Savannah College of Art and Design, Inc. v. Sportswear, Inc. ( 2017 )

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[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 15-13830
________________________
D.C. Docket No. 1:14-cv-02288-TWT
SAVANNAH COLLEGE OF ART AND DESIGN, INC.,
Plaintiff - Appellant,
versus
SPORTSWEAR, INC.,
d.b.a. Prep Sportswear,
Defendant - Appellee.
________________________
Appeal from the United States District Court
for the Northern District of Georgia
________________________
(October 3, 2017)
Before MARTIN and JORDAN, Circuit Judges, and COOGLER, * District Judge.
*
The Honorable L. Scott Coogler, United States District Judge for the Northern District
of Alabama, sitting by designation.
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JORDAN, Circuit Judge:
“Imitation may be the sincerest form of flattery,” Charles C. Colton, Lacon,
Vol. 1, No. 183 (1820–22), in Bartlett’s Familiar Quotations 393:5 (16th ed. 1992),
but when the imitation consists of commercial reproduction for profit, all bets are
off. So when Sportswear, Inc. began using the federally-registered service marks
of the Savannah College of Art and Design without a license to sell apparel and
other goods on its website, SCAD did not take kindly to the copying and sued for
equitable and monetary relief. SCAD asserted a number of claims against
Sportswear, including service mark infringement under 15 U.S.C. § 1114; unfair
competition and false designation of origin under 15 U.S.C. § 1125; and unfair
competition under O.C.G.A. § 10-1-372.
This is SCAD’s appeal from the district court’s grant of summary judgment
in favor of Sportswear. The district court, relying on Crystal Entertainment
& Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1315–16 (11th Cir. 2011)—a case
involving a dispute over common-law trademark rights to a band name—
concluded that SCAD had failed to establish that it had enforceable rights in its
marks that extended to apparel. SCAD, which validly registered its marks only in
connection with the provision of “education services,” did not show that it had
used its marks on apparel earlier than Sportswear in order to claim common-law
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ownership (and priority) over its marks for “goods.” See Savannah Coll. of Art
& Design, Inc. v. Sportswear, Inc., 2015 WL 4626911, at *2 (N.D. Ga. 2015).
We reverse. This case, unlike Jurado, does not involve the alleged
infringement of a common-law trademark, and as a result the date of SCAD’s first
use of its marks on goods is not determinative. One of our older trademark cases,
Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d
1004 (5th Cir. 1975), controls, as it extends protection for federally-registered
service marks to goods. Although Boston Hockey does not explain how or why
this is so, it constitutes binding precedent that we are bound to follow.
I1
Founded in 1978, SCAD is a private, non-profit college based in Georgia,
and provides educational services to over 11,000 students from across the United
States and more than 100 countries. SCAD is primarily known for specialized
programs related to the arts, such as painting, sculpture, architecture, fashion,
photography, film, and design. In addition to providing educational programs,
SCAD fields athletic teams in a variety of sports.
To distinguish itself in the market and promote its programs and services,
SCAD holds four federally-registered marks:
1
Judge Martin joins all except Part IV.C of the opinion.
3
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The federal registrations for these marks were issued for “education
services,” i.e., the provision of “instruction and training at the undergraduate,
graduate, and post-graduate levels.” See, e.g., D.E. 1-1, 1-2. And the parties agree
that SCAD has continuously used its marks for the promotion of its “education
services.”2
SCAD has used the two word marks at issue here—“SCAD” (registered in
2003) and “SAVANNAH COLLEGE OF ART AND DESIGN” (registered in
2005)—since 1979, and they have now achieved incontestable status. In general,
this means that SCAD has filed the requisite affidavit of use and incontestability
under 15 U.S.C. § 1065(3), and that the U.S. Patent and Trademark Office has
2
SCAD may have been able to secure federal trademark registrations for the use of its word
marks on goods such as apparel, but apparently did not attempt to do so. “There is no doubt that
a given symbol can be used in such a way that it functions as both a trademark for goods and a
service mark for services, and be the subject of separate registrations.” 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 19:84 (4th ed. June 2017). See also id. at
§ 19:87 (“If a service company (or a producer of goods) puts its mark on promotional items to be
used by recipients, such as ball point pens and wearing apparel, the mark can be registered for
such goods.”); Hans C. Bick, Inc. v. Watson, 253 F.2d 344, 344 (D.C. Cir. 1958) (discussing
registrations for the word “Nylonized” as a trademark for women’s nylon hosiery and as a
service mark for the application of a nylon coat); In re McDonald’s Corp., 199 U.S.P.Q. 921,
1978 WL 21263, at *3 (T.T.A.B. 1978) (registering “McDonald’s” and “golden arches” marks
for clothing because they “indicat[e] the source of origin of the various items of apparel in [the]
applicant [McDonald’s Corporation]”).
