Rebecca Tushnet

Florida Virtual School v. K12, Inc., 2026 WL 127063, No.
24-10449 (11^th Cir. Jan. 15, 2026)

A pretty good example of why granting registrations to
highly descriptive (at best) terms is a bad idea! Also a good example of why
not having a harm requirement in trademark infringement encourages this kind of
litigation—although the lack of harm matters to remedies, it isn’t part of the
main case, making litigation seem much more attractive.

Florida Virtual, a state-funded initiative, has federal
registrations for “Florida Virtual School” and “FLVS” for educational services.
K12, a for-profit competitor, initially launched with “Florida Virtual Academy”
and “Florida Virtual Program.” Florida Virtual sued K12, which settled and
adopted the name “Florida Cyber Charter Academy.” But Florida Virtual sued
again when K12 launched a new program, “Florida Online School,” adding unfair
competition, false advertising, and breach of contract claims. K12 counterclaimed
for cancellation of Florida Virtual’s registrations for fraud against the
USPTO. The trial
court rejected all the claims (fraud on the PTO was barred by the
settlement agreement despite some decent evidence of misrepresentation), and
the court of appeals affirmed.

Of relevance to the breach of contract claims: K12 agreed to
(1) pay Florida Virtual $600,000; (2) stop using the Florida Virtual Academy
(FLVA) and Florida Virtual Program (FLVP) names and acronyms; (3) not use
additional “Prohibited Marks”; and (4) transfer domain names containing the
prohibited marks to Florida Virtual in 2016, until when it could use them to
redirect to itself. The settlement agreement included a list of “Approved
Marks” available to K12, but the parties agreed that there would “be no presumption
against K12’s choice of a mark” not on that list.

As is not uncommon, nobody apparently followed up on the
domain name transfer. If you have outside counsel do the litigation, you must
have someone internal calendar issues like this for your team! Followup is
where things are most likely to fall apart. This has been your practice pointer
for the day! Thus, when Florida Virtual objected to K12’s Florida Online School
(FLOS) in 2019, it also raised concerns with K12’s continued use of FLVA.com as
a redirect to its other websites. K12 then transferred the FLVA.com domain to
Florida Virtual and began the process of renaming its program “Digital Academy
of Florida,” but Florida Virtual still sued.

False advertising: The false advertising claim was based on
a checklist on K12’s website for “comparing K12 to other online learning
solutions.” The checklist showed two columns, each listing several features of
an online education program. “K12-Powered Schools” showed checked boxes next to
each feature while “Other Online Learning Solutions” had an unchecked box next
to each.

Florida Virtual’s survey expert concluded that the checklist
misled around 18 percent of consumers into believing that Florida Virtual
offered services that its competitors did not, but the district court concluded
that the survey portrayed the checklist “out of context” and granted summary
judgment on the false advertising claim because there was no other evidence of
consumer deception.

The analysis here is weird; the court didn’t like that the
survey didn’t show parents other virtual school options and ask them if they
actually had the features at issue—but that’s falsity, which usually is
established by evidence other than the survey. Still, the court reasoned, the
checklist wasn’t literally false, because, although one reasonable reading of
the checklist is that K12 provided “the checked services while other schools
[did] not,” another reasonable reading was that K12 was “inviting consumers to
do their own research and fill out the checklist—not stating that it possessed
features the other providers definitely did not.” (The vagueness of the “other” category leads me to a
similar ultimate conclusion—if such a comparison is even falsifiable, it
doesn’t seem that Florida Virtual showed that all other online options in fact
had the features in question. A better criticism would be that the survey didn’t test the alternate meaning if it didn’t give respondents the option to say “this is a checklist I can use” or something like that, along with “this means those other schools don’t have those features.”)

Even assuming falsity as to Florida Virtual—which did offer
all the features—the survey “did not allow respondents to review the websites
of K12’s competitors and assess whether they provided the same services as K12.”
[Again, this is about falsity, not misleadingness.] Thus, the survey was
unreliable for assessing a “marketing tool” whose stated purpose was to allow
users to “weigh [their] options” when comparing K12 to other providers.

Trademark infringement: The district court excluded the
lost-profits testimony of Florida Virtual’s damages expert, who wrongly/without
foundation assumed that every Florida Online School student would have enrolled
in Florida Virtual School absent the alleged infringement. With this
lost-profits testimony excluded, there was no evidence of actual damages.

