also analyzed consumer sophistica-
tion as a separate factor or circumstantial fact relevant to determin-
ing likelihood of confusion,
see id. at 1256, and we analyze it as
such
infra Part III.A.viii.
At step two, the court weighs each of the relevant circum-
stantial facts—independently and then together—to determine
whether the ultimate fact, likelihood of confusion, can reasonably
be inferred.
See Frehling, 192 F.3d at 1335. This inference is also a
factual inquiry.
Id. In drawing the ultimate inference about likeli-
hood of confusion, the two most important circumstantial facts are
respectively actual confusion and the strength of the mark.
FIU,
830 F.3d at 1255
.
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19-13390 Opinion of the Court 13
This two-step analysis is the same whether the court is de-
ciding likelihood of confusion at a bench trial or entertaining a mo-
tion for summary judgment.
See Frehling, 192 F.3d at 1335;
Tana,
611 F.3d at 774–82. On summary judgment, the court conducts the
step one separate inquiries with all the relevant evidence and rea-
sonable inferences cast in the light most favorable to the non-mo-
vant.
See J-B Weld Co., LLC v. Gorilla Glue Co., 978 F.3d 778, 789
(11th Cir. 2020). At step two, the court weighs the relative im-
portance of the circumstantial facts and determines whether these
facts, taken in the light most favorable to the non-movant, would
permit a reasonable fact finder to infer likelihood of confusion.
Id.
Courts may grant summary judgment on likelihood of confusion
even if some circumstantial facts favor the non-movant because the
two-step analysis “presupposes that [the] various [circumstantial
facts may] point in opposing directions.”
Tana, 611 F.3d at 775 n.7.
Before it decided the parties’ motions for summary judg-
ment in this case, the District Court conducted the step one inquir-
ies and found the following circumstantial facts as a matter of law:
(1) FIC’s marks were “relatively weak;” (2) FIC’s marks were not
sufficiently similar to FT&E’s mark; (3) both FIC and FT&E’s
marks represented similar goods or services; (4) both FIC and
FT&E “advertise their services using online advertising, websites
and social media;” (5) FT&E did not intend to cause consumer con-
fusion by infringing on FIC’s marks; (6) no evidence existed of ac-
tual consumer confusion about FIC and FT&E’s marks; and (7)
FT&E’s client base was “sophisticated and unlikely to be
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14 Opinion of the Court 19-13390
confused.”
FCOA, 416 F. Supp. 3d at 1388–95. For factor four,
similarity of trade channels and customers, the Court found evi-
dence that favored both parties and, instead of viewing the evi-
dence in FIC’s favor, concluded the factor was “neutral.”
Id. at
1392. In fact, throughout its opinion the Court consistently drew
inferences against FIC by misapplying the
Nunez standard, a mat-
ter we discuss more
infra Part IV.
Id. at 1387 (citing
Nunez, 572
F.2d at 1123–24). At step two, the District Court mechanically
added up these findings and held, without any further analysis, that
FT&E’s mark did not create a likelihood of confusion with FIC’s
marks as a matter of law.
Id. at 1394–95.
On appeal, FIC argues that the District Court incorrectly
conducted the inquiries as to the first, second, fourth, and fifth cir-
cumstantial facts. FIC also argues that the District Court improp-
erly weighed the circumstantial facts at step two. Accordingly, we
proceed to review the Court’s determinations
de novo.
A.
i. Strength of FIC’s Marks
In trademark law, the strength of a mark is the second most
important circumstantial fact and determines the scope of the
mark’s protection.
Frehling, 192 F.3d at 1335. Strength or “distinc-
tiveness” describes a mark’s ability to allow consumers to identify
the source of a good or service.
Id.;
John H. Harland Co. v. Clarke
Checks, Inc., 711 F.2d 966, 973–74 (11th Cir. 1983). So, strength or
distinctiveness is just another way of talking about consumer
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19-13390 Opinion of the Court 15
recognition. When Joe Consumer goes to his local grocer and buys
Coca-Cola branded products, he can rest assured that he has
bought something with Coca-Cola’s quality standards. As a result,
the stronger Coca-Cola’s mark, the easier it is for consumers to rec-
ognize the product and its source, and thus the more likely it is that
consumers will associate a similar mark with the same source as
Coca-Cola-branded products. 4 J. Thomas McCarthy,
McCarthy
on Trademarks and Unfair Competition (“McCarthy”) § 24:49,
Westlaw (5th ed. database updated Dec. 2022). The stronger the
mark, then, the greater the likelihood of confusion and the greater
the protection given to the mark.
Welding Servs., Inc. v. Forman,
509 F.3d 1351, 1361 (11th Cir. 2007).
We have described two steps in assessing the strength of a
mark: conceptual strength and commercial strength.
The first step in assessing strength is to determine the “con-
ceptual strength” of the mark.
FIU, 830 F.3d at 1258; 2 McCarthy
§ 11:80. Conceptual strength describes the
potential of a mark to
aid consumer recognition, which we evaluate through an abstract
linguistic analysis. Courts determine this potential by placing a
mark on the sliding scale of trademark strength, from weakest to
strongest: (1) generic, (2) descriptive, (3) suggestive, and (4) fanciful
or arbitrary.
Frehling, 192 F.3d at 1335;
Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753, 2757 (1992). As we
have previously explained,
[Generic marks] refer to a class of which an individual
service is a member (e.g., “liquor store” used in
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16 Opinion of the Court 19-13390
connection with the sale of liquor). Descriptive
marks describe a characteristic or quality of an article
or service (e.g., “vision center” denoting a place
where glasses are sold). “Suggestive terms suggest
characteristics of the goods and services and require
an effort of the imagination by the consumer in order
to be understood as descriptive.” For instance, “pen-
guin” would be suggestive of refrigerators. An arbi-
trary mark is a word or phrase that bears no relation-
ship to the product (e.g., “Sun Bank” is arbitrary when
applied to banking services).