4
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acknowledged that these two marks have been validly registered and in continuous
use for at least five years. See D.E. 49-3 at 5, 10, 15, 24.
Sportswear operates entirely online and uses an interactive website to market
and sell “fan” clothing and items like t-shirts, sweatshirts, baseball caps, and duffel
bags. Sportswear began selling apparel for K-12 schools in 2003, and it now offers
made-to-order apparel and related goods for other entities, including colleges,
Greek and military organizations, golf courses, professional sports teams, and even
fantasy sports teams with—and without—licensing agreements. To purchase an
item from Sportswear, a customer is generally required to select its preferred
organization’s “online store,” choose an item like a t-shirt or hat, 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 indicating that it was delivered
from a Sportswear facility.
In February of 2014, a parent of a student-athlete forwarded Sportswear’s
website to one of SCAD’s coaches. As a result, SCAD learned that Sportswear
had been using its word marks on products without authorization (and without a
licensing agreement) since August of 2009. Seeking to protect its marks from
further unauthorized use, SCAD sued Sportswear in July of 2014. At that point,
Sportswear stopped selling products with SCAD’s word marks.
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During discovery, SCAD provided several examples of Sportswear’s
products featuring its word marks and a printout of Sportswear’s website-generated
“SCAD” store. SCAD also submitted images of current merchandise sold on its
own website and side-by-side comparisons of Sportswear’s products. 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.
Since 2011, SCAD has licensed Follett Education Group to operate its
online stores and Georgia-based on-campus bookstores, which sell clothing and
other goods displaying SCAD’s word marks. Sportswear agreed that Follett
markets and sells SCAD’s merchandise, but contested the degree of SCAD’s
involvement in approving and designing those items. SCAD admitted that it did
not submit evidence showing when it first used its word marks on apparel or
related goods.
At the close of discovery, the district court reviewed the parties’
cross-motions for summary judgment and ruled in favor of Sportswear. Relying on
Jurado, 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.
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II
We exercise plenary review of the district court’s grant of summary
judgment in favor of Sportswear, viewing the record and drawing all factual
inferences in the light most favorable to SCAD. See Tana v. Dantanna’s, 611 F.3d
767, 772 (11th Cir. 2010). Summary judgment is appropriate when “there is no
genuine dispute as to any material fact” and the moving party is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett,
477 U.S. 317, 322 (1986).
III
Trademark law, as codified by the Lanham Act, see 15 U.S.C. § 1051
et seq., largely serves two significant but often conflicting interests. It “secure[s]
to the owner of the mark the goodwill of his business[;]” and it “protect[s] the
ability of consumers to distinguish among competing producers.” Park ‘N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).
The Lanham Act prohibits the infringement of trademarks that are used to
identify “goods,” and of service marks that are used to identify “services.” See 15
U.S.C. § 1127. Trademarks and service marks are used “to indicate the source of
the [goods and services], even if that source is unknown.” Id. Generally, “a
trademark serves to identify and distinguish the source and quality of a tangible
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product,” while “a service mark functions to identify and distinguish the source
and quality of an intangible service.” 3 McCarthy on Trademarks § 19:81.