Florida Virtual sought disgorgement of not only K12’s
profits related to Florida Online School, but also the profits from its other
programs because the continued use of FLVA.com as a redirect to these programs’
websites was allegedly an independent act of trademark infringement. The
district court disagreed and struck testimony unrelated to Florida Online
School; Florida Virtual had not “based its trademark infringement arguments on
[K12’s] use of the FLVA.com domain,” and the claim was released by the settlement
agreement.

The court of appeals affirmed the rejection of Florida
Virtual’s actual damages remedy. The only evidence Florida Virtual had of
damage did not show that confusion caused the damage. First, a parent testified
that she wanted to enroll her daughter in Florida Virtual School in 2020, but
accidentally enrolled her in Florida Online School instead. But she realized
her mistake and withdrew her daughter before classes began, then attempted to
enroll her daughter with Florida Virtual, but ultimately “decided to go back to
brick-and-mortar at the end of the day” (at the point that Covid shutdowns in
Florida had ended). This was not a lost customer.

Second, there was other arguable evidence of confusion among
students, parents, and school officials. “But there is a difference between
general confusion and actual damages, and Florida Virtual did not bridge that
gap.” The court highlighted some examples (most of which arguably just show
that the purported mark is near-generic or generic):

A social worker contacted Florida
Virtual for a Florida Online School student’s enrollment records after the
student’s father said he had “been enrolled in FLOS (Florida Online School)
which is a part of FLVS.”

A sixth grade Florida Online School
student told his teacher in an email that he was “just starting Florida Virtual
School.”

A parent emailed her son’s Florida
Online School teacher to withdraw him “from Florida virtual school.”

In an email to a Florida Online
School teacher, a parent said, “I am new to the Florida virtual school.”

A parent contacted both Florida
Virtual and Florida Online School employees to ask about the status of her
daughter’s enrollment in Florida Online School.

Even viewed in the light most favorable to Florida Virtual, “these
examples demonstrate confusion—but that’s all. They do not show that the
confusion diverted students from Florida Virtual to K12, or otherwise injured
Florida Virtual.” And the damages calculation was no help because the expert assumed
that Florida Virtual would have obtained all of K12’s registrations absent the
allegedly unlawful conduct. “That conclusion was not an abuse of discretion.”

But, because there’s no harm requirement, that didn’t end
the case, just kept it a bench trial.

There was no error in finding Florida Virtual’s marks weak.
FV conceded descriptiveness, but the 11^th Circuit presumes relative
strength from incontestable registrations (boo). Still, that presumption can be
rebutted by showing commercial weakness, which K12 did. Florida Virtual’s
director of marketing testified that it had changed its logo six times since
1997 and acknowledged that changing a logo “can dilute a brand.” And its senior
director of marketing and communications “discussed a nearly $5 million effort
to rebrand [Florida Virtual’s] global operations as recently as 2020.” 

“In a 2018 survey, only 30 percent of parents with
school-aged children recognized Florida Virtual’s brand—even when prompted. And
in a 2020 survey, just 1 percent of respondents named Florida Virtual as an
online education provider without prompting.” There was other survey evidence
showing 50% prompted recognition, but that wasn’t much more than K12’s. There
was also evidence of third-party use of “Virtual School” modified by the names
of various Florida school districts; though FV argued that the geographic
designation removed any confusing similarity, the district court could
reasonably take a different view.

On similarity, the word marks were “nearly identical,” but Florida
Virtual “operates in a crowded field of similar marks on similar goods or
services,” where “slight differences in names may be meaningful,” and the
design marks looked “nothing alike.” There was no error in finding similarity
to be neutral.

Customer overlap: the court found this factor neutral because
Florida Online School’s only customer was Hendry County School District, not
“individual parents and students.” Florida Virtual argued that it “also
partners with school districts,” so its customers are similar either way, and
Florida Online School still “catered to the same general kinds of individuals,”
which was all that was required. “[W]ere we reviewing de novo, we might agree
that this factor weighs in Florida Virtual’s favor. But we are not—and it was
not clear error for the court to determine that this factor was neutral.” K12
presented evidence at trial that the Hendry County School District was the only
one purchasing services from Florida Online School, meaning there was no
overlap. Anyway, “error in its analysis of one of the subsidiary factors” is
“not enough to allow us to overturn” the trial court’s decision.

