Pinnacle Advertising and Marketing Group Inc. v. Pinnacle Advertising and Marketing Group, LLC

7 F.4th 989

• Court: Court of Appeals for the Eleventh Circuit
• Decided: August 2, 2021
• Docket: 19-15167
• Status: Published

Opinion

USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 1 of 39

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT ________________________

No. 19-15167 ________________________

D.C. Docket No. 9:18-cv-81606-DMM

PINNACLE ADVERTISING AND MARKETING GROUP, INC.,

Plaintiff-Appellant,

versus

PINNACLE ADVERTISING AND MARKETING GROUP, LLC,

Defendant-Appellee.

________________________

Appeal from the United States District Court for the Southern District of Florida ________________________

(August 2, 2021)

Before MARTIN, NEWSOM, and BRANCH, Circuit Judges.

BRANCH, Circuit Judge: USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 2 of 39

This appeal arises out of a trademark dispute between two advertising and

marketing companies—both of which operate under the name Pinnacle Advertising

and Marketing Group. The Illinois-based Pinnacle owns two registered trademarks

for the name “Pinnacle” and a stylized version of the word “Pinnacle.” It sued the

Florida-based Pinnacle for trademark infringement and unfair competition under

the Lanham Act.1 When a company sues to enforce its registered marks, it faces

the risk of losing its marks’ protection in the process. After Pinnacle Illinois filed

suit, Pinnacle Florida filed a counterclaim seeking to cancel Pinnacle Illinois’s

trademark registrations under 15 U.S.C. § 1119. 2 Pinnacle Florida also alleged that

Pinnacle Illinois’s claims were barred by the doctrine of laches.

A jury eventually rendered a verdict in favor of Pinnacle Illinois on its

infringement and unfair competition claims. After Pinnacle Florida filed a post-

trial motion for judgment as a matter of law, the district court disregarded the

jury’s findings that Pinnacle Illinois’s marks were distinctive and thus trademark

1 This opinion will refer to the appellant, Pinnacle Advertising and Marketing Group, Inc., as “Pinnacle Illinois,” and the appellee, Pinnacle Advertising and Marketing Group, LLC, as “Pinnacle Florida.” 2 15 U.S.C. § 1119 provides: In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

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protectable and cancelled the registrations under § 1119. The district court also

found that Pinnacle Illinois’s claims were barred by laches.

After careful review and with the benefit of oral argument, we conclude that

the district court erred by disregarding the jury’s findings that Pinnacle Illinois’s

marks were distinctive and protectable and misapplying the presumption of

validity given to registered marks. Accordingly, we vacate and remand the district

court’s order cancelling Pinnacle Illinois’s registrations. Further, although we

affirm the district court’s finding that Pinnacle Illinois’s claims for monetary

damages were barred by laches, we remand for the district court to consider

whether to grant Pinnacle Illinois injunctive relief to protect the public’s interest in

avoiding confusion.

I. Background

Pinnacle Illinois has used the name “Pinnacle Advertising and Marketing

Group, Inc.” in connection with its advertising business since 1998. Pinnacle

Florida has operated its advertising business under the name “Pinnacle Advertising

and Marketing Group, LLC” since its formation in 2010. Although it is undisputed

that Pinnacle Illinois learned of Pinnacle Florida’s use of the “Pinnacle” name at

some point before it filed the current lawsuit, the parties dispute exactly when

Pinnacle Illinois obtained this knowledge.

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A. Pinnacle Illinois’s Knowledge of Pinnacle Florida

Pinnacle Florida contends that Pinnacle Illinois learned of its company in

late 2013 or early 2014 when, during a client pitch meeting, the potential client—

the Central Florida Honda Dealers Association—asked Pinnacle Illinois if it was

affiliated with Pinnacle Florida. 3 Pinnacle Illinois’s initial response to an

interrogatory stated that Pinnacle Illinois CEO Michael Magnusson “first became

aware of Pinnacle (FL) in or around late 2013 . . . when pitching to . . . Central

Florida Honda.” But Magnusson later testified at trial that he did not specifically

learn of Pinnacle Florida at this meeting. Rather, he testified that he overheard a

conversation about a person at the meeting confusing Pinnacle Florida and

Pinnacle Illinois, and he only later (after learning of Pinnacle Florida) connected

the dots that the “Pinnacle” the potential client had referred to was Pinnacle

Florida.

Pinnacle Illinois contends that it first learned of Pinnacle Florida in January

2015 when an industry magazine, Advertising Age, mistakenly linked Pinnacle

Florida’s website to an article about Pinnacle Illinois. Magnusson testified at trial

3 Whether the Central Florida Honda pitch meeting occurred in late 2013 or January 2014 is unclear. Pinnacle Florida asserts that the meeting occurred in late 2013, which is supported by Pinnacle Illinois’s interrogatories from an earlier trademark suit filed by Pinnacle Illinois against Pinnacle Florida in Illinois. The record shows that Pinnacle Illinois added Central Florida Honda as a client in January 2014 which implies that the pitch meeting occurred sometime before then.

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that he was “horrified” at the mistake because the article was about Pinnacle

Illinois’s Super Bowl commercial and “all the eyes” in the industry were reading to

see which advertisers created the all-important commercials that year. So

Magnusson contacted a magazine employee to correct the mistake. Following the

correction, Magnusson took no further action to rectify the confusion between the

two companies because, judging from Pinnacle Florida’s website, “[t]hey looked

like a small agency” that focused on hospitality work and Pinnacle Illinois was

“very busy” and “not . . . concerned about [Pinnacle Florida] at the time.”

In January 2016, Advertising Age made the same mistake again.

Magnusson once again contacted the magazine to seek a correction. Nevertheless,

Pinnacle Illinois did not reach out to Pinnacle Florida or take further action at that

time because its “priority was taking care of [its] clients” and it “didn’t have the

capacity to [take action] at that time.”

B. Further Confusion and Registration

Customer confusion continued in the lead-up to this lawsuit. In addition to

the Central Florida Honda pitch meeting and the two Advertising Age mix-ups,

there was evidence of misdirected communications from current and prospective

customers, misdirected invoices from vendors, and misdirected job applications.

Pinnacle Illinois filed for registration of the two marks at issue in this

litigation with the Patent and Trademark Office (“PTO”) on November 4, 2016,

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and obtained registrations on September 12, 2017. Pinnacle Illinois obtained

registrations for “Pinnacle” as a word mark (U.S. Reg. No. 5,284,206) and the

following stylized form of the word “PINNACLE” (U.S. Reg. No. 5,284,223).

