Miami-Dade County

A trademark fight by two schools that share an F and a U will cost one of them over $1M

The legal fight between two schools of higher education — one a state school, the other a for-profit — finds the lesser-known victorious.


In a 2016 ruling, a federal appeals court rejected the trademark-infringement lawsuit filed by Florida International University against Florida National University.

On Monday, the U.S. District Court recommended that FNU receive nearly $1.2 million in legal fees from FIU, Legal 360 first reported.

FNU had requested more than $1.6 million.

Said FIU, “As a matter of policy, we do not comment on pending litigation.”

FIU is a major state school with sprawling campuses on both ends of Miami-Dade County. FNU is a much smaller for-profit with locations in Hialeah and Miami.

According to court documents, Judge Andrea Simonton outlined the reasons to justify FNU’s request for compensation in 2017, noting that “the case at bar is exceptional due to the disparity between the parties’ litigation positions” and that FIU “failed to re-evaluate the strength of its case as discovery continued.”

FIU, she said, “relied on misleading citations to case law and the court’s findings.”

FIU had argued that FNU was entitled to no more than about $702,000 in fees and $4,700 in non-taxable costs.

FNU was represented by six attorneys from Miami law firm Pertez, Chesal & Herrmann, and one paralegal.

Hourly fees

The hourly partner rates charged for the district court case ranged from $456.44 to $480, and the associate hourly rates ranged from $183.43 to $262.

For the appellate case, the partner rates ranged from $475 to $650, and the associate rates ranged from $204.28 to $251.86.

The legal assistant billed at an hourly rate of $125.

FIU, which hired legal expert James Stepan of Fort Lauderdale’s Dickinson/Wright, objected to FNU’s fee petition, contending that “FNU is requesting compensation for ‘top-of-the-line’ lawyering, when the case did not require ‘top-of-the-line’ lawyers.”

Stepan cited several local intellectual property practitioners whose hourly rates range from $250 to $460 per hour, according to court documents.

The court ruled that FIU’s assertion “reflects a misunderstanding of the case law.”

Trademark infringement suit

FIU filed the suit against FNU in 2013, after the 37-year-old for-profit school changed its name from Florida National College to its current name in 2012.

According to court records, FIU’s six-count complaint claimed:

Federal trademark infringement.

Federal unfair competition.

Trademark dilution and injury to business reputation in violation of Florida law.

Trademark infringement in violation of Florida law.

Trademark infringement and unfair competition in violation of Florida common law.

Cancellation of Florida trademark registration.

FIU, which was founded in 1965 and opened its doors to students in 1972, appealed to the 11th U.S. Circuit Court of Appeals.

The appeals court panel upheld the court’s decision by citing 12 other schools in the state that use the words “Florida” and “University” in their name — such as Florida State University and Florida Atlantic University, to name two. The court also noted different definitions of the words “international” and “national,” the News Service of Florida reported.

“Moreover, in a crowded field of similar acronyms, the district court reasonably found that the addition of one more school identifying itself with an acronym containing the letters F and U would not materially add to the confusion,” said Judge Stanley Marcus’ appeals-court ruling, the News Service reported.

“This is especially true in a field like post-secondary education, where the primary consumers —potential students [and likely their parents too] — generally spend a substantial amount of time and energy learning about their options before choosing a school and are, therefore, unlikely to be confused by similar names.”

Both sides have two weeks to file written objections to Monday’s ruling. Either side can request an extension of the deadline but must do so within a week.

Miami Herald Real Time/Breaking News reporter Howard Cohen, a 2017 Media Excellence Awards winner, has covered pop music, theater, health and fitness, obituaries, municipal government and general assignment. He started his career in the Features department at the Miami Herald in 1991.
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