Frehling, 192 F.3d at 1335 (citations omitted). Arbitrary, fanciful,
and suggestive marks are generally strong.
Freedom Sav. & Loan
Ass’n v. Way, 757 F.2d 1176, 1182 & n.5 (11th Cir. 1985). Generic
and descriptive marks are so weak that they are not valid trade-
marks. 15 U.S.C. §§ 1115(b)(4), 1065(4). However, if a descriptive
mark, like FOREMOST, acquires “secondary meaning,” then the
descriptive mark is strong enough to be valid under the Lanham
Act.
Royal Palm Props., LLC v. Pink Palm Props., LLC, 950 F.3d
776, 782–83 (11th Cir. 2020). Descriptive marks could (in the ab-
stract) refer to many entities. So, a mark has secondary meaning
when consumers view the mark as synonymous with the mark
holder’s goods or services. For example, American Airlines could
theoretically refer to any airline based in North or South America.
See id. at 783. But with the mark holder’s time and effort, Ameri-
can Airlines now calls to mind a specific airline through its second-
ary meaning.
See id. Incontestable descriptive marks, like the
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19-13390 Opinion of the Court 17
FOREMOST marks, are statutorily presumed to be valid and thus
must have some degree of secondary meaning.
Dieter v. B & H
Indus. of Sw. Fla., Inc., 880 F.2d 322, 328 (11th Cir. 1989). Other-
wise, they would not be valid marks at all.
Id.
Incontestable descriptive marks are also presumed, in our
circuit, to be “relatively strong mark[s].”
Id. at 329;
see also Sover-
eign Mil. Hospitaller Ord. of Saint John of Jerusalem of Rhodes &
of Malta v. Fla. Priory of the Knights Hospitallers of the Sovereign
Ord. of Saint John of Jerusalem, Knights of Malta, the Ecumenical
Ord. (“
Sovereign Mil.”), 809 F.3d 1171, 1183 (11th Cir. 2015).13 This
Dieter presumption can be rebutted by looking to the second step:
commercial strength.
FIU, 830 F.3d at 1256–60.
Commercial strength refers to the real-world consumer
recognition of a mark, most often created by the efforts and work
13 Marks that are registered start off as contestable. Marks become incontest-
able once they have been registered on the Principal Register with the PTO
for at least five years, among other statutory formalities.
Frehling, 192 F.3d at
1336; 15 U.S.C. § 1065 (listing the requirements for incontestability).
FT&E argues that this Court is “an outlier” insofar as we recognize a
connection between incontestable status and mark strength. We have openly
admitted as much.
Sovereign Mil., 809 F.3d at 1183 (indicating that
Dieter is
arguably incorrect because whether a mark is registered says nothing about
consumer perceptions). Although
Dieter may rest on faulty ground, a deci-
sion being wrong does not mean that it lacks legal force.
See id. at 1184. In
our circuit, prior precedent (even if erroneous) continues to bind us until over-
turned en banc or by an opinion of the Supreme Court.
Id. We are still bound
to follow
Dieter.
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18 Opinion of the Court 19-13390
of the mark holder.
See id. at 1258 (“It is surely true that focusing
solely on conceptual strength is an ‘incomplete’ method of analysis
. . . .”);
John H. Harland Co., 711 F.2d at 974 n.13. We have held
that “[d]etermining the strength of any mark requires weighing ei-
ther or both circumstantial evidence of advertising and promotion
and direct evidence of consumer recognition, such as by a survey.”
FIU, 830 F.3d at 1259 (quoting 2 J. Thomas McCarthy,
McCarthy
on Trademarks and Unfair Competition § 11:83 (4th ed. 2016)).
Commonly used evidence of commercial strength includes third
party use; advertising and promotion; sales and number and types
of customers; recognition by trade, media, and customers; and sur-
vey of likely customers. 2 McCarthy § 11:81.
As relevant here, the
Dieter presumption can be rebutted by
a strong showing of third-party use of the mark that significantly
impacts consumer recognition of the original mark.
See FIU, 830
F.3d at 1257;
Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535,
1545 n.27 (11th Cir. 1985) (stating that third-party use matters in
determining “whether the unauthorized third-party uses signifi-
cantly diminish the public’s perception that the mark identifies
items connected with the owner of the mark”). In assessing the
third-party use, we consider: (1) the frequency of third-party use,
(2) the full names that the third-party uses, and (3) “the kind of busi-
ness in which the user[s] [are] engaged.”
FIU, 830 F.3d at 1257.
Though the number of third-party uses is important, “there is no
hard-and-fast rule establishing a single number that suffices to
weaken a mark.”
Savannah Coll. of Art & Design, Inc. v.
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19-13390 Opinion of the Court 19
Sportswear, Inc., 983 F.3d 1273, 1283 (11th Cir. 2020) (quoting
FIU,
830 F.3d at 1257). Moreover, third-party uses in the same market
diminish a mark’s strength more than uses in other markets.14
See
Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259–60 (5th
Cir. 1980);
Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n,
651 F.2d 311, 316 (5th Cir. July 1981).15 And, because the consum-
ing public is unlikely to be aware of mere federal registrations of
third-party marks, such evidence is not probative of the diminished
14 We have not been entirely clear about whether third-party uses in other
markets diminishes a mark’s strength. At times we have appeared to say they
don’t.
