# Petition for Writ of Certiorari — Smack Apparel Apparel Co. v. Board of Supervisors of the Louisiana State University and Agricultural and Mechanical College (No. 08-1197) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_0333%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2008 ## Text o, TILED — 2 OD 081197 MAR 23 2009 bo _-OF 208 OF THE CLERK Wisam K. Sik f, Cierk Su The Supreme Court of the United States SMACK APPAREL COMPANY AND WAYNE CuRTIss, Petitioners, ¥, BOARD OF SUPERVISORS OF THE LOUISIANA STATE UNIVERSITY AND AGRICULTURAL AND MECHANICAL COLLEGE, BOARD OF REGENTS OF THE UNIVERSITY OF OKLAHOMA, OHIO STATE UNIVERISTY, UNIVERSITY OF SOUTHERN CALIFORNIA, AND THE COLLEGIATE LICENSING COMPANY, Respondents. On Petition for Writ of Certiorari to the United States Court of Appeals for the Fifth Circuit PETITION FOR WRIT OF CERTIORARI JAMES W. TILLY Counsel of Record THE TILLY Law FIRM 1639 S. CARSON AVENUE Tusa, OK 74110 (918) 583-8868 Counsel for Petitioners March 23, 2009 Becker Gallagher - Cincinnati, OH - Washington, D.C. + 860.890.5001 i QUESTIONS PRESENTED 1. Did the court below err in denying Smack’s Petition for Rehearing en banc for the purpose of overruling Boston Professional Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg, Inc., 510 F.2d 1004 (5th Cir. 1975), hoiding that the sale of products “universally associated” with a trademark owner “supported the inescapable inference that many would believe that the product itself originated with or was somehow endorsed by” the trademark owner? . Did the court below err in affirming a summary judgment in favor of universities asserting that their traditional school colors combined with other identifying indicia constitutes a trademark, and that this trademark was infringed by t-shirts incorporating the universities’ school colors combined with messages and graphic images which refer to the universities? . Did the court below err in finding, as a matter of law, that the universities’ trademark (school colors combined with indicia identified with the universities) was not functional, despite the court’s finding that consumers purchase shirts which incorporate the mark in order to show support for the particular university, that there is no consumer demand without these identifying characteristics, and that the mark has no demonstrated value other than its significance to identify with the universities? Did the court below err in finding, as a matter of law, that the display of the universities’ trademark (school colors combined with indicia identified with il the universities) on t-shirts was not a nominative fair use of the mark despite evidence that the universities are not readily identifiable without using the mark, the t-shirts incorporate only so much of the mark as was reasonably necessary to identify the universities, and the t-shirt manufacturer did nothing that would, in conjunction with the mark, suggest that the t- shirts were sponsored or endorsed by the universities? il} PARTIES TO THE PROCEEDING See case caption. Petitioner Smack Apparel Company is a Florida corporation, the stock of which is owned by petitioner Wayne Curtiss and his wife, and which has no parent or subsidiaries. 1V TABLE OF CONTENTS Page QUESTIONS PRESENTED ..... 0.0... ec cceees 1 PARTIES TO THE PROCEEDING ............ il TT PRMete GPE GAPE RPES fi eect encase iv Fo Oe yg. € fey | oe ¢y «bE narra vi Cee UU POE gk ee tee eben seb a's 1 I 556g ic ds 4 Dok oid ac ce ee ee y STATUTES AND CONSTITUTIONAL PROVISIONS EVOLVED ...........-008- 2 STATEMENT OF THE CASE .............0.6. 3 REASONS FOR GRANTING THE WRIT ...... 26 A. THE DECISION OF THE FIFTH CIRCUIT COURT OF APPEALS CONFLICTS WITH THE DECISIONS OF OTHER UNITED STATES COURTS OF APPEALS ON THE QUESTION OF WHETHER THE LANHAM ACT'S “LIKELIHOOD OF CONFUSION” REQUIREMENT IS SATISFIED BY A SHOWING THAT THE PUBLIC IDENTIFIES THE MARKS IN QUESTION AS THE PLAINTIFFS’ MARKS ........ 26 Vv B. THE FIFTH CIRCUIT COURT OF APPEALS HAS DECIDED AN IMPORTANT QUESTION OF FEDERAL LAW THAT HAS NOT BEEN, BUT SHOULD BE, SETTLED BY THIS SEED 65S os. aoe Rew ees 31 C. THE FIFTH CIRCUIT HAS DECIDED AN IMPORTANT FEDERAL QUESTION INA WAY THAT CONFLICTS WITH RELEVANT DECISIONS OF THIS SEIN, cas be en Se eae eee eee 33 EE oy k's pk ee 6 oe oe ewe ee 37 APPENDIX Appendix A: United States Court of Appeals for the Fifth Circuit Opinion, November 25, 2008 . la Appendix B: United States District Court Eastern District of Louisiana, July 18, 2006 .. 49a Appendix C: United States Court of Appeals for the Fifth Circuit Order denying rehearing, ROI Bae, DU nc co ek cee swe nec twcwes 72a vl TABLE OF AUTHORITIES Page CASES Alpha Tau Omega Fraternity, Inc. v. Pure Country, Ine., 2004 WL 3391781 (S.D. Ind. 2004) ......... 28 Beef/ Eater Rests., Inc. v. James Burrough Ltd., gue F.2a G37 (6th Cir. 1968) .............. 26 Bi-Rite Enters., Inc. v. Button Master, 555 F. Supp. 1188 (S.D.N.Y. 1983) ......... 28 Bd. of Governors of Univ. of North Carolina v. Helpingstine, 714 F. Supp. 167 (M.D.N.C. 1989) ......... 28 Bd. of Supervisors of LA State Univ. v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D.La. 2006) ...... 1,14 Bd. of Supervisors for Louisiana State Univ. Agric. and Mech. College v. Smack Apparel Co., 550 F.3d 465 (5th Cir.2008)............ passim Bd. of Trs. of Univ. of Arkansas v. Profil Therapy Serus., Inc., 873 F. Supp. 1280 (W.D. Ark. 1995) ..... 31, 32 Boston Profl Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg, Inc., 510 F.2a 1004 (6th Cir. 1975) .......... passim Vil Dastar Corp. v. Twentieth Century Fox Film Corp.., 539 U.S. 23, 123 S.Ct. 2041, EG TB. 2S TOC anc vce cecnewsicuns 34 Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197 (1ith Cir. 2004) ............ 37 Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 259 F.3d 351 (th Civ. 2002) on ccc ccs 23 Intl Order of Job’s Daughters v. Lindeburg and Co., 633 F.2d 912 (9th Cir. 1980) ........ 27, 28, 33 Moseley v. V Secret Catalogue, 537 U.S. 418, 123 S.Ct. 1115, ek rr 33 Pebble Beach Co. v. Tour 18 I Ltd., 156 F.3d 526 (5th Cir. 1996) .............. 35 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 115 S.Ct. 1300, Dae tc ee Oe CEO) gc ecw cee 35, 36 Sicilia Di R. Biebow & Co. v. Cox, iv ER pe OE epg So ee)! ) 35 Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d 423 (6th Cir. 1986) .............. 35 Society of Fin. Examiners v. Nat'l Ass’n of Certified Fraud Examiners Inc., 41 F.Oe 22s (6th Cir. TGS)... ww cance 26 vill Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Co., 676 F.2d 1079 (5th Cir.1982)........ 20, 21, 25 TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) ............ 23, 35, 36 Univ. of Georgia Athletic Ass’n v. Laite, 756 F.2d 1535 (llth Cir.1985).......... 28, 29 Univ. of Pittsburgh v. Champion Prods., Inc., 529 F. Supp. 464 (W.D. Pa. 1982) ....... 28, 32 Univ. of Pittsburgh v. Champion Prods., Inc., 566 F. Supp. 711, 219 U.S.P.Q. 834 (W.D. Pa. Jun 23, 1983) (NO. CIV. 81-2167) .......... 28 U.S. v. Giles, 213 F.3d 1247 (10th Cir. 2000) ............ 27 STATUTES AND RULES ee 0 ek ewes wee we we 2 a id oe a ae 8b ea ees 1 TREATISES AND ARTICLES 3 Louis Altman, Callmann on Unfair Competition, Trademarks and Monopolies § 19:7 (4th ed. TACT i RTS as 2 ream LAS Ae aN hs MIR cy ar eee Oe 36 4 McCarthy on Trademarks, § 24:10 (4th ed.) ... 29 ix C. Knox Withers, Sine Qua Non: Trademark Infringement, Likelihood of Confusion, and the Business of Collegiate Licensing, 11 J. Intell. FYOp. 4s. 421 GPT Es cc ce cee 29 Dogan, S.L., & Lemley, M.A.. The Merchandising Right: Fragile Theory or Fait Accompli? 54 Emory Law Journal 461, 500 (2005) ........ 35 J. Grady andS. McKelvey, Trademark Protection of School Colors: Smack Apparel and Sinks Decisions Trigger Color-Ful Legal Debate for the Collegiate Licensing Industry, 18 J. Legal Aspects Sport 207 (2008) ........0...0005- 32 J. Voortman, Trademark Licensing of Names, Insignia, Characters and Designs: The Current Status of the Boston Pro Hockey Per Se Infringement Rule, 22 J. Marshall L. Rev. 567, GT (rar Be ia reece eee 29 “Sports Artist Sued for Mixture of Crimson and Tide” New York Times, November 12, 2006, available at www.nytimes.com/2006/11/12/us/ By RS 31 The Dilution Of Culture And The Law Of Trademarks, 49 IDEA 1, 31 (2008) ......... 30 Tschura, G., Likelihood of Confusion and Expressive Functionality: A Fresh Look at the Ornamental Use of Institutional Colors, Names and Emblems on Apparel and Other Goods. 53 WAYNE L. REv. 873, 897 (2007) ............ 30 ] PETITION FOR WRIT OF CERTIORARI Petitioners request that a writ of certiorari issue to review the final order of the United States Court of Appeals for the Fifth Circuit (“Fifth Circuit”). OPINIONS BELOW The opinion of the Fifth Circuit is reported as Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir.2008) and reproduced in the Appendix (“App.”) at la. The Fifth Circuit’s order denying Petitioners’ Petition for Rehearing en banc is unpublished and reproduced in the Appendix at App. 72a. The order entered by the District Court granting partial summary judgment to Respondents is reported as Board of Supervisors of LA State University v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D.La. 2006) and is reproduced in the Appendix at App. 49a. JURISDICTION On November 25, 2008, the Fifth Circuit affirmed the decision of the District Court granting summary judgment to respondents. On December 23, 2008, the Fifth Cireuit denied Petitioners’ Petition for Rehearing. The Court’s jurisdiction is invoked pursuant to 28 U.S.C. § 1254(1). 2 STATUTES AND CONSTITUTIONAL PROVISIONS INVOLVED Section 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), provides as follows: (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 3 STATEMENT OF THE CASE Statement cf the Facts Since 1998, Smack Apparel has been in the business of manufacturing unlicensed t-shirts for collegiate sports fans which incorporate the traditional team colors of various colleges and universities. Smack attempts to distinguish its products from licensed merchandise in several ways. First, it does not use the design elements that are typically found on licensed merchandise, such as the name of the university and team mascot, or images of the school’s seal, mascot, logos, and other registered trademarks. Instead of incorporating the university’s registered trademarks in its t-shirt designs, Smack uses words and images which are not trademarks, and which indirectly refer to the school, such as the geographic location of the school, a reference to an opponent of the school, or the score of a game which the school won. Smack is also known for the humorous messages which are intended to taunt fans of the opposing team, which are rarely found on licensed products. When such non-specific design elements are portrayed on a t-shirt which incorporates the traditional school colors of the university, a fan (or opponent) can understand which school the t-shirt is intended to refer to, and Smack markets its shirts to such fans. The company name (“Smack”) is taken from a slang term for bragging or boastful language that fans often use when referring to fans of the opposing team. Smack is located in Tampa, Florida, where its shirts are manufactured. Smack sells its t-shirts primarily to retail stores which offer the shirts for sale to the public. Smack also maintains a website through 4 which it sells its t-shirts directly to the public. Smack’s website states that its shirts are “licensed only by the First Amendment.” Smack does nothing to suggest that its t-shirts are licensed or approved by the schools referred to by the t-shirts. Smack’s t-shirts each display the company logo (approximately 2.5 inches in width), which contains the company name and the words “Talkin’ the Talk.” Plaintiffs Louisiana State University (LSU), the University of Oklahoma (OU), Ohio State University (OSU), and the University of Southern California (USC), along with their licensing agent, Collegiate Licensing Company (CLC), sued defendant Smack Apparel Company and its principal, Wayne Curtiss, under the Lanham Act and related state statutes. Plaintiffs contended that their respective school colors (purple and gold for LSU, crimson and cream for OU, scarlet and gray for OSU, and cardinal and gold for USC), when displayed on products containing references to the universities or their accomplishments and directed to fans of the universities and other interested consumers, constitute common law trademarks. Smack denied that the claimed trademark (school colors in combination with references to the universities) was adequately distinctive to serve as a trademark, and denicd that there was a likelihood that consumers would think that Smack’s products were manufactured, endorsed, or approved by the universities. Smack contended that the universities’ alleged marks (school colors in combination with references to the universities) were functional, since the products in question constitute “game day” apparel, and there was no consumer demand for “game 5 day” apparel which did not make some reference to the teams which were playing. Smack also contended that its use of the school colors in combination with references to the schools constituted a nominative fair use, because Smack did not use any of the schools’ registered trademarks, and did nothing to suggest that its t-shirts were endorsed or approved by the schools. The T-Shirts at Issue Plaintiffs contend that six of Smack’s t-shirts infringe their common law trademarks and unfairly compete with products licensed by plaintiffs. Two of the allegedly offending designs are for LSU fans: (1) “Beat Oklahoma” — This t-shirt is printed with gold lettering on purple fabric. The front of this t-shirt contains the following design elements: (a) The phrase “Beat Oklahoma”; and (b) The Smack logo, consisting of the word “Smack” displayed within an oval border containing the word “apparel”, below which is displayed the phrase “Talkin’ the Talk”. The back of this t-shirt contains the following design elements: (a) The phrase “And Bring It Back To The Bayou!”; and (b) The phrases “2003 College Football National Championship” and “January 4, 2004 New Orleans, Louisiana” in smaller letters; and 6 (c) A graphic image of a trophy with a football on top of the trophy. (2) “Sweet as Sugar” — The “Sweet as Sugar” t- shirt design is printed with purple lettering on gold fabric. The front of this t-shirt design contains the following design elements: (a) The phrases “2003 College Football National Champions” and “New Orleans, Louisiana”; (b) A graphic image of a trophy with a football on top of the trophy; and (c) The Smack logo. The reverse side of this t-shirt design contains the following design elements: (a) Numbers (representing the scores of each football game which LSU played during the 2003 football regular season) displayed within a circular design, with accompanying phrases which indirectly refer to the opponent in each such game (e.g. the phrase “Crimson Cried”, a_ derivation of the University of Alabama team nickname, “Crimson Tide,” appears directly below the numbers 27-3, the score of the game between LSU and Alabama played during the 2003 football season); (b) The phrases “2003 College Football National Champions” and “New Orleans, Louisiana”; (c) The numbers “33-20” and the words “Sweet as Sugar” in the center of the circular design, referring to the score of the 2004 Sugar Bowl game in which LSU became the 2003 College Football National Champions. 