Opinion
Case No. 17-23971-WILLIAMS
2019-08-01
FCOA, LLC, Plaintiff, v. FOREMOST TITLE & ESCROW SERVICES, LLC, Defendant.
John Wiley Horton, Adrienne Love, William D Horgan, Pennington, P.A., Tallahassee, FL, for Plaintiff. Natasha Shaikh, Aventura, FL, Robert A. Stok, Fort Lauderdale, FL, Defendant.
John Wiley Horton, Adrienne Love, William D Horgan, Pennington, P.A., Tallahassee, FL, for Plaintiff.
Natasha Shaikh, Aventura, FL, Robert A. Stok, Fort Lauderdale, FL, Defendant.
ORDER
KATHLEEN M. WILLIAMS, UNITED STATES DISTRICT JUDGE
THIS MATTER is before the Court on the Parties' cross motions for summary judgment. For the reasons set forth below, Plaintiff' FCOA, LLC's motion for summary judgement (DE 87) is DENIED and Defendant Foremost Title & Escrow, LLC's motion for summary judgment (DE 84) is GRANTED.
I. BACKGROUND
This is a trademark infringement and unfair competition case. Plaintiff, FCOA is a company that is part of the Farmers Insurance Group. (DE 86 ¶ 3). Since its formation in 1952, FCOA, through its related agencies, has marketed and sold insurance products and services under the "FOREMOST" name. (DE 86 ¶ 4). FCOA, however, does not itself issue or sell insurance policies, and does not hold any licenses or employ any insurance agents which would enable it to offer insurance services in Florida. (DE 84-1 ¶ 12). FOREMOST branded insurance products are offered by over 33,000 contracted agents at more than 77,000 locations nationwide. (DE 86 ¶ 11). Over the years, FCOA has spent millions of dollars to advertise its marks. (DE 86 ¶ 14). Although FCOA has no physical presence in Florida, over 95,000 customers in Florida hold FOREMOST insurance policies. (DE 86 ¶ 10; DE 96 ¶ 10). FCOA markets its FOREMOST brand using online advertising, websites and social media. (DE 86 ¶ 17). The mark is also featured in numerous magazines ads and brochures. (Id. ). FCOA does not offer title insurance services, nor is it permitted to do so under Florida law. (DE 84-1 ¶ 1).
FCOA was originally named Foremost Corporation of America. (Id. ).
FCOA owns the interest and goodwill to certain trademarks, including FOREMOST (U.S. Reg. No. 1,403,411), FOREMOST INSURANCE SERVICE CENTER (No. 2,894, 849) and FOREMOST (No. 1,900,833). (DE 86 ¶ 6)
Defendant, Foremost Title & Escrow, LLC ("FT&E") is an affiliate of the law firm Stok Folk + Kon. (DE 84 at 1). FT&E began its operations in 2015 to offer real-estate closing services including title insurance. (DE 108 at 9). Other than title insurance, FT&E does not offer any additional insurance related products. (DE 84-1 ¶ 1). FT&E utilizes online advertising, websites and social media to advertise its services. (DE 86 ¶ 25; DE 96 ¶ 25). FT&E also advertises its services through trade shows, public events and by direct emails to homeowners. (DE 86 ¶ 28; DE 96 ¶ 28).
On December 15, 2016, FT&E received a cease and decease letter from FCOA, claiming that FT&E was infringing on FCOA's marks. (DE 84-1 ¶ 3). FT&E disputed the allegations of infringement and in the ensuing ten months invested time and money to develop a website to promote its services, create public awareness in FT&E's specific market and develop customers and partners. (DE 84-1 ¶ 3). On February 2, 2017, FCOA sent a letter to the Department of Financial Services ("DFS") of Florida requesting that it disapprove FT&E's use of the FOREMOST mark. (DE 84-1 ¶ 5). But the DFS denied FCOA's request explaining that "the name Foremost Title & Escrow Services, LLC is not viewed by the [DFS] as being too similar." (Id. ). On March 24, 2017, FCOA renewed its request to the DFS and the DFS again denied it. (DE 84-1 ¶ 5). Although FCOA has not been able to identify a single instance of actual consumer confusion (DE 84-1 ¶ 10), FCOA conducted two surveys that revealed that 74.2% of the participants who said they had heard of "Foremost Insurance" and "Foremost Title & Escrow" believed the two marks were associated or affiliated. (DE 86 ¶¶ 45-46). Fifty eight percent of the group of participants that believed the two marks were associated or affiliated based their belief on the fact that the names sounded the same. (Id. ).
