Experience
CFA Institute
American Retirement Association
The American Retirement Association (ARA) is a non-profit professional organization that has offered education and credential programs in the field of employer-based retirement plans for more than half a century. ARA launched a new credential under the name “Certified Plan Fiduciary Advisor” and referred to it as “CPFA.” The CPFA credential is targeted at retirement plan advisors who want to demonstrate their expertise in advising employers on the fiduciary responsibilities that employers have under the Employee Retirement Income Security Act of 1974 (ERISA) in managing the retirement savings of their employees.
Unlike the CPFA credential, the “Chartered Financial Analyst” or “CFA” credential is targeted at financial advisors generally. Based on its rights in the trademark CFA, the CFA Institute initially opposed ARA’s trademark application at the Trademark Trial and Appeal Board (TTAB) and then later filed a trademark infringement lawsuit in the U.S. District Court for the Western District of Virginia. Exhaustive fact and expert discovery was taken, including from three industry experts, three survey experts, and two damages experts. After the close of discovery, ARA filed a motion for summary judgment on liability and, in the alternative, summary judgment on compensatory damages. The court granted Finnegan client ARA summary judgment, finding no liability, and cancelled the scheduled trial.
This case illustrates the importance of viewing the marks at issue within the contextual framework of the real world. Despite the plaintiff having valid and protectable trademarks, the court found that the plaintiff’s CFA trademarks “lack the distinctiveness that would heighten the likelihood of confusion with a superficially similar acronym.” Indeed, the court remarked that, from a conceptual standpoint, the CFA trademark “is quite generic” given its underlying meaning of “Chartered Financial Analyst.” The court also took into account the practical reality that no actual confusion had arisen despite the two credentials co-existing in the marketplace for four years, noting that CFA Institute had failed to offer “even a scintilla of evidence” of actual confusion. While the court recognized that actual confusion is not necessary to establish a likelihood of confusion, the complete absence of such evidence here—including the CFA Institute’s failure to conduct a survey—was highly significant under long-established precedent by the Fourth Circuit Court of Appeals. Finally, the court found that “there can be no serious debate” that sophisticated individuals in the financial services industry are not likely to obtain the CPFA credential under the mistaken belief that it is affiliated with the CFA credential. Considering the relevant factors, the court concluded that no reasonable jury could find a likelihood of confusion between the CFA and CPFA trademarks.
The court’s ruling underscores that evaluating trademark infringement claims involves much more than a white-room examination of marks that may contain similar letters. Especially with acronyms, the underlying meaning of the acronyms must be taken into account. The court’s decision is also an important reminder that the Fourth Circuit in particular gives significant weight to the lack of actual confusion evidence, and that plaintiffs bringing trademark infringement claims in this circuit who fail to offer such evidence do so at their peril.
CFA Institute v. American Retirement Association, 3:19-cv-00012, W.D. Va., Judge Moon
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