See PlayNation, 924 F.3d at 1166 (“[S]imilar marks used by third parties
in unrelated businesses or markets do not diminish the strength of a mark in a
particular market.”);
Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675
F.2d 1160, 1165 (11th Cir. 1982). At other times we have said they do.
See
Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259–60 (5th Cir. 1980)
(“We do not believe that such extensive third-party use and registration of
‘Domino’ can be so readily dismissed. The impact of such evidence is not
dispelled merely because ‘Domino’ cigarettes and matches are not leading
brands, or because some uses of the mark ‘Domino’ by third parties have not
been related to food products.”);
Sun Banks of Fla., Inc. v. Sun Fed. Sav. &
Loan Ass’n, 651 F.2d 311, 316 (5th Cir. July 1981). The best way to synthesize
the caselaw is to say that other-market uses can diminish a mark’s strength,
but not always to a significant extent—certainly not always to the point of
making a mark weak.
15
Bonner v. City of Prichard, 661 F.2d 1206, 1207 (11th Cir. 1981) (en banc)
(all Fifth Circuit decisions handed down before October 1, 1981, are binding
precedent in the Eleventh Circuit).
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20 Opinion of the Court 19-13390
distinctiveness of the original mark.16
Turner v. HMH Publ’g Co.,
380 F.2d 224, 228 & n.2 (5th Cir. 1967).
Here, “Foremost” is a descriptive mark, a self-laudatory
term meaning the best.
Platinum Home Mortg. Corp. v. Platinum
Fin. Grp., Inc., 149 F.3d 722, 728 (7th Cir. 1998) (describing self-
laudatory marks as descriptive). Because it is incontestable, this
mark is presumed to be a relatively strong mark.
Dieter, 880 F.2d
at 329. The District Court held that the existence of 62 registered
trademarks and 541 registered business names in various states us-
ing the term “foremost” provided evidence of third-party use
16 To be fair, we have been unclear on this point as well. We have stated that
“mere registrations” of similar marks will not weaken a mark.
Turner v. HMH
Publ’g Co., 380 F.2d 224, 228 & n.2 (5th Cir. 1967). At other times, however,
we’ve seemingly relied on mark registrations and business lists as a proxy for
distinctiveness without demanding any evidence that they have affected pub-
lic perception in any way.
See AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1539
(11th Cir. 1986);
Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d
3, 13 (5th Cir. 1974),
abrogated by B & B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. 138, 135 S. Ct. 1293 (2015).
However, our oldest case in this arena directly addressing this ques-
tion,
Turner, controls. The District Court below used an even older case as
support for the proposition that registrations are evidence of third-party use.
See El Chico, Inc. v. El Chico Cafe, 214 F.2d 721, 725 (5th Cir. 1954). In
El
Chico, the Former Fifth Circuit considered trademark registrations alongside
other evidence of third-party use to determine that a mark was weak.
Id. Still,
El Chico did not directly address this issue, and so it did not foreclose the hold-
ing in
Turner. Thus,
Turner controls.
See Scott v. United States, 890 F.3d
1239, 1257 (11th Cir. 2018) (“The prior-panel-precedent rule requires subse-
quent panels of the court to follow the precedent of the first panel to address
the relevant issue . . . . ”).
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19-13390 Opinion of the Court 21
sufficient to rebut the
Dieter presumption.
FCOA, 416 F. Supp. 3d
at 1390 (citing
El Chico, Inc. v. El Chico Cafe, 214 F.2d 721, 725 (5th
Cir. 1954) and
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1539 (11th
Cir. 1986)). The Court did so without analyzing the industries or
names of the marks or businesses presented.
Id. On appeal, FIC
first argues that the District Court erred by relying solely on trade-
mark registrations and business lists to rebut the
Dieter presump-
tion. FIC argues in addition that the District Court erred when it
failed to analyze the additional “commercial strength” evidence
FIC proffered of its marketing and promotional efforts.
Conducting the analysis
de novo, we conclude that the
Di-
eter presumption remains unrebutted. As explained above, the
mere fact that a mark has been registered or that a business is
named in a registry is not evidence of third-party
use.
Turner, 380
F.2d at 228. FT&E simply provided a list of businesses printed from
Secretary of States’ webpages and trademark registrations. In re-
sponse, FIC has shown that none of the “active” entities on the
business lists (other than FIC) contain the word “insurance” in their
name, the business lists do not show which industries the compa-
nies operate in, and no registered trademarks with the term “Fore-
most” are registered for use in the insurance industry (other than
FIC). Our review of the evidence in the light most favorable to FIC
shows that there is no
reliable evidence that these businesses or
marks are active. Inactive businesses and marks are not relevant to
our analysis.
See id. Given this (lack of) evidence, we hold that the
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22 Opinion of the Court 19-13390
Dieter presumption remains unrebutted, and FIC’s marks are still
“relatively strong.”
Dieter, 880 F.2d at 329.
FIC has also provided evidence of consumer recognition
that bolsters its already presumptively strong mark. While FT&E
argues FIC only introduced evidence of its $7,000,000-a-year adver-
tising budget,17 FIC has also provided evidence about the size and
scope of its agent class, its over $2.4 billion in annual insurance pre-
miums, its recognition in independent publications, an AARP en-
dorsement, and a survey showing that a majority of South Florida
respondents had heard of FIC. Viewing the evidence in FIC’s favor,
a reasonable factfinder conducting a separate inquiry on the
strength of FIC’s marks could find the marks strong based on both
17 We have previously doubted the probative value of “raw advertising fig-
ures,” that is, the dollar amount that a company spends to advertise its mark.