FCOA brings this action against FT&E asserting five claims all stemming from the alleged trademark infringement of its FOREMOST marks.
II. LEGAL STANDARD
Summary judgment is appropriate "if the movant shows that 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). Under this standard, "[o]nly disputes over facts that might affect the outcome of the suit under the governing [substantive] law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). And any such dispute is "genuine" only "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.
In evaluating a motion for summary judgment, the Court considers the evidence in the record, "including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials ...." Fed. R. Civ. P. 56(c)(1)(A). The Court "must view all the evidence and all factual inferences reasonably drawn from the evidence in the light most favorable to the nonmoving party, and must resolve all reasonable doubts about the facts in favor of the non-movant." Rioux v. City of Atlanta , 520 F.3d 1269, 1274 (11th Cir. 2008) (quotation marks and citations omitted). At the summary judgment stage, the Court's task is not to "weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson , 477 U.S. at 249, 106 S.Ct. 2505.
For issues for which the movant would bear the burden of proof at trial, the party seeking summary judgment "must show affirmatively the absence of a genuine issue of material fact: it must support its motion with credible evidence...that would entitle it to a directed verdict if not controverted at trial. In other words, the moving party must show that, on all the essential elements of its case on which it bears the burden of proof at trial, no reasonable jury could find for the non-moving party. If the moving party makes such an affirmative showing, it is entitled to summary judgment unless the non-moving party, in response, come[s] forward with significant, probative evidence demonstrating the existence of a triable issue of fact." Fitzpatrick v. City of Atlanta , 2 F.3d 1112, 1115-16 (11th Cir. 1993) (emphasis in original).
However, in a nonjury case such as this, in which the Court is the trier of fact and there are "no issues of witness credibility," the Court may draw inferences against the non-moving party at the summary judgment stage based on the affidavits, depositions and other evidence in the record, because "[a] trial on the merits would reveal no additional data" nor "aid the determination." Nunez v. Superior Oil Co. , 572 F.2d 1119, 1123-24 (5th Cir. 1978).
Additionally, in trademark infringement cases, courts in this Circuit have decided the issue of likelihood of confusion as a matter of law. Alliance Metals, Inc., of Atlanta v. Hinely Industries, Inc. , 222 F.3d 895, 907 (11th Cir. 2000) (affirming grant of summary judgment to former employer for former employee's infringement through use of confusingly similar trade name); Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C. , 931 F.2d 1519, 1523 (11th Cir.1991) (affirming grant of summary judgment finding no infringement of descriptive term "invest" used by defendant Investcorp); Beef/Eater Restaurants, Inc. v. James Burrough Limited , 398 F.2d 637, 639 (5th Cir.1968) ("the trial judge, by inspection of trademarks, may himself determine, and must determine, the likelihood of confusion"); see also Little League Baseball, Inc. v. Daytona Beach Little League, Inc. , 1977 WL 22777, 193 U.S.P.Q. 611, 614 (M.D. Fla. 1977) (granting summary judgment to franchisor on infringement claim against former franchisee).
