School Colors Legally Protectible Trademarks, Fifth Circuit Concludes

Holding:

In this trademark dispute that has wide implications on sport franchises and colleges, the U.S. Court of Appeals for the Fifth Circuit has concluded that universities’ school-color schemes are legally protectible marks. These consolidated appeals involved a trademark dispute between four universities and an apparel company and its principal. The Universities alleged in the district court that the apparel company violated the Lanham Act and infringed their trademarks by selling t-shirts with the schools’ color schemes. The district court issued summary judgment to the Universities. On appeal, the Fifth Circuit affirmed. It reasoned that the color schemes have attained secondary meaning. It based its ruling on the longstanding use of the color scheme marks and their prominent display on merchandise, in addition to the well-known nature of the colors as shorthand for the schools themselves. The Fifth Circuit further wrote that many consumers would likely be confused and believe that the apparel company’s t-shirts were sponsored or endorsed by the Universities.

Detailed Summary:

Plaintiffs are Louisiana State University (“LSU”), the University of Oklahoma (“OU”), Ohio State University (“OSU”), the University of Southern California (“USC”), and Collegiate Licensing Company (CLC), which is the official licensing agent for the schools. Opinion, p. 2.

Defendants are Smack Apparel Company and its principal, Wayne Curtiss (collectively “Smack”).

Each university has adopted a particular two-color scheme as its school colors (purple and gold for LSU, crimson and creme for OU, scarlet and gray for OSU, and cardinal and gold for USC). The Universities have used their respective color combinations for over one hundred years, and the color schemes are immediately recognizable to those who are familiar with the Universities. Id.
The schools also grant licenses for retail sales of products, including t-shirts, that bear the university colors and trademarks.

Since 1998 Smack has manufactured t-shirts targeted toward fans of college sports teams, and it uses school colors and printed messages associated with the Universities on its shirts. Smack sells some of the shirts over the Internet, but most are sold wholesale to retailers and t-shirt vendors.

The instant case involved six of Smack’s t-shirt designs that concern the appearance of the OU and LSU football teams in the 2004 Sugar Bowl in New Orleans, Louisiana, and the number of national championships previously won by OSU and USC. The Universities alleged in the U.S. District Court for the Eastern District Louisiana that defendants violated the Lanham Act and infringed their trademarks by selling t-shirts with the schools’ color schemes and other identifying indicia referencing the games of the schools’ football teams.

The district court granted summary judgment to the Universities for trademark infringement and conducted a jury trial as to damages, with the jury returning a verdict favoring plaintiffs. Defendants appealed the summary judgment order.

In this appeal, the Fifth Circuit wrote that the parties had correctly agreed that a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional. Id., p. 9, citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163–64, 115 S. Ct. 1300, 1303–04 (1995).The Fifth Circuit however disagreed with Smack’s contention that that the claimed marks are too broad to encompass a trademark because the concept of color along with other identifying indicia is not distinctive. It reasoned that the statute contemplates that a trademark may include any word, name, or symbol “or any combination thereof.” Id., citing 15 U.S.C. § 1127.  It noted the Supreme Court’s ruling that the Lanham Act describes the universe of permissible marks “in the broadest of terms.” Id., citing Qualitex at 162, 1302.

In finding that plaintiffs’ color schemes had attained secondary meaning, the Fifth Circuit recognized the absence of dispute between the parties about the significant period of time the Universities have been using their color schemes along with other indicia to identify and distinguish themselves from others. It pointed to the record showing that the Universities have been using their color combinations since the late 1800s. The color schemes appear on all manner of materials, including brochures, media guides, and alumni materials associated with the Universities.

Given the longstanding use of the color scheme marks and their prominent display on merchandise, in addition to the well-known nature of the colors as shorthand for the schools themselves and Smack’s intentional use of the colors and other references, the Fifth Circuit held that there was “no genuine issue of fact that when viewed in the context of t-shirts or other apparel, the marks at issue here have acquired the secondary meaning of identifying the Universities in the minds of consumers as the source or sponsor of the products rather than identifying the products themselves,” Id., p. 13.

The Fifth Circuit thus concluded that the record established secondary meaning in the marks here.

Next, the Fifth Circuit discussed the matter of likelihood of confusion, stating that once a plaintiff shows ownership in a protectible trademark, he must next show that the defendant’s use of the mark “creates a likelihood of confusion in the minds of potential customers as to the ‘source, affiliation, or sponsorship’” of the product at issue. Id., p. 14, citing Westchester Media v. PRL USA Holdings, Inc, 214 F.3d 658, 663 (5th Cir. 2000).

In finding the existence of likelihood of confusion, the Fifth Circuit considered that it called the “digits of confusion,” to wit: (1) the type of mark allegedly infringed, (2) the similarity between the two marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant’s intent, and (7) any evidence of actual confusion.” Id., p. 14, citing PRL USA Holdings, at 664. Another one was (8) the degree of care exercised by potential purchasers. Id., citing Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).

Analyzing these “digits,” the Fifth Circuit found that such factors weighed in favor of plaintiffs.  “This is so, we have noted, because Smack’s use of the Universities’ colors and indicia is designed to create the illusion of affiliation with the Universities and essentially obtain a “free ride” by profiting from confusion among the fans of the Universities’ football teams who desire to show support for and affiliation with those teams. Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989).  This creation of a link in the consumer’s mind between the t-shirts and the Universities and the intent to directly profit therefrom results in “an unmistakable aura of deception” and likelihood of confusion. Id. at 35.”

The Fifth Circuit further wrote that many consumers would likely be confused and believe that Smack’s t-shirts were sponsored or endorsed by the Universities. The Fifth Circuit observed that the Universities exercise stringent control over the use of their marks on apparel through their licensing program. It recognized that the Universities annually sell millions of dollars worth of licensed apparel, and that there is the public’s indisputable desire to associate with college sports teams by wearing team-related apparel.

For the foregoing reasons, the Fifth Circuit concluded that a likelihood of confusion connecting the presence of the Universities’ marks and the Universities’ themselves was demonstrated in this case.

The Fifth Circuit thus affirmed the questioned judgment.

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