During the registration process, the PTO did not require Pinnacle Illinois to

provide proof that its marks had obtained secondary meaning. 4

C. The Current Lawsuit

On April 4, 2018, over four years after the Central Florida Honda pitch

meeting and over three years after the first Advertising Age mistake, Pinnacle

Illinois sued Pinnacle Florida for trademark infringement in the Northern District

of Illinois, but the case was dismissed for lack of personal jurisdiction.

On November 21, 2018, Pinnacle Illinois filed this action against Pinnacle

Florida in the Southern District of Florida. Pinnacle Illinois brought claims for

trademark infringement of its ’206 and ’223 marks under 15 U.S.C. § 1114; unfair

competition under 15 U.S.C. § 1125(a); and cybersquatting under 15 U.S.C.

§ 1125(d).

4 Secondary meaning “is the connection in the consumer’s mind between the mark and the provider of the service.” Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1560 (11th Cir. 1991). A mark that is only “descriptive” of the goods or services it refers to requires proof of secondary meaning to be trademark protectable. Id. at 1559. Other marks are inherently distinctive and require no proof of secondary meaning to be protectable. Id.

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Pinnacle Florida filed its answer to Pinnacle Illinois’s complaint, which

asserted, among other things, an affirmative defense that Pinnacle Illinois’s claims

were barred by the doctrine of laches. Shortly thereafter, Pinnacle Florida filed an

amended counterclaim which asserted six claims, including a claim for

cancellation of Pinnacle Illinois’s registered mark No. 5,269,641 (a different

registered mark than the two at issue in this case) under 15 U.S.C. § 1119.

Pinnacle Illinois then moved to dismiss all of Pinnacle Florida’s

counterclaims and to strike its affirmative defenses. As to the cancellation

counterclaim, Pinnacle Illinois responded that the ’641 registration was not at issue

in this case. Thus, Pinnacle Illinois argued that the district court did not have

jurisdiction to cancel the ’641 registration under § 1119.

In response, Pinnacle Florida acknowledged that it could not seek

cancellation of the ’641 registration in this case and explained that “[it] intends to

file a motion seeking leave to amend (if it is unable to reach agreement on leave to

amend with [Pinnacle Illinois]).” Pinnacle Florida attached a draft cancellation

counterclaim (seeking cancellation of the ’206 and ’223 registrations) to its

response. Pinnacle Florida did not formally seek leave to amend its counterclaim

or attempt to reach an agreement with Pinnacle Illinois.

The district court granted in part and denied in part Pinnacle Illinois’s

motion to dismiss/strike Pinnacle Florida’s counterclaims and affirmative defenses.

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As to the cancellation counterclaim, the district court acknowledged that it could

not consider the ’641 mark in this case. It then stated:

While [Pinnacle Florida] never sought leave to amend the Counterclaim, it represented that it would confer with [Pinnacle Illinois] as to whether an Amended Counterclaim would be permitted and attached a proposed amended cancellation or restriction of registration counterclaim to its response to the present Motion. . . . Although the time to amend the Counterclaim has passed, I will allow Defendant to proceed with the proposed amendment . . . in the interest of fairness. I make this conclusion because [Pinnacle Florida] conceded that it identified an incorrect mark when drafting the Counterclaim, attempted to resolve the amendment issue with opposing counsel amicably, and attached the proposed Amended Counterclaim to the response to the present Motion. Accordingly, I will not dismiss [the cancellation counterclaim], as amended.

Pinnacle Illinois filed a motion for reconsideration of the district court’s

order to the extent that it allowed Pinnacle Florida’s cancellation claim to

proceed.5 Pinnacle Illinois notified the court that Pinnacle Florida never conferred

with it about amending its cancellation counterclaim and never moved for leave to

amend (like it said it “intended” to do in response to Pinnacle Illinois’s motion to

dismiss). Pinnacle Illinois did not request additional discovery or a continuance of

the trial.

5 While Pinnacle Illinois’s motion to dismiss/strike Pinnacle Florida’s cancellation claim was pending, the parties moved for summary judgment. Because the summary judgment motions also remained pending, Pinnacle Illinois’s motion for reconsideration requested, in the alternative, leave to amend its summary judgment motion.

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The district court denied Pinnacle Illinois’s motion for reconsideration. 6

The district court began by observing that its “ruling would have been the same

even if [Pinnacle Florida] had not intended to confer with [Pinnacle Illinois] as to

the counterclaim.” The court further concluded that Pinnacle Illinois was not

prejudiced by its decision to allow the amendment because Pinnacle Illinois was

already prepared to prove its trademark infringement claim, which overlapped with

its obligation to defend against the amended cancellation counterclaim.

During a pre-trial conference, Pinnacle Illinois represented that the

cancellation counterclaim and the laches defense should be decided by the judge

rather than the jury at trial. Specifically, the district court and Pinnacle Illinois had

the following exchange:

THE COURT: And your position is [the Cancellation Counterclaim is] a legal issue and not for the jury? [PINNACLE ILLINOIS’S COUNSEL]: Right. As a result of this discussion, neither the cancellation counterclaim nor the

laches defense were submitted to the jury.

Pinnacle Illinois’s infringement, unfair competition, and cybersquatting

claims were tried during a three-day jury trial. At the close of Pinnacle Illinois’s

case-in-chief, Pinnacle Florida moved for judgment as a matter of law on Pinnacle

6 The district court also denied Pinnacle Illinois’s alternative request for leave to amend its summary judgment motion. 9 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 10 of 39

Illinois’s cybersquatting claim, and the district court granted the motion. After

trial, the jury returned a verdict in favor of Pinnacle Illinois on its claims for

trademark infringement and unfair competition and awarded Pinnacle Illinois

$550,000 in damages.

D. Post-Trial Rulings

After the verdict, Pinnacle Illinois filed its answer to Pinnacle Florida’s

amended cancellation counterclaim. Pinnacle Florida then moved for judgment as

a matter of law on its laches defense and the amended cancellation counterclaim.7

The district court granted Pinnacle Florida’s motion for judgment as a matter

of law. It concluded that Pinnacle Illinois’s trademark infringement and unfair

competition claims were barred by laches because Pinnacle Illinois waited over

four years to bring suit after it should have known of a potential infringement

claim against Pinnacle Florida. The district court also cancelled Pinnacle Illinois’s

registrations under § 1119 because it concluded that Pinnacle Illinois’s marks were

merely descriptive and lacked secondary meaning. Pinnacle Illinois appealed.

II. Discussion

On appeal, Pinnacle Illinois argues the district court erred in four ways:

(1) the district court allowed Pinnacle Florida to amend its cancellation

7 Pinnacle Florida also sought to overturn the jury’s verdict on trademark infringement and unfair competition and alternatively sought a new trial, remitter, and other forms of relief.