III. DISCUSSION
Both parties argue they are entitled to full summary judgment. FCOA alleges that FT&E's use of the term "Foremost" has infringed on FCOA's registered marks, in violation of 15 U.S.C. § 1114 of the Lanham Act. Under the Lanham Act, a defendant is liable for infringement if, without consent, he uses "in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark" which is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1)(a). To prevail on a federal trademark infringement claim, a plaintiff must demonstrate (1) that its mark has priority, and (2) that the defendant's mark is likely to cause consumer confusion. Frehling Enters., Inc. v. Int'l Select Grp., Inc. , 192 F.3d 1330, 1335 (11th Cir. 1999). FT&E does not dispute that at least some of FCOA's marks have priority. (See DE 86 ¶6; 86 ¶6). The issue is whether FT&E's mark is likely to cause consumer confusion.
The Court addresses both motions for summary judgment together because the main disputed issue – likelihood of confusion – is central to all causes of action and requires the same legal analysis.
The tests for common law trademark infringement and unfair competition are the same as the tests for federal trademark infringement and unfair competition. See also Tally-Ho, Inc. v. Coast Cmty. Coll. Dist. , 889 F.2d 1018, 1025–26 and n.14 (11th Cir. 1989) (recognizing that the "elements of common law and statutory trademark infringement are the same" and that a claim of unfair competition premised on an alleged trademark infringement is "practically identical" to an infringement claim); Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l Univ., Inc. , 91 F. Supp. 3d 1265, 1288 (S.D. Fla. 2015) ("The parties agree that the test for ... common law trademark infringement and unfair competition is the same as that for federal tradermark infringement and unfair competition.") (citing Investacorp. Inc. v. Arabian Inv. Banking Corp. , 931 F.2d 1519, 1521 (11th Cir.1991) ), aff'd 830 F.3d 1242 (11th Cir. 2016).
Courts assessing claims pursuant to either § 32(a) or § 43(a) apply the same seven-factor "likelihood of confusion" test. See Tana v. Dantanna's , 611 F.3d 767, 781 n.5 (11th Cir. 2010). "Although likelihood of confusion is a question of fact, it may be decided as a matter of law." Tana , 611 F.3d at 775 n.7. At summary judgment, courts must assess all seven likelihood of confusion factors. See Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC , 369 F.3d 1197, 1207 (11th Cir. 2004). The Court addresses each factor below.
1. Strength of the "FOREMOST" marks
"This first factor assesses the strength of the plaintiff's marks." Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order , 809 F.3d 1171, 1182 (11th Cir. 2015) (citing John H. Harland Co. v. Clarke Checks, Inc. , 711 F.2d 966, 973 (11th Cir. 1983) ). It is the "second most important factor in the seven-factor balancing test for confusion." Id. at 1182 (quotation marks and citation omitted). "The stronger the mark, the greater the scope of protection accorded it, the weaker the mark, the less trademark protection it receives." Frehling , 192 F.3d at 1335.
"A factfinder assesses the strength of a mark in two ways." Sovereign Military , 809 F.3d at 1182 (citing Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc. , 508 F.3d 641, 648 (11th Cir. 2007) ). It first classifies the mark into one of four categories of distinctiveness, listed below in ascending order of strength:
(1) generic—marks that suggest the basic nature of the product or service;
(2) descriptive—marks that identify the characteristic or quality of a product or service;
(3) suggestive—marks that suggest characteristics of the product or service and require an effort of the imagination by the consumer in order to be understood as descriptive; and
(4) arbitrary or fanciful—marks that bear no relationship to the product or service, and the strongest category of trademarks.
See Tana , 611 F.3d at 774.
In this case, it is undisputed that many of FCOA's registered marks are "incontestable" under the Lanham Act, 15 U.S.C. §§ 1115, 1065. In the Eleventh Circuit, "[a] mark's strength is enhanced if it has ‘incontestable’ status." Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l Univ., Inc. , 830 F.3d 1242, 1257 (11th Cir. 2016) (citation omitted). Specifically, "[a]n incontestable mark is presumed to be at least descriptive with secondary meaning, and therefore a relatively strong mark." Sovereign Military , 809 F.3d at 1183 (quotation marks omitted).
