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United States Court of Appeals,
Fifth Circuit.
No. 94-50074.
SOCIETY OF FINANCIAL EXAMINERS, Plaintiff-Appellee,
v.
NATIONAL ASSOCIATION OF CERTIFIED FRAUD EXAMINERS INC., et al.,
Defendants,
National Association of Certified Fraud Examiners Inc., et al.,
Defendants-Appellants.
Jan. 3, 1995.
Appeal from the United States District Court for the Western
District of Texas.
Before HIGGINBOTHAM, JONES and BARKSDALE, Circuit Judges.
EDITH H. JONES, Circuit Judge:
Demand apparently exists for those professionals with the
designation "CFE" on their resume. Two organizations offer the
educational and training programs necessary to endow these initials
with meaning. Unfortunately, whereas the defendant, the National
Association of Certified Fraud Examiners, intends "CFE" to
designate "Certified Fraud Examiner," the plaintiff, the Society of
Financial Examiners, has historically utilized the same initials to
represent a "Certified Financial Examiner." Whether the Lanham Act
entitles the initial user of the designation to prohibit confusion
generated by this state of affairs is resolved by answering two
subsidiary questions:
(1) Is "CFE" too generic a mark to qualify for statutory
protection?;
(2) Does a "likelihood of confusion" exist?
1

The district court thought the answers obvious, and entered summary
judgment. Reviewing the district court's grant of summary judgment
de novo, this court determines that these fact-intensive inquiries
cannot be conducted properly without a trial. The district court's
judgment must therefore be reversed.1
I.
The Society of Financial Examiners (SOFE) was organized in
1973 as a non-profit professional organization of financial
examiners and public-sector regulators who supervise, review and
analyze the financial security of banks, insurance companies,
credit unions, savings and loan associations and other financial
institutions. SOFE maintains an array of accreditation and
certification qualifications for membership in its organization.
Most notably, SOFE demands adherence to a canon of ethics,
successful performance on a comprehensive examination, and
satisfaction of continuing education standards. Since 1974, SOFE
has used "CFE" to designate this exam ("CFE Exam"), the preparation
materials and programs for the test ("CFE Program"), and to refer
to those who have completed the exam and adhere to the other
requirements as "CFE Members." In September of 1992, SOFE obtained
a service mark registration for "CFE" educational goods and
association services.2
1The district court did not address the merits of the
plaintiff's pendent state law claims. Presented as an
interlocutory appeal of that court's judgment, this court
likewise does not resolve nor consider those claims.
2The trademark registration was limited to:
2

In contrast, the National Association of Certified Fraud
Examiners (NACFE) is an unincorporated professional association
that has grown in a few years' time to include about 10,000 members
engaged in detecting and deterring fraud and white-collar crime.
Like SOFE, NACFE obliges its members to pass a uniform examination,
maintain competency through continuing education and heed a code of
professional ethics. In 1988, NACFE selected the designation
"certified fraud examiner" and the corresponding acronym "CFE" to
recognize those accountants, law enforcement professionals,
regulators, lawyers, professors, auditors, and security managers
and investigators who satisfied its standards.
Both organizations publish newsletters, organize and conduct
seminars
and
conferences,
and
advise
regulators
and
quasi-regulators on issues of concern.
II.
"The gravamen for any action of trademark infringement or
common law unfair competition is whether the challenged mark is
likely to cause confusion." Marathon Manufacturing Co. v. Enerlite
i. [International Class 41] "Educational
services; namely, providing self-study courses
designed for persons employed or engaged by or on
behalf of government regulatory authorities to conduct
or assist in the financial examination of banks,
savings and loans, credit unions, insurance companies
and other financial institutions...."
ii. [International Class 42] "Association
services; namely, promoting the interests of financial
examiners presently or formerly employed or engaged by
or on behalf of government regulatory authorities to
conduct or assist in the financial examination of
banks, savings and loans, credit unions, insurance
companies and other financial institutions...."
3

