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11th Cir.: Extends Protection for Fed Registered Service Marks to Goods

In Savannah College of Art and Design, Inc. v. Sportswear, Inc. d/b/a Prep Sportswear, No. 15-13830 (11th Cir. 2017)(Available Here), the Court of Appeals for the 11th Circuit found that, relying upon prior case law, protection for federally-registered service marks extends to goods.

Sportswear, Inc. began use of the federally-registered service marks of the Savannah College of Art and Design (herein “SCAD”) without a license to sell apparel and other goods on its website. SCAD sued Sportswear for service mark infringement, unfair competition and false designation of origin. The district court granted summary judgment in favor of Sportswear concluding that SCAD had failed to establish that it had enforceable rights in its marks that extended to apparel. The Court of Appeals for the 11th Circuit reversed relying upon an older case, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), which controls, as it extends protection for federally-registered service marks to goods.

SCAD holds four federally registered marks for “educational services” i.e. the provision of instruction and training at the undergraduate, graduate, and post-graduate levels. Sportswear operates online and uses an interactive website to market and sell “fan” clothing and items, like t-shirts, sweatshirts, ball caps and bags. To purchase an item from Sportswear, a customer is generally required to select its preferred organization’s “online store,” choose an item and select that organization’s emblem, mascot or name. Sportswear’s website then generates a sample of the selection, prompts the customer to checkout online, and ships the final product to the customer’s home in a package.

At trial Sportswear conceded that it was selling products online with virtually indistinguishable reproductions of the “SCAD” and ‘SAVANNAH COLLEGE OF ART AND DESIGN” word marks, but asserted that its website contained a prominent disclaimer showing that the products were in no way affiliated with the school.

Relying on Crystal Entertainment & Filmworks, Inc. v. Jurado,643 F.3d 1313, 1315-6 (11th Cir. 2011), the district court held that SCAD failed to establish that its service mark rights extended to apparel because it could not show priority in use as to goods. The 11th Circuit found that the district court’s reliance on Jurado was misplaced. In Jurado, both sides could only assert common law trademark rights, therefore, priority of use became a critical issue. The question before the 11th Circuit was whether SCAD had enforceable service mark rights that extend- beyond the services listed in its federal registrations- to goods in order to satisfy the first prong of an infringement analysis: the validity and scope of a contested mark.

The 11th Circuit found that it was bound to follow Boston Hockey, 510 F.2d 1004 (5th Cir. 1995), which extends protection for federally registered service marks to goods, and therefore beyond the area of registration listed in the certificate. The facts in Boston Hockey are very similar to the facts of the present case, except the manufacturer sold only mark-replica patches and did not affix them to shirts or jackets. The court in Boston Hockey found that there was an interest in the mark that was entitled to protection, but absent from the court’s analysis is an explanation for how or why the teams’ registration for “hockey entertainment services” provided statutory protection as to goods like embroidered patches.

The 11th Circuit reversed and remanded with instructions for the district court to review SCAD’s claims under §1114 and §1125 in light of Boston Hockey. The district court will need to assess the strength of SCAD’s word mark and whether there was any consumer confusion.

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