The Court notes, however, that the Sovereign Military court expressed serious doubts about the use of incontestability as a proxy for the strength of a mark. It noted that the Eleventh Circuit was virtually alone in adhering to this rule, that the "law in this Circuit is almost certainly incorrect" because the "incontestability of a mark, by itself, says nothing about its strength." Sovereign Military , 809 F.3d at 1183-84. Further, it noted that after the Eleventh Circuit adopted the rule, Congress amended the Lanham Act in a way that arguably severs the link between the incontestability and the strength of a mark. Id.
FCOA—relying on a 1986 case from the district court of New Mexico—argues that its FOREMOST marks are strong as a matter of law. In that case, the court found that the FOREMOST marks were descriptive with secondary meaning mainly because they were incontestable. Foremost Corp. of Am. v. Burdge , 638 F. Supp. 496, 500 (D.N.M. 1986). Additionally, FCOA argues that the strength of the marks should not be assessed by its degree of distinctiveness, but on other factors such as (1) the length and manner of the mark's use; (2) the nature and extent of advertising and promotion; (3) the owner's efforts to connect the mark with its services; and (4) the extent to which the public identifies the mark with the owner's venture. Because FCOA has used these marks for over 60 years, has spent millions of dollars in advertising them and has made efforts "to create a conscious connection in the public's mind between FOREMOST and insurance services," FCOA argues that the mark is strong.
FT&E responds by citing to an USPTO case from 1968, where the USPTO found that the mark "foremost" is typically known as weak. Foremost Dairies, Inc. v. Foremost Sales Promotions, Inc. , 158 U.S.P.Q. (BNA) ¶ 360 (T.T.A.B. May 31, 1968). There the USPTO found that the word foremost was laudatory descriptive and therefore weak. The USPTO stated: "[t]he mark involved here "FOREMOST" is of a type which is technically known as "weak". As the record shows the term "FOREMOST" has been adopted diverse times for diverse and like goods. And the reason therefore is quite apparent for the word "foremost" is highly laudatory." Id.
The Court agrees that the term "foremost" is either generic or descriptive when viewed in isolation; however, because this mark is "incontestable," the Court finds that the mark is descriptive with secondary meaning. See Dieter v. B & H Industries of Southwest Florida, Inc. , 880 F.2d 322, 329 (11th Cir. 1989). While an incontestable mark is generally considered a "relatively strong mark," see Frehling , 192 F.3d at 1336, this presumption may be rebutted by evidence of extensive third-party use of the mark. See Southern Grouts & Mortars, Inc. v. 3M Co. , No. 07-61388-CIV, 2008 WL 4346798, at *16-17 (S.D. Fla. Sept. 17, 2008) ; Carnival Corp. v. SeaEscape Casino Cruises, Inc. , 74 F.Supp.2d 1261, 1265-66 (S.D. Fla. 1999) ; Michael Caruso and Co., Inc. v. Estefan Enters., Inc. , 994 F. Supp. 1454, 1459-60 (S.D. Fla. 1998) ; Armstrong Cork Co. v. World Carpets, Inc. , 597 F.2d 496, 505 (5th Cir. 1979).
Consequently, the Court must "consider[ ] ‘the degree to which third parties make use of the mark.’ " Sovereign Military , 809 F.3d at 1182 (quoting Frehling , 192 F.3d at 1336 ). "The less that third parties use the mark, the stronger it is, and the more protection it deserves." Id. Here, FT&E argues—citing Foremost Diaries —that there are "innumerable third-party registrations and listings of marks comprising the mark FOREMOST." Additionally, Robert A. Stok ("Stok"), FT&E's managing member, testified that a comprehensive search of the USPTO's Trademark Electronic Search System and a comprehensive business entity search in all 50 states revealed the existence of 62 live trademarks containing the word "foremost" that are not owned by FCOA and the existence of 541 companies, unrelated to FCOA, using the name Foremost. (DE 22-1 ¶ 25; Exhibits K and L). FCOA responds in conclusory fashion than there is no evidence of third-party use in the insurance services industry and that there is no evidence of businesses using the term "foremost" as a trademark.