Products, 767 F.2d 214, 217 (5th Cir.1985) (citations omitted). In
this circuit, whether NACFE's later use of "CFE" is "likely to
cause confusion" is a question of fact. Amstar Corp. v. Domino's
Pizza, Inc., 615 F.2d 252, 258 (5th Cir.1980). Even total
confusion, however, is irrelevant if "CFE" constitutes a "generic"
mark. That too is a question of fact. American Automobile
Association v. AAA Legal Clinic, 930 F.2d 1117, 1121 (5th
Cir.1991).
Although both critical determinations were factual, the
district court believed summary judgment appropriate. Whereas
general principles of summary judgment assail this conclusion, the
explicit guidance of Marathon Manufacturing--in the context of a
nearly identical factual predicate--decimates it. In Marathon
Manufacturing, this court repudiated exercise of summary judgment
to determine whether a likelihood of confusion existed between
"MARATHON" and "MARATHON 10" marks. Id. at 217. ("Although the
parties filed cross-motions for summary judgment, this procedure
was improper.") Notably, both parties had filed motions for
summary judgment asserting that no material facts were in dispute.
Notwithstanding this suggestion, identifying a genuine issue
of material fact was not difficult in Marathon nor is it here.
"[T]he fact that both parties simultaneously are arguing that there
is no genuine issue of fact does not establish that a trial is
unnecessary thereby empowering the court to enter judgment as it
sees fit." Podberesky v. Kirwan, 38 F.3d 147 (4th Cir.1994)
(citing 10A Charles A. Wright, Arthur R. Miller & Mary Kay Kane,
4

Federal Practice and Procedure � 2720 (2d ed. 1983)).3 Indeed,
both factual questions--whether CFE is generic and the existence of
likelihood of confusion--pose a genuine issue of fact in this case.
A dispute about a material fact is "genuine" if the evidence
would permit a reasonable jury to return a verdict for the
nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Hence this court
3"Not infrequently, the parties in such a case do not really
mean to suggest that there are no material questions of fact.
Rather, they intend to submit the remaining fact questions to the
district court for resolution on the existing record."
Fritiofson v. Alexander, 772 F.2d 1225, 1239 (5th Cir.1985).
This is precisely what transpired in Marathon.
[C]ounsel ... agreed that what really occurred was
a submission of the case on the written record,
developed after extensive discovery and supplemented
with oral argument before the district judge. Despite
the label: summary judgment, all parties fully agree
that the district court reached a conclusion by making
a single finding of fact as to likelihood of confusion
based on underlying facts which were either not
substantially in dispute or left to the district court
to decide from the voluminous record on submission.
767 F.2d at 217. It is inconceivable here, however, that
NACFE consented to submission on a record. Though its
motion for summary judgment did urge the absence of a
material disputed fact, NACFE merely insisted that "CFE" is
unprotectable as a matter of law. Even if the district
court overlooked NACFE's point, NACFE was assuredly correct;
everything else would become moot by prevailing on this
account.
Conversely, NACFE's response to SOFE's motion for
summary judgment pointedly described the presence of
material questions of fact should its unprotectability per
se argument be spurned by the district court. For example,
the first paragraph declared: "Even if a likelihood of
confusion analysis was not rendered moot by Defendants'
Motion for Summary Judgment, there does exist a material
question of fact concerning the nature o[r] likelihood of
confusion which is cognizable in a case of this nature."
5

tests the propriety of summary judgment by evaluating whether a
reasonable fact finder could return a verdict for NACFE on either
issue. Simply, would the result of submitting the case to a
rational trier of fact be preordained? Considering all evidence in
the light most favorable to the non-moving party and resolving all
reasonable inferences in favor of the non-moving party, id. at 249,
106 S.Ct. at 2510-11, precipitates substantial doubt as to the
proper solution to either issue. On this record, a trier-of-fact
would be entitled to decide that "CFE" was generic or to adjudge
the likelihood of confusion farfetched.
III.
"The terms "generic' and "trademark' are mutually exclusive."
McCARTHY, TRADEMARKS AND UNFAIR COMPETITION � 12.01[1] at 12-3 (3d
ed. 1992). Citing Blinded Veterans Assoc. v. Blinded American
Veterans Foundation, 872 F.2d 1035, 1041 (D.C.Cir.1989) (Ginsburg,
R.B., J.) (holding "blinded veterans association" generic), NACFE
asserts that "certified financial examiner" likewise denotes little
more than a class of individuals.4 SOFE is also summoned to
distinguish "certified financial examiner" from the generic
"multistate bar examination" and "MBE." National Conference of Bar
Examiners v. Multistate Legal Studies, 692 F.2d 478, 488 (7th
4NACFE also contends that SOFE's members use "CFE"
effectively as a designation of title rather than to indicate the
source or origin of the training and standards they comply with.
As a designation of title, NACFE asserts, "CFE" is unprotectable
as a matter of law. We cannot evaluate these contentions without
a predicate factual finding whether the "CFE" mark is so used or
understood.
6