Similarity of advertising: Both parties “use[d] digital
media to reach their customers and facilitate services,” but they targeted
different audiences: K12 “primarily market[ed] to school districts,” while
Florida Virtual advertised directly to students and parents. This minimized the
overlap.

Intent: “While there was some evidence—like K12’s continued
use of FLVA.com—that could suggest intent to infringe, other evidence supported
the court’s finding,” including the name changes when challenged.

Actual confusion: “Short-lived confusion or confusion of
individuals casually acquainted with a business is worthy of little weight,
while confusion of actual customers of a business is worthy of substantial
weight.” Reasonable minds could disagree whether it was the marks that caused
any confusion reported, and thus the trial court did not clearly err.

For example, the parent mentioned above testified that she
believed the two programs to be “one in [sic] the same,” because she “thought
there was only one” online education provider in Florida. Because of that
belief, she “didn’t feel the need to research” her options “in depth.” “[I]t
was reasonable for the court to conclude that the source of her confusion was
her mistaken belief that there was only one provider, not the similarity of
K12’s marks. After all, if [the parent] was convinced there was only one online
provider, it would not make a difference to her whether the program she signed
up for was called Florida Virtual School, Florida Online School, or something
completely different, like Digital Academy of Florida.” The story was similar
with the other purportedly confused parent, who the district court found was
confused about the flexibility of the schedule offered, not the name of the
school. “[S]he testified that she did not care which program her son went to,
so long as it had a flexible schedule.”

It’s nice to see some focus on causation here! The court
compared the situation to one in which a skier believes that only one airline,
Delta Air Lines, offers a flight from Atlanta to Salt Lake City; she books the
first flight that comes up in her search, which happens to be on American. “Did
she book with American instead of Delta because their names were too similar?
Of course not—it’s because she thought there was only one option.” (Cf. Conopco,
Inc. v. May Dept. Stores Co., 46 F.3d 1556 (Fed. Cir. 1994) (rejecting similar
evidence of actual confusion where consumer testified that she believed that
national brands made the products used in house-branded alternatives).

Florida Virtual also argued that it was error for the court
to discount evidence demonstrating actual confusion: twenty-one emails from
employees, parents, students, and others. But it was not clear error for the
district court to find that the emails were not reliable evidence of confusion,
but rather of “the fact that online educational service providers exist in a
muddled marketplace replete with generically and descriptively named
participants.” It was also not clear error to point out that, without survey
evidence, there was “no way to filter out latent marketplace confusion that the
parties agree exists in the online education market.”

Consumer sophistication: The trial court found that Florida
Virtual’s customers were sophisticated given “the nature and importance of a
parent’s choice of where to educate their child.” This is, of course, a
normative statement, not an empirical one, as the parents above demonstrated.
Students looking for a college are “relatively sophisticated consumers” because
of “the nature, importance, and size of the investment in a college education.”
It was not clear error to apply that logic to schools where “parents, not
students, are the ones making that decision. Plus, the evidence showed that
some of Florida Virtual’s customers were school districts and administrators,
and we would expect them to have a developed understanding of their online
education options.”

from Blogger http://tushnet.blogspot.com/2026/01/11th-circuit-affirms-defense-tm-verdict.html

ZAGG Inc. v. Ichilevici, 2026 WL 63142, No.
23-cv-20304-ALTMAN/Reid (S.D. Fla. Jan. 8, 2026)

ZAGG sells a variety of screen protectors, power management
solutions, mobile keyboards, cases, and personal audio products, including my
beloved Mophie. Defendant DVG resells products, including ZAGG products,
through Amazon. ZAGG sued DVG for false advertising and trademark infringement;
DVG counterclaimed for false advertising/unfair competition/defamation. Here,
the court rejects the parties’ cross motions for summary judgment on trademark
and also leaves for the jury the related question of whether DVG’s listing of its
ZAGG products as “new” was false advertising, while dismissing the rest of the
counterclaims.

DVG bought its ZAGG products in a liquidation pallet from a
wholesaler. ZAGG argued that DVG’s advertisements are false because “Amazon’s
guidelines require a product listed for sale as in ‘New’ condition to be ‘brand
new’ and [ ] covered by a manufacturer’s warranty.”