In
FIU, we stated that a district court under clear error review was permitted
to discount evidence of raw advertising figures, standing alone, as it impacts
the strength of the mark. 830 F.3d at 1259 (“There simply was not sufficient
evidence of commercial strength in the record to [require] the district court to
ignore the substantial third-party usage.”). We reasoned that raw advertising
figures alone tell us little about the efficacy of those efforts in the mind of con-
sumers.
Id. We stated that this evidence was far more probative if there was
comparative spending evidence with others in the industry or direct evidence
of consumer recognition.
Id. In a later case, we held that it was also not clear
error for a court to find, with additional evidence beyond raw advertising fig-
ures, that advertising expenditures contribute to the strength of a mark.
Play-
Nation, 924 F.3d at 1166 n.3. Because it was not clear error to consider that
evidence in
PlayNation, we can consider that same type of evidence on sum-
mary judgment.
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19-13390 Opinion of the Court 23
the
Dieter presumption and the additional evidence of commercial
strength.
ii. Similarity of the Marks
The second inquiry requires us to examine the similarity be-
tween the parties’ marks.
FIU, 830 F.3d at 1260. “The greater the
similarity, the greater the likelihood of confusion.”
Id. Of course,
the marks don’t need to be identical to support a finding of similar-
ity, because the key is to determine if the similarities are sufficient
to deceive the public.
Id. We “consider[] the overall impressions
that the marks create, including the sound, appearance, and man-
ner in which they are used,” rather than comparing isolated fea-
tures.
Frehling, 192 F.3d at 1337;
Sovereign Mil., 809 F.3d at 1186.
Because of its malleability, we have described this analysis as a
“subjective eyeball test.”
AmBrit, 812 F.2d at 1540.
The District Court stated that both marks started with
“Foremost” and looked similar at first glance.
FCOA, 416 F. Supp.
3d at 1390–91. However, the District Court focused on the differ-
ences in color, fonts, and logos, and the words that followed the
FOREMOST marks.
Id. Specifically, it found that the words “title”
and “escrow” separated FT&E’s mark from FIC’s FOREMOST
marks, because it is not obvious to the public that “title” refers to
title insurance.
Id. Thus, the District Court concluded that the
marks were dissimilar.
Id.
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24 Opinion of the Court 19-13390
FIC argues that the District Court did not fully consider the
commercial impression of the marks and that its side-by-side anal-
ysis of the marks was insufficient. Considering similarity anew, we
believe a reasonable factfinder could find that the parties’ marks are
similar in sound, appearance, meaning and commercial impres-
sion:
Our analysis focuses on the distinctive parts of marks.
See
AmBrit, 812 F.2d at 1541;
John H. Harland Co., 711 F.2d at 976.
“Foremost” is the most distinctive part of both parties’ marks, and
far more important than generic words like title and escrow.
See
PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159, 1168 (11th
Cir. 2019);
John H. Harland Co., 711 F.2d at 976. With that frame
of reference, the marks are similar in sight, sound, and meaning.
The logos create a similar overall effect and accentuate the marks’
similarities, because both feature two lines of text, with “Fore-
most” in bold, sans-serif type above smaller letters detailing the ge-
neric parts of the marks, to the right of a stylized “F.”
See Safeway
Stores, Inc. v. Safeway Disc. Drugs, Inc., 675 F.2d 1160, 1165 (11th
Cir. 1982) (focusing on overall effect of a mark and ignoring its non-
distinctive parts);
Exxon Corp. v. Tex. Motor Exch. of Hous., Inc.,
628 F.2d 500, 505 (5th Cir. 1980) (noting that two marks were sim-
ilar when they were both in block letters on an all-white back-
ground with blue underneath). This conclusion is bolstered by
considering how the marks are used in the actual world, something
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19-13390 Opinion of the Court 25
the District Court did not do.
See Conagra, Inc. v. Singleton, 743
F.2d 1508, 1514 (11th Cir. 1984) (noting that “Singleton,” the most
distinct part of the mark at issue, was emphasized on materials in
the marketplace). FT&E often refers to itself simply as “Foremost”
on its website, which is precisely FIC’s trademark and the most crit-
ical part of other marks.
Admittedly, there are some differences in the marks because
the parties use different fonts and colors. FT&E relies on a green
and gold color scheme, whereas FIC relies on black and blue colors.
We do not find these minor differences to be significant on sum-
mary judgment, given that “Foremost” is the dominant part of
both marks and what consumers would focus on.
Conagra, 743
F.2d at 1514;
see also Carnival Brand Seafood Co. v. Carnival
Brands, Inc., 187 F.3d 1307, 1312 & n.7 (11th Cir. 1999);
Safeway,
675 F.2d at 1165. Those differences are even less important because
consumers are unlikely to confront them side-by-side in the real-
world where they could be discerning about those differences.
See
Sun-Fun Prods., Inc. v. Suntan Rsch. & Dev. Inc., 656 F.2d 186, 192
(5th Cir. Unit B Sept. 1981) (stating that the likelihood of confusion
may be increased when consumers are unable “to compare the
products side by side and observe the precise differences in appear-
ance”). Drawing all inferences in FIC’s favor, a reasonable fact-
finder could determine that these two marks are similar.
iii. Similarity of the Products
The third circumstantial fact, the similarity of the products,
concerns whether the products are of a kind the public could
think
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26 Opinion of the Court 19-13390
originate from a single source.
