Summary
Eleventh Circuit reversed summary judgment for defendant in trademark infringement action, holding that genuine disputes of material fact existed on likelihood of confusion between plaintiff’s incontestable FOREMOST mark (presumptively strong) and defendant’s FOREMOST TITLE & ESCROW mark used for title insurance. The court found the district court improperly weighed evidence in favor of the moving party, misapplied the Nunez standard, and failed to consider that similarity of marks, overlapping customer bases and advertising, and unsophisticated consumers could support a finding of confusion, with lack of actual confusion discounted due to short time of use. Key topics: trademark infringement, likelihood of confusion factors (including mark strength, similarity, trade channels, advertising, intent, actual confusion, consumer sophistication), summary judgment standards, Dieter presumption for incontestable descriptive marks, and Lanham Act § 1114(1).
Topics
Practice areas
Questions Presented
- Whether a reasonable jury could find that FT&E's FOREMOST mark is likely to cause confusion with FIC's FOREMOST marks.
Holdings
- No, because a reasonable factfinder could find a likelihood of confusion given the strength of FIC's marks, similarity of marks, similarity of products, overlap in trade channels and advertising, lack of probative evidence of actual confusion, and unsophisticated consumers.
Key quotations
“Because we hold that a reasonable factfinder could determine that a likelihood of confusion exists, we reverse the District Court’s grant of summary judgment as to Count I of FIC’s complaint and remand the case for trial on the merits.” (at 40)
“A district court may not ignore the traditional summary judgment standard merely by invoking the specter of Nunez.” (at 39)
Factual background
FIC is a large insurance company using FOREMOST marks since 1952, with extensive advertising and customer base. FT&E is a small title insurance agency set up in 2015 by law firm partners, using 'Foremost Title & Escrow' mark. FT&E operates only in South Florida, does title insurance and closings. FIC does not sell title insurance. FIC sent a cease-and-desist letter, then sued. The district court granted summary judgment to FT&E on likelihood of confusion.
Procedural history
FIC (through FCOA) sued FT&E for trademark infringement, false designation of origin, dilution, and unfair competition. Both parties moved for summary judgment. The district court granted FT&E's motion and denied FIC's, finding no likelihood of confusion. FIC appealed only the trademark infringement claim (Count I).
Remand instructions
Remand for trial on the merits of Count I (trademark infringement).