By Gary Chester, Senior Writer
About five years ago, The Bleacher Report compiled a list of the 50 best logos in sports, with the New York Yankees taking the top spot. The only colleges in the top ten were Notre Dame and Miami. Yes, the orange and green “U” of the Miami Hurricanes was rated above recognized trademarks such as Michigan’s block “M,” Alabama’s fanciful “A,” and Texas’ longhorn silhouette. Perhaps that explains why a Florida sports footwear and apparel business used the derivative tradename “CANEUP” on its products, prompting a legal challenge by the University of Miami.
In University of Miami v. Caneup LLC, 2024 U.S. Dist. LEXIS 188057 (S.D. Fla. 2024), a federal magistrate considered trademark infringement claims and Miami’s request for a permanent injunction and attorney’s fees. At stake was a percentage of Miami’s share of the $4.6 billion market for licensed collegiate products.
Caneup Enters the Market for Miami Merch
In or about 1965, the University used the “CANES” trademark in association with clothing, mugs, and other products to generate revenue for the school. About seven years later, Miami started to use an orange and green split “U” design mark, which became so popular that that University is often referred to as the “U.” The University registered both marks with the United States Patent and Trademark Office (USPTO) in the 1990s.
In 2021, the defendant filed an application with the USPTO to register the word “CANEUP” for use on clothing and apparel. CANEUP LLC stated that it had used its mark in commerce since 2014. The mark was rendered in Miami’s school colors, orange and green, and some of its merchandise used white, orange, and green in the “U,” while the other letters of the marks were a solid color. Miami claimed that by emphasizing the “U” in the CANEUP mark in the exact colors as the University’s colors, CANEUP LLC was “implying an association between its CANEUP Mark and the University that does not exist.”
Miami further contended that the defendant’s chief operating officer had admitted that he spent years developing the concept with the University of Miami in mind. Miami claimed that it had sent Caneup a cease-and-desist letter in 2023, but Caneup did not respond.
On October 6, 2023, the University filed a trademark infringement complaint against Caneup in the U.S. District Court for the Southern District of Florida. The University raised four claims, including trademark infringement in violation of Section 32 of the Trademark Act of 1946, 15 U.S.C. § 1114. When the University was unable to serve Caneup after eleven attempts, the court permitted alternative service by email and certified mail. Caneup failed to respond, and Miami sought a default final judgment and a permanent injunction.
Were Consumers Likely to be Confused?
Pursuant to the law of the Eleventh Circuit, U.S. Magistrate Marty Fulgueira Elfenbein applied the same legal standard that is used in a defendant’s motion to dismiss a complaint. The court recognized that a trademark infringement plaintiff “must show that it owns a valid trademark, that its mark has priority, that the defendant used such mark in commerce without the plaintiff’s consent, and that the defendant’s use is likely to cause consumer confusion as to the source, affiliation or sponsorship of its goods or services.”
The most important of these requirements is the likelihood of consumer confusion. The court described seven factors for analysis: (1) the type of trademark; (2) the similarity of the marks; (3) the similarity of the products; (4) the similarity of the parties’ retail outlets and purchasers; (5) the similarity of the advertising media used; (6) the defendant’s intent; and (7) actual confusion. The weight given to each factor depends on the circumstances of a given case.
The court found that the University held valid common law and statutory trademark rights in the CANES and U marks, so their “validity is presumed.” Since Miami had been using its marks for at least 34 years before the defendant started using the CANEUP mark, and because the University held registrations for its marks at least five years before the defendant filed to register the CANEUP mark, the University’s marks had priority. The court further found that the defendant used the CANEUP mark in commerce without Miami’s consent.
The magistrate then examined the critical issue of consumer confusion. The court found that the CANES mark did not bear a relationship to the product, which was an education at the University of Miami. This made the trademark fanciful or arbitrary, which is a stronger type of mark than descriptive or generic marks. It was also clear that the marks were similar because both featured the word “CANE” or the green and orange “U” design, which sports fans instantly associate with the University.
That the University’s marks and the CANEUP mark are used on the same kind of products (clothing and apparel), available through the same retail outlets (websites), offered to the same purchasers, and advertised in the same way (online), also weighed in favor of the University’s position. In addition, Caneup’s own communications showing that it developed the Caneup mark with the University in mind was evidence of bad intent. Thus, six of the seven factors for consumer confusion were satisfied. Miami did not allege actual confusion, which is often demonstrated through consumer surveys.
Although actual confusion is a heavily weighted factor in determining whether the allegedly infringing mark is likely to cause consumer confusion, courts decide the issue based on the “circumstances surrounding each particular case.” Since six factors in the University’s favor outweighed the one factor in Caneup’s favor, the court held that the CANEUP mark is likely to cause consumer confusion with the CANES mark. Since the “U” in the CANEUP mark resembled the split “U” mark, the court found that Caneup had also infringed Miami’s split “U” mark.
The court also found that Miami’s claims of unfair competition, false designation of origin, federal trademark dilution, and Florida common law trademark infringement were valid. The court proceeded to consider the University’s request for a permanent injunction and attorneys’ fees.
Did Miami suffer irreparable harm?
To obtain a permanent injunction, the University needed to show that it suffered irreparable harm, money damages would be inadequate, the balance of hardships favor awarding equitable relief, and a permanent injunction would not disserve the public interest. The trademark infringement by Caneup met the first requirement, and the second requirement was satisfied because the Eleventh Circuit has held that there is no adequate remedy at law for continuing infringement.
As to the balance of hardships, the University would stand to lose goodwill and reputation if consumers were dissatisfied with the quality of CANEUP products and associated them with the school. They “might stop purchasing the original product, which would leave the mark’s owner at the mercy of the infringer because it had no control over the quality of the infringing product.” Conversely, Caneup would suffer a legitimate hardship through an injunction prohibiting the sale of products that it had no legal right to sell.
Finally, the Eleventh Circuit has explained that “the public deserves not be led astray” by inevitably confusing marks, which is why a “complete injunction” against an infringer is “the order of the day.” Since the University satisfied all four requirements for a permanent injunction, the magistrate recommended that a permanent injunction be issued against Caneup prohibiting it from using the CANEUP mark.
As to attorney’s fees, the court found that Caneup had not litigated the case in a manner that made it more difficult or expensive for the University, as other parties against whom attorney’s fees have been awarded have done. In addition, since one of the most important factors in the likelihood of confusion analysis (actual confusion), favored Caneup, there was not a complete imbalance in the case to make it exceptional, as in Tobinick v. Novella, 884 F.3d 1110 (11th Cir. 2018) (fee award upheld in exceptionally vexatious case under the Lanham Act).
Magistrate Fulgueira Elfenbein’s recommendations were submitted to Judge Jose E. Martinez, who ordered a final default judgment and a permanent injunction against Caneup on October 31, 2024.