FCOA's argument fails, however, because the USPTO's search specifically targets trademarks. And, even though third-party use is considered more potent when the users are operating in the same field as the plaintiff, Stuart J. Kaufman, M.D. & Assocs., P.A. v. Bausch & Lomb Inc. , No. 8:13-CV-461-T-33EAJ, 2013 WL 6154166, at *5 (M.D. Fla. Jul. 25, 2013), third-party use of a mark even in unrelated businesses also serves to narrow the scope of protection of the mark. See Sun Banks of Florida, Inc. v. Sun Fed. Sav. & Loan Ass'n , 651 F.2d 311, 316 (5th Cir. 1981). Here, FT&E has shown the existence of 62 marks and 541 entities, unrelated to FCOA, using the term "foremost." In instances with much less third-party use, courts have found marks to be weak. See, e.g. , AmBrit, Inc. v. Kraft, Inc. , 812 F.2d 1531, 1539 (11th Cir. 1986) (affording lesser protection where eight third-party users in the same market employed similar trade dress); Homes & Land Affiliates, LLC v. Homes & Loans Magazine, LLC , 598 F.Supp.2d 1248, 1261 (M.D. Fla. 2009) (finding "widespread third-party use" based on 18 instances of third-party use); El Chico, Inc. v. El Chico Café , 214 F.2d 721, 725 (5th Cir. 1954) (finding 27 instances of third-party use "for various products and articles" sufficient to classify a mark as weak). Given the prevalence of third-party use of the FOREMOST mark, the Court finds the FOREMOST mark to be relatively weak and that this factor favors FT&E's position.
2. Similarity of marks
"The second factor for confusion—the similarity of marks—requires the factfinder to compare the plaintiff's marks with the defendant's marks and measure their similarity." Sovereign Military , 809 F.3d at 1186. "[T]he greater the similarity ..., the greater the likelihood of confusion." Exxon Corp. v. Tex. Motor Exch. of Hous., Inc. , 628 F.2d 500, 505 (5th Cir. 1980). Similarity must be determined "by considering the overall impression created by the mark as a whole rather than simply comparing individual features of the marks." Id. Relevant points of comparison include "the appearance, sound and meaning of the marks, as well as the manner in which the marks are used." John H. Harland , 711 F.2d at 975. The Eleventh Circuit has noted that "similarity is not a binary factor but is a matter of degree." Sovereign , 809 F.3d 1171 at 1187.
FCOA argues that because it holds over 20 registered marks containing the term "foremost" and the public associates that term with the insurance services offered by FCOA, FT&E's prominent use of the term "foremost" makes both marks similar. FCOA further argues that FT&E's logo is similar to one of the Foremost logos used by FCOA. Specifically, FCOA claims that both logos use the word "Foremost" in bold lettering, placed directly above other wording which is smaller and non-bolded. FT&E responds that adding the two "generic terms" "title" ad "escrow" renders its mark different in appearance, sound and meaning. Further, FT&E argues that its mark is closely harmonized with that of its affiliate, SFK. Both FT&E and SFK use the same color scheme of teal and gold and both utilize the same artist and artwork. This distinction in color scheme and style, renders the marks different according to FT&E. Finally, because these marks are used in a highly crowded industry FT&E argues that "prospective purchasers can be expected to distinguish between them."
Both sets of marks at issue are somewhat similar in sound as they both begin with the word "Foremost." However, the appearance of the marks is different considering both marks use different colors, fonts and logos:
The analysis turns, however, on the meaning of the words used in the respective marks. FT&E's foremost mark is followed by the words "title" and "escrow." While it is true that the word title refers to title insurance, this is not something necessarily obvious to the public. Although both marks use the word Foremost, that on its own is not sufficient to find likelihood of confusion and viewing the mark as a whole, there are enough differences to find that this factor does not weigh in favor of a finding of a likelihood of confusion.