In most respects, the “analysis is the same under both [types of marks] and
courts thus treat the two terms as interchangeable in adjudicating infringement
claims.” Frehling Enterprises, Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1334
n.1 (11th Cir. 1999) (citations omitted). For both trademarks and service marks,
therefore, the “the touchstone of liability . . . is not simply whether there is
unauthorized use of a protected mark, but whether such use is likely to cause
consumer confusion.” Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d
641, 647 (11th Cir. 2007). See also 4 McCarthy on Trademarks § 23:1 (“The test
for infringement of a service mark is identical to the test of infringement of a
trademark: is there a likelihood of confusion?”).3
The Lanham Act provides different types of statutory protection. As
relevant here, § 32(a) of the Act, codified at 15 U.S.C. § 1114(1)(a), guards against
3
Many other circuits also analyze trademarks and service marks under the same legal standards.
See, e.g., Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001) (“Service marks
and trademarks are governed by identical standards.”); Circuit City Stores, Inc. v. CarMax, Inc.,
165 F.3d 1047, 1054 (6th Cir. 1999) (same); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt.,
Inc., 192 F.3d 337, 344 n.2 (2d Cir. 1999) (same); Walt-West Enterprises, Inc. v. Gannett Co.,
Inc., 695 F.2d 1050, 1054 (7th Cir. 1982) (same). This analytical overlap likely contributes to
the uncertainty about the scope of protection afforded to registered service marks. See generally
Paul M. Schoenhard, Why Marks Have Power Beyond the Rights Conferred: The Conflation of
Trademarks and Service Marks, 87 J. Pat. & Trademark Off. Soc’y 970, 971–72 (2005)
(explaining that the two distinct forms of intellectual property have been treated as the same even
though “service marks did not exist as a protectable form of intellectual property under [f]ederal
law prior to the passage of the [Lanham Act]”) (emphasis in original).
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“infringement”—the “reproduction, counterfeit, copy, or colorable imitation of a
registered mark”—while § 43(a), codified at 15 U.S.C. § 1125(a), protects against
“false designation of origin,” which we have referred to as “a federal cause of
action for unfair competition.” Custom Mfg., 508 F.3d at 647 (citation omitted). A
claim for infringement under § 1114(1)(a) lies only for federally-registered marks,
while a claim under § 1125(a) is broader and may also be based on unregistered
(i.e., common-law) marks. See Jurado, 643 F.3d at 1320.
The statutory claims at issue here more or less required SCAD to establish
two things. First, SCAD needed to show “enforceable trademark rights in [a] mark
or name[.]” Second, it had to prove that Sportswear “made unauthorized use of [its
marks] ‘such that consumers were likely to confuse the two.’” Custom Mfg., 508
F.3d at 647 (describing the requirements for a § 1125 claim) (citation omitted);
Dieter v. B & H Indus. of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.
1989) (same for a § 1114 claim).
We, like other circuits, often blur the lines between § 1114 claims and
§ 1125 claims because recovery under both generally turns on the confusion
analysis. See Tana, 611 F.3d at 773 n.5 (stating that the district court’s error in
analyzing a trademark case under § 1114 rather than § 1125 was irrelevant
“because the district court based its grant of summary judgment on the
likelihood-of-confusion prong”); Tally-Ho, Inc. v. Coast Community Coll. Dist.,
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889 F.2d 1018, 1026 n.14 (11th Cir. 1989) (“an unfair competition claim based
only upon alleged trademark infringement is practically identical to an
infringement claim”). Accord Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136,
1143 (10th Cir. 2013) (explaining that the “central inquiry is the same” for both
§ 1114 and § 1125); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d
108, 114 (2d Cir. 2006) (same); A & H Sportswear, Inc. v. Victoria’s Secret Stores,
Inc., 237 F.3d 198, 210 (3d Cir. 2000) (same). The district court here, however,
never reached likelihood of confusion. Under the district court’s rationale, the
infringement claim under § 1114 necessarily failed because the limited federal
registrations for “education services” meant that SCAD did not have rights as to
“goods,” and SCAD did not provide evidence showing that it used its marks on
apparel before Sportswear. 4
But the district court’s reliance on Jurado for that rationale was misplaced.
In Jurado neither party had a federally-registered trademark, see 643 F.3d at 1316,
and as a result both sides could only assert common-law trademark rights. That is
why priority of use became a critical issue in that case. As we explained:
“Common-law trademark rights are appropriated only through actual prior use in
commerce. . . . Crystal [the plaintiff] bore the burden of proving its prior use.” Id.