Both parties produced Amazon pages supporting their views: it
seems that Amazon’s buyer-facing “Condition Guidelines” define “New” as: “Just
like it sounds. A brand-new item. Original manufacturer’s warranty, if any,
still applies, with warranty details included in the listing comments. Original
packaging is present for most New items but certain items like shoes may be
re-boxed.” However, the Amazon FBA Guidelines and Seller Central, in defendants’
telling, “simply require that the item is brand-new and unused, free of
blemishes, smudges or dirt, and in the original packaging,” and defendants
submitted an expert report in support of this view.

Past cases haven’t involved listings where a seller, like
DVG here, notifies purchasers that “it is not an authorized reseller” of ZAGG
products and urges them to “check with the manufacturer to see if a warranty
may apply.” Thus, there was a disputed question of material fact on literal
falsity.

The court also sent the “liquidation” theory of falsity to
the jury, though I’m not sure it should have under its own standards, given
that ZAGG had the burden of proof here. The “thrust” of ZAGG’s argument was
that, because DVG couldn’t “verify the full chain of custody or history of each
individual item,” it couldn’t confirm that was actually selling “brand new”
items.  Sure sounds like lack of
substantiation to me.

Later, the court found that ZAGG submitted enough to get to
the jury on injury: “diversion of sales to a direct competitor [is] the
paradigmatic direct injury from false advertising.” “There’s no question that
ZAGG and DVG are direct competitors and that they sell the exact same products.”

Trademark infringement: Again, ZAGG argued that defendants
had the burden of proving a complete chain of custody, back to sale by ZAGG,
before they could raise a first sale defense. (So much for selling your used stuff!)
The court’s research did not find any cases imposing this trace-to-manufacturer
requirement. DVG disclosed the identity of its supplier and produced documents
and testimony about that supplier’s sales to DVG. The circumstances weren’t
suspicious, as in another case where defendant claimed to have “found [products]
in storage units he acquired,” and the plaintiff submitted “proof that the
products [the defendant sold] were returned product not to be resold.”

There was no record evidence behind ZAGG’s speculation that
DVG was selling counterfeit or damaged goods; it conceded that all the products
it bought in test buys were genuine. DVG also attested (under oath) that all
the ZAGG products it buys are “independently sorted and graded in accordance
with Amazon’s condition guidelines before sending them to Amazon’s warehouses”
and that “[m]any of the products come in their original case packs from the
factory.”

“So, while DVG may not know where its supplier gets its ZAGG
inventory, that break in the custodial chain isn’t sufficient, standing alone
and at summary judgment, to render the first-sale doctrine inapplicable as a
matter of law. We’ll therefore permit DVG to assert its first-sale defense at
trial.” Still to come: who has the ultimate burden of proof here? I would think
it would have to be ZAGG, even if first sale is labeled a “defense” for convenience: The burden is still on ZAGG to show that defendants sold infringing products, and, just as the defense “this mark isn’t confusing because it’s different enough” would not shift the burden of proof to defendants, “this mark isn’t confusing because it’s a legitimate good from the TM owner” seems like it shouldn’t do so either. 

There were also disputed issues on the “material difference”
exception to the first-sale doctrine. “A material difference is one that
consumers consider relevant to a decision about whether to purchase a product.
Because a myriad of considerations may influence consumer preferences, the
threshold of materiality must be kept low to include even subtle differences
between products.” ZAGG argued that some of the products have been “opened,
repackaged, restickered, or damaged,” and DVG’s products don’t “carry the
manufacturer’s warranty.” DVG argued that it “meets or exceeds” the terms of
ZAGG’s warranty because it offers to replace customers’ defective items without
charging them a $10 shipping fee. This was a jury question, including on DVG’s
expert testimony that any damage to the products’ packaging likely occurred in
transit.

DVG’s defamation counterclaim based on ZAGG’s trademark
reports to Amazon was dismissed because it didn’t show falsity or negligence. One
claim that a test buy product had been “altered” and three that the product was
“wrong” were not shown to be false: the first had been opened and the packaging
seal removed, and the other three had different SKUs than listed. DVG didn’t
meet its burden of showing that the different SKUs didn’t matter.

from Blogger http://tushnet.blogspot.com/2026/01/court-rejects-tm-owners-attempt-to.html