10 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 11 of 39

counterclaim ten days before trial even though Pinnacle Florida never formally

moved to amend under Rule 15 of the Federal Rules of Civil Procedure; (2) the

district court cancelled Pinnacle Illinois’s registrations without regard to the jury’s

findings of distinctiveness and protectability or the presumption afforded to

registered marks; (3) the district court abused its discretion in finding that Pinnacle

Illinois’s claims were barred by laches; and (4) even if laches barred Pinnacle

Illinois’s claims for money damages, the district court erred in failing to consider

whether Pinnacle Illinois’s requested injunctive relief was proper to protect the

public’s interest in avoiding confusion. We will address each of these arguments

in turn.

A. Cancellation Counterclaim Amendment

Pinnacle Illinois argues that the district court should not have considered

Pinnacle Florida’s cancellation counterclaim for two reasons. First, Pinnacle

Illinois argues that Pinnacle Florida did not follow the requirements of Rule 15 to

amend its claim. Second, Pinnacle Illinois argues that the amendment prejudiced

Pinnacle Illinois’s ability to prepare its case. We do not find either argument

persuasive.

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We review a district court’s decision on whether to grant a motion for leave

to amend the pleadings for abuse of discretion.8 Hargett v. Valley Fed. Sav. Bank,

60 F.3d 754, 760 (11th Cir. 1995). Outside of the time for an amendment as a

matter of course, “a party may amend its pleading only with the opposing party’s

written consent or the court’s leave.” Fed. R. Civ. P. 15. Rule 15 further provides

that a district “court should freely give leave when justice so requires.” Id. While

allowing an amendment is a discretionary decision, we have explained that district

courts should generally exercise their discretion in favor of allowing amendments

to reach the merits of a dispute. See Shipner v. E. Air Lines, Inc., 868 F.2d 401,

406–07 (11th Cir. 1989) (explaining that Rule 15’s policy of “liberally permitting

amendments to facilitate [the] determination of claims on the merits circumscribes

the exercise of the district court’s discretion”). Leave to amend should be “freely

given when justice so requires” unless there is an “apparent or declared reason” to

deny it such as “undue prejudice to the opposing party.” Foman v. Davis, 371 U.S.

178, 182 (1962); Garfield v. NDC Health Corp., 466 F.3d 1255, 1270 (11th Cir.

2006).

8 Pinnacle Illinois argues that because the district court amended the cancellation counterclaim in its order denying Pinnacle Illinois’s motion to dismiss, we should review the district court’s decision de novo. We disagree. Although Pinnacle Florida did not move to amend under Rule 15, the district court construed its stated intent to do so—coupled with its submission of a proposed amended counterclaim—as a motion for leave to amend. The district court exercised its discretion when it allowed Pinnacle Florida to amend its counterclaim, so we will apply the usual abuse-of-discretion standard.

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Pinnacle Illinois appears to argue that the district court lacked authority to

allow Pinnacle Florida to amend its cancellation counterclaim sua sponte because

Pinnacle Florida never formally moved for leave under Rule 15. We have

previously held that district courts have broad discretion to allow pleading

amendments even when a party does not formally request leave. See Wagner v.

Daewoo Heavy Indus. Am. Corp., 314 F.3d 541, 542 (11th Cir. 2002) (en banc)

(holding that a “district court is not required to grant a plaintiff leave to amend his

complaint sua sponte when the plaintiff, who is represented by counsel, never filed

a motion to amend nor requested leave to amend before the district court”

(emphasis added)). Indeed, we neither require a district court to amend a pleading

sua sponte nor forbid it. Id. Rule 15 allows amendment with the “court’s leave”

and emphasizes that district courts “should freely give leave when justice so

requires.” Fed. R. Civ. P. 15(a)(2). To the extent Pinnacle Illinois asks us to graft

on to Rule 15 a formal requirement that a party seek leave from the district court to

amend its pleadings, we decline to do so.

Pinnacle Illinois’s next argument—that the district court’s decision to allow

the amendment ten days before trial unduly prejudiced it—is likewise unavailing.

Although a party in some situations may be unduly prejudiced by learning of a new

claim only ten days before trial, Pinnacle Illinois was not prejudiced here for

several reasons. First, Pinnacle Illinois spent much of its opening brief explaining

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why its defense to the cancellation counterclaim largely overlapped with its

trademark infringement claim (which it was already prepared to take to trial).

Second, Pinnacle Illinois could not articulate in its briefing or at oral argument

what it would have done differently in preparing for trial if the amendment was

made earlier in the litigation process. Third, Pinnacle Illinois was on notice of the

contents of Pinnacle Florida’s proposed amendment almost three months before

trial. See Hargett, 60 F.3d at 763 (holding that the plaintiff was not prejudiced by

the district court’s decision to allow the defendant to amend its answer to assert a

statute of limitations defense late in the litigation process because the plaintiff

“was placed on notice” earlier in the litigation process that the defendant

“challenged the timeliness of the action”). Fourth, despite the late amendment,

Pinnacle Illinois did not move to delay trial or reopen discovery. Instead, it asked

for an opportunity to seek summary judgment on the counterclaim which revealed

that it was factually prepared to defend the cancellation counterclaim. In short, the

amendment did not unduly prejudice Pinnacle Illinois’s ability to prepare its

defense. Accordingly, the district court did not abuse its discretion by allowing the

amendment. See Foman, 371 U.S. at 182.

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B. Pinnacle Florida’s Double Burden on Cancellation

Next, Pinnacle Illinois argues that the district court’s analysis of the

cancellation counterclaim was substantively wrong.9 Specifically, Pinnacle Illinois

argues that the district court did not view the cancellation counterclaim through the

lens of Pinnacle Florida’s “double burden” on post-trial review. First, Pinnacle

Illinois asserts that because the jury specifically made findings of distinctiveness

and protectability, the district court should have given those findings deference

under Rule 50 of the Federal Rules of Civil Procedure when considering Pinnacle

Florida’s post-trial motion for judgment as a matter of law. Second, Pinnacle

Illinois asserts that because its marks were registered, the district court should have

held Pinnacle Florida to its burden to rebut Pinnacle Illinois’s marks’ presumption

of distinctiveness.

1. First Burden: Deference to the Jury’s Findings

Under Rule 50, a district court can overturn a jury’s finding on an issue if

the court finds that “a reasonable jury would not have a legally sufficient

evidentiary basis to find for the party on that issue[.]” Fed. R. Civ. P. 50(a)(1). To

overturn a jury’s finding, a district court must “examine the entire record in the

light most favorable to [the party that prevailed at trial] . . . and ask whether the

9 We review the district court’s decision on Pinnacle Florida’s motion for judgment as a matter of law de novo, applying the same standard that the district court applied. Royal Palm Props., LLC v. Pink Palm Props., LLC, 950 F.3d 776, 782 (11th Cir. 2020).