(citations and internal quotation marks omitted). Because SCAD’s claims revolve
4
Because the district court did not expressly distinguish between SCAD’s statutory causes of
action, we assume that its analysis applied to both the § 1114 and § 1125 claims.
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around federally-registered marks, Jurado cannot inform our analysis of the
infringement claim under § 1114, a provision which requires a federally-registered
mark, or under § 1125, a provision which can apply to a federally-registered mark.
IV
The question for us is whether SCAD has 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. See Dieter, 880 F.2d at 326 (observing that a plaintiff must
show that a mark is valid before a likelihood of confusion analysis becomes
necessary). As we explain, we do not write on a clean slate, and Boston Hockey
provides the answer to that question.
A
Before discussing Boston Hockey, we analyze University of Georgia
v. Laite, 756 F.2d 1535 (11th Cir. 1985), a case that SCAD also relies on. SCAD
argues that Laite stands for the principle that even if a mark is registered only for
services, the mark holder is entitled to broader protection in order to prevent any
infringing conduct that is likely to cause confusion. See Appellant’s Br. at 17–21.
We disagree with SCAD’s reading of Laite. Although at first glance the facts of
that case closely resemble those here, there is one significant difference, and
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SCAD’s argument conflates the standards for service mark protection under § 1114
and § 1125.
In Laite, the University of Georgia Athletic Association sued to enjoin a
novelty beer wholesaler from selling “Battlin’ Bulldog” beer. See 756 F.2d at
1537. The UGAA sued the wholesaler under § 1125 and state trademark law, but
it did not (and could not) sue for infringement under § 1114. See id. at 1538.
SCAD correctly points out that the UGAA had filed state registrations for its marks
only for “athletic services,” but downplays a significant fact—at the time of the
litigation, it had not yet acquired federal registrations for the contested “Georgia
Bulldog” mark. See id. at 1537 & n.2. Federally-registered marks were not, as
SCAD infers, part of the analytical line up in that case.
The key holding in Laite was that proof of secondary meaning (i.e., “the
power of a name . . . to symbolize a particular business, product, or company”) is
only required for descriptive marks. See id. at 1540 (citation omitted). Reasoning
that the “Georgia Bulldog” mascot was not a descriptive mark, we affirmed, on
clear error review, the district court’s finding that the UGAA had established a
likelihood of confusion based on the similarity of the Bulldog designs and the beer
wholesaler’s intent. See id. at 1541, 1543–46. Laite therefore does not stand for
the principle SCAD advocates. See Belen Jesuit Preparatory Sch., Inc.
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v. Sportswear, Inc., 2016 WL 4718162, at *6 (S.D. Fla. May 3, 2016) (explaining
that Laite did not involve or analyze federally-registered marks).
B
Although Laite does not resolve the question before us, our binding 1975
decision in Boston Hockey stands on different footing. As SCAD correctly asserts,
Boston Hockey extends protection for federally-registered service marks to goods,
and therefore beyond the area of registration listed in the certificate.
In Boston Hockey, the National Hockey League and twelve of its member
teams sued to prevent a manufacturer from selling embroidered sew-on patches
featuring the teams’ federally-registered service marks. See 510 F.2d at 1008.
Like SCAD, most of the hockey teams had registered marks only in connection
with the provision of services, and held no registrations for goods, apparel, or
promotional merchandise. See id. at 1009. Two of the hockey teams had also
registered their marks for certain goods, see Boston Prof’l Hockey Ass’n Inc. v.
Dallas Cap & Emblem Mfg., Inc., 360 F. Supp. 459, 461 (N.D. Tex. 1973), but we
conducted the § 1114 infringement analysis without distinguishing the teams on
that basis. See 510 F.2d at 1011.
The Boston Hockey panel phrased the issue of first impression as “whether
the unauthorized, intentional duplication of a professional hockey team’s symbol
. . . to be sold . . . as a patch for attachment to clothing, violates any legal right of
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the team to the exclusive use of that symbol.” Id. at 1008. As SCAD has done in
this case, the NHL and its hockey teams sued for violations of §§ 1114 and 1125 of
the Lanham Act, and for common-law unfair competition. Id. at 1009. The
material facts here are very similar to those in Boston Hockey, with one main
exception. The manufacturer in Boston Hockey sold only mark-replica patches,
and did not affix the teams’ marks to other goods such as t-shirts or jackets. See id.
