Foremost Title & Escrow Services, LLC v. FCOA, LLC

Under 15 U.S.C. § 1065, certain trademarks are incontestable. All Circuits considering the issue, except the Eleventh, do not presume that an incontestable mark is strong and likely to cause confusion with a junior mark. Instead, every other Circuit requires the incontestable mark holder to prove the mark’s strength and infringement—the likelihood of consumer confusion. But the Eleventh Circuit presumes that an incontestable trademark is strong, whether or not it is, and requires a junior mark holder to rebut that presumption, granting an incontestable mark-holder an additional right in the mark beyond the inability to challenge the mark’s validity. This right is not intended by the Lanham Act or by the Constitution. This Court, in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117-18 (2004), explains that “[s]ection 1115(b) places a burden of proving likelihood of confusion (that is, infringement) on the party charging infringement even when relying on an incontestable registration.” (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992) (Stevens, J, concurring); Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 935 (4th Cir. 1995)) (“And that…requires a showing the defendant’s actual practice is likely to produce confusion in the minds of consumers about the origins of the goods or services in question.”). The question presented is: Whether the Eleventh Circuit is correct to relieve an incontestable trademark-holder of its burden to prove that its mark is strong and likely to be confused with a junior mark?