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evidence nonetheless points ‘so overwhelmingly in favor of’ [the movant] that the

jury’s verdict cannot stand.” Royal Palm Props., LLC v. Pink Palm Props., LLC,

950 F.3d 776, 782 (11th Cir. 2020) (quoting Richardson v. Leeds Police Dep’t, 71

F.3d 801, 805 (11th Cir. 1995)).

In this case, the district court made clear that it did not use the Rule 50

standard to evaluate the cancellation counterclaim; rather, it applied a

preponderance of the evidence standard, considered the evidence anew, and

determined that Pinnacle Illinois’s marks were not distinctive, and thus not

protectable, and cancelled the registrations under § 1119.10 The district court

appears to have reached this conclusion for two reasons. First, the district court

believed that it could not discern whether the jury made any specific finding that

the marks were distinctive. Second, it noted that the parties “agreed” that the

district court would determine the claim. Pinnacle Illinois contends that both

grounds are error. We agree.

The district court’s first reason for not applying the Rule 50 standard—that

it was unclear whether the jury made a finding that Pinnacle Illinois’s marks were

distinctive and thus trademark protectable—is belied by the record. Although the

cancellation counterclaim was not submitted to the jury directly, in considering

10 As explained more fully below, only distinctive marks—“marks that serve the purpose of identifying the source of . . . goods or services”—are entitled to trademark protection under the Lanham Act. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1357 (11th Cir. 2007).

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Pinnacle Illinois’s claims for trademark infringement and unfair competition, the

jury made a specific finding that Pinnacle Illinois’s marks were distinctive and thus

trademark protectable.

As to Pinnacle Illinois’s claims for trademark infringement and unfair

competition, the jury was instructed:

To prove its claim, Pinnacle Illinois must prove the following facts by a preponderance of the evidence:

1: Pinnacle Illinois owns a trademark that is entitled to protection; and

2: That Pinnacle Florida is using a mark that infringes upon Pinnacle Illinois’s trademark.

The jury instructions also twice explained: the concept of trademark protectability,

the requirement that a trademark be distinctive, and the spectrum of inherent and

acquired distinctiveness. After receiving these instructions, the jury returned a

verdict in favor of Pinnacle Illinois on both its trademark infringement and unfair

competition claims, necessarily meaning that the jury found that Pinnacle Illinois

owned “a trademark that is entitled to protection.” The verdict form demonstrates

the jury’s finding that Pinnacle Illinois’s marks were distinctive and thus

protectable:

Do you find by a preponderance of the evidence that: ...

1. Pinnacle Illinois owns a trademark that is entitled to protection? Answer Yes or No YES 17 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 18 of 39

...

2. Pinnacle Illinois’s trademark was distinctive prior to the date of first use of Pinnacle Florida’s trademark, either because Pinnacle Illinois’s trademark was inherently distinctive or because it had acquired distinctiveness? Answer Yes or No YES

Because the record clearly demonstrates that the jury made findings on the

distinctiveness and protectability of Pinnacle Illinois’s marks, the district court

erred in disregarding these findings when it cancelled the marks.

The district court’s second reason for not applying the Rule 50 standard—

that the parties agreed that the court should decide the issue as a matter of law—is

likewise contradicted by the record. The “agreement” the district court referred to

took place at a pre-trial calendar call proceeding. There, the following exchange

occurred:

THE COURT: And your position is [the cancellation counterclaim is] a legal issue and not for the jury?

PINNACLE ILLINOIS’S COUNSEL: Right.

According to Pinnacle Illinois, that colloquy did not suggest that the parties agreed

to vacate the jury’s findings; it only suggested that the parties agreed that the court

would decide the proper remedy under § 1119. As Pinnacle Illinois notes, § 1119

authorizes a court—not a jury—to cancel a registration. Royal Palm Props., 950

F.3d at 782 (“The Lanham Act gives federal courts the authority to cancel

trademarks that the PTO has registered.”). Pinnacle Florida, on the other hand, 18 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 19 of 39

argues that Pinnacle Illinois agreed that the entire cancellation counterclaim—facts

and law—would be decided by the district court.11

The district court erred in concluding that Pinnacle Illinois agreed that the

jury would have no part in determining the factual issues underlying the

cancellation counterclaim. To the contrary, the record supports Pinnacle Illinois’s

position that it agreed that the court should decide the remedy under § 1119 while

deferring to the jury’s factual findings. In the “agreement” recounted above,

Pinnacle Illinois agreed that the cancellation counterclaim involved a “legal issue”

(not a factual one) for the judge to decide. The factual issues underlying the

cancellation counterclaim—whether Pinnacle Illinois’s marks were distinctive and

thus protectable—were given to the jury to determine. After being instructed on

these issues, the jury answered “yes” that it found Pinnacle Illinois’s marks

distinctive and protectable. And in response to Pinnacle Florida’s motion for

judgment as a matter of law, Pinnacle Illinois included proposed findings of fact,

specifically relying on the fact that “[t]he jury returned a verdict specifically

stating that the PINNACLE mark is protectible.” Because the record clearly

11 Pinnacle Florida also suggests that Pinnacle Illinois waived this argument because “[a]t no time, prior to the filing of its initial appellate brief did [Pinnacle Illinois] argue or object to the District Court deciding the entirety of the Amended Cancellation Counterclaim.” We disagree. Pinnacle Illinois is not arguing that the district court should not have decided the cancellation counterclaim. Rather, it is arguing that the district court applied the wrong standard in doing so given the jury’s factual findings on the protectability of Pinnacle Illinois’s marks. Accordingly, Pinnacle Illinois did not waive this argument.

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demonstrates that the parties (and the court) intended to give deference to the

jury’s findings on distinctiveness and protectability when the court determined the

cancellation counterclaim’s legal question (the remedy under § 1119), the district

court erred in disregarding the jury’s findings.