The panel acknowledged that trademark law generally protects against the sale of
“something other than the mark itself,” see id. at 1010, but concluded that each
team had an interest in its mark “entitled to legal protection against such
unauthorized duplication.” Id. at 1008.
Recognizing that its “decision . . . [could] slightly tilt the trademark laws
from the purpose of protecting the public to the protection of the business interests
of [the teams],” the Boston Hockey panel was persuaded that granting relief was
appropriate because the teams’ efforts gave commercial value to the patches, and
“the sale of a reproduction of the trademark itself on [a patch] is an accepted use of
such team symbols” in the arena of professional sports. See id. at 1011. When it
came to the statutory claim under § 1114, the panel reasoned that the teams’ marks
were validly registered and skipped straight to determining whether the
manufacturing company’s use was likely to cause confusion. See id. Absent from
the panel’s analysis was an explanation for how or why the teams’ registrations for
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“hockey entertainment services” provided statutory protection as to goods like
embroidered patches.
In the end, the Boston Hockey panel rejected the manufacturer’s argument
that consumer confusion must derive from the “source of the manufacture” of the
mark because the mark, “originated by the team, [was] the triggering mechanism
for the sale of the [patch].” Id. at 1012. In other words, “[t]he confusion . . .
requirement [wa]s met by the fact that the [manufacturer] duplicated the protected
trademarks and sold them to the public knowing that the public would identify
them as being the teams’ trademarks.” Id.
Boston Hockey, though in our view lacking critical analysis, implicitly but
necessarily supports the proposition that the holder of a federally-registered service
mark need not register that mark for goods—or provide evidence of prior use of
that mark on goods—in order to establish the unrestricted validity and scope of the
service mark, or to protect against another’s allegedly infringing use of that mark
on goods. On remand, the district court will have to review SCAD’s claims under
§ 1114 and § 1125 in light of Boston Hockey.5
Among other things, the district court will need to assess the strength of
SCAD’s word marks. See, e.g., Welding Servs., Inc. v. Forman, 509 F.3d 1351,
5
Given that Boston Hockey controls, we need not and do not address whether SCAD used its
word marks on apparel prior to Sportswear or whether the district court properly excluded an
article on a website submitted by SCAD.
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1357–58 (11th Cir. 2007) (describing the “four gradations of distinctiveness”).
And it will have to consider whether SCAD has demonstrated that Sportswear’s
use of its word marks is likely to create consumer confusion as to origin, source,
approval, affiliation, association, or sponsorship. See Burger King Corp. v. Mason,
710 F.2d 1480, 1491–92 (11th Cir. 1983); Professional Golfers Ass’n of Am. v.
Bankers Life & Casualty Co., 514 F.2d 665, 670 (5th Cir. 1975).
Once a party has shown an enforceable right in a mark, a court usually
considers a number of factors in assessing whether an infringing use is likely to
cause confusion. These are “(1) the strength of the allegedly infringed mark; (2)
the similarity of the infringed and infringing marks; (3) the similarity of the goods
and services the marks represent; (4) the similarity of the parties’ trade channels
and customers; (5) the similarity of advertising media used by the parties; (6) the
intent of the alleged infringer to misappropriate the proprietor’s good will; and (7)
the existence and extent of actual confusion in the consuming public.” Florida
Int’l Univ. Bd. of Trustees v. Florida Nat’l Univ., Inc., 830 F.3d 1242, 1255 (11th
Cir. 2016). Generally, “the type of mark and the evidence of actual confusion are
the most important” factors. Id. (citation omitted); Caliber Auto. Liquidators, Inc.
v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 935 (11th Cir. 2010).
