Affirming a district court ruling on cross motions for summary judgment on the issue of confusing similarity (in a non-jury case), the US Court of Appeals for the 11th Circuit, reviewing the judgment as a trial on a stipulated record, affirmed. Florida International University v. Florida National University, Case No. 15-11508 (11th Cir., July 26, 2016) (Marcus, J).
Florida International University (FIU) sued Florida National University (FNU) under the Lanham Act (15 USC §§ 1114 & 1125(a)), alleging that FNU’s name infringed FIU’s federally registered trademarks. 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, including submitting a list of pretrial stipulations, identifying the issues of fact to be litigated at trial, and submitting witness lists. Then, at a pre-trial status conference, the parties informed the district court that they had submitted enough facts and evidence into record to allow the court to decide most issues in the case. A pre-trial hearing was subsequently held at which the parties presented their respective oral arguments. At the conclusion of the hearing, both parties confirmed to the court that they had presented everything to the court and would not add anything new to the record at a trial. After reviewing the parties’ submissions and oral argument presentations, the district court ruled in favor of the defendant FNU on the cross- motions for summary judgment and entered a final judgment dismissing all of FIU’s trademark claims, finding that FIU had failed to establish that FNU’s name was likely to cause confusion with FIU’s name. FIU appealed.
On appeal, FIU urged the 11th Circuit to treat the district court’s decision as a summary judgment ruling and review it under the summary judgment standard (i.e., whether a genuine issue of material fact existed to preclude the granting of summary judgment). On the other hand, FNU claimed that the district court’s decision was effectively a bench trial decision and therefore should be reviewed under the deferential “clearly erroneous” standard of review.
Siding with FNU, the 11th Circuit determined that the circumstances of the case warranted the treatment of the district court’s decision as a judgment after a bench trial. Specifically, the 11th Circuit noted that the parties had informed the district court that the evidence and arguments they had submitted and presented constituted the full record before the court and that additional evidence or live witness testimony would be unnecessary, and that the parties had also agreed that the district court could treat the stipulated record as a record after a bench trial. Furthermore, according to the 11th Circuit, the district court’s opinion on the cross-motions for summary judgment read more like a judgment by a fact-finder after a bench trial than a summary judgment ruling. Lastly, the 11th Circuit pointed out that FIU did not argue on appeal that there were material factual disputes that precluded the district court from granting summary judgment in FNU’s favor, nor did FIU seek to have the case remanded to the district court in order to conduct a trial on the merits.
Treating the district court’s decision as a judgment after a bench trial, the 11th Circuit went on to review the district court’s factual findings under the “clear error” standard. After examining the relevant factors on the issue of likelihood of confusion between FIU’s marks and FNU’s marks, the 11th Circuit found the district court’s assessment of each of the factors to be reasonable and found no clear error in the district court’s conclusions of law.