7 The “Sweet as Sugar” t-shirt design was intended for fans of LSU to celebrate the National Championship won by LSU in January 2004. The game scores are shown with verbal jabs which poke fun at the opponents defeated by LSU during the regular season. Two of the allegedly offending designs are for OU fans: (1) “Beat SoCal” - This t-shirt is printed with white lettering on red fabric. The front of this t-shirt contains the following design elements: (a) The phrase “Beat SoCal”; and (b) The Smack logo. The back of this t-shirt contains the following design elements: (a) The phrase “And Let’s Make It Eight!”; and (b) The phrases “2004 College Football National Championship” and “January 4, 2005 Miami, Florida” in smaller letters; and (c) A graphic image of a trophy with a football on top of the trophy. The “Beat SoCal” t-shirt is intended to refer to a football game played between OU and USC for the college football national championship in January, 2004. The phrase “Let’s Make it Eight” refers to the fact that OU had previously won seven national championships in football, and that if OU were to win that game, it would have won a total of eight national! football championships. The t-shirt does not utilize any 8 registered trademark of OU or any other school as part of the design elements. (2) “Bourbon Street or Bust” — This t-shirt is printed with white lettering on red fabric. The front of this t-shirt contains the following design elements: (a) The phrase “Bourbon Street or Bust” (with the letters “ou” in “Bourbon” displayed in a different font and the word “or” embedded in a graphic image of a football); (b) Graphic images of a martini glass and a Mardi Gras mask, and (c) The Smack logo. The back of this t-shirt contains the following design elements: (a) The phrase “Show us your beads!” (with the “ou” in “your” in a different color and font); (b) Graphic images of a martini glass and a Mardi Gras mask, (c) The phrase “It'll be Sweet as Sugar” with the word “as” embedded in a football; and (d) A banner containing the words “January 4, 2004 New Orleans, Louisiana”. While the letters “ou” in the w.cd “Bourbon” are displayed in a font which is different than the other letter in the word, OU had not registered the letters “QU” as a trademark prior to the filing of this lawsuit. Before making the “Bourbon Street or Bust” t-shirt, Smack investigated OU’s registered trademarks and discovered that while OU had registered a trademark for a stylized interlocking form of the letters OU, it had not attempted to register the letters “OU”. The 9 phrases “Show us your beads” and “Bourbon Street or Bust” were intended to be statements that a typical OU fan might make. OU does not make or sponsor any t-shirt that is similar to the “Bourbon Street or Bust” t-shirt. Suzanne Staley, OU’s Director of Brand Development, testified that OU would not license a shirt similar to the “Bourbon Street or Bust” t-shirt for two reasons: (1) the presence of a martini glass on the t-shirt implies consumption of alcohol, and OU does not license products which encourage consumption of alcohol; and (2) the phrase “show us your beads” implies nudity, and OU does not license products which involve sexual innuendo. One of the allegedly infringing designs is for fans of OSU. (1) “Got Seven?” — The “Got Seven?” t-shirt design is printed with white lettering on red fabric. The front side of this t-shirt design contains the following design elements: (a) The phrase “Got Seven?”; and (b) The Smack logo. The reverse side of this t-shirt design contains the following design elements: (a) The phrase “We Do!”; (b) A map of the state of Ohio with the words “Columbus, Ohio”, a star indicating the location of Columbus on the map, and a graphic image of a football; (c) The phrase “Home of the 7 Time Nat‘onal Champs”; 10 (d) Seven graphic images of trophies with a football on top of each trophy; and (e) Below each trophy is a date representing each of the years in which OSU was the National College Football Champion; and (f) The Smack logo. One of the allegedly infringing designs is for fans of USC. (1) “Got Eight?” — The “Got Eight?” t-shirt design is printed with gold lettering on red fabric. The front side of this t-shirt design contains the following design elements: (a) The phrase “Got Eight?”; and (b) The Smack logo. The reverse side of this t-shirt design contains the following design elements: (a) The phrase “We Do!”; (b) A map of the state of California with the word “SoCal”, and a star indicating the location of Los Angeles on the map; (c) The phrase “Home of the 8 Time National Champs’; (d) Fight graphic images of trophies with a football on top of each trophy; and (e) Below each trophy is a date representing each of the years in which USC was the National College Football Champion. The “Got Seven?” and “Got Eight?” t-shirt designs are a parody of the “got milk” advertising campaign. Smack has manufactured virtually identical t-shirt 11 designs for dozens of other schools, including OU and LSU, without objection. Smack began to manufacture and sell a “Got Seven?” t-shirt for OU in 2001, and CLC has never objected to that shirt. Dr. Thomas O’Connor, an expert on marketing research from the University of New Orleans, citing scientific literature and his own _ investigation regarding the reasons why individuals wear apparel which incorporate team colors, expressed the following opinions: (1) Color allows the person wearing a t-shirt to convey a message, and to demonstrate support for the school; (2) Use of color allows persons to demonstrate loyalty, to band together, and to “bask in the reflective glory” of school success; (3) The use of color for tribal, expressive, or associative purposes has ancient origins dating back several centuries; and (4) Use of color identifies the speaker, and gives context to a speaker’s expressive message. To illustrate how businesses in the universities’ respective communities use team colors combined with references to the universities as a marketing device, and demonstrate why there was no likelihood that consumers would think that Smack’s t-shirts were endorsed or approved by the universities, Smack introduced photographs reflecting the widespread use of team colors on commercial signs, vehicles, and buildings as the dominant color theme, often 12 accompanied by words or images which make reference to the university. These photographs depict: (a) businesses in Norman with names such as “Sooner Income Tax”, “Sooner Driving School”, “Sooner Pain Management”, “Sooner Theater”, “Sooner Trophies”, “University Muffler”, “Big R Furniture”, “Boomer Book Company”, “College Cleaners”, “Crimson Creamery”, “OU Motel”, and “Sooner Copy Center” which also display OU’s team colors (crimson and cream) on buildings and signs; (b) businesses in Columbus with names such as “Varsity Club”, “Buckeye Donuts”, “Go Bucks Express”, and “Campus Car Co.”, which display OSU’s team colors (scarlet and gray) on buildings and signs, and (c) businesses in Baton Rouge with names such as “Tiger Plaza”, “Campus Car Care”, and “TigerLand Market” which display LSU’s team colors (purple and gold) on their signs and buildings. District Court Proceedings Plaintiffs filed their Complaint in this action on June 7, 2004. Both sides moved for summary judgment in early 2005. On July 18, 2006, the District Court entered its Order granting plaintiffs’ Motion for Summary Judgment, and denying Smack’s Motion for Summary Judgment, finding that the six t-shirts at issue infringed the plaintiffs’ trademarks. The District Court found that there was no genuine issue of material fact that the university trademarks had acquired secondary meaning, since it was 13 undisputed that the universities had used their respective colors for a lengthy period of time, had marketed scores of items incorporating the school colors which generated substantial revenue, and sometimes referred to themselves by reference to the school colors, i.e. LSU sometimes refers to itself as the “purple and gold”. The District Court also found that Smack’s concession that it used school colors on its shirts as a means of referring to the universities was evidence that the colors had acquired secondary meaning. The District Court also found that there was no genuine issue of material fact that Smack’s use of school colors on its t-shirts was likely to cause confusion among consumers regarding the source, affiliation, or sponsorship of Smack’s t-shirts. Applying the Fifth Circuit’s “digits of confusion” test, the District Court found that the university marks were strong, despite the fact that businesses in the cities where the respective universities were located used school colors combined with references to the universities to market their businesses. The District Court also found that the university marks were “virtually identical” to the marks incorporated on Smack’s t-shirts, due in part to the fact that Smack’s t-shirts left no doubt that they referred to the universities. The District Court found that the parties’ respective products were very similar, even though Smack’s t-shirts did not incorporate the university’s registered trademarks (as did licensed products), and despite the fact that Smack’s t-shirts include irreverent phrases or slang comments in addition to the school colors. The District Court found that while Smack denied that it intended to confuse consumers, it admitted that it used the university marks with the 14 intent of identifying the universities as the subject of the message expressed on the t-shirts, and that this weighed in favor of a likelihood of confusion because Smack used the university marks in its t-shirts “with ‘an intent’ to ‘rely upon the drawing power in enticing fans of the particular universities to purchase their shirts.”. There was no direct evidence of actual confusion; in fact, the universities entered into a stipulation that there was no evidence that any consumer had ever purchased one of Smack’s t-shirts under the mistaken belief that it had been endorsed, sponsored, or approved by the universities. Citing Boston Professional Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg, Inc., 510 F.2d 1004 (5th Cir. 1975) (hereinafter Boston Professional Hockey), the District Court rejected Smack’s contention that the university marks were functional. The District Court found that consumers purchased shirts which incorporated the universities’ color schemes combined with references to the universities “in order to show support for the particular university” and that there was “no consumer demand without these identifying characteristics.” 438 F. Supp. 2d at 662. Even though the universities described their trademark as “color schemes in the context of merchandise that makes reference to the Plaintiff Universities or their accomplishments and is directed to their fans and other interested consumers,” and the District Court stated that Smack had “selected the color schemes, logos, and designs for their shirts in order to refer to the universities and call them to the mind of the consumer,” 438 F. Supp. at 657-58 (emphasis added), the District Court rejected Smack’s nominative fair use defense. The District Court 15 reasoned that a use could not be considered a nominative fair use if it resulted in a likelihood of confusion, and the District Court had already determined that Smack’s use of the university marks on its t-shirts resulted in a likelihood of confusion. A jury trial was conducted on November 27 & 28, 2006, and the jury awarded plaintiffs $10,507.80 as actual damages, and the additional sum of $35,686 as profits from the sale of the six t-shirts. The District Court declined the universities’ request to award enhanced damages. The District Court permanently enjoined Smack from manufacturing only the six t- shirts at issue, and any shirts similar to those six t- shirts. The District Court entered its judgment on February 12, 2007. On February 23, 2007, plaintiffs filed a motion to reconsider, asking that the court amend the judgment to include prejudgment interest. On April 16, 2007, the court granted the motion to reconsider, and amended the judgment of February 12, 2007 to include prejudgment interest in the aggregate sum of $1,187.31. Appellate Proceedings On May 15, 2007, Smack filed its notice of appeal to the United States Court of Appeal for the Fifth Circuit. On November 25, 2008, the Fifth Circuit affirmed the District Court’s summary judgment for the universities in all respects. On appeal, Smack argued that the university marks (team colors combined with indicia referring to the universities) were not trademarks because they 16 described the products which were produced by the university licensees, and did not serve to distinguish or identify the universities as the secondary source of those products. The Fifth Circuit rejected this argument, stating “we see no reason to exclude color plus other identifying indicia from the realm of protectable marks’ provided the remaining requirements for protection are met.” 550 F.3d at 476. While Smack did not contest the universities’ contention that their school colors had been used to identify the universities for more than a century, Smack contended that the use of colors as a means of identifying the universities and distinguishing them from other institutions was not a trademark use unless the colors were used as a means of identifying the universities as a unique source of goods. The Fifth Circuit disagreed, stating as follows: 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, there is 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. We think this conclusion is consistent with the importance generally placed on sports team logos and colors by the public. We have previously noted, although not in the context of 17 secondary meaning, that team emblems and symbols are sold because they serve to identify particular teams, organizations, or entities with which people wish to identify. See Boston Prof! Hockey Ass’n v. Dallas Cap & Emblem Mfg., Inc., {510 F.2d 1004, 1011 (5th Cir.1975)} We think this desire by consumers to associate with a particular university supports the conclusion that team colors and logos are, in the minds of the fans and other consumers, source indicators ofteam-related apparel. By associating the color and other indicia with the university, the fans perceive the university as the source or sponsor of the goods because they want to associate with that source. 