Frehling, 192 F.3d at 1338. Here,
both parties sell insurance. FT&E argues that there can be no con-
fusion because a consumer could not purchase a policy of FIC that
overlaps with a policy of FT&E, that the policy itself would not
bear the FOREMOST marks because FT&E is merely an agent of
larger national title insurance companies, and that FIC cannot con-
duct closings or issue title insurance under Florida law. While title
insurance is a monoline industry in Florida, consumers are unlikely
to know that and, even if they did, could potentially assume that
FT&E was a subsidiary or affiliate of FIC. Moreover, the logo or
trademark on the insurance policy does not somehow transform
insurance into the mere work of an agent separate from the insur-
ance itself and, even if it did, by the time FT&E’s customers actu-
ally see FT&E’s policies, they almost certainly have already been
exposed to FT&E’s “foremost” mark. Accordingly, a reasonable
factfinder could find that the parties’ products are similar.
iv. Similarity of Trade Channels and Customers
The fourth circumstantial fact, similarity of trade channels
and customers, focuses on “where, how, and [with] whom” the
parties transact with their actual and potential customers.
Sover-
eign Mil., 809 F.3d at 1187–88 (“Dissimilarities between the retail
outlets for and the predominant consumers of plaintiff’s and de-
fendants’ goods lessen the possibility of confusion . . . .” (quoting
Amstar Corp., 615 F.2d at 262));
Safeway, 675 F.2d at 1166;
see also
Freedom Sav. & Loan Ass’n, 757 F.2d at 1184–85, 1184 n.7 (holding
for this circumstantial fact that it is enough if a plaintiff “show[s]
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19-13390 Opinion of the Court 27
that the same customers are likely to use both services”). The pri-
mary focus in this inquiry is on the overlap of the customer bases,
because the greater the overlap, the greater the likelihood that con-
sumers will be exposed to both marks and become confused.
See
Savannah Coll. of Art & Design, Inc., 983 F.3d at 1284. Therefore,
direct competition or identity of sales is not required; we look to
whether the companies “cater to the same general kinds of individ-
uals.”
Sovereign Mil., 809 F.3d at 1188;
PlayNation, 924 F.3d at
1168. Likewise, the similarity of trade channels analysis focuses on
whether the medium (e.g., stores, agents, online, mail, etc.) that
customers frequent would expose them to both marks, not on
whether the products or services are sold in the same location or
manner.
Frehling, 192 F.3d at 1339;
see also Century 21 Real Est.
Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992).
Here, the District Court correctly recognized that FIC pro-
duced evidence tending to show that FIC and FT&E’s customer
bases overlapped, i.e., both targeted homeowners seeking home
insurance-related products.
FCOA, 416 F. Supp. 3d at 1391–93.
However, the District Court also credited FT&E’s argument that
FIC and FT&E “differ[ed]” because most of FT&E’s customers
came from referrals by Stok Folk + Kon, realtors, brokers, and
other agents.
Id. at 1392. Faced with contradictory evidence, the
Court found this factor to be neutral instead of applying the sum-
mary judgment standard.
Id.
Conducting the analysis
de novo, we agree with the District
Court that both parties targeted the same type of individuals, i.e.,
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28 Opinion of the Court 19-13390
“real property purchasers” or sellers who need insurance. Accord-
ingly, FIC has put forth evidence tending to show that its customer
base overlapped with FT&E’s. However, we disagree with the Dis-
trict Court and FT&E that FT&E has introduced any evidence
tending to show that its customer base did not overlap with FIC’s.
FT&E primarily gets customers from its referral system, yes, but
the persons buying title insurance are the same type of people
(home buyers and sellers) who will likely need homeowners’ insur-
ance and thereby could be exposed to both marks.
See Freedom
Sav. & Loan Ass’n, 757 F.2d at 1184 n.7 (noting that it is sufficient
for plaintiffs “to show that the same customers are likely to use
both services”);
Safeway, 675 F.2d at 1166 (focusing on the overlap
of actual or potential customers). Nothing prevents a potential
home buyer or seller from purchasing homeowner’s insurance
from FIC, noting the FOREMOST mark, and then being referred
to FT&E for closing services and title insurance. Indeed, consider-
ing the evidence FIC has introduced about its presence in Florida,
this scenario is quite plausible.
On appeal, FT&E defends the Court’s finding that FT&E’s
customer base differed from FIC with three additional arguments:
(1) FT&E only sells through its physical location in Aventura, not
through other trade channels or in other geographic regions; (2)
FT&E sells directly to consumers at its office, as opposed to inde-
pendent agents; and (3) title insurance is a monoline industry in
Florida. We find all three unpersuasive.
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19-13390 Opinion of the Court 29
As an established multi-billion dollar nationwide insurance
company, FIC naturally sells insurance through many more medi-
ums and in many more locations than a small start-up like FT&E.
The question, however, is not whether one party’s trade channels
and customer base exceeds the other’s, but whether the parties’
trade channels and customer bases
overlap. FIC’s insurance prod-
ucts are sold by its independent agents in physical locations
throughout Florida. In other words, FIC sells insurance in Florida
in the exact same manner as FT&E. Under our precedent, how-
ever, FIC would not even need a physical presence in Florida to
show overlap. In
Safeway, we held that even though Safeway the
grocer had no physical stores in Florida, its in-state food purchases
provided a presence that allowed consumers to potentially mistake
Safeway Discount Centers for Safeway the grocer. 675 F.2d at
1166. Likewise, FIC’s over 95,000 customers in Florida establish its
presence in Florida. Nor does title insurance being a monoline in-
dustry in Florida prevent the parties’ customer bases from overlap-
ping; as explained above, home buyers and sellers are likely to buy
both homeowner’s insurance and title insurance. Drawing all rea-
sonable inferences in favor of FIC, as we must, a reasonable fact-
finder could find that FIC’s actual and potential consumer base
overlaps with FT&E’s.
v. Similarity of Advertising
The fifth circumstantial fact, similarity of advertising, fo-
cuses on the audience reached by the advertisements of the parties.