3. Similarity of the products
Next, the Court must examine "whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties." Frehling , 192 F.3d at 1338. "The greater the similarity between the products and services, the greater the likelihood of confusion." Exxon Corp. , 628 F.2d at 505. While the Court should consider the "compositional differences" between the products, the inquiry should focus "on the reasonable belief of the average consumer as to what the likely source of the goods was." E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc. , 756 F.2d 1525, 1530 (11th Cir. 1985).
FT&E argues that services are not similar because FCOA and FT&E do not compete and do not even operate in the same state. FT&E then offers a variety of reasons on why the products are different. However, the test is "whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties." Frehling , 192 F.3d at 1338. Here, FCOA offers insurance related products and FT&E offers title insurance as one of its main products. Although these products are different and FCOA and FT&E are not competitors, reasonable consumers could conclude both companies' products are attributable to a single source. Thus, this factor favors FCOA's position.
4. Similarity of the Parties' retail outlets (trade channels), customers and advertising media
"Dissimilarities between the retail outlets for and the predominant customers of plaintiff's and defendant's goods lessen the possibility of confusion, mistake, or deception." Frehling , 192 F.3d at 1339 (quoting Amstar Corp. v. Domino's Pizza, Inc. , 615 F.2d 252, 262 (5th Cir. 1980) ). "This factor takes into consideration where, how, and to whom the parties' products are sold." id. (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:51, at 24-71 ). "Direct competition between the Parties is not required for this factor to weigh in favor of a likelihood of confusion ... though evidence that the products are sold in the same stores is certainly strong." Id. (citation omitted). "The parties' outlets and customer bases need not be identical, but some degree of overlap should be present." id. The Court also must consider the level of sophistication and investment required of the parties' customers, which can influence the likelihood of confusion based on a mark. See Freedom Savings, and Loan Ass'n v. Way , 757 F.2d 1176, 1185 (11th Cir. 1985). With respect to the similarity of the advertising media, this factor "compares the parties' advertisements and the audiences they reach." Sovereign Military , 809 F.3d at 1188 (citations omitted). "The key question in assessing similarity of advertising media is whether the parties' ads are likely to reach the same audience." Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l Univ., Inc. , 830 F.3d 1242, 1263 (11th Cir. 2016).
FCOA argues that the "parties' customers are virtually identical," because both parties' are acting as insurance businesses selling insurance policies and both parties' products are purchased by persons who are buying homes or other structures. FCOA goes to suggest that there is actual overlap in the customer base because FT&E markets and provides title insurance to owners of multi-tenant dwellings who then serve as landlords of the transacted properties. Because FOREMOST has a 3% market share in landlord insurance, FCOA suggests there is customer overlap.
FT&E responds that this factor favors FT&E because (1) FT&E offers its products and services directly, whereas FCOA does it through agents; (2) FT&E's business is conducted in Florida where FCOA does not conduct any business; (3) most FT&E clients are referrals from SFK; and (4) FT&E's client base is largely comprised of real estate developers, referring realtors, sellers, lenders and mortgage brokers who are sophisticated and unlikely to be confused. FT&E emphasizes that the Parties are statutorily prohibited from competing under Florida law. Both Parties advertise their services using online advertising, websites and social media.
FT&E's point is well taken. Because FT&E's client base is comprised mostly of SFK clients and referrals and because FT&E's customers generally make their decisions based on recommendations from brokers or agents, most of the Parties' customer bases appear to differ. See Standard Accident Ins. Co. v. Standard Surety & Casualty Co. of New York , 53 F.2d 119, 120-121 (S.D.N.Y. 1931) (finding that "[t]he brokers, agents, and insurance managers who actually decide in what company to place the business are sufficiently familiar with the personnel, location, etc., of the various companies that they could not be misled by mere similarity of names as the general public would be."). However, because both Parties offer insurance related products to homeowners, FCOA has presented evidence of some potential degree of overlap between the Parties' customer bases. But the Court gives this factor little weight in its overall analysis, given the significant differences in the kinds of customers targeted by these companies. Thus, the Court finds that this factor is neutral and favors neither party because it does not weigh significantly in favor of a finding of a likelihood of confusion.