550 F.3d at 477-78. While acknowledging evidence that third party businesses near the university campuses also used university school colors and other indicia to attract consumers to their businesses, the Fifth Circuit found that this third party use was not “extensive” enough to create a genuine issue of material fact regarding confusion. The Fifth Circuit also affirmed the District. Court’s finding that no issue of genuine material fact existed with regard to whether Smack’s t-shirts were likely to result in consumer confusion. While the Fifth Circuit mentioned the “Sweet as Sugar” t-shirt as an example of a Smack t-shirt that was “strikingly similar” to a t- shirt licensed by LSU, the only features of the Smack t-shirt that the Fifth Circuit also found in the t-shirt licensed by LSU was the use of the colors purple and 18 gold, and reference to the national championship won by LSU in 2004: For example, one of Smack’s shirt designs in purple and gold is referred to as the “sundial” shirt and was targeted toward LSU fans. The front of the shirt proclaims “2003 National Champions,” and the back contains the scores from twelve games won by LSU. The scores are arranged in a circle with a short phrase poking fun at each opponent. The shirt also contains the final score of the 2004 Sugar Bowl, which LSU won, and the phrase “Sweet as Sugar!” Although the shirt does not use the initials “LSU” anywhere, its identification of LSU as the national champion is unmistakable from the colors and from the references to the games in which LSU played. This shirt is strikingly similar to LSU’s own merchandise that also uses the purple and gold colors and proclaims LSU as the national champion. 550 F.3d at 480. Another t-shirt which the Fifth Circuit found to be similar to a licensed product was the “Bourbon Street or Bust” t-shirt which Smack manufactured for OU fans. Jd. As noted above, OU’s Director of Brand Development testified that OU would never grant a license for the “Bourbon Street or Bust” t-shirt because it displayed a martini glass and the phrase “Show Us Your Beads,” which were considered to be suggestive of alcoholic consumption and nudity/sexual innuendo, respectively. Notwithstanding the presence of factors which would allow consumers to distinguish the Smack t-shirts from licensed products, the Fifth Circuit concluded that “[t]he similarities in design elements are 19 overwhelming and weigh heavily in favor of a likelihood of confusion.” The Fifth Circuit, like the District Court, found that Smack’s admission that it intentionally used the university colors and indicia “to make people think of the particular school that each shirt targeted” weighed in favor of a likelihood of confusion: Smack did not hope to sell its t-shirts because of some competitive difference in quality or design compared with the Universities’ licensed products, but rather it intended to take advantage of the popularity of the Universities’ football programs and the appearance of the school teams in the college bowl games. 550 F.3d at 482. In concluding that the District Court properly found that there was no substantial dispute of genuine fact regarding the likelihood of confusion, the Fifth Circuit stated: As noted above, the digits of confusion- particularly the overwhelming similarity of the marks and the defendant’s intent to profit from the Universities’ reputation-compel this conclusion. This 1s 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. This creation of a link in the consumer’s mind between the t- shirts and the Universities and the intent to 20 directly profit therefrom results in “an unmistakable aura of deception” and likelihood of confusion. 550 F.3d at 483-84. The Fifth Circuit attempted to distinguish this case from Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Company, 676 F.2d 1079 (5th Cir.1982) (hereinafter Rainbow for Girls), in which a fraternal organization and its official jeweler sued a retailer for trademark infringement based on the retailer’s sale of jewelry bea.ing the organization’s registered mark. In Rainbow for Girls, the Fifth Circuit affirmed the district court’s finding of no likelihood of confusion, concluding that “[t]he fact that purchasers purchased Rainbow jewelry as a direct result of the presence of the Rainbow emblem did not compel the conclusion that they did so believing that the jewelry was in any way endorsed, sponsored, approved or otherwise associated with Rainbow.” 676 F.2d at 1084. The Fifth Circuit concluded that the instant case was distinguishable because of district court findings in Rainbow for Girls that “there was no historic custom or practice specific to Rainbow jewelry or to the fraternal jewelry industry that Rainbow jewelry could be manufactured only with Rainbow’s sponsorship or approval.” After distinguishing this case from Rainbow for Girls, the Fifth Circuit noted that this case was more analogous to Boston Professional Hockey, in which the Fifth Circuit “held that the likelihood of confusion requirement was met because the defendant duplicated and sold the emblems ‘knowing that the public would identify them as being the teams’ 21 trademarks’ and because the publics ‘certain knowledge ... that the source and origin of the trademark symbols were in plaintiffs satisfies the requirements of the act.” 550 F.3d at 485 (quoting Boston Professional Hockey, 510 F.2d at 1012. The Fifth Circuit noted that the Rainbow for Girls court recognized that sports emblems were significantly different than emblems of fraternal organizations in terms of how they are perceived by consumers: In Rainbow for Girls, the district court opinion, which we upheld, also recognized in reference to Boston Hockey that “(i)t is not unreasonable to conclude, given the degree to which sports emblems are used to advertise teams and endorse products, that a consumer seeing the emblem or name of a team on or associated with a good or service would assume some sort of sponsorship or association between the product’s seller and the team.” Id. The Fifth Circuit concluded that the difference in public perception between sports emblems and fraternal symbols required that the outcome of this case be governed by Boston Professional Hockey rather than Rainbow for Girls: We agree with this reasoning as applied to this case, which is more like Boston Hockey than Rainbow for Girls. We hold that given the record in this case and the digits of confusion analysis discussed above-including’ the overwhelming similarity between’ the defendant’s t-shirts and the Universities’ 22 licensed products, and the defendant’s admitted intent to create an association with the plaintiffs and to influence consumers in calling the plaintiffs to mind-that the inescapable conclusion is that many consumers would likely be confused and believe that Smack’s t-shirts were sponsored or endorsed by the Universities. The Universities exercise stringent control] over the use of their marks on apparel] tr, ough their licensing program. It is also undisputed that the Universities| annually sell millions of dollars worth of licensed apparel. We further recognize the public’s indisputable desire to associate with college sports teams by wearing team-related apparel. We are not persuaded that simply because some consumers might not care whether Smack’s shirts are officially licensed the likelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a different question from whether that consumer would likely believe the product is officially sponsored. For the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the Universities’ marks and the Universities’ themselves was demonstrated in this case. Smack also urged the Fifth Circuit to reverse the District Court’s conclusion that the university marks were not functional, to no avail. As it had done in Boston Professional Hockey, the Fifth Circuit found that the marks in question “had no demonstrated value other than their significance as the trademarks of the team,” and were therefore nonfunctional. Applying the “traditional” test of functionality, e.g. “whether the feature is essential to the use or purpose 23 of the product or whether it affects the cost or quality of the product,” the ifth Circuit found that “[{t]he school colors and other indicia used here do not make the t-shirts ‘work.’ The t-shirts would function just as well as articles of clothing without the colors and designs.” 550 F.3d at 486. Applying the “secondary” test of functionality, e.g. “one the exclusive use of which would put competitors at a significant non- reputation-related disadvantage,” the Fifth Circuit found that: Smack contends that it will be placed at a significant non-reputation-related disadvantage if it “is unable to satisfy consumer demand for game day clothing that allows fans to conform to the crowd, or satisfy consumer demand for game day clothing that matches other items of clothing worn by the consumer.” Smack has admitted that the colors and indicia on its shirts are designed to call the Universities to the mind of the fans, and it acknowledges in its brief that fans purchase t-shirts to wear to football games to show the colors of the team that the consumer is supporting. . . . Smack’s alleged competitive disadvantage in the ability to sell game day apparel relates solely to an inability to take advantage of the Universities’ reputation and the public’s desired association with the Universities that its shirts create. This ' TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32-33, 121 S.Ct. 1255, 1261-62, 149 L.Ed.2d 164 (2001) (hereinafter TrafFix). * Eppendorf-Netheler-Hinz GMBH v. Ruiter GMBH, 289 F.3d 351, 356 (5th Cir. 2002) 24 is not an advantage to which it is entitled under the rubric of legitimate competition. 550 F.3d at 488. The Fifth Circuit also rejected Smack’s contention that its use of the university marks was a nominative fair use of those marks. One of the issues which Smack raised on appeal was that the Fifth Circuit does not consider nominative fair use to be an affirmative defense, but rather, a factor which the court is required to consider in conjunction with its likelihood of confusion analysis. However, the District Court in this case first concluded that Smack’s t-shirts created a likelihood of confusion, and then found that Smack’s use of the university marks could not be considered a nominative fair use because the District Court had already concluded that Smack’s use of the university marks created a likelihood of confusion. Smack contended that the District Court failed to consider the nominative fair use doctrine as part of the likelihood of confusion analysis, and that this failure constituted reversible error. While acknowledging that the nominative fair use analysis should “ordinarily” be considered in conjunction with the likelihood of confusion analysis in order to avoid lowering the standard for confusion, the Fifth Circuit stated that it had not required any particular method for consideration in cases “where the nominative use is not a significant factor in the liability determination,” and concluded that this was “such a case.” As an illustration of Smack’s use of the university marks in a way that improperly suggested affiliation, 25 sponsorship, or endorsement, the Fifth Circuit noted that the “Got Seven?” and “Got Eight?” shirts also contained the phrase “We Do!” and concluded that the use of this phrase implied that the university had endorsed or approved the t-shirt, since Smack had not won any national championships in football.* Relying on the district court’s finding that “Smack copied the mark with ‘an intent to rely upon the drawing power in enticing fans of the particular universities to purchase their shirts [and that s]uch an attempt to capitalize on consumer confusion is not a nominative fair use,” the Fifth Circuit concluded that the district court correctly granted summary judgment to the Universities on the nominative fair use issue. 585 F.3d at 489. Petition for Rehearing Smack sought en banc review of the panel opinion on the grounds that it conflicted with other Fifth Circuit decisions and consideration by the full court was therefore necessary to secure and maintain uniformity of the court’s decisions. Smack contended that Boston Professtonal Hockey and Rainbow for Girls * It should be noted that the Fifth Circuit’s reliance on the phrase “We Do!” in the “Got Seven!” and “Got Eight!” t-shirts as justification for its conclusion that Smack had used the university marks in a way that suggested sponsorship or endorsement was never raised by the plaintiffs, either in the trial court or on appeal, was never mentioned by the District Court, was not raised by the panel as an issue during oral argument, and appears for the first time in the Fifth Circuit opinion. Had the issue been raised, Smack would have noted that the term “we” is not used in the first person singular tense to refer to the university, but is used in the first person plural sense, to refer to the fan wearing the shirt and other fans who might encounter the t-shirt in public. 