Cir.1983).5 This circuit challenges the trier-of-fact to isolate
the generic. Texas Pig Stands v. Hard Rock Cafe, 951 F.2d 684, 692
(5th Cir.1992).
In principle, the touchstone is clear: "[T]he test for
genericness [sic] is whether the public perceives the term
primarily as the designation of the article." Blinded Veterans,
872 F.2d at 1041. In contrast, actually to divine whether "pig
sandwich," for example, characterizes an article itself (i.e., a
dish of barbecued pork on wheat or white bun) or instead typifies
a singular member of the article's class6 is "difficult." Texas
Pig Stands, 952 F.2d at 692.7 Put another way, "the primary
significance of" a trademark "in the minds of the consuming public
is not the product but the producer." Kellogg Co. v. National
Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73
(1938).
To secure protection, therefore, "CFE" must invoke the source
of the designation and not just intimate a financial examiner who
has been certified. Like J.D., M.B.A., Ph.D., and C.P.A.,
"certified financial examiner" could be poised to fail this test.
A mark answers the buyer's questions "Who are you? Where do
you come from?" "Who vouches for you?" But the name of the
5"We need not deal separately with the question whether the
initials ["CFE"] are generic; if the full name is generic, an
abbreviation is treated similarly." Blinded Veterans, 872 F.2d
at 1041 n. 12 (citations omitted).
6For instance, the type of shredded pork sandwich produced
by Pig Stands.
7The province to embrace either conclusion was recognized.
Id.
7

product answers the question "What are you?" Many competitive
products will give the same answer, regardless of source or
origin--e.g., a computer, a box of cigars, a bar of soap. Such
generic designations tell the buyer what the product is, not
where it came from.
McCarthy � 12:01[2] at 12-4. Enlightened by this gauge,
unqualified faith that "CFE" primarily signifies origin could be
only divinely inspired.8 The summary judgment must be reversed on
this basis alone.
Nevertheless, that "certified financial examiner" does--or
did--evince provenance is not inconceivable. An apprehension of
this possibility elucidates the Supreme Court's observation in
Ibanez v. Florida Dept. of Business and Professional Regulation, --
- U.S. ----, ----, 114 S.Ct. 2084, 2091, 129 L.Ed.2d 118 (1994),
that
"
"Certified
Financial
Planner' and "CFP' are
8Indeed, many terms already found generic are sufficiently
akin to "certified financial examiner" to have counseled
restraint in the exercise of summary disposition. These are
illustrative:
AEC (trade show on architecture, engineering and
construction)
ASSOCIATION OF ENERGY ENGINEERS (organization of
engineers specializing in the field of energy)
CONSUMER ELECTRONICS MONTHLY (title of magazine)
INDUSTRIAL RELATIONS COUNSELORS, Inc. (seminars on
industrial relations)
VIDEO BUYER'S GUIDE (magazine for home television
products)
Id. at � 12.03, at 12-32:41 (collecting cases). Contrast
"CFE" and these examples to the "American Automobile
Association" or "Better Business Bureau" marks, neither
which could be understood in ordinary English usage to
describe "a class of services." American Automobile
Association, 930 F.2d at 1121.
8

well-established, protected federal trademarks that have been
described as "the most recognized designation[s] in the planning
field.' " As opposed to igniting a revolution, Justice Ginsburg
merely affirmed that "CFP" was an ostensible token of source.
Because no question of trademark law was before the Court in
Ibanez, however, its statement, while suggestive, is not binding on
lower courts. Ibanez is thus an instructive reminder that "CFE"
could import to the public a "particular merchandiser" and not
chiefly "the type of service merchandised." National Conference of
Bar Examiners, 692 F.2d at 488. NACFE thus might not be entitled
to summary judgment either.9
IV.
[3, 4] To prove its claim of trademark infringement
[plaintiff] was required to show that [defendant's] use
of [the mark] was likely to create confusion in the minds
of potential purchasers as to source, affiliation, or
sponsorship of the parties' products.
Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d 166, 170 (5th
Cir.1986). Whether NACFE's use of "CFE" or "certified fraud
examiner" was likely to confuse any potential customers of SOFE's
goods and services is the precise inquiry.10 Intuitively, the use
of "CFE" by two organizations in the market for professionals who
9The denial of NACFE's motion for summary judgment is not
before this court.
10In this circuit, seven factors relevant to the ultimate
question of likelihood of confusion have been identified: the
type of trademark at issue; similarity of design; similarity of
product; identity of retail outlets and purchasers; identity of
advertising media utilized; defendant's intent; and actual
confusion. Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252,
259 (5th Cir.1980). The magistrate judge made "findings" on each
of these.
9