Sovereign Mil., 809 F.3d at 1187–88. Like with similarity of trade
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30 Opinion of the Court 19-13390
channels and customer bases, the greater the overlap or similarity
of the audiences, the greater the likelihood of confusion.
Id. Iden-
tity of advertising methods is not required, but instead we assess
whether the overlap in readership of the parties’ advertisements is
“significant enough” that “a possibility of confusion could result”
in a fashion very similar to the previous factor.
PlayNation, 924
F.3d at 1168–69;
Sovereign Mil., 809 F.3d at 1188 (quoting
Frehling,
192 F.3d at 1340).
As the District Court found, both parties advertise through
similar mediums, i.e., online advertising, magazines, brochures,
emails, social media, and their websites.
FCOA, 416 F. Supp. 3d at
1392. On appeal, FT&E argues that it directs its advertisements to
a different “universe of consumers” than FIC, namely “real estate
developers, purchasers, sellers, lenders, and borrowers,” and so
there is no audience overlap. Appellant Br. at 41–42. But FT&E’s
argument fails on its face. Even if FT&E focuses its advertisements
on real estate professionals, it admits it also advertises to “purchas-
ers, sellers, lenders, and borrowers,” the exact sort of people who
may be interested in buying FIC’s homeowner’s insurance. For ex-
ample, FT&E’s website—which bears FT&E’s logo on each of its
pages—lists “homeowners” as among the customers served by
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19-13390 Opinion of the Court 31
FT&E. On summary judgment, this is sufficient to show overlap
in advertisement audience.18
vi. Defendant’s Intent
With respect to the sixth circumstantial fact, the defendant’s
intent to confuse consumers, the District Court found that FT&E
had no intent to “capitalize on . . . [FIC]’s business reputation.”
FCOA, 416 F. Supp. 3d at 1393 (quoting
FIU, 830 F.3d at 1263). Be-
cause FIC did not take issue with this finding nor the weight as-
cribed to it, FIC has forfeited the analysis applicable to this circum-
stantial fact and we decline to address it further.
See United States
v. Campbell, 26 F.4th 860, 873 (11th Cir. 2022) (en banc) (explaining
that issues not briefed on appeal are forfeited and thus may only be
addressed in extraordinary circumstances).
vii. Actual Confusion
Actual confusion asks whether there is evidence in fact of
confusion.
Frehling, 192 F.3d at 1340. Though it is the most im-
portant circumstantial fact, it is not a requirement for finding a like-
lihood of confusion.
Id. The District Court found no evidence of
actual confusion.
FCOA, 416 F. Supp. 3d at 1393–95. While FIC
produced two expert witnesses who used internet surveys as the
bases of their opinions that there was the potential for actual
18 We note, however, that as the internet ages and becomes ubiquitous, having
a website or advertising online informs the court precious little about expo-
sure and confusion.
See Network Automation, Inc. v. Advanced Sys. Con-
cepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011).
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32 Opinion of the Court 19-13390
confusion, the District Court discounted this evidence.
Id. at 1394.
The District Court stated that survey evidence was of slight weight
and viewed unfavorably in the Eleventh Circuit, and FIC’s surveys
were even less probative because they did not distinguish between
confusion caused by a word (that is, “Foremost”) and the whole
mark.
Id. On appeal, FIC does not dispute the lack of evidence of
actual confusion. Instead, FIC argues that the lack of confusion
should be given no weight because there was no time for actual
confusion to develop.
We agree with FIC. While no hard and fast rules set how
much evidence is necessary to show actual confusion, we have said
that courts must take into account the circumstances of each case.
J-B Weld Co., 978 F.3d at 793 (citing
Lone Star Steakhouse & Sa-
loon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.
1997)). Those circumstances include the extent of advertising, the
length of time for which an infringing product has been advertised,
and any other factors that might influence the reporting of actual
confusion. The District Court did not consider these circum-
stances when assessing the lack of evidence of actual confusion.
In
Hard Candy, LLC v. Anastasia Beverly Hills, Inc., we
stated that a lack of evidence showing actual confusion can be dis-
counted when there is not an “adequate period of time” for actual
confusion to develop among consumers. 921 F.3d 1343, 1362–63
(11th Cir. 2019). In that case, cosmetic maker Anastasia had sold
nearly 250,000 makeup kits over a period of eight months, contain-
ing a mark allegedly similar to Hard Candy’s trademark.
Id.
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Despite that, Hard Candy could not point to a single instance of
actual confusion.
Id. We stated that the district court did not
clearly err in finding that the lack of evidence of actual confusion
was probative.
Id. However, on summary judgment, we must
take every inference in FIC’s favor, something the District Court
did not do here. Even assuming it was correct to reject the survey
data that FIC provided, we think the lack of evidence of actual con-
fusion is not particularly probative. A reasonable inference for FIC
is that actual confusion did not have adequate time to develop,
given that FT&E started in May 2015, and then conducted at least
20 closings between May 2016 and November 2018, when motions
for summary judgment had been filed. This is different from
Hard
Candy, where we held it was not clear error to state that the lack
of actual confusion was probative where potentially millions of
consumers were exposed to the infringing mark, hundreds of thou-
sands of consumers bought the makeup palette, and not a single
instance of actual confusion arose.