26 were conflicting, and that the en banc panel should grant Smack’s Petition for Rehearing and overrule Boston Professional Hockey. Smack also asserted that the panel opinion had cited Beef/ Eater Rests., Inc. v. James Burrough Ltd. 398 F.2d 637, 639 (5th Cir. 1968), for the proposition that “[T]he trial judge, by inspection of the trademarks, may himself determine, and must determine, the likelihood of confusion,” and that Beef/ Eater had clearly been superseded in this respect by more recent Fifth Circuit opinions such as Society of Financial Examiners v. National Ass’n of Certified Fraud Examiners Inc., 41 F.3d 223, 226 (5th Cir. 1995), reversing a district court for holding that the “fact-intensive” likelihood of confusion inquiry could be conducted without a trial. 41 F.3d at 224- 25. On December 23, 2008, the Fifth Circuit denied Smack’s Petition for Rehearing. REASONS FOR GRANTING THE WRIT A. The decision of the Fifth Circuit Court of Appeals conflicts with the decisions of other United States Courts of Appeals on the question of whether the Lanham Act’s “likelihood of confusion” requirement is satisfied by a showing that the public identifies the marks in question as the plaintiffs’ marks. In affirming the district court’s summary judgment in favor of the universities, the Fifth Circuit applied and reaffirmed its holding in Boston Professional Hockey, in which the Fifth Circuit held that the 27 Lanham Act’s “likelihood of confusion” requirement was satisfied by a showing that customers recognized the defendant’s patches as bearing the logos of the sports teams. The holding of Boston Professional Hockey has been rejected by the United States Court of Appeal for the Ninth Circuit in International Order of Job’s Daughters v. Lindeburg and Co., 633 F.2d 912, 918 (9th Cir. 1980) (hereinafter Job’s Daughters), in which the Ninth Circuit rejected Lanham Act claims asserted by a fraternal organization against the manufacturer of jewelry bearing the fraternal organization’s insignia, finding that the name and emblem were “functional aesthetic components of the jewelry, in that they are being merchandised on the basis of their intrinsic value, not as a designation of origin or sponsorship.” In Job’s Daughters, the Ninth Circuit stated: We reject the reasoning of Boston Hockey. Interpreted expansively, Boston Hockey holds that a trademark’s owner has a complete monopoly over its use, including its functional use, in commercial merchandising. [The Lanham Act’s} scope is much narrower: to protect consumers against deceptive designations of the origin of goods and, conversely, to enable producers to differentiate their products from those of others.... The Boston Hockey decision transmogrifies this narrow protection into a broad monopoly. Id. at 918. The Tenth Circuit has also refused to follow Boston Professional Hockey. U.S. v. Giles, 213 F.3d 1247, 1250-51 (10th Cir. 2000), (“[T]he [Boston Hockey] court relied upon a novel and overly broad conception of the rights that a trademark entails. ... 28 [T]he court essentially gave the plaintiffs a monopoly over use of the trademark in commercial merchandising. ... For these reasons we decline to follow Boston Professional here.”)." The Eleventh Circuit, on the other hand, has followed the reasoning of Boston Professional Hockey. In University of Georgia Athletic Association v. Laite, 756 F.2d 1535 (11th Cir. 1985), the Eleventh Circuit cited Boston Professional Hockey in affirming a permanent injunction against a novelty’ beer wholesaler who manufactured a beer called “Battlin’ Bulldog Beer” which was alleged to infringe on the portrayal of an English Bulldog which the University of Georgia had chosen for its mascot: In [Boston Professional Hockey], this court’s predecessor held that “confusion” need not relate to the origin of the challenged product. Rather, “confusion” may relate to the public’s knowledge that the trademark, which is “the * District courts in the Second, Third, and Fourth Circuits have rejected the holding of Boston Professional Hockey. See Bi-Rite Enters., Inc. v. Button Master, 555 F. Supp. 1188, 1193-95 (S.D.N.Y. 1983); Univ. of Pittsburgh v. Champion Prods., Inc., 566 F. Supp. 711, 219 U.S.P.Q. 834 (W.D. Pa. Jun 23, 1983) (NO. CIV. 81-2167) (We do not think that Boston Hockey is good law. Instead, we are in full accord with the analysis provided in [Job's Daughters]); Bd. of Governors of Univ. of North Carolina v. Helpingstine, 714 F. Supp. 167, 172-73 (M.D.N.C. 1989). However, a district court in the Seventh Circuit found Boston Professional Hockey to be persuasive authority. Alpha Tau Omega Fraternity, Inc. v. Pure Country, Inc., 2004 WL 3391781, *8-10(S.D. Ind. 2004) (predicting the Seventh Circuit would adopt the reasoning of Boston Professional Hockey). 29 triggering mechanism” for the sale of the product, originates with the plaintiff. Id. at 1546. Professor McCarthy has referred to Boston Professional Hockey as a “radical break with traditional trademark law.” 4 McCarthy on Trademarks, § 24:10 (4" ed.). Other commentators have criticized the decision, and have suggested that a grant of certiorari from this Court is necessary to resolve the uncertainty that the decision has created. in Lanham Act jurisprudence. See C. Knox Withers, Sine Qua Non: Trademark Infringement, Likelihood of Confusion, and the Business of Collegiate Licensing, 11 J. Intell. Prop. L. 421, 455 (Spring 2004) (“The ‘Boston Hockey’ cases present a number of questions to which the ‘Job’s Daughters’ decisions suggest answers. No matter how persuasive one might find the reasoning of the Job’s Daughters, Bi-Rite, University of Pittsburgh, and University of North Carolina courts, an incongruity between the two lines of cases still exists. A grant of certiorari from the United States Supreme Court in a future case would perhaps be the best solution to this split of authority. ... By answering these questions, the Supreme Court could make great strides in resolving the inconsistencies between the ‘Boston Hockey’ and ‘Job’s Daughters’ cases”); John J. Voortman, Trademark Licensing of Names, Insignia, Characters and Designs: The Current Status of the Boston Pro Hockey Per Se Infringement Rule, 22 J. Marshall L. Rev. 567, 571 (Spring 1989) (“Indeed, the question of whether persons or firms should have the exclusive right to exploit their own names, emblems, and the fictional characters they have created is probably dependent in part on intuitive beliefs which 30 are not susceptible to logical argument. It is clear, however, that a Supreme Court decision or legislation to resolve this issue one way or the other is needed. Not only is there a conflict between the circuits, but even within the circuits, the law has become highly unpredictable.”). T'schura, G., Likelihood of Confusion and Expressive Functionality: A Fresh Look at the Ornamental Use of Institutional Colors, Names and Emblems on Apparel and Other Goods. 53 WAYNE L. REV. 873, 897 (2007) (“Perhaps it is high time these merchandising theories were considered by the Supreme Court. In this author’s. view and in light of a more recent opinion of the Court which refused to expand the scope of trademark protection beyond simply the avoidance of consumer confusion, the Court should likewise conclude that the difference between | expressing allegiance and any assumption or belief as to endorsement or sponsorship is an easy distinction for the consumer to make.”). The Dilution Of Culture And The Law Of Trademarks, 49 IDEA 1, 31 (2008) (“Although [Boston Professional Hockey] was harshly criticized in other decisions and in the legal literature, courts have increasingly accepted its logic. The question has yet to be decided by the Supreme Court, but the logic underlying the court’s decision has recently come to dominate legal practice.”). The issues raised in this case are likely to appear with increasing frequency as other colleges and universities, armed with the Fifth Circuit’s decision in this case, begin to challenge the use of their school colors by parties who have used those colors without complaint for decades. The University of Alabama, one of the amici in the Fifth Circuit, has asserted Lanham Act claims against Daniel Moore, who has been painting and selling artistic works depicting the 31 University of Alabama school colors for twenty six years without a license or any objection from the university. The university claims that Moore’s paintings violate the University’s trademark rights. See “Sports Artist Sued for Mixture of Crimson and Tide” New York Times, November 12, 2006, available at www.nytimes.com/2006/11/12/us/12artist. html. The case is still pending. Given the huge mismatch in resources between major universities and the small businesses who are typical defendants in this type of litigation, many such businesses choose to settle out of court rather than devote the resources to defending litigation of this type. As a consequence, it is unlikely that this Court will soon have another opportunity to review a decision raising the issues that this case presents. B. The Fifth Circuit Court of Appeals has decided an important question of federal law that has not been, but should be, settled by this Court. “(T] the use of collegiate marks by local businesses as part of their trade names is an old and venerable tradition.” Bd. of Trs. of Univ. of Arkansas v. Profil Therapy Servs., Inc., 873 F. Supp. 1280, 1289 (W.D. Ark. 1995). Prior to the mid-1970’s, unauthorized use of collegiate trademarks in the United States was principally by local merchants who used the marks as an indication of support. Jd. at 1283-84. During this same period of time, manufacturers produced soft goods, e.g. t-shirts, sweatshirts, and other apparel, which featured collegiate trademarks without a license or payment of a royalty to the universities. See, Univ. of Pittsburgh v. Champion Prods., Inc., 529 F. Supp. 32 464, 466-68 (W.D. Pa. 1982). Increased television coverage of college athletics led to an enormous boom in the production and sale of goods bearing collegiate marks. By the early and mid-1980's, many colleges and universities began licensing programs to insure control over goods and services bearing collegiate marks. Bd. of Trs. of Univ. of Arkansas at 1283-84. Over the past two decades, the collegiate licensing industry has experienced exponential revenue growth, today topping $3 billion in annual merchandise sales. In fact, as reported in 2006, retail sales of collegiate licensed merchandise in the United States and Canada trailed only that of the National Football League and Major League Baseball among the major sport organizations. J. Grady and S. McKelvey, Trademark Protection of School Colors: Smack Apparel and Sinks Decisions Trigger Color-Ful Legal Debate for the Collegiate Licensing Industry, 18 J. Legal Aspects Sport 207 (2008). This case involves issues of first impression regarding the extent to which traditional school colors of colleges and universities are protected as trademarks. The importance of these issues is reflected by the fact that amicus briefs supporting the plaintiff universities were filed in the Fifth Circuit by four professional sports organizations? and twenty eight universities’. ° Major League Baseball Properties, Inc., NBA Properties, Inc., NFL Properties LLC, and NHL Enterprises, L.P. ® Board of Trustees of the University of Alabama, Board of Trustees of the University of Arkansas, acting for and on behalf of the University of Arkansas, Fayetteville, Auburn University, 33 C. The Fifth Circuit has decided an important federal question in a way that conflicts with relevant decisions of this Court. As noted above, this case raises an important issue as to which the Fifth Circuit’s position (in Boston Professional Hockey) is at odds with the position taken by the Ninth Circuit (in Job’s Daughters), i.e., whether infringement requires a real likelihood of confusion as to product source or whether it is enough to show that the public recognizes the trademark as emanating from the complaining party. While this Court has yet to squarely address this issue, relevant recent decisions of this Court suggest that the Court would adopt the position taken by the Ninth Circuit. First, in Moseley v. V Secret Catalogue, 537 U.S. 418, 123 8.Ct. 1115, 155 L.Ed.2d 1, (2003), this Court rejected the idea that mere mental association between the plaintiffs trademark and the defendant’s product Baylor University, Boise State University, University of Connecticut, Duke University, Florida Board of Regents (for Florida State University), The University of Florida Board of Trustees, University of Georgia Athletic Association, Inc., Board of Trustees of the University of Illinois, acting for and on behalf of the University of Illinois, Urbana-Champaign, University of Kentucky, Regents of the University of Michigan, Regents of the University of Minnesota, University of Mississippi, Curators of the University of Missouri on behalf of the University of Missouri- Columbia, Board of Governors of the University of North Carolina, University of North Texas, University of Notre Dame du Lac, Oklahoma State University, The Pennsylvania State University, Purdue University, University of South Carolina, The University of Texas at Austin, Texas A&M University, Texas Tech University, Tulane University, Board of Regents of the University of Wisconsin System. 34 could suffice to prove dilution of that trademark. Considering that mental association is not enough to satisfy the dilution standard, it certainly would not be enough to show likelihood of confusion. Second, the Court’s decision in Dastar Corp. uv. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003) directly refutes the idea that infringement can occur without confusion as to the source or sponsorship of the goods and discredits the notion that any other form of mental association counts in evaluating infringement. Dastar involved a “reverse passing-off’ claim based on the sale of videotapes containing a movie created by the plaintiff but sold under the defendant’s name. The plaintiff contended that the defendant deceived the public into thinking that it, rather than plaintiff, had made the movie, and that the sale of the movie under defendant’s name constituted a false designation of origin under the Lanham Act. This Court rejected that theory, reasoning that “origin . . . of goods” under the Lanham Act refers to the origin of the physical product sold in the marketplace, rather than to any ideas or communications included inside: While most merchandising claims involve allegations of confusion as to _ product sponsorship, rather than origin, the Dastar reasoning has no less force in the sponsorship context. To succeed in a sponsorship claim after Dastar, a trademark holder must establish that defendant’s use of its mark will confuse consumers into believing it sponsored the goods sold by defendant. In merchandising cases, this méans that the trademark holder must establish that consumers are likely to believe 35 that it makes or stands behind the t-shirt, cap, or other merchandise at issue in the case. The Boston Hockey notion that infringement can turn on confusion as to source of the mark--i.e., of “the ideas or communications” embodied in the product--runs directly counter to this ruling. Dogan, S.L., & Lemley, M.A.. The Merchandising Right: Fragile Theory or Fait Accompli? 54 Emory Law Journal 461, 500 (2005). Third, as noted above, the Fifth Circuit’s opinion in this case reaffirms the Fifth Circuit’s rejection of the aesthetic functionality doctrine, and is at odds with this Court’s decision in TrafFix, in which this Court recognized the doctrine of aesthetic functionality, stating that “[i]t is proper to inquire into a ‘significant non-reputation-related disadvantage’ in cases of esthetic functionality, the question involved in Qualitex [Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)).” Id. at 1262. The Fifth Circuit has previously rejected aesthetic functionality,’ and the panel opinion in this case reaffirmed that position: Smack relies on this pronouncement in TrafFix for the proposition that the Supreme Court has recognized the aesthetic functionality doctrine. We note that the TrafFix Court’s characterization of the issue in Qualitex has ’ Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 428-29 (5th Cir. 1984); Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d 423, 426, n.3 (5th Cir. 1986); Pebble Beach Co. v. Tour 18 I Ltd.., 155 F.3d 526, 540, n.6 (5th Cir. 1998). 36 been harshly criticized by commentators. Nevertheless, neither Qualitex nor TrafFix addressed aesthetic functionality as the dispositive issue, let alone the purported aesthetic functionality of a color-scheme that acts to identify and create a desired association with the particular source. We do not believe that the Court’s dictum in TrafFix requires us to abandon our long-settled view rejecting recognition of aesthetic functionality. 550 F.3d at 487-88. The Fifth Circuit’s rejection of aesthetic functionality effectively creates a monopoly for the universities in the manufacture of game day apparel, and prevents all but licensed vendors from competing in this market.® If the universities are permitted to obtain trademark protection for their school colors in combination with indicia referring to the universities, regardless of whether consumer confusion can be shown, all competition in the game day apparel industry will be eliminated — the “ultimate non-reputation related disadvantage.” ® Contrary to the Fifth Circuit’s suggestion that the product market involved in this case is t-shirts, the product market is game day apparel designed for sports fans. See 3 Louis Altman, Callmann on Unfair Competition, Trademarks and Monopolies § 19:7, at 79 (4th ed. 2003) (stating that “functionality ... is not to be determined within the broad compass of different but interchangeable products; the doctrine of functionality is intended to preserve competition within the narrow bounds of each individual product market”). ° «Likewise, the color, shape, and size of dippin’ dots are ‘aesthetic functions’ that easily satisfy the competitive necessity test because precluding competitors like FBD from copying any of these aspects of dippin’ dots would eliminate all competitors in the 37 CONCLUSION For the better part of the twentieth century, colleges and universities permitted (and even encouraged) businesses to use college colors and references to the universities as a means of promoting consumer patronage. Universities derived a benefit from third party use of college colors because it served to promote loyalty to the alma mater. Collegiate merchandising has seen tremendous growth over the last few decades. In an attempt to protect a valuable source of revenue in a time when public revenue is being cut back, and the value of endowments has dropped, universities have become aggressive in their attempts to eliminate any competition in the market for game day apparel and similar products. As this case illustrates, the legal principles which have developed over the years in regard to purely commercial enterprises don’t provide a satisfying rule of decision in cases such as this. The colors which identify colleges and universities do not function in the same manner as a commercial trademark. Students, alumni, and fans of all types have historically displayed school colors as a way of identifying themselves as supporters of the university, and to distinguish themselves from the tribe which invades their campus on Saturday afternoon. These fans use clothing in an expressive manner, and not as a trademark. flash-frozen ice cream market, which would be the ultimate non- reputation-related disadvantage.” Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197, 1204, n.7 (11th Cir. 2004). 38 The law which governs the use of school colors as a trademark has never been addressed by this Court, but is very likely to recur in future litigation. Decisions in cases such as this one will also impact the development of the law governing the use of colors as a trademark in other commercial contexts. It is therefore important that this Court address and resolve the issues presented in this case to clarify how trademark law applies to “affiliation products” such as the t-shirts involved in this case. Smack respectfully request that the Court grant a writ of certiorari to review the decision of the Fifth Circuit, and that the judgment against Smack be reversed or remanded for further proceedings consistent with this Court’s decision. Respectfully submitted, JAMES W. TILLY Counsel of Record The Tilly Law Firm 1639 S. Carson Avenue Tulsa, OK 74119 Telephone: 918-583-8868 Facsimile: 918-584-3162 Attorney for Petitioners APPENDIX APPENDIX A IN THE UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT No. 07-30580 [Filed November 25, 2008] REVISED DECEMBER 15, 2008 BOARD OF SUPERVISORS FOR LOUISIANA ) STATE UNIVERSITY AGRICULTURAL AND ) MECHANICAL COLLEGE; BOARD OF ) REGENTS OF THE UNIVERSITY OF OKLAHOMA; OHIO STATE UNIVERSITY; UNIVERSITY OF SOUTHERN CALIFORNIA Plaintiffs-Appellees v. SMACK APPAREL CO; WAYNE CURTISS Defendants-Appellants ) ) ) ) ) ) ) ) ) ) ) ) Cons. w/ No. 07-30887 BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY AGRICULTURAL AND MECHANICAL COLLEGE; BOARD OF REGENTS OF THE UNIVERSITY OF 2a OKLAHOMA; OHIO STATE UNIVERSITY; UNIVERSITY OF SOUTHERN CALIFORNIA; COLLEGIATE LICENSING COMPANY Plaintiffs-Appellants SMACK APPAREL CO; WAYNE CURTISS ) ) ) ) ) ) Vv. ) ) ) ) Defendants-Appellees ) ) Appeal from the United States District Court for the Eastern District of Louisiana Before REAVLEY, STEWART, and OWEN, Circuit Judges. REAVLEY, Circuit Judge: These consolidated appeals concern a trademark dispute between four universities and an apparel company and its principal. The Universities alleged in the district court that the 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 the plaintiffs. The defendants appeal the summary judgment order, and the Universities appeal the district court’s denial of their post-verdict motion for attorneys’ fees. We conclude that the colors, content, 3a and context of the offending t-shirts are likely to cause confusion as to their source, sponsorship, or affiliation, and we AFFIRM. I. Background The 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.’ The 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. The schools use these color schemes in many areas associated with university life, including on campus signs and buildings, on printed brochures, journals, and magazines, and on materials sent to potential donors. The Universities also use the color schemes extensively in connection with their athletic programs, particularly on team uniforms, resulting in wide-spread recognition of the colors among college sports fans. Each university operates a successful collegiate football program, and the respective football ‘The Pasadena Tournament of Roses was also a plaintiff in the district court, but it was dismissed upon joint motion of the parties and is not part of the instant appeal. 4a teams have appeared on numerous occasions in nationally televised football games that have been viewed by millions of people. The schools also grant licenses for retail sales of products, including t-shirts, that bear the university colors and trademarks. In recent years, the total annual sales volume of products bearing the school colors along with other identifying marks has exceeded $93 million for all the Universities combined. The Universities hold registered trademarks in their respective names and commonly used initials. They do not, however, possess registered trademarks in their color schemes. Smack Apparel Company is located in Tampa, Florida. Since 1998 Smack has manufactured t-shirts targeted toward fans of college sports teams, and it uses schoo] 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 shirts frequently appear alongside those that have been officially licensed by the Universities. The instant case involves 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 district court described these Smack shirt designs as follows: e OU (2 shirt designs): (1) “Bourbon Street or Bust” (with the “ou” in “Bourbon” in a different typestyle) (front), “Show us your beads!” (with the “ou” in “your” in a different typestyle) and “Sweet as Sugar!” (back) (2) “Beat Socal” (front), 5a “And Let’s Make it Eight!” (back). These shirts refer to 2004 Sugar Bowl contest in New Orleans between the OU and LSU football teams. A victory in the Sugar Bow] could have given OU aclaim to an eighth national football championship. One of OU’s principal rivals to this claim was USC. ¢ LSU (2 shirt designs): (1) “Beat Oklahoma” (front), “And Bring it Back to the Bayou!” and “2003 College Football National Championship” (back) (2) “2003 College Football National Champions’ (front), colored circular depiction of game scores, with “2003 College Football National Champions” and “Swect as Sugar” (back). These shirts refer to the 2004 Sugar Bowl contest in New Orleans between OU and LSU, which was played to determine the Bowl Championship Series’ national football champion. ¢ OSU: “Got Seven?” (front), “We do! 7 Time National Champs,” with depiction of the state of Ohio and a marker noting “Columbus Ohio” (back). This shirt refers to the seven college football national titles claimed by OSU. ¢ USC: “Got eight?” (front), “We Do! Home of the 8 Time National Champions!” and depiction of the state of California with a star marked “SoCal” (back). This design refers to USC’s claim to eight college national football championships. 6a Bd. of Supervisors of LA State Univ. v. Smack Apparel Co.” In addition to the messages described above, each shirt included Smack’s own logo in a_ space approximately 2.5 inches wide and the words “Talkin’ the Talk.” The Universities sued Smack, alleging that the above six shirt designs infringed their trademark rights. The Universities alleged causes of action for federal trademark infringement and dilution, unfair competition, and deceptive trade practices under the Lanham Act, 15 U.S.C. §§ 1051—1141n; unfair trade practices under the Louisiana Unfair Trade Practices and Consumer Protection Act (LUTPA), LA. REV. STAT. §51:1409; common law trademark infringement and unfair competition; and state trademark dilution. The plaintiffs alleged that each schools’ color combination acts as a _ source-identifier for the respective schools, especially when used in connection with other indicia identifying or suggesting the schools. They alleged that Smack’s shirts infringed their unregistered trademarks by “combining Plaintiffs’ Marks with references to, inter alia, . . . (a) well-known and highly-publicized athletic events in which a University participated; (b) a University’s opponent in the referenced athletic event; (c) the geographic area in which the referenced event takes place; (d) titles and honors bestowed as a result of the referenced athletic event; (e) a University’s earlier athletic successes and accomplishments; and (f) the geographic area in which the University is located or associated.” ? 438 F. Supp. 2d 653, 655 (B.D. La. 2006). 7a The Universities claimed that Smack’s products are similar to and competed with goods sold or licensed by the Universities and are sold directly alongside merchandise authorized by the plaintiffs at or near events referenced in the shirts. In this way, according to the Universities, the sale of Smack’s products is likely to deceive, confuse, and mislead consumers into believing that Smack’s products are _ produced, authorized, or associated with the _ plaintiff Universities. The Universities sought injunctive relief, lost profits, damages, costs, and attorneys’ feces. The parties filed cross-motions for summary judgment on the issue of liability for trademark infringement. The district court granted summary judgment for the Universities, holding that the Universities’ trademarks in their color schemes, logos, and designs on shirts referring to the schools or their accomplishments had acquired secondary meaning.