We add one final note about the confusion analysis. The confusion
discussion in Boston Hockey, 510 F.2d at 1012, came under strong criticism
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because it “did not require proof of a likelihood that customers would be confused
as to the source or affiliation or sponsorship of [the] defendant’s product,” and
instead only asked whether “customers recognized the products as bearing a mark
of the plaintiff[s].” 4 McCarthy on Trademarks § 24:10 (describing the “heresies”
of Boston Hockey and concluding that its “attempt to stretch trademark law
failed”). See also Stacey L. Dogan & Mark A. Lemley, The Merchandising Right:
Fragile Theory or Fait Accompli?, 54 Emory L.J. 461, 474 (2005) (“The court [in
Boston Hockey] . . . presumed actionable confusion based solely on the consumer’s
mental association between the trademark and the trademark holder.”).
In a binding decision issued only two years later, however, we read Boston
Hockey narrowly, limited its confusion analysis to the facts in the case, and
explained that it did not do away with traditional confusion analysis. See Kentucky
Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 389 (5th Cir.
1977) (“[W]e do not believe Boston Hockey equates knowledge of the symbol’s
source with confusion sufficient to establish trademark infringement, and we deem
the confusion issue unresolved by our existing decisions.”). The current Fifth
Circuit echoed that discussion and similarly retreated from a broad reading of
Boston Hockey. See Bd. of Supervisors for Louisiana State Univ. Agric. & Mech.
Coll. v. Smack Apparel Co., 550 F.3d 465, 485 (5th Cir. 2008) (reiterating “that a
showing of likelihood of confusion [i]s still required [and] . . . not[ing] that the
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circumstances in Boston Hockey supported . . . ‘the inescapable inference that
many would believe that the product itself originated with or was somehow
endorsed by [the teams]’”) (citation omitted); Supreme Assembly, Order of
Rainbow for Girls v. J. H. Ray Jewelry Co., 676 F.2d 1079, 1084–85 & n.7 (5th
Cir. 1982) (clarifying that confusion must stem from a perceived connection
between the product and the rightful owner of the mark because “[i]t is not enough
that typical buyers purchase the items because of the presence of the mark”). 6
So, although the district court on remand is to apply Boston Hockey as to the
validity and scope of SCAD’s service marks, it will have to analyze what impact, if
any, the case has on the confusion issue.
C
We pause to note the unexplained analytical leap in Boston Hockey. Under
the Lanham Act, registration is “prima facie evidence of the validity of the
registered mark . . . , of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered mark in commerce on or in
connection with the goods or services specified in the registration.” § 1115(a)
(emphasis added). If that is so, then one would think that there should be some
legal basis for extending the scope of a registered service mark in a certain field
6
In passing, we note that Laite has also been recognized—albeit to a much lesser extent—as
providing protection where the owner of a common-law mark has not adequately established
confusion as to the origin of a contested product. See, e.g., Steve McKelvey & Ari J. Sliffman,
The Merchandising Right Gone Awry: What “Moore” Can Be Said?, 52 Am. Bus. L.J. 317, 343
(2015) (discussing the “judicial trend expanding the concept of a ‘merchandising right’”).
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(e.g., educational services) to a different category altogether (e.g., goods). As we
have noted elsewhere, “[d]etermining whether an infringement has taken place is
but the obverse of determining whether the service mark owner’s property right
extends into a given area.” Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716
F.2d 833, 839 (11th Cir. 1983).
Yet Boston Hockey does not provide any basis for extending service mark
rights to goods. This silence is potentially problematic for several reasons.
First, other circuits have said that service marks do not by their nature
extend to goods or products. See Murphy v. Provident Mut. Life Ins. Co. of
Philadelphia, 923 F.2d 923, 927 (2d Cir. 1990) (“Clearly, the term [‘services’ in
the Lanham Act] does not apply to goods or products.”); Application of Radio
Corp. of Am., 205 F.2d 180, 182 (C.C.P.A. 1953) (“Clearly had Congress intended
service marks to apply to goods or products, we believe it would have so stated.”).
See also A. Samuel Oddi, The Functioning of ‘Functionality’ in Trademark Law,
22 U. Houston L. Rev. 925, 958 (1985) (“In fact, the marks that had been
registered by the hockey teams [in Boston Hockey] were service marks, and it may
be questioned whether it is appropriate to extend service mark protection to
‘goods’ [the patches].”). If these other circuits and commentators are wrong, in
whole or in part, we should explain why.