5. Defendant's intent
"If it can be shown that a defendant adopted a plaintiff's mark with the intention of deriving a benefit from the plaintiff's business reputation, this fact alone may be enough to justify the inference that there is confusing similarity." Florida Int'l Univ. Bd. of Trustees , 830 F.3d at 1263 (quoting Frehling , 192 F.3d at 1340 ). In examining this factor, the Court must consider whether FT&E "had a conscious intent to capitalize on the plaintiff's business reputation, was intentionally blind, or otherwise manifested improper intent" in using the words "foremost" in its mark. See id. at 1263 (quoting Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc. , 508 F.3d 641, 648 (11th Cir. 2007) ).
FCOA claims two grounds for inferring FT&E's intent. First, it argues, that intent is shown by the fact that the Foremost Insurance Company and the Foremost marks are readily discoverable through minimal investigation. However, Stok has consistently testified throughout this litigation that FT&E was not aware of FCOA's existence until after it received FCOA's cease and desist letter in December of 2015. Additionally, FT&E's website makes clear FT&E's affiliation to SFK. In any event, "prior knowledge of a senior user's trade mark does not necessarily give rise to an inference of bad faith and may be consistent with good faith." Michael Caruso , 994 F. Supp. at 1462 (quoting Arrow Fastener Co., Inc. v. Stanley Works , 59 F.3d 384, 397 (2d Cir. 1995) ). Thus, even if FT&E had prior knowledge of FCOA's mark, this factor does not by itself create an inference of improper intent.
Second, FCOA argues that the Court may infer FT&E's intent at this stage of the litigation because it received the cease and desist letter and nevertheless decided to continue to use its foremost mark. Although FCOA cites to Kos Pharm., Inc. v. Andrx Corp. , 369 F.3d 700, 721 (3d Cir. 2004) ; Dominion Bankshares Corp. v. Devon Holding Co., Inc. , 690 F. Supp. 338, 347 (E.D. Pa. 1988) ; and Stem's Miracle-Gro Prods. Inc. v. Shark Prods., Inc. , 823 F. Supp. 1077, 1088 (S.D.N.Y. 1993), none of those cases found that failing to comply with a cease and desist letter is per se evidence of intent. They merely found that ignoring a cease and desist combined with other evidence of misconduct may raise an inference of willfulness. Here, there has been no evidence of misconduct. Indeed, Stok testified that prior to FT&E's formation, FT&E conducted a search of title companies conducting business in Florida and found there were no title companies in Florida using the term "Foremost." (DE 22-1 ¶11). Stok also testified that once FT&E received the demand letter, FT&E contacted FCOA's previous counsel to dispute that there was any infringement, and during that conversation FCOA's previous counsel agreed that there was no infringement. (DE 22-1 ¶13). FT&E received no further communications from FCOA until the filing of this lawsuit. (DE 22-1 ¶14). For these reasons, the Court cannot adopt FCOA's conclusory assertion that the undisputed evidence demonstrates defendant's improper intent to capitalize on FCOA's name and reputation. Therefore, this factor does not favor a finding of a likelihood of confusion as argued by FCOA.