® The district court concluded that the marks were strong, having been used for decades as a reference to the Universities, and that Smack’s infringing shirts were likely to cause confusion as to the source, affiliation, or sponsorship of the shirts.* The district court found that the marks at issue were virtually identical. The court reasoned that Smack used the same color schemes and similar logos and designs as the plaintiffs; that Smack marketed and sold its shirts in a manner similar to the Universities’ products and sometimes alongside those of the Universities; and that Smack used the color schemes, logos, and designs * Id. at 657-58. * Id. at 658-61. 8a with the specific intent to rely upon their drawing power in enticing fans of the Universities to purchase its shirts.” The court noted that Smack admitted using the school colors and other indicia with the intent of identifying the Universities as the subject of the message in the shirt designs.® The court also noted that a likelihood of confusion existed because the shirts, which are relatively inexpensive, are not purchased with a high degree of care by consumers.’ The district court rejected Smack’s defenses of functionality, nominative fair use, and laches.® After deciding the liability issue, the district court conducted a jury trial on the issue of damages. Smack moved for judgment as a matter of law, arguing that there could be no actual damages because there had been no actual confusion. The district court denied the motion. The jury then returned a verdict in favor of the plaintiffs and answered special interrogatories finding that Smack’s “infringement caused actual confusion of the public or caused the public to be deceived.” The jury awarded the Universities actual damages of $10,506.80 and lost profits of $35,686. The district court also enjoined Smack from manufacturing, distributing, selling, or offering for sale any of the six t-shirt designs found to be infringing or any other similar designs. > Id. © Td. at 661. 7 Id. ° Id. at 661-63. 9a II. Discussion We review a district court’s grant of summary judgment de novo. Noble Energy, Inc. v. Bituminous Cas. Co. Summary judgment is appropriate “if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.”’° “No genuine issue of material fact exists if the summary-judgment evidence is such that no reasonable juror could find in favor of the nonmovant.” Jenkins v. Methodist Hosps. of Dallas, Inc." Although the secondary meaning of a mark and the likelihood of confusion are ordinarily questions of fact, Elvis Presley Enterprises, Inc. v. Capece,’” summary judgment may be upheld if the summary judgment record compels the conclusion that the movant is entitled to judgment as a matter of law. Beef/ Eater Rests., Inc. v. James Burrough Ltd.* To prevail on their trademark infringement claim, the plaintiffs must show two things. First, they must establish ownership in a legally protectible mark, and second, they must show infringement by demonstrating a likelihood of confusion. Am. Rice, Inc. ° 529 F.3d 642, 645 (5th Cir. 2008). ' Feb. R. Civ. P. 56(C). ' 478 F.3d 255, 260 (5th Cir.), cert. denied, 128 S. Ct. 181 (2007). '? 141 F.3d 188, 196 (5th Cir. 1998). 'S 398 F.2d 637, 639 (5th Cir. 1968). 10a vu. Producers Rice Mill, Inc.‘ Smack argues first that the district court erroneously found no genuine issue of fact whether there are legally protectible marks at issue in this case. A. Protectible trademark and secondary meaning The Lanham Act provides that a trademark may be “any word, name, symbol, or device, or any combination thereof” that is used or intended to be used “to identify and distinguish” a person’s goods “from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.””’ A mark need not be registered in order to obtain protection because “{o]wnership of trademarks is established by use, not by registration.” Union Nat'l Bank of Tex., Laredo v. Union Nati Bank of Tex., Austin.”© The marks at issue in this case are unregistered, and, as noted by the district court, were described by the Universities as “color schemes in the context of merchandise that makes reference to the Plaintiff Universities or their accomplishments and is * 518 F.3d 321, 329 (5th Cir. 2008); see also Elvis Presley Enters. , 141 F.3d at 194 (noting “the threshold requirement that the plaintiff must possess a protectible mark, which must be satisfied before infringement can be actionable”). 15 U.S.C. § 1127. '6 909 F.2d 839, 842 (5th Cir. 1990). lla directed to their fans and other interested consumers.”!” The protectibility of unregistered marks is governed generally by the same principles that qualify a mark for registration under the Lanham Act. Two Pesos, Inc. v. Taco Cabana, Inc.® The key is whether the mark is “capable of distinguishing the applicant’s goods from those of others.”’? Marks are generally classified as (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.”® The parties here do not articulate a classification for the marks at issue, but the briefs show that they, and indeed the district court, have treated the marks as descriptive. This type of mark is not inherently distinctive because it does not inherently identify a particular source of the product; instead, it requires secondary meaning to be protected under the Lanham Act.” The parties correctly agree that a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional. Qualitex Co. v. Jacobson Prods. Co.”* Although the parties discuss color at length in their briefs, the Universities do not 7 See Bd. of Supervisors, 438 F. Supp. 2d at 657 (quotation marks and citation omitted). 8505 U.S. 763, 768, 112 S.Ct. 2753, 2757 (1992). © Id. © Td. "1 Id. at 769, 112 S. Ct. at 2757. 72514 U.S. 159, 163-64, 115 S. Ct. 1300, 1303-04 (1995). 12a claim that every instance in which their team colors appear violates their respective trademarks. Instead, the claimed trademark is in the colors on merchandise that combines other identifying indicia referring to the Universities. It is appropriate therefore to consider not only the color but also the entire context in which the color and other indicia are presented on the t-shirts at issue here. Smack contends that the claimed marks are too broad to encompass a trademark because the concept of color along with other identifying indicia is not distinctive. We disagree. As noted, the statute contemplates that a trademark may include any word, name, or symbol “or any combination thereof.”™ The Supreme Court has recognized that the Lanham Act describes the universe of permissible marks “in the broadest of terms.” Because the Court recognizes that trademarks may include color, we see no reason to exclude color plus other identifying indicia from the realm of protectible marks provided the remaining requirements for protection are met. Thus, the first step here is to ask whether the Universities’ claimed marks have acquired secondary meaning. Secondary meaning “occurs when, ‘in the minds of the public, the primary significance of a (mark] is to identify the source of the product rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Bros., *° 15 U.S.C. § 1127 (emphasis added). * Qualitex, 514 U.S. at 162, 115 S. Ct. at 1302. l3a Inc.” The inquiry is one of the public’s mental association between the mark and the alleged mark holder. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.”° A mark has acquired secondary meaning when it “has come through use to be uniquely associated with a specific source.” Pebble Beach Co. v. Tour 18 I Ltd.*' We have applied a multi-factor test for determining secondary meaning. The factors include: “(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant’s intent in copying the trade dress.” These factors in combination may show that consumers consider a mark to be an indicator of source even if each factor alone would not prove’ secondary meaning.” * 529 U.S. 205, 211, 120 S. Ct. 1339, 1343 (2000) (citation omitted). *° 791 F.2d 423, 427 (5th Cir. 1986) (“[T]he prime element of secondary meaning is ‘a mental association in buyers’ minds between the alleged mark and a single source of the product.” (citation omitted)). 27155 F.3d 526, 536 (5th Cir. 1998) (internal quotation marks omitted), abrogation on other grounds recognized by Eppendorf- Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 356 (5th Cir. 2002). *® Pebble Beach, 155 F.3d at 541. ” Id. 14a There is no dispute in this case that for a significant period of time the Universities have been using their color schemes along with other indicia to identify and distinguish themselves from others. Smack admits in its brief that the Universities’ colors are well known among fans “as a shorthand nonverbal visual means of identifying the universities.” But according to Smack, the longstanding use of the school colors to adorn licensed products is not the same as public recognition that the school colors identify the Universities as a unique source of goods. We think, however, that the factors for determining secondary meaning and an examination of the context in which the school colors are used and presented in this case support the conclusion that the secondary meaning of the marks is inescapable. The record shows 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. Significantly, each university features the color schemes on merchandise, especially apparel connected with school sports teams, and such prominent display supports a finding of secondary meaning.”’ The record also shows that sales of licensed products combining the color schemes with other references to the Universities annually exceed the tens of millions of %° OSU adopted its school colors in 1878, while LSUhas been using its colors since 1893, and OU and USC since 1895. *! See Pebble Beach, 155 F.3d at 541-52 (prominent display of golf hole’s trade dress in advertising supported finding of secondary meaning as a designator of source). l5a dollars.” As for advertising, the district court held that the Universities “advertise items with their school colors in almost every conceivable manner... .”** It is not clear from the summary judgment evidence where and how the Universities advertise their merchandise, but they certainly do use their color schemes and indicia in numerous promotional materials aimed at students, faculty, alumni, and the public in general, which strengthens the conclusion that the color schemes and indicia viewed in context of wearing apparel also serves as an indicator of the Universities as the source or sponsor of the apparel. Furthermore, the district court correctly observed that the school color schemes have been referenced multiple times in newspapers and magazines and that the schools also frequently refer to themselves using the colors.** The district court did not specifically refer to any consumer-survey evidence or direct consumer testimony, but it noted that Smack admitted it had incorporated the Universities’ color schemes into its shirts to refer to the Universities and call them to the mind of the consumer. Thus, Smack itself believed that the Universities’ color schemes had secondary meaning that could influence consumers, which further supports the conclusion that there is secondary * For example, LSU sells between $10 and $20 million worth of goods each year, while the annual sales volume for the other schools is approximately $13 million for USC, $20 million for OU, and $50 million for OSU. 33 Bd. of Supervisors, 438 F. Supp. 2d at 658. * For example, LSU and third parties have referred to that university as the “Purple and Gold.” 16a meaning here.* 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 cclors and other references, there is 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. We think this conclusion is consistent with the importance generally placed on sports team logos and colors by the public. We have previously noted, although not in the context of secondary meaning, that team emblems and symbols are sold because they serve to identify particular teams, organizations, or entities with which people wish to identify. See Boston Profl Hockey Ass’n v. Dallas Cap & Emblem Mfg., 35 See also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir. 1995). We also note that the record does contain survey evidence compiled by the Universities indicating that approximately thirty percent of consumers interviewed believed two of Smack’s t-shirts were produced or sponsored by the Universities. We have indicated that survey evidence often may be the most direct and persuasive evidence of secondary meaning. Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (Sth Cir. 1999). Nevertheless, Smack moved in limine to exclude the Universities’ survey evidence, and the district court found it unnecessary to rule on the motion because of the other evidence in the record. Because no party has raised the issue, we express no opinion on the correctness of the district court’s belief and merely note the presence of the survey evidence in the record. l7va Inc.© We think this desire by consumers to associate with a particular university supports the conclusion that team colors and logos are, in the minds of the fans and other consumers, source indicators of team-related apparel. By associating the color and other indicia with the university, the fans perceive the university as the source or sponsor of the goods because they want to associate with that source. Smack argues that because photographs of businesses near the campuses of the Universities show use of school colors by those businesses, consumers in college towns merely associate school colors with “support of the home team.” Smack cites no authority or supporting evidence for its contention, however. Moreover, the fact that other businesses in college towns may use the same colors as a local university does not create an issue of fact as to the secondary meaning of the colors used in merchandise that the Universities indisputably produce, especially given Smack’s admission of intentional use of the colors to influence consumers. Smack also argues that because the Universities grant licenses to many licensees, a consumer may not identify a university as the single source of the product. The fact that the Universities may grant licenses to many licensees to sell authorized products does not negate the fact that the schools are still the %° 510 F.2d 1004, 1011 (5th Cir. 1975). 