Further, Pinnacle Florida cites no case to support its position that even if

Pinnacle Illinois clearly agreed to have the district court redecide the factual issues

underlying the cancellation counterclaim, that the district court could do so without

giving the jury’s findings deference under Rule 50. See Lindsey v. Am. Cast Iron

Pipe Co., 810 F.2d 1094, 1098 (11th Cir. 1987) (“[I]t is well-settled that the ‘court

may not make findings’ contrary to or inconsistent with the jury’s resolution . . . of

that same issue as implicitly reflected in its general verdict . . . .” (quotations

omitted)). We are not persuaded that even if such an agreement existed it would

displace the rule that “[o]nce a jury has necessarily or actually decided an issue, the

district court may not reconsider it” without giving it proper deference. Lindsey,

810 F.2d at 1098; Fed. R. Civ. P. 50(a)(1); Royal Palm Props., 950 F.3d at 782.

Because the district court did not give the jury’s findings on protectability

deference, we vacate the district court’s order granting Pinnacle Florida’s motion

for a judgment as a matter of law and remand this case for the district court to

“examine the entire record in the light most favorable to [Pinnacle Illinois] . . . and

ask whether the evidence nonetheless points ‘so overwhelmingly in favor of’

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[Pinnacle Florida] that the jury’s verdict cannot stand.” Royal Palm Props., 950

F.3d at 782 (quotation omitted). In other words, the district court should determine

“whether a reasonable jury could have decided that [Pinnacle Florida] was not

entitled to cancellation of the [Pinnacle registrations].” Id. “[I]f a reasonable jury

could have so concluded” then the district court must uphold the jury’s findings

and deny Pinnacle Florida’s motion for judgment as a matter of law as it relates to

its cancellation counterclaim. Id.

2. Second Burden: Presumption of Distinctiveness

Pinnacle Illinois also argues that the district court failed to hold Pinnacle

Florida to its burden to rebut the presumption that Pinnacle Illinois’s marks are

inherently distinctive. We begin this section by explaining the importance of a

determination of distinctiveness to the district court’s consideration of Pinnacle

Florida’s cancellation counterclaim. We then explain how the district court erred

in analyzing Pinnacle Florida’s cancellation counterclaim without considering

Pinnacle Florida’s second burden—the burden to rebut a presumption of inherent

distinctiveness.

Distinctiveness is the key to trademark protectability. Only distinctive

marks—“marks that serve the purpose of identifying the source of . . . goods or

services”—are entitled to trademark protection under the Lanham Act. Welding

Servs., Inc., 509 F.3d at 1357. Marks can be inherently distinctive (marks that

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themselves identify the source of a particular product or service), or marks can

acquire distinctiveness (marks that initially might have described a broad class of

products, but that over time developed “secondary meaning . . . that links [the

mark] to a particular source”). Royal Palm Props., 950 F.3d at 782–83. When a

mark is inherently distinctive, no proof of secondary meaning is required to prove

protectability. Id. But for marks that are not inherently distinctive, proof of

secondary meaning is required to obtain protection. Id.

“To separate the ‘distinct’ from the non-‘distinct’ . . . we have classified

marks into four categories, in descending order of strength: (1) ‘fanciful’ or

‘arbitrary,’ (2) ‘suggestive,’ (3) ‘descriptive,’ and (4) ‘generic.’” Id. at 783

(quoting Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1559

(11th Cir. 1991)). We consider fanciful, arbitrary, and suggestive marks to be

inherently distinctive. Id. Descriptive and generic marks, however, are not

inherently distinctive. Id. “Descriptive marks can become protectible only if they

‘acquire’ distinctiveness by obtaining a ‘secondary meaning,’ and generic marks

can never become protectible.” Id. (quoting Knights Armament Co. v. Optical Sys.

Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011)).

Federal courts can cancel a registered mark under § 1119 if the challenger to

the registration demonstrates: “(1) that it has standing to petition for cancellation

because it is likely to be damaged, and (2) that there are valid grounds for

22 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 23 of 39

discontinuing registration.” Id. at 782 (quoting Coach House Rest., 934 F.2d at

1557). When, as here, the mark at issue has been registered for less than five

years, the “valid grounds for discontinuing registration include any reason for

which the registration should have been barred in the first instance.” Id. (citation

and quotation marks omitted). One such ground is that the mark lacks

distinctiveness. A determination of distinctiveness, therefore, is key to the district

court’s determination of whether Pinnacle Illinois’s registrations should be

cancelled under § 1119.

But in determining whether Pinnacle Illinois’s marks are distinctive, the

district court must consider the presumptions we give to marks registered with the

PTO. When a mark has been registered with the PTO, there is a “rebuttable

presumption that the marks are protectable or ‘distinctive.’” Welding Servs. Inc.,

509 F.3d at 1357 n.3 (quoting 15 U.S.C. § 1057(b)); see also 15 U.S.C. § 1115(a).

When a mark is registered, a challenger seeking cancellation of the registration

must “overcome the presumption of validity by showing—by a preponderance of

the evidence—that the mark is not distinctive.” Royal Palm Props., 950 F.3d at

783. It is also important to emphasize, however, that “trademark holders are never

entitled to presumptions of both ‘inherent’ and ‘acquired’ distinctiveness—they get

only one or the other.” Id. “The sort of presumption appropriate depends on

whether or not the [PTO] required proof of secondary meaning.” Welding Servs.

23 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 24 of 39

Inc., 509 F.3d at 1357 n.3. When the PTO does not require proof of secondary

meaning, the “presumption is that the mark is inherently distinctive,” but when the

PTO requires proof of secondary meaning, the “presumption is that the mark has

acquired distinctiveness by obtaining secondary meaning.” Royal Palm Props.,

950 F.3d at 784 (quotation omitted; alterations adopted).

In this case, it is undisputed that the PTO did not require Pinnacle Illinois to

provide proof of secondary meaning as part of the registration process for the

registrations at issue. Accordingly, Pinnacle Illinois is entitled to a presumption

that its marks are inherently distinctive. This means that Pinnacle Florida has the

“burden of [production and] persuasion,” which requires it to “prove invalidity [of

the registration] by a preponderance of the evidence.” Engineered Tax Servs., Inc.

v. Scarpello Consulting, Inc., 958 F.3d 1323, 1328 n.8 (11th Cir. 2020).

The district court misapplied these standards when it analyzed Pinnacle

Florida’s cancellation counterclaim. The district court noted that there is a

presumption of distinctiveness for registered marks, but it failed to explain or apply

this presumption properly. First, in its recitation of the presumption, the district

court did not distinguish between the presumption for registered marks that

required proof of secondary meaning (presumption of acquired distinctiveness) and

registered marks that did not require proof of secondary meaning (presumption of

inherent distinctiveness). Second, the district court failed to consider whether

24 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 25 of 39

Pinnacle Florida rebutted the presumption that Pinnacle Illinois’s marks were

inherently distinctive.

Accordingly, on remand, the district court should hold Pinnacle Florida to its

“double burden” to (1) demonstrate that “no reasonable jury” could have found

Pinnacle Illinois’s marks to be distinctive, and (2) rebut the presumption that

Pinnacle Illinois’s marks are inherently distinctive.

C. Laches Defense

Pinnacle Illinois argues the district court erred in finding that its claims for

money damages for trademark infringement and unfair competition under the

Lanham Act were barred by the doctrine of laches. “The equitable defense of

estoppel by laches may be applied to bar . . . Lanham Act [claims].” Kason Indus.,

Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199, 1203 (11th Cir. 1997).

