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INTA Bulletin

December 15, 2017 Vol. 72 No. 21 Back to Bulletin Main Page

UNITED STATES: Eleventh Circuit Finds Reproduction an Insincere Form of Flattery

In October 2017, the Eleventh Circuit Court of Appeals reversed a district court’s grant of summary judgement, finding that a college has potentially protectable rights that extend beyond the scope of its federal service mark registrations. Savannah College of Art & Design, Inc. v. Sportswear, Inc., No. 15-13830 (11th Cir. Oct. 3, 2017). The Eleventh Circuit found that the lower court applied the wrong precedent in granting the defendant’s motion for summary judgement against Lanham Act claims arising from the reproduction of the college’s federally registered service marks on athletic clothing.

The plaintiff, Savannah College of Art and Design, Inc., is a private, nonprofit college based in Georgia, and provides educational services to more than 11,000 students. The plaintiff has used the two word marks—SCAD (federally registered in 2003) and SAVANNAH COLLEGE OF ART AND DESIGN (federally registered in 2005)—since 1979. The defendant, Sportswear, Inc., uses a business model whereby interested persons can use its website to apply word and design marks from colleges and other institutions, to items such as t-shirts, hats, and duffel bags. The plaintiff filed suit after becoming aware of the website and the products bearing its registered word marks. The district court found that protection for the service marks did not extended to apparel, in part because the plaintiff did not show priority of use as to goods. The district court relied on Crystal Entertainment & Filmworks v. Jurado, 643 F.3d 1313 (11th Cir. 2016), in reaching its conclusion.

The Eleventh Circuit held that reliance on Jurado was misplaced because neither party in that case held a federal trademark registration; therefore, common law trademark rights and issues relating to priority of use were determinative to the outcome. Here, however, the Eleventh Circuit recognized that the plaintiff owns federal service mark registrations for the marks at issue. Thus, the district court was bound to follow the precedent of Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing, 510 F.2d 1004 (5th Cir. 1975), which held that protection for federally registered service marks could be extended beyond the scope of the services identified in the relevant trademark registration(s) in order to prevent others from selling goods bearing those marks. (Note: The Eleventh Circuit split off from the Fifth Circuit in 1981 and adopted all decisions of the Fifth Circuit Court of Appeals from before the split as binding precedent.)

The Eleventh Circuit reversed the district court’s decision and remanded the case, instructing the lower court to apply the reasoning in Boston Hockey in order to assess the validity and scope of the plaintiff’s service marks and to analyze what impact, if any, this might have on the plaintiff’s claims.

This decision should serve as a reminder that when operating without a license one should not presume that sale of an item bearing another’s registered mark is allowed, even if the mark owner does not use the mark in connection with that type of good.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 
© 2017 International Trademark Association