18a sources of the marks.*’ We conclude that the record establishes secondary meaning in the marks here. B. Likelihood of confusion 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. Westchester Media v. PRL USA Holdings, Inc.® “Likelihood of confusion is synonymous with a probability of confusion, which is more than a mere possibility of confusion.”*? When assessing the likelihood of confusion, we consider a nonexhaustive list of so-called “digits of confusion,” including: “(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.”*° Courts also consider (8) the degree of care exercised by potential *’ Cf Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991)“An owner may license its trademark or trade dress and retain proprietary rights if the owner maintains adequate control over the quality of goods and services that the licensee sells with the mark or dress.”). % 914 F.3d 658, 663 (5th Cir. 2000) (citation omitted). %° Id. at 663-64. 9 Id. at 664. 19a purchasers.*’ No single factor is dispositive, and a finding of a likelihood of confusion need not be supported by a majority of the factors.“ Smack argues that there were genuine issues of material fact whether its t-shirt designs were likely to cause confusion among consumers. We disagree. The first digit, the type of mark, refers to the strength of the mark.*® Generally, the stronger the mark, the greater the likelihood that consumers will be confused by competing uses of the mark.** We agree with the district court that the plaintiffs’ marks, which have been used for over one hundred years, are strong.” As noted above, Smack concedes that the Universities’ color schemes are well-known and are used to identify the plaintiff Universities. It argues, however, that the district court disregarded evidence of third-party use of the Universities’ team colors in a non-trademark manner, and it cites Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan Association“ in support of its argument. In Sun Banks, we held that “extensive” third-party use can weaken a mark and negate a likelihood of *' Am. Rice, 518 F.3d at 329. ~ 8 Elvis Presley Enters., 141 F.3d at 201. - *° See Bd. of Supervisors, 438 F. Supp. 2d at 659. “651 F.2d 311 (5th Cir. 1981) 20a confusion.” In that case there were “over 4400 businesses” in Florida that were using the word “Sun” in their names, and we noted that “a significant number” fell within the same category of financial institutions as the plaintiff.” Smack presented photographs of three businesses in Louisiana, eight businesses in Ohio, and approximately 20 businesses in Oklahoma that incorporated in their signage color schemes similar to the school colors of LSU, OSU, and OU, respectively. The businesses included several restaurants and bars, a driving school, a pain management clinic, a theater, a furniture store, a dry cleaners, a motel, a donut shop, an apartment complex, and a car care company. All third-party use of a mark, not just use in the same industry as a plaintiff, may be relevant to whether a plaintiffs mark is strong or weak.*® But the key is whether the third-party use diminishes in the public’s mind the association of the mark with the plaintiff—surely lacking where colors are shown on a store wall. See Univ. of Ga. Athletic Ass’n v. Laite.*° Smack’s evidence falls far below that of extensive use, and the specific photographs of third-party use here 7 Sun Banks, 651 F.2d at 316. * Id. *? Union Nat'l Bank of Tex., 909 F.2d at 848 n.24; see also 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:88 (4th ed.) (“[E]vidence of extensive third party use on a wide range of goods and services does tend to weaken strength and narrow the scope of protection.”). © 756 F.2d 1535, 1545 n.27 (11th Cir. 1985). 2la fail to create an issue of fact concerning the public’s association between the plaintiffs and color schemes and other indicia that clearly reference the Universities. We conclude that the Universities possess strong marks in their use of color schemes and other identifying indicia on college sports-themed merchandise. The second digit is the similarity of the marks. This factor requires consideration of the marks’ appearance, sound, and meaning.” The district court held that the marks at issue are virtually identical.* Smack argues that there was no evidence that any of its shirts were identical to any shirts licensed by the Universities and that its t-shirt designs are not at all similiar to any of the Universities’ licensed products. Smack’s contention is belied by the record, and even a cursory comparison of Smack’s designs with the plaintiffs’ licensed products reveals striking similarity.” For example, one of Smack’s shirt designs in purple and gold is referred to as the “sundial” shirt and was targeted toward LSU fans. The front of the shirt proclaims “2003 National Champions,” and the back contains the scores from twelve games won by LSU. The scores are arranged in a circle with a short phrase poking fun at each opponent. The shirt also contains the final score of the 2004 Sugar Bowl, which LSU *! Elvis Presley Enters., 141 F.3d at 201. *” Bd. of Supervisors, 438 F. Supp. 2d at 659-60. °° See Beef/Eater Rests., 398 F.2d at 639 (“[T)he trial judge, by inspection of the trademarks, may himself determine, and must determine, the likclihood of confusion.”). 22a won, and the phrase “Sweet as Sugar!” Although the shirt does not use the initials “LSU” anywhere, its identification of LSU as the national champion is unmistakable from the colors and from the references to the games in which LSU played. This shirt is strikingly similar to LSU’s own merchandise that also uses the purple and gold colors and proclaims LSU as the national champion. Several of the official designs contain the scores of the games from LSU’s season and at least two designs present those scores in a circular arrangement. The official designs also contain the phrases “Ain’t It Sweet!” and “Pour It On!” Another Smack shirt directed at LSU fans is the “Beat Oklahoma” shirt. It states, “Bring it Back to the Bayou.” This is very similar to two official] designs that state in part “Bring It Home” and “We'll Have Big Fun on the Bayou.” The evidence of similarity is not limited to the shirts targeted toward LSU fans. For example, the “Bourbon Street or Bust!” shirt directed at OU fans highlights the letters “OU” in a different type face in the words “Bayou” and “your.” It also states “Sweet as Sugar,” references beads, and contains a picture of a mardi gras mask. OU presented evidence of official t- shirt designs that also highlight the letters “OU,” contain phrases such as “Ain’t Nothin’ Sweeter” and “100% Pure Sugar,” and contain depictions of mardi gras masks and beads. Another Smack OU design encourages, “Let’s Make it Eight,” while official designs proclaim “Sugar is Sweet But. . . 8 is Great!” In the district court, Smack presented the affidavit of its principal, Wayne Curtiss, who explained that Smack uses humor and creative language to 23a distinguish its t-shirt designs from those of the purportedly more conservative licensed or school- endorsed apparel. Curtiss asserted that the “got seven?” and “got eight?” shirts’ directed towardOSUandUSCfans, respectively, are parodies of the “got milk” campaign. He further averred that he has used a similar design on shirts for LSU and OU fans. It is clear from the record, however, that use of creative language is not unique to Smack and does not make Smack’s shirts dissimilar to the Universities’ own products. For example, LSU presented evidence of a school-endorsed design that included the phrase “got sugar?” We conclude that Smack’s shirts and the Universities’ products are similar in look, sound, and meaning, and contain very similar color schemes, words, and images. The similarities in design elements are overwhelming and weigh heavily in favor of a likelihood of confusion. The district court correctly held there is no genuine issue of material fact with respect to this digit of confusion.™ The third digit in the likelihood of confusion analysis is the similarity of the products or services. We disagree with Smack’s assertion that the district ** Because we conclude that there is no issue of fact as to the similarity of the use of the marks in the t-shirt designs, we need not consider Smack’s contention that the district court erroneously stated there had been instances where consumers actually believed Smack’s shirts were affiliated with or sponsored by the Universities. Smack points to a stipulation by the parties at the summary judgment stage that there was no evidence any consumer purchased a Smack shirt believing it to be licensed by one of the Universities. Actual confusion on the part of aconsumer is not required to find a likelihood of confusion, however. Elvis Presley Enters., 141 F.3d at 203. 24a court did not find a great deal of similarity between the plaintiffs’ products and the t-shirts at issue, as the district court specifically held that “{ilt is undisputed that both Smack and the universities market shirts bearing the same color schemes, logos, and designs.”” The district court went on to reject Smack’s argument that its t-shirts differed from the Universities’ products because of the use of irreverent phrases or slang language, reasoning that Smack’s use of such phrases and language was a misuse of the Universities’ good will in its marks. Smack denies that it appropriated the Universities’ good will, but it does not make an argument here that its shirts are distinguishable from those of the Universities because of particular language on its shirts. We therefore find this factor weighs in favor of a likelihood of confusion. Smack concedes that the fourth factor of the analysis—identity of retail outlets and purchasers—weighs in favor of a likelihood of confusion because the Universities’ licensed products are often sold wholesale to the same retailers who purchase Smack’s products. The fifth digit is the identity of advertising media. The district court found that Smack used the Universities’ color schemes, logos, and designs in advertising its shirts at the same or similar venues as those used by the Universities.” The court based its finding on Smack’s admission that it participated in the same trade shows as the Universities and that it » Bd. of Supervisors, 438 F. Supp. 2d at 660. 7" 2 25a displayed its shirts at the trade shows. The Universities do not point us to evidence that trade shows are a significant advertising channel for the kinds of products at issue in this case. Although the t- shirts are sold to the public at the same retail outlets as officially licensed merchandise, Curtiss testified that beside limited sales on Smack’s web site, Smack does not sell directly to the public and does not advertise. Curtiss testified that Smack sells mainly to wholesalers. Some of these wholesalers may include Smack’s shirts in advertisements that promote their own business, but Curtiss was unable to provide much information about these ads. We conclude that this digit, based on trade show advertising, is minimally probative. The sixth digit of confusion further supports a likelihood of confusion. Although not necessary to a finding of likelihood of confusion, a defendant’s intent to confuse may alone be sufficient to justify an inference that there is a likelihood of confusion.’ As noted by the district court, Smack admitted that it “used school colors and ‘other indicia’ with the intent of identifying the university plaintiffs as the subject of the message expressed in the shirt design.’”””* Curtiss testified that it was “no coincidence” that Smack’s shirts incorporated the color schemes of the plaintiff Universities and that he designed the shirts to make people think of the particular school that each shirt targeted. Smack asserts that its intent to copy is not the same as an intent to confuse. The circumstances of *” Elvis Presley Enters., 141 F.3d at 203. Bd. of Supervisors, 438 F. Supp. 2d at 661 (citation omitted). 26a this case show, however, that Smack intended to capitalize on the potential for confusion. Smack knew that its shirts were sold in the same venues as and sometimes alongside officially licensed merchandise, and it intentionally incorporated color marks to create the kind of association with the Universities that would influence purchasers. The Eleventh Circuit found a likelihood of confusion based on a similar intent by the defendant to capitalize on the popularity of a college sports team. Univ. of Ga. Athletic Ass’n v. Laite.*® In Laite, the defendant used school colers and a mark strikingly similar to the University of Georgia’s bulldog mascot on cans to sell “Battlin’ Bulldog Beer.” After concluding that the defendant’s bullauog mark was similar to the university’s mark, the court turned to the defendant’s intent, concluding “there can be no doubt that Laite hoped to sell ‘Battlin’ Bulldog Beer’ not because the beer tastes great, but because the cans would catch the attention of University of Georgia football fans.”*' Significantly, the court found “the defendant’s intent and the similarity of design between the two marks sufficient to support the district court’s finding of a ‘likelihood of confusion . .. .”°* The same is .true here. Smack did not hope to sell its t-shirts because of some competitive difference in quality or design compared with the Universities’ licensed °° 756 F.2d 1535 (11th Cir. 1985). © Id. at 1537. ©) Td. at 1545 (footnote omitted). °? Id. at 1545. 27a products, but rather it intended to take advantage of the popularity of the Universities’ football programs and the appearance of the school teams in the college bowl games. We have previously said that when a “mark was adopted with the intent of deriving benefit from the reputation of [the mark holder] that fact alone ‘may be sufficient to justify the inference that there is confusing similarity.” Amstar Corp. v. Domino’s Pizza, Inc.