“Though the doctrine is an equitable doctrine that should be applied flexibly, a

defendant must demonstrate the presence of three elements in order to successfully

assert laches as a defense: (1) a delay in asserting a right or a claim; (2) that the

delay was not excusable; and (3) that there was undue prejudice to the party

against whom the claim is asserted.” Id.

In trademark infringement cases, because the Lanham Act does not contain a

statute of limitations, we consider the “the [limitations] period for analogous state

law claims as the touchstone for laches.” Id. The analogous Florida limitations

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period for this type of action is four years. See Fla. Stat. § 95.11(3); AmBrit, Inc. v.

Kraft, Inc., 812 F.2d 1531, 1546 (11th Cir. 1986).

“When the district court has weighed the proper factors in determining

whether a defendant has proven the elements of a laches defense, we review the

district court’s decision for abuse of discretion.” Angel Flight of Ga., Inc. v. Angel

Flight Am., Inc., 522 F.3d 1200, 1207 (11th Cir. 2008). And we review the district

court’s factual findings for clear error. Conagra, Inc. v. Singleton, 743 F.2d 1508,

1516 n.12 (11th Cir. 1984). A factual finding is clearly erroneous when “the

reviewing court on the entire evidence is left with the definite and firm conviction

that a mistake has been committed.” Johnson & Johnson Vision Care, Inc. v. 1-

800 Contacts, Inc., 299 F.3d 1242, 1246 (11th Cir. 2002) (quoting Univ. of Ga.

Athletic Ass’n v. Laite, 756 F.2d 1535 (11th Cir. 1985)).

The district court concluded that Pinnacle Florida established each element

of laches by a preponderance of the evidence and accordingly barred Pinnacle

Illinois’s claims for trademark infringement and unfair competition. We will

address each element in turn.

1. Delay

We calculate delay from the moment “the plaintiff knows or should know

[it] has a provable claim for infringement.” Kason, 120 F.3d at 1206. The parties

dispute when Pinnacle Illinois knew or should have known of its infringement and

26 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 27 of 39

unfair competition claims against Pinnacle Florida. 12 Lanham Act trademark

infringement claims and unfair competition claims both center on the likelihood of

confusion between the two marks. 15 U.S.C. §§ 1114, 1125(a); Savannah Coll. of

Art & Design, Inc. v. Sportswear, Inc., 983 F.3d 1273, 1279 (11th Cir. 2020)

(explaining that plaintiff had to prove likelihood of confusion to prove claims for

trademark infringement and unfair competition). Thus, the relevant question here

is when Pinnacle Illinois knew or should have known that there was a likelihood of

confusion between the two marks.

Pinnacle Illinois contends that we should calculate the delay from February

4, 2016—the date on which Advertising Age magazine mistakenly linked Pinnacle

Florida’s website to an article about Pinnacle Illinois for the second time. Pinnacle

Florida, however, contends that we should calculate delay from January 2014 13—

the date on which Pinnacle Illinois pitched a potential client, Central Florida

Honda, who asked if Pinnacle Illinois was affiliated with Pinnacle Florida. After

reviewing the evidence, the district court agreed with Pinnacle Florida and found

that Pinnacle Illinois knew or should have known there was a likelihood of

12 The parties agree that we stop the delay calculation on April 4, 2019—the day Pinnacle Illinois filed its initial infringement lawsuit in Illinois. 13 As we previously explained, the record does not definitively establish whether the Central Florida Honda pitch meeting occurred in late 2013 or early 2014. The exact date is irrelevant to our analysis because even if the meeting occurred in January 2014, Pinnacle Illinois waited over four years before bringing suit, which exceeds the four-year Florida statute of limitations—the touchstone of our laches analysis.

27 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 28 of 39

confusion between the two marks as of January 2014, which was over four years

before Pinnacle Illinois initially filed suit. The district court concluded that

Pinnacle Florida had demonstrated the delay element of laches because Pinnacle

Illinois sued after the Florida four-year statute of limitations—the touchstone of

laches—had passed.

The district court’s finding that Pinnacle Illinois knew or should have known

of its claim as of January 2014 was not clearly erroneous. The district court relied

on three pieces of evidence in making its determination. First, the district court

relied on an interrogatory from the Illinois litigation in which Pinnacle Florida

asked Pinnacle Illinois when and how Pinnacle Illinois became aware of Pinnacle

Florida. Pinnacle Illinois responded that:

Michael Magnusson of Pinnacle (IL) first became aware of Pinnacle (FL) in or around late 2013. He became aware of Pinnacle [(FL)] when pitching to the Central Florida Honda Dealers Association, when personnel related to that group asked whether the two were affiliated because they did not wish to do business with Pinnacle (FL). At that time, Mr. Magnusson assured the Central Florida Honda Dealers Association that the two were not affiliated.

Second, the district court relied on an interrogatory from the current

litigation where Pinnacle Florida asked Pinnacle Illinois to “[d]escribe in detail

every occurrence [when the parties] pitched or marketed to the same potential

client and the outcome of same.” Pinnacle Illinois replied that “it [was] aware that

Pinnacle (IL) and Pinnacle (FL) both pitched their services to the Central Florida

28 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 29 of 39

Honda Dealers Association in or around late 2013.” The district court said this

evidence “implies that Pinnacle Illinois was aware of Pinnacle Florida in late 2013

and that Pinnacle Florida offered similar services as Pinnacle Illinois.”14

Third, the district court relied on a withdrawn request for admission from the

current litigation. Pinnacle Illinois admitted that it was aware of Pinnacle Florida’s

“use of the name ‘Pinnacle Advertising and Marketing Group, LLC’ at least as

early as 2013.” Pinnacle Illinois moved to withdraw this admission, and the

magistrate judge granted its request, which means it is not conclusive evidence of

the fact. Fed. R. Civ. P. 36(b) (“A matter admitted under this rule is conclusively

established unless the court, on motion, permits the admission to be withdrawn or

amended.”). The district court, however, considered it probative for the purposes

of analyzing Pinnacle Illinois’s delay in asserting its claims. In short, the district

court found that Pinnacle Illinois knew of Pinnacle Florida in January 2014 and, at

that time, it also knew that Pinnacle Florida was operating “a competing

advertising business, utilizing the same name, in the same geographic area that

Pinnacle Illinois had customers.”

14 Pinnacle Illinois replies that this evidence is contradicted by Pinnacle Florida’s CEO’s testimony that Pinnacle Florida never pitched its services to Central Florida Honda. Although Pinnacle Florida’s CEO did testify to that effect, the evidence that the district court relied on is still probative of the fact that Pinnacle Illinois had some awareness that Pinnacle Florida was a competing advertising company operating in the same geographic area as Pinnacle Illinois, that Pinnacle Illinois’s potential customers required clarification about the relationship between the two companies, and that Pinnacle Illinois’s understanding was that it and Pinnacle Florida were competing for the same clients.

