11th Circuit affirms defense TM verdict; evidence of confusion is not evidence of harm for disgorgement

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.”