** We believe that Smack’s admitted intent and the similarity in appearance between Smack’s shirts and the Universities’ licensed products is strong evidence of a likelihood of confusion. Smack argues that an intent to confuse is negated by its use of its own logo and the words “Talkin’ the Talk,” which it maintains identifies it as the source of the shirt. We are not persuaded. Smack’s logo appears in a space that is only 2.5 inches wide. We cannot conclude, without more, that this small and inconspicuous placement of the logo would disabuse consumers of a mistaken belief that the Universities sponsored, endorsed or were otherwise affiliated with the t-shirts.°* Smack has not pointed to evidence that its own logo is recognizable by consumers or that it was acting to trade off its own reputation as a producer of specialty t-shirts.©’ Nor are we convinced * 615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF TORTS § 729, comment f (1938)). * See Pebble Beach, 155 F.3d at 552 (noting that “conspicuous disclaimers that disclaim affiliation may reduce or eliminate confusion”). °° See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1244-45, 1247-48 (D. Kan. Mar. 19, 2008) (finding a likelihood of confusion 28a that Smack’s logo on the shirts acts as a disclaimer. The Universities point out that they require all licensed products to contain the licensee’s name. Therefore, a consumer could believe that Smack’s logo merely indicated that it was a licensee. We conclude that the intent digit weighs in favor of a conclusion that there is a likelihood of confusion. The seventh digit is evidence of actual confusion. Evidence that consumers have been actually confused in identifying the defendant’s use of a mark as that of the plaintiff may be the best evidence of a likelihood of confusion.®’ It is well established, however, that evidence of actual confusion is not necessary for a finding of a likelihood of confusion.” The district court did not resolve whether there was sufficient evidence of actual confusion, and because such evidence is not with respect to defendant’s manufacture of t-shirts that were substantially similar to officially licensed goods, but not shirts that it found contained substantial differences, in part because “(t]he high degree of similarity weighs strongly in favor of a finding of intent; the use of almost identical marks supports a conclusion that defendants intended to derive a benefit from KU’s reputation, rather than rely upon their own”). ® See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir. 1972) (defendant’s placement of its own name on pen also bearing mark similar to plaintiffs mark “does not save the day; a purchaser could well think plaintiff had licensed defendant as a second user and the addition is thus ‘an aggravation, and not a justification” (citation omitted)). ®’ Elvis Presley Enters., 141 F.3d at 203. 68 id.- Pebble Beach, 155 F.3d at 545; Amstar, 615 F.2d at 263. 29a required we also find it unnecessary to pass on the question further.™ With respect to the eighth digit of confusion—the degree of care exercised by potential purchasers—the district court held that the t-shirts at issue are relatively inexpensive impulse items that are not purchased with a high degree of care.’ Where items are relatively inexpensive, a buyer may take less care in selecting the item, thereby increasing the risk of confusion.’' Smack contends there was insufficient evidence for the district court’s conclusion. In response, the Universities note Curtiss’ testimony that he hoped customers’ decisions to purchase Smack’s shirts would be “quick,” and they point out that the shirts sell for less than $18. Smack cites no evidence to demonstrate an issue of fact on this point, and we agree with the district court that this digit weighs in favor of a likelihood of confusion. After reviewing the record, we conclude that there is no genuine issue of fact that Smack’s use of the Universities’ color schemes and other identifying in“icia creates a likelihood of confusion as to the *° The Universities contend that there was evidence of actual confusion consisting of consumer surveys concerning two of the six t-shirt designs and testimony from Curtiss that “I have had people come up and go—at the booth and go, ‘Are these licensed?” The evidence is arguably minimal, see Amstar, 615 F.2d at 263, but as discussed we need not resolve the matter. Bd. of Supervisors, 438 F. Supp. 2d at 661. " Sun-Fun-Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 191 (5th Cir. 1981) 30a source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion—particularly the overwhelming similarity of the marks and _ the defendant’s intent to profit from the Universities’ reputation—compel this conclusion. 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.” 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.” Smack contends that there is no evidence that consumers care one way or the other whether t-shirts purchased for wear at a football game are officially licensed and that, absent evidence that consumers prefer licensed merchandise, it was error for the district court to conclude there was a likelihood of confusion. Smack relies in part on our decision in Supreme Assembly, Order of Rainbow for Girls v. J. H. Ray Jewelry Company.” The context of that case is different from the instant case. 2 See Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989) (“Defendants’ shirts are clearly designed to take advantage of the Boston Marathon and to benefit from the good will associated with its promotion by plaintiffs. Defendants thus obtain a ‘free ride’ at plaintiffs’ expense.”). 'S Id. at 35. ™” 676 F.2d 1079 (5th Cir. 1982) 3la In Rainbow for Girls, a fraternal organization and its official jeweler sued a retailer for trademark infringement based on the retailer’s sale of jewelry bearing the organization’s registered mark. Purchasers in the fraternal-organization jewelry market bought jewelry to show membership and status in the organization.” We upheld the district court’s finding of no likelihood of confusion, concluding that “[(t)he fact that purchasers purchased Rainbow jewelry as a direct result of the presence of the Rainbow emblem does not compel the conclusion that they did so believing that the jewelry was in any way endorsed, sponsored, approved or otherwise associated with Rainbow, given the court’s findings.””* The district court had held that there was no historic custom or practice specific to Rainbow jewelry or to the fraternal jewelry industry that Rainbow jewelry could be manufactured only with Rainbow’s sponsorship or approval.’’ Instead, the court noted that fraternal organizations exercised little control over the manufacture of jewelry bearing their emblems.’”® Furthermore, the court had held that because Rainbow’s “official jeweler” was itself well advertised and used its own distinctive mark on the jewelry, any jewelry without that distinctive mark could not cause confusion.” We noted that the district court’s findings distinguished the case from our ” Id. at 1084. © Id. (emphasis added). ” Id. at 1083. "i. oat” 4 32a decision in Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing.” In Boston Hockey, we held that the defendant infringed the plaintiffs trademark rights by selling embroidered patches containing the emblems of professional hockey teams.” There, the emblems were sold for use by the public to show “allegiance to or identification with the teams.” We held that the likelihood of confusion requirement was met because the defendant duplicated and sold the emblems “knowing that the public would identify them as being the teams’ trademarks” and because the public’s “certain knowledge . . . that the source and origin of the trademark symbols were in plaintiffs satisfies the requirements of the act.” Subsequently, in Kentucky Fried Chicken Corporation vu. Diversified Packaging Corporation, we recognized that Boston Hockey might be read to dispose of the confusion issue when _ buyers undoubtedly know that the plaintiff is the source and origin of a mark.™ We reiterated that a showing of likelihood of confusion was still required.” But we * id. *' 510 F.2d 1004 (5th Cir. 1975). Td. at 1011. Td. at 1012. 4 549 F.2d 368, 389 (5th Cir. 1977) © Td. 33a noted that the circumstances in Boston Hockey supported the likelihood of confusion there insofar as the sale of products “universally associated” with the hockey team “supported the inescapable inference that many would believe that the product itself originated with or was somehow endorsed by Boston Hockey.” In Rainbow for Girls, the district court opinion, which we upheld, also recognized in reference to Boston Hockey that “(ijt is not unreasonable to conclude, given the degree to which sports emblems are used to advertise teams and endorse products, that a consumer sceing the emblem or name of a team on or associated with a good or service would assume some sort of sponsorship or association between the product’s seller and the team.””®’ We agree with this reasoning as applied to this case, which is more like Boston Hockey than Rainbow for Girls. We hold that given the record in this case and the digits of confusion analysis discussed above—including the overwhelming similarity between the defendant’s t-shirts and the Universities’ licensed products, and the defendant’s admitted intent to create an association with the plaintiffs and to influence consumers in calling the plaintiffs to mind—that the inescapable conclusion is that many consumers would likely be confused and believe that Smack’s t-shirts were sponsored or endorsed by the Universities. The Universities exercise stringent control over the use of their marks on apparel through their licensing program. It is also undisputed that the Universities © Id *” Rainbow for Girls, 676 F.2d at 1085. 34a annually sell millions of dollars worth of licensed apparel. We further recognize the public’s indisputable desire to associate with college sports teams by wearing team-related apparel. We are not persuaded that simply because some consumers might not care whether Smack’s shirts are officially licensed the likelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a different question from whether that consumer would likely believe the product is officially sponsored. For the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the Universities’ marks and the Universities’ themselves was demonstrated in this case. C. Functionality A product feature that is functional does not qualify for protection under the Lanham Act.™ The party seeking protection under the Lanham Act has the burden of establishing nonfunctionality. TrafFix Devices, Inc. v. Marketing Displays, Inc.® The Supreme Court has recognized two tests for determining functionality. “[T)he primary test for determining whether a product feature is functional is whether the feature is essential to the use or purpose of the product or whether it affects the cost or quality 8 Qualitex, 514 U.S. at 164-65, 115S. Ct. at 1304; Eppendorf, 289 F.3d at 355. 532 U.S. 23, 32, 121 S. Ct. 1255, 1261 (2001). 35a of the product.”” This is the “traditional” test.*' “Under this traditional definition, if a product feature is ‘the reason the device works,’ then the feature is functional.” Under a secondary test for functionality “a functional feature is one the exclusive use of which would put competitors at a significant non-reputation- related disadvantage.” This is the “competitive necessity” test.” : In Boston Hockey, we held that emblems of 2 hockey team sold on embroidered patches had no demonstrated value other than their significance as the trademarks of the team.” Relying on our decision in Boston Hockey, the district court here similarly held that the Universities’ color schemes, logos, and designs also had no significance other than to identify with the Universities and were therefore nonfunctional.” We agree. Fans and other members of the public purchase Smack’s shirts only because the shirts contain the plaintiffs’ colors and indicia identifying the Universities’ football teams, just as people purchased the defendant's emblems in Boston Hockey only * Eppendorf, 289 F.3d at 356 (citing TrafFix, 532 U.S. at 32-33, 121 S. Ct. at 1261-62). ”! Id. at 355. ™ is. 8 Id. at 356 (internal quotation and citation omitted). i. * Boston Profl Hockey, 510 F.2d at 1013. * Bd. of Supervisors, 438 F. Supp. 2d at 661-62. 36a because they contained the hockey team’s trademarks.”’ In other words, the presence of the plaintiffs’ marks serve no function unrelated to trademark. Smack argues that the Universities’ colors do perform functions unrelated to trademark because the Universities use the colors in activities and programs in connection with student life, buildings, and other programs and events and that the colors are not used solely to identify the Universities as a source of goods. However, the claimed trademarks are in the color schemes and other indicia of the Universities when combined on merchandise that refer to the Universities. It is proper, therefore, to examine that context when determining the functionality of the claimed marks.” As explained above, the Universities’ colors and indicia when used on merchandise creates secondary meaning tending to identify the Universities in the minds of consumers as the producers, sponsors, or endorsers of the product. The school colors and other indicia used here do not make the t-shirts “work.” The t-shirts would function just as well as articles of clothing without the colors and designs. Smack’s t-shirts are sold not because of any functionality in the marks Smack placed on them but rather because they bear the identifiable marks of *” See Boston Prof Hockey, 510 F.2d at 1013. % Cf. Elvis Presley Enters., 141 F.3d at 197 (“Courts consider marks in the context that a customer perceives them in the marketplace... .”). 37a the plaintiff Universities.” The marks fail under the traditional test for functionality and are protectible. Smack urges, however, that the Universities’ colors on the t-shirts serve several functional purposes. It contends that the shirts allow groups of people to bond and show support for a philosophy or goal; facilitate the ex [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_0333%3A1. Public record. Not legal advice.