29 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 30 of 39

Pinnacle Illinois argues that the district court’s findings as to what occurred

at the pitch meeting were clearly erroneous because Magnusson’s trial testimony

about the Central Florida Honda pitch meeting diverges from his earlier

recollection of the meeting. The following exchange occurred at trial:

Q: So is this the first time that you heard of the defendant?

A: So the answer is “no.” I heard about them earlier, but I didn’t associate it until we started, you know, discovering more. And essentially what happened was we were presenting to the Central Florida Honda Dealers Association. And we were pitching that business, and when we were pitching that business, there was a conversation in the room among the dealers, and somebody said, just something that we overheard, or I overheard, you know, is that – is that Pinnacle? . . . And I don’t know what he was relating to, I didn’t understand really what they were talking about, but after discovering more, then I associated the two. So I legitimately heard about them in 2014.

Q: But in 2014, you didn’t know who that Pinnacle that was referred to by the Central Florida Honda, right?

A: No, I didn’t know who it was.

Based on that testimony, Pinnacle Illinois argues that there is no proof that

the “other Pinnacle” referenced in the Central Florida Honda pitch meeting was

Pinnacle Florida. We disagree. The district court did not clearly err in crediting

Magnusson’s earlier testimony—demonstrating a clear understanding that Pinnacle

Florida was discussed at the pitch meeting—over his later testimony that only

some anonymous “other Pinnacle” was mentioned at the Central Florida Honda

pitch meeting. 30 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 31 of 39

Pinnacle Illinois also argues that the meeting, even as the district court

viewed it, did not give Pinnacle Illinois notice of a potential infringement claim. It

argues that delay should instead be calculated from the second Advertising Age

mistake because only then did Pinnacle Illinois discover that Pinnacle Florida had

“expanded its use of the PINNACLE mark to include the automotive market,

where it would directly compete with [Pinnacle Illinois].” In other words, Pinnacle

Illinois argues that Pinnacle Florida progressively encroached on Pinnacle

Illinois’s market over several years and we should not start the delay calculation

until the second Advertising Age mistake because only then was Pinnacle Florida

infringing on Pinnacle Illinois’s marks.

To be sure, the doctrine of progressive encroachment is relevant to

determining when delay begins.15 Under the doctrine, when “a defendant begins

use of a trademark . . . in the market” and only later “directs its marketing or

manufacturing efforts such that it is placed more squarely in competition with the

plaintiff,” we calculate delay from the later period because only then did the

plaintiff “know [it] ha[d] a provable claim for infringement.” Kason, 120 F.3d at

1205–06.

15 In Kason, we noted that courts “typically discuss encroachment as an excuse for delay,” but we explained that “the doctrine significantly overlaps the court’s inquiry into when delay begins.” 120 F.3d at 1206.

31 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 32 of 39

The district court rejected Pinnacle Illinois’s argument that the doctrine of

progressive encroachment affected its delay calculation in this case. As the district

court explained, after the Central Florida Honda pitch meeting, Pinnacle Illinois

was on notice that (1) another entity was using the name “Pinnacle” in the same

advertising and marketing industry, (2) Pinnacle Illinois’s potential client in the

automotive sector was aware of the entity, (3) the entity was operating in a

geographic location in which Pinnacle Illinois sought customers, and (4) at least

one instance of actual confusion had occurred. Accordingly, the district court

found that Pinnacle Illinois was on notice of a potential infringement claim in

January 2014. On our view of the entire record, the district court’s finding is

supported by the evidence for the reasons the district court explained.

Accordingly, the district court did not clearly err because we are not left with the

definite and firm conviction that the district court committed a mistake when it

calculated Pinnacle Illinois’s delay from January 2014. See Johnson & Johnson,

299 F.3d at 1246 (quotation omitted).

2. Excuse

In determining whether the second element of laches is met, courts consider

whether the plaintiff had an adequate excuse for waiting to bring suit. The excuse

requirement ensures that “[a] trademark owner cannot simply wait without

explanation to see how successful the defendant’s business will be and then [sue]

32 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 33 of 39

to take away [the] good will developed by defendant in the interim.” 6 McCarthy

on Trademarks and Unfair Competition § 31:14 (5th ed. 2021).

Courts excuse delay when, for example, a trademark owner delays in suing

because it is attempting to resolve the dispute through settlement negotiations.

See, e.g., Kehoe Component Sales Inc. v. Best Lighting Prods., Inc., 796 F.3d 576,

585 (6th Cir. 2015) (explaining that negotiations to resolve the dispute do not

count for the running of a laches defense); Piper Aircraft Corp. v. Wag-Aero, Inc.,

741 F.2d 925, 932 (7th Cir. 1984) (“It would disserve the strong policy in favor of

nonjudicial dispute resolution if defendant successfully could assert that the three-

and-one-half year period of settlement attempts contributes to the establishment of

laches.”); Siegerist v. Blaw-Knox Co., 414 F.2d 375, 381 (8th Cir. 1969) (excusing

delay because “the parties attempted to engage in conciliatory negotiations rather

than rush headlong toward litigation”). 16

The district court determined that Pinnacle Illinois had no excuse for

delaying four years to sue to enforce its marks. It found that Pinnacle Illinois

failed to communicate with Pinnacle Florida about the infringement until it filed

16 Although we did not specifically ground our analysis under the second laches element, we similarly held in Citibank, N.A. v. Citibanc Group, Inc. that the laches defense failed because the plaintiff wrote letters repeatedly warning the defendant that it “regarded the use of Citibanc as an infringement of [its] rights,” but that the defendant expanded its use of the mark anyway. 724 F.2d 1540, 1546 (11th Cir. 1984). Because the “[d]efendants ha[d] not relied on the delay of plaintiffs in expanding their use of the mark[,]” we found that that the defendants had not established the defense of laches. Id. at 1547.

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the Illinois lawsuit. The district court pointed out that Magnusson was “horrified”

both times Advertising Age mistakenly included Pinnacle Florida’s website in its

article about Pinnacle Illinois, but Magnusson “did not take even the minimal step

of contacting Pinnacle Florida to begin discussing the potential infringement.”