scrutinize financial representations breeds confusion. The record
is too incomplete, however, to constrain a reasonable trier-of-fact
from concluding confusion unlikely to occur in potential
customers.11
Specifically, the dearth of evidence of actual confusion vis
� vis SOFE's educational goods and services12 could jeopardize the
expectation of confusion.13 "Although evidence of actual confusion
is not necessary to a finding of likelihood of confusion, it is
nevertheless the best evidence of likelihood of confusion." Amstar
Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir.1980)
(citation omitted). Hence SOFE's inability to produce an actual
instance of confusion, or at most twelve examples over a five year
period, refutes the likelihood of confusion. Fidelity to Amstar
impels reversing the district court: "Indeed, the fact that only
three instances of actual confusion were found after nearly fifteen
11The plaintiff need not, however, prove confusion in actual
consumers. Fuji Photo Film v. Shinohara Shoji Kabushiki Kaisha,
754 F.2d 591, 597 (5th Cir.1985) (error to discount evidence of
actual confusion on part of distributors and trade show
visitors). Evidence of confusion in others permits the inference
of confusion of purchasers. Id. (confusion in customers inferred
from confusion in retailers, sales clerks, distributors)
(collecting cases).
12SOFE's affidavits support "at least twelve known instances
of actual confusion." Whereas all of these are probative in a
fact-finder's assessment of the likelihood of confusion, none
represents confusion by a consumer of SOFE's wares. Seven of the
"instances" occurred in an employment interview (or closely
analogous) context. The other five episodes of confusion
reflected mistaken presumptions that arose briefly from the
display of "CFE" on a business card or letterhead.
13Recall Oreck demands confusion over the parties' products.
SOFE must therefore establish a likelihood of confusion over the
commodities it markets.
10

years of extensive concurrent sales under the parties' respective
marks raises a presumption against likelihood of confusion in the
future." Id. (citation omitted).14
Moreover, material disputes apparently exist on other "digits
of confusion."15 For example, although SOFE and NACFE's use of the
exact same initials--"CFE"--manifests a "similarlity of design," this
fact alone is not conclusive on the digit. Marathon Mfg., 767 F.2d
at 218 ("the court erroneously focused on the similarity between
the words "Marathon' and "Marathon 10,' rather than the overall
dissimilarity between the composite marks or corporate logos used
by each company"). Yet the district court ignored the distinctive
presentations of their respective marks in the record in concluding
"[t]he "CFE' mark used by the defendants is identical to that used
by the plaintiffs." The visual contrast easily suffices to empower
a trier-of-fact to decide otherwise.
Similarly, the district court mistakenly assumed "identity of
purchasers" to be unassailable. Although SOFE convincingly
documented some tangency with NACFE's marketing, "[t]here are
14In Oreck, this court found the plaintiff's "inability to
point to a single incident of actual confusion" in light of
concurrent use of the similar marks for seventeen months "highly
significant." 803 F.2d at 173.
15Contrary to NACFE's suggestion, SOFE is not required to
produce evidence on all seven "digits" recognized by this court.
These digits are not elements of a plaintiff's cause of action,
but instead comprise a nonexhaustive collection of considerations
that may be relevant to the ultimate factual determination--Are
the actions of the defendant likely to create confusion? Conan
Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th
Cir.1985) ("The absence or presence of any one factor ordinarily
is not dispositive; indeed, a finding of likelihood of confusion
need not be supported by even a majority of the seven factors.")
11

substantial dissimilarities between the predominant purchasers of
plaintiff's and defendants' products." Amstar, 615 F.2d at 262.
In particular, SOFE's marked accent on public regulatory officials
commanded a more refined analysis of the congruence between the
parties' potential customers. Id. (pivotal difference in
advertising to 18-to-34 year old single males and middle-aged
housewives).
Whatever the final outcome of this case, we are persuaded that
only a full trial on the merits, preceded by adequate discovery,
will properly sort out the protectability of "CFE."16
For the foregoing reasons, we VACATE the injunction of the
district court, and REMAND for trial.

16Because we presume adequate discovery will take place
prior to a trial, NACFE's "newly discovered" evidence motion is
moot.
12