6. Actual confusion
"It is undisputed that evidence of actual confusion is the best evidence of a likelihood of confusion." Frehling , 192 F.3d at 1341 (quoting John H. Harland Co. , 711 F.2d at 978 ). "[T]he quantum of evidence needed to show actual confusion is relatively small." Florida Int'l Univ. Bd. of Trustees , 830 F.3d at 1264 (11th Cir. 2016) (alteration in original) (quoting Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC , 605 F.3d 931, 937 (11th Cir. 2010) ). "With regard to actual confusion, we have specifically accorded substantial weight to evidence that actual customers were confused by the use of a mark as opposed to other categories of people." Aronowitz v. Health-Chem Corp. , 513 F.3d 1229, 1239 (11th Cir. 2008) (quotation marks and citation omitted). FCOA, offers no valid evidence of actual confusion.
FCOA's expert witnesses—whose testimony is the subject of separate motions to exclude—conducted internet surveys suggesting that FT&E's use of the name creates confusion for those who recognize the ‘Foremost’ brand and perceive that it emanates from a single source. Although the Court agrees that this evidence is admissible, it does not necessarily go to actual confusion, and FCOA's representative admitted in his deposition that they were not aware of any instances of actual confusion. (DE 82 at 21). Indeed, in the Eleventh Circuit case cited by Plaintiff, a district court gave little weight to a similar survey. Thus, the Court of Appeals specifically declined to find that the survey evidence alone constituted actual confusion. See Jellibeans, Inc. v. Skating Clubs of Georgia, Inc. , 716 F.2d 833, 845–46 (11th Cir. 1983) ("Whether [the survey] would be sufficient alone to support a finding of actual confusion, we need not decide."). Moreover, consumer surveys that do not distinguish between the confusion caused by a word and a confusion caused by a mark – such as the ones conducted here – are afforded little weight when assessing likelihood of confusion. See Holiday Inns, Inc. v. Holiday Out In Am. , 481 F.2d 445, 448 (5th Cir. 1973) ("[F]ailure of the survey to consider the effect that the word "Holiday" alone had on the responses and the techniques employed in conducting the survey rendered this evidence of slight weight."); Amstar Corp. v. Domino's Pizza, Inc. , 615 F.2d 252, 264 (5th Cir. 1980) (finding that survey based on a "word association" test did not present any meaningful evidence of likelihood of confusion in trademark infringement case); see also Frehling , 192 F.3d 1330 at 1341 n.5 ("This Circuit, however, has moved away from relying on survey evidence.").
Basically, the survey conducted by Dr. Maronick asks Florida residents who have purchased homes whether they have heard of "Foremost Insurance Company" and/or "Foremost Title & Escrow" and whether they believe that both companies are associated or affiliated. (See DE 138-1 at 23-26). The survey conducted by Dr. Harper mainly shows that consumers are generally confused about the types of insurance that different companies offer. (See DE 88-1, Exhibit 1).
FCOA correctly asserts that evidence of actual confusion is not necessary to show likelihood of consumer confusion. However, the failure to offer any evidence of actual confusion here—in conjunction with lack of evidence of infringement with respect to the other Frehling factors—precludes summary judgment for FCOA on likelihood of confusion. Accordingly, after examining all of the Frehling factors and the relevant evidence and arguments, the Court finds that FCOA has not established that FT&E's mark creates a likelihood of confusion. Though both marks contain the term "foremost," that term is descriptive and relatively weak. Because most of the other factors also weigh in favor of an absence of likelihood of confusion FCOA's claims must fail. On the other hand, the absence of likelihood of confusion warrants granting of FT&E's summary judgment motion.
IV. CONCLUSION
For the foregoing reasons, it is ORDERED AND ADJUDGED that:
1. Defendant FT&E LLC's motion for summary judgment is GRANTED.
2. Plaintiff' FCOA, LLC's motion for summary judgment (DE 87) is DENIED .
3. All pending motions are DENIED AS MOOT.
4. All deadlines and hearings are CANCELED.
5. The Clerk is directed to CLOSE this case.
6. The Court will enter final summary judgment separately pursuant to Rule 58 of the Federal Rules of Civil Procedure.
DONE AND ORDERED in chambers in Miami, Florida, this 8th day of July, 2019.