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Second, a right in a mark is not a “right in gross.” United Drug Co.
v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918). This means that “[t]here is no
property in a [mark] apart from the business or trade in connection with which it is
employed.” American Steel Foundries v. Robertson, 269 U.S. 372, 380 (1926)
(addressing trademarks). The decision in Boston Hockey, however, seems to
provide the holder of a service mark with a form of monopolistic protection, a
so-called “independent right to exclude.” 4 McCarthy on Trademarks § 24:10.
See also United States v. Giles, 213 F.3d 1247, 1250 (10th Cir. 2000) (noting that
even though the teams in Boston Hockey “had not registered their marks for use on
patches, the [former Fifth Circuit] essentially gave the[m] a monopoly over use of
the trademark in commercial merchandising”); Int’l Order of Job’s Daughters v.
Lindeburg & Co., 633 F.2d 912, 919 (9th Cir. 1980) (“Interpreted expansively,
Boston Hockey holds that a trademark’s owner has a complete monopoly over its
use, including its functional use, in commercial merchandising. But our reading of
the Lanham Act and its legislative history reveals no congressional design to
bestow such broad property rights on trademark owners.”) (footnote omitted).
Third, it is well-settled that trademark (and service mark) rights are derived
through use, see, e.g., United Drug, 248 U.S. at 97, and we have not critically
analyzed whether the procedural advantages of a mark’s registration, see Laite 756
F.2d at 1541, or incontestability, see Dieter, 880 F.2d at 325–26, can serve as a
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basis for expanding the scope of service mark protection to a tangible good or
product. See 3 McCarthy on Trademarks § 19:3 (explaining that, although
registering a mark provides procedural and legal benefits, “the registration does not
create the trademark”); id. at § 32:141 (observing that “the case law usually
discusses incontestability when a plaintiff asserts incontestability as the source of
its right to be secure from a challenge to the validity of its mark”). Cf. In re Save
Venice N.Y., Inc., 259 F.3d 1346, 1353 (Fed. Cir. 2001) (observing that “[a]
registered mark is incontestable only in the form registered and for the goods or
services claimed”).
We recognize that, as to federally-registered trademarks, we have not limited
protection to the actual product or products listed in the certificate of registration.
“The remedies of the owner of a registered trademark,” we have held, “are not
limited to the goods specified in the certificate, but extend to any goods on which
the use of an infringing mark is ‘likely to cause confusion.’” Continental Motors
Corp. v. Continental Aviation Corp., 375 F.2d 857, 861 (5th Cir. 1967) (citation
omitted). See also E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imports, Inc.,
756 F.2d 1525, 1530 (11th Cir. 1985) (examining the similarity of products factor,
we acknowledged that registered trademark rights may “extend to any goods
related in the minds of consumers in the sense that a single producer is likely to put
out both goods”). Accord 6 McCarthy on Trademarks §§ 32:137, 32:152. Yet
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extending the scope of a registered trademark (which identifies “goods”) to a
different product appears to be qualitatively different from extending the scope of a
registered service mark (which identifies “services”) to a different category of
“goods.”
There may be a sound doctrinal basis for what Boston Hockey did. But
unless the concept of confusion completely swallows the antecedent question of
the scope of a registered mark, we have yet to hear of it.
V
On some level, we understand that allowing a party to “take a free ride on
another’s registered trademark,” see B. H. Bunn Co. v. AAA Replacement Parts
Co., 451 F.2d 1254, 1261 (5th Cir. 1971), simply feels wrong. Trademark rights,
however, do “not confer a right to prohibit the use of [a] word or words” generally
and exist “to protect the owner’s good will against the sale of another’s product as
his.” Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924).
If Boston Hockey did not exist, the district court’s rationale might provide a
reasonable way of analyzing the alleged infringement of registered service marks
through their use on goods. But Boston Hockey is in the books, and it compels
reversal of summary judgment in favor of Sportswear. Although there may be
“error in [that] precedent,” United States v. Romeo, 122 F.3d 941, 942 n.1 (11th
Cir. 1997), we do not have the authority, as a later panel, to disregard it. The case
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is remanded to the district court for further proceedings consistent with this
opinion.
REVERSED AND REMANDED.
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