See id.;
see also Tana, 611 F.3d
at 779–80 (finding that no reasonable jury could find actual confu-
sion where there were two instances of actual confusion where a
company served over a million customers in five years, and affirm-
ing a grant of summary judgment for the defendant). Thus, a rea-
sonable factfinder could discount the importance of the evidence
of actual confusion.
viii. Consumer Sophistication
Typically, we analyze likelihood of confusion using only
seven factors or, as we put it earlier, seven separate inquiries.
See,
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34 Opinion of the Court 19-13390
e.g., Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114, 127 (11th Cir.
2022) (“In determining the likelihood of confusion, we consider the
following seven factors . . .”);
Sovereign Mil., 809 F.3d at 1181
(same);
Tana, 611 F.3d at 774–75 (same);
Frehling, 192 F.3d at 1335
(same). Indeed, courts in this circuit are required to consider the
seven factors analyzed above when conducting a likelihood of con-
fusion analysis.
J-B Weld Co., 978 F.3d at 794. However, we have
recognized that consumer sophistication may also be relevant to
assessing likelihood of confusion.
See, e.g., FIU, 830 F.3d at 1256,
1265 (analyzing consumer sophistication separately from the seven
factors);
Welding Servs., 509 F.3d at 1361 (“[S]ophisticated consum-
ers [of complex goods or services] . . . are less likely to be confused
than casual purchasers of small items.”);
Freedom Sav. & Loan
Ass’n, 757 F.2d at 1185 (“[S]ince most of these customers are mak-
ing a major investment, they are likely to be especially well-in-
formed buyers. The sophistication of a buyer certainly bears on
the possibility that he or she will become confused by similar
marks.”). After all, consumers that either have special knowledge
of the industry through education or experience,
see Welding
Servs., 509 F.3d at 1361, or have invested significant time into be-
coming well-informed due to the nature of the purchase,
see Free-
dom Sav. & Loan Ass’n, 757 F.2d at 1184–85, are more likely to
distinguish between similar marks and thereby avoid becoming
confused. As both the parties and the District Court considered
consumer sophistication, we find it appropriate to do so as well. In
so doing, we recognize only that consumer sophistication may im-
pact likelihood of confusion and do not require that the factor be
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19-13390 Opinion of the Court 35
considered in every, or even most, likelihood of confusion anal-
yses.
Cf. J-B Weld Co., 978 F.3d at 794;
see also Star Indus., Inc. v.
Bacardi & Co. Ltd., 412 F.3d 373, 389–90 (2d Cir. 2005) (likewise
treating consumer sophistication as a separate factor).
The District Court accepted FT&E’s argument that its “cli-
ent base is largely comprised of real estate developers, referring
realtors, sellers, lenders and mortgage brokers who are sophisti-
cated and unlikely to be confused.”
FCOA, 416 F. Supp. 3d at 1392.
We agree with FT&E that real estate developers and realtors are
sophisticated in real estate purchases and that individual home buy-
ers and sellers are likely to be sophisticated due to the importance
and size of the transaction. Appellee Br. at 19. However, as FT&E
points out, “consumers generally have minimal involvement in the
selection of a title insurance provider and rely entirely on the rec-
ommendations of their agents or professionals.”
Id. at 19–20. Or,
in other words, individual home buyers and sellers may be well-
informed when buying or selling a home, but that sophistication
does not transfer to buying title insurance. This makes sense; title
insurance is a complex legal matter that, for the consumer, only
involves a single, relatively small payment.19 Thus, home buyers
19 In Florida, Office of Insurance Regulation sets title insurance premiums. Fla.
Stat. § 627.7711; Fla. Admin. Code Ann. r. 69O-186.003(1). Currently, the rates
are $5.75 of premium per $1,000 of the purchase price for the first $100,000 of
liability written and $5.00 per $1,000 of liability written from $100,000 to $1
million. Fla. Admin. Code Ann. r. 69O-186.003(1). So, for a policy that insures
the new owner for $500,000, the title insurance premium would be at most a
one-time payment of $2,575.
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36 Opinion of the Court 19-13390
and sellers are likely to be unsophisticated when buying title insur-
ance.
FT&E argues that the unsophistication of these consumers
weighs in its favor because their unsophistication makes them
more likely to rely on sophisticated agents and professionals who
would be more likely to be able to distinguish between similar
marks. Appellant Br. at 18–19. FT&E may well be able to establish
this tendency at trial. But on summary judgment, we must draw
inferences in the non-movant’s favor, and we see an alternative in-
ference that may be drawn from consumers’ unsophistication
about title insurance. While unsophisticated consumers might rely
on the advice of sophisticated professionals, they might also rely on
their earlier research into home purchases and insurance. If they
came across and trusted FIC’s FOREMOST brand, then they may
decide to trust another “foremost”-branded insurance company
due to its possible affiliation with FIC. In fact, this possibility is
precisely what companies seek to avoid when they file trademark
infringement lawsuits. So, without sufficient evidence in the rec-
ord to definitively decide this issue one way or the other and being
on summary judgment, we make this inference and hold that a rea-
sonable factfinder could find FT&E’s customer base to be unso-
phisticated and thus more likely to be confused by the similarity
between the parties’ marks.
B.