Pinnacle Illinois argues it should be excused for its delay because of the

“progressive encroachment” argument discussed above. While some courts do

consider progressive encroachment under the excuse prong of laches, we consider

it in calculating the initial delay. Kason, 120 F.3d at 1206 (analyzing progressive

encroachment under the delay element of laches). In any event, as explained

above, we reject Pinnacle Illinois’s argument that it did not know or should not

have known of a potential infringement claim during the Central Florida Honda

pitch meeting. Accordingly, Pinnacle Illinois has failed to show that the district

court clearly erred when it found that Pinnacle Illinois had no excuse for its delay

in enforcing its marks.

3. Undue Prejudice

Pinnacle Illinois’s final argument is that Pinnacle Florida was not prejudiced

by any delay. “[M]ere delay, without resulting injury to defendant, is not sufficient

to prevent relief for infringement.” 6 McCarthy on Trademarks and Unfair

Competition § 31:12 (5th ed. 2021). Courts have previously recognized two

categories of prejudice caused by a delay in bringing a trademark infringement

34 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 35 of 39

suit—evidentiary prejudice and economic prejudice. Id. (collecting cases)

(“Evidentiary prejudice encompasses such things as lost, stale or degraded

evidence or witnesses whose memories have faded or who have died. Economic or

expectation-based prejudice encompasses actions made by the defendant that it

would not have taken or consequences it would not have experienced had the

plaintiff brought suit promptly.”).

In this case, Pinnacle Florida asserts that it suffered economic prejudice.

The district court concluded that Pinnacle Florida established that it had been

unduly prejudiced by Pinnacle Illinois’s delay because Pinnacle Florida showed

that it “expended significant time and money developing its business (under the

Pinnacle name).” In addition to growing its business and expanding its clientele

during the time between the Central Florida Honda pitch meeting and when

Pinnacle Illinois sued to enforce its marks, Pinnacle Florida’s CEO Pete Gary

testified at trial that he has spent “close to $2 million” developing Pinnacle Florida

and its brand. Gary explained that the money was spent on sending representatives

to trade shows to pitch Pinnacle Florida to potential clients, creating publications

and booklets with the Pinnacle image and address, and supporting charity events

under the Pinnacle name.

Pinnacle Illinois argues that the district court clearly erred in finding that

these expenditures were sufficient to show prejudice because Pinnacle Florida only

35 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 36 of 39

presented evidence of time and money spent promoting its company, rather than

evidence of time and money promoting the Pinnacle mark. We note that our sister

circuits are split on the showing required to satisfy the prejudice element of laches

under the economic prejudice category.

The Ninth Circuit has adopted a stricter approach and requires a showing of

prejudice to be “based on an investment in the [trademark] as the identity of the

business in the minds of the public[,]” which is different than “mere[] . . .

expenditures in promoting the infring[ing] name[.]” Internet Specialties W., Inc. v.

Milon-DiGiorgio Enters., Inc., 559 F.3d 985, 991–92 (9th Cir. 2009). In Internet

Specialties, the Ninth Circuit held that no prejudice was shown merely by the

growth of the defendant’s business and customer base during the delay when the

defendant presented no evidence of its investment in the public’s awareness of the

trademarked brand. Id.

Other circuits take a broader view of prejudice and have held that any

showing of economic prejudice related to the business because of the delay is

sufficient. Herman Miller, Inc. v. Palazzetti Imps. & Exps., Inc., 270 F.3d 298,

322 (6th Cir. 2001) (holding that increased potential liability for damages by itself

was sufficient to show prejudice); Hubbard Feeds, Inc. v. Animal Feed

Supplement, Inc., 182 F.3d 598, 602 (8th Cir. 1999) (holding that substantial

36 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 37 of 39

investments in equipment used to produce the infringing product were sufficient to

show prejudice).

In this case, we need not take a position on this circuit split, however,

because even under the Ninth Circuit’s strict approach, the “business” and the

“mark” in this case are one and the same—the investments described by Pinnacle

Florida’s CEO at trial are promoting the business generally and associating the

business with the “Pinnacle” name in the minds of relevant consumers.

Accordingly, it is impossible to distinguish between investments in promoting the

mark versus investments into promoting the business generally.

If Pinnacle Florida had known of Pinnacle Illinois’s infringement and unfair

competition claims sooner, it could have redirected its resources into promoting its

business and brand under a different name during the four years it continued to

promote the Pinnacle mark after Pinnacle Illinois should have known of its

infringement and unfair competition claims. Accordingly, Pinnacle Illinois failed

to show the district court clearly erred in finding that Pinnacle Florida was

prejudiced by Pinnacle Illinois’s over-four-year delay in bringing suit.

* * *

Pinnacle Illinois has failed to show that the district court committed clear

error when it found that each element of the defense of laches was met.

Accordingly, the district court did not abuse its discretion when it determined that

37 USCA11 Case: 19-15167 Date Filed: 08/02/2021 Page: 38 of 39

Pinnacle Illinois was barred from bringing its trademark infringement and unfair

competition claims for monetary damages.

D. Public Interest in Avoiding Confusion: Injunctive Relief

Even though we affirm the district court’s conclusion that the doctrine of

laches bars Pinnacle Illinois’s claims for monetary damages for trademark

infringement and unfair competition, we remand this case for the district court to

consider Pinnacle Illinois’s request for injunctive relief to protect the public’s

interest in avoiding confusion. As we explained in Kason, even if laches bars a

claim for money damages, “if the likelihood of confusion is inevitable, or so strong

as to outweigh the effect of the plaintiff’s delay in bringing a suit, a court may in

its discretion grant injunctive relief, even in cases where a suit for damages is

appropriately barred.” Kason, 120 F.3d at 1207; see id. (“Because of the public

interest in preventing the deception of consumers, delay by the trademark owner

will not ordinarily disable it from obtaining an injunction if there is strong

evidence of likely or actual confusion.” (alteration adopted) (quoting Restatement

(Third) of Unfair Competition § 31, cmt. e (1995))).

Although Pinnacle Illinois sought both monetary and injunctive relief for its

trademark infringement and unfair competition claims, the district court did not

address whether Pinnacle Illinois is entitled to injunctive relief to protect the

public’s interest in avoiding confusion. Accordingly, on remand, the district court

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must “weigh the equities of the case and the strength of [Pinnacle Illinois’s] case”

to determine whether injunctive relief is appropriate. Kason, 120 F.3d at 1207

(explaining that because the issue of whether to grant an injunction after a

trademark claim for money damages is barred by laches will “require a careful,

fact-intensive consideration,” so it is best left “for the district court and its

informed discretion on remand” (quoting SunAmerica Corp. v. Sun Life Assurance

Co. of Can., 77 F.3d 1325 (8th Cir. 1996))).

III. Conclusion

For the reasons explained above, the judgment of the district court is

VACATED in part, AFFIRMED in part, and the case is REMANDED for further

consideration consistent with this opinion.

VACATED IN PART, AFFIRMED IN PART, and REMANDED.