To recap, our separate inquiries on the evidence have
yielded the following circumstantial facts under the summary
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19-13390 Opinion of the Court 37
judgment standard: (1) FIC’s mark is strong; (2) FIC and FT&E’s
marks are similar; (3) FIC and FT&E sell similar products; (4) FIC
and FT&E’s trade channels and customers overlap; (5) FIC and
FT&E’s advertising audiences overlap; (6) FT&E did not intend to
cause consumer confusion about the existence of a relationship be-
tween the parties; (7) there is no evidence that consumers have ac-
tually confused FT&E with FIC; and (8) title insurance purchasers
are unsophisticated and thus may be confused by similar marks.
Now, at the second step, we must weigh these circumstantial facts
in the light most favorable to FIC to determine whether a reasona-
ble factfinder could infer the ultimate fact, likelihood of confusion.
Here, similar unsophisticated consumers would see similar marks,
displayed in similar advertising media directed at similar audiences,
selling similar insurance products through similar mediums in the
state of Florida. While there is no evidence of actual confusion
amongst consumers about the parties’ relationship, this lack of ev-
idence has relatively little weight under these facts because there
simply was not enough time for actual confusion to develop.
See
Hard Candy, 921 F.3d at 1362–63. Similarly, while evidence of an
intent to cause consumer confusion weighs heavily in favor of find-
ing a likelihood of confusion amongst consumers,20 absence of that
evidence in no way prevents consumers from likely becoming con-
fused.
Frehling, 192 F.3d at 1340. Consequently, a reasonable
20
See Freedom Sav. & Loan Ass’n, 757 F.2d at 1185 (“If a person intends to
induce confusion among customers, he or she is likely to succeed”).
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38 Opinion of the Court 19-13390
factfinder could find a likelihood that consumers would be con-
fused by the marks.
IV.
In closing, two thoughts.
First, on cross-motions for summary judgment and
espe-
cially when applying the
Nunez framework, courts should be very
careful in their analysis to ensure that the proper party receives the
benefit of the summary judgment standard. When parties jointly
move for summary judgment, the court has three options: granting
summary judgment for the plaintiff under the defendant’s best
case, granting summary judgment for the defendant under the
plaintiff’s best case, or denying both motions for summary judg-
ment and proceeding to trial. Before granting summary judgment
for a party, the court
must consider the evidence in the light most
favorable to the non-movant and, unless “there are no genuine is-
sues of material fact,” i.e., all material facts have “been incontro-
vertibly proved,”
and the trial judge is the finder of fact, the court
must also draw all inferences in the non-movant’s favor.
Nunez,
572 F.2d at 1123–24. Only once this is done may a court determine
if a party is entitled to judgment as a matter of law; should any ma-
terial questions of fact remain that may cause a reasonable fact-
finder to rule in the non-movant’s favor, summary judgment must
be denied.
Our review of the decision in this case revealed that the Dis-
trict Court
never discussed the summary judgment standard in its
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19-13390 Opinion of the Court 39
analysis after citing
Nunez in the “Legal Standard” section for its
decision.
See generally FCOA, 416 F. Supp. 3d at 1387–95. The
closest the Court came to applying the summary judgment stand-
ard was quoting a footnote from
Tana stating that “[a]lthough like-
lihood of confusion is a question of fact, it may be decided as a mat-
ter of law.”
Id. at 1388 (quoting
Tana, 611 F.3d at 775 n.7). True—
but only after viewing the evidence in the light most favorable to
the non-movant. While the Court implicitly decided this case un-
der the
Nunez framework, it never actually decided whether all the
material facts had been “incontrovertibly proved.”
Nunez, 572
F.2d at 1124;
see generally FCOA, 416 F. Supp. 3d at 1387–95. A
district court may not ignore the traditional summary judgment
standard merely by invoking the specter of
Nunez.
Nunez itself acknowledged that summary judgment can be
“a ‘lethal weapon’ capable of ‘overkill’” and that situations where
the
Nunez standard is appropriate “may be rare.” 572 F.2d at 1223–
24 (quoting
Brunswick Corp. v. Vineberg, 370 F.2d 605, 612 (5th
Cir. 1967)). Indeed, the
Nunez standard can easily become a trap
for unwary district courts and litigants; wise lawyers and judges
would do well to remember that this Court’s
de novo standard of
review is “unaffected by any inferential conclusions reached be-
low.”
Useden, 947 F.2d at 1573 n.14. Accordingly, the
Nunez
standard should be reserved for those rare cases where it is justified.
Second, cross-motions for summary judgment in non-jury
cases are a very inefficient method by which to decide a case.
When parties move for summary judgment, they tell the court that
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40 Opinion of the Court 19-13390
they are ready for a determination on the merits and that no mate-
rial fact issues remain for a factfinder to decide. If both parties
move for summary judgment after conducting extensive discov-
ery, then the parties effectively agree that no fact issues exist. But
when the court grants summary judgment in these situations, the
loser will invariably take an appeal and argue that there was a fact
dispute or credibility issue that prevented the court from deciding
the case, despite arguing the opposite below. The winner will ar-
gue that no fact issues remain. If a fact issue does remain, the case
must be reversed and remanded to hold a bench trial, which should
have occurred in the first place. And, of course, the loser of the
bench trial will then appeal.
In this case, for efficiency’s sake, the parties should have es-
chewed moving for summary judgment, informed the court that
discovery was complete and that the case was ready for trial, and
then held a bench trial.21
Because we hold that a reasonable factfinder could deter-
mine that a likelihood of confusion exists, we reverse the District
Court’s grant of summary judgment as to Count I of FIC’s com-
plaint and remand the case for trial on the merits.
REVERSED AND REMANDED.
21 The case’s docket sheet indicates that on May 16, 2019, the case had been
scheduled for a bench trial on September 3, 2019. The order granting FT&E
summary judgment was entered on August 1, 2019.
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