Is Apparel in Trademark Law Always Decorative?

by Neil Juneja and Nicole Rash

April 11, 2022 — Apparel Trademarks (International Class 25) are common methods of registration for difficult brand protection, such as in the use of cannabis. However, a trademark must function as a source-identifier, therefore decorative or ornamental uses, such as printing a logo on the front of a shirt does not necessarily function as a trademark. What about the converse – would ornamental use infringe a trademark for other types of goods and services? It appears that it certainly can.

Consider Savannah College of Art and Design, Inc. v. Sportswear, Inc, (2017), in which the court examined and clarified the protection of federal trademarks. In this case, Savannah College of Art and Design (SCAD) disputed the online retailer Sportswear’s use of the college’s word marks “SCAD” and “Savannah College of Art and Design” and their design mark that includes its mascot, Art the Bee. Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 872 F.3d 1256, 1258 (11th Cir. 2017). While it did not use the Bee Design Mark in its full description, Sportswear’s online store did offer apparel imprinted with SCAD’s “Art the Bee” mascot, a prominent feature in the Bee Design Mark. Id. at 1260. Sportswear’s website contained several disclaimers that the clothing was not sponsored, endorsed by, or affiliated with SCAD and that all products were exclusively produced and fulfilled by Sportswear. Id. Because SCAD did not authorize Sportswear to use its mark to sell products with SCAD’s name and mascot, SCAD sued Sportswear for trademark infringement, unfair competition, false designation of origin, and counterfeiting under the Lanham Act, and for unfair competition and trademark infringement under Georgia common law. Id. at 1259.

The Lanham Act prohibits the infringement of trademarks that are used to identify a “good” (the source and quality of a tangible product), and of service marks that are used to identity “services” (the source and quality of an intangible service). Id. at 1260. For both trademarks and service marks, the “touchstone of liability” is whether the unauthorized use of a protected mark would likely cause consumer confusion. Id. at 1261.

Sportwear moved to summary judgment and the district court granted its motion. SCAD appealed. Id. at 1258. The district court erred as they relied on Jurado for its rationale; however, this is incorrect because SCAD’s claims revolve around federally registered marks, and in Jurado neither party had a federally registered trademark. Id. at 1262.

Instead, the appellate court looked to the 1975 Boston Hockey case to provide answers on whether SCAD has enforceable service mark rights that extend beyond the services listed in its federal registrations to goods to satisfy the first requirement of an infringement analysis: the validity and scope of a contested mark. Id. at 1263. A plaintiff must show that a mark is valid before a likelihood of confusion analysis becomes necessary. See, Dierter v. B & H Indus. of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir. 1989).

In Boston Hockey, the National Hockey League and twelve of its member teams sued to prevent a manufacturer from selling embroidered sew-on patches featuring the teams’ federally registered service marks.  Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 872 F.3d 1256, 1263 (11th Cir. 2017), Like SCAD, most of the hockey teams had registered marks only in connection with the provision of services, and held no registrations for goods, apparel, or promotional merchandise. Id.

The material facts here are very similar to those in Boston Hockey, with one main exception: The manufacturer in Boston Hockey sold only mark-replica patches and did not attach the teams’ marks to other goods such as t-shirts or jackets. Id. Despite the differences, the courts are bound to the Supreme Court’s ruling in Boston Hockey, which extends protection for federally registered service marks to goods, and therefore beyond the area of registration listed in the certificate. Id. at 1264. The appellate court remanded the SCAD case for the district court to review its claims considering Boston Hockey. Id.

So, what’s the takeaway?

First, the court takes steps in outlining how to analyze infringement under the Lanham Act. There are two conditions a plaintiff must satisfy: 1) show enforceable trademark rights in a mark or name, and 2) prove that the defendant made unauthored use of its marks such that consumers were likely to confuse the two. Id. at 1261. For the first requirement, the court would look to Boston Hockey’s precedent. Id. at 1262. For the second, a court usually considers several factors in assessing whether an infringement is likely to cause confusion. Id. at 1264. Generally, the type of mark and evidence of actual confusion are the most important factors. Id.

Second, the court highlights how to read Boston Hockey. Boston Hockey came under criticism because it did not require proof of likelihood that customers would be confused as to the source or affiliation or sponsorship of the defendant’s product but rather only asked whether customers recognized the products as bearing a mark of the plaintiffs. Id. The court in this case clarifies it did not do away with the traditional confusion analysis. Id.

Third, the court is not a fan of Boston Hockey and made some clarifying rules on trademarks in general. Boston Hockey does not provide any basis for extending service mark rights to goods. Id. at 1265. The court points out three reasons why this could be problematic. First, other circuits have said that service marks do not by their nature extend to goods or products. Id. If these circuits are wrong, the Supreme Court should explain why.  Second, a right in a mark is not a “right in gross”, meaning the owner of a trademark cannot have right to exclude. Id. Finally, the court has not analyzed the advantages if a mark’s registration can be the legal reasoning for expanding the scope of the trademarks. Id. Because of these potential problems it will be likely that the court in the future will clarify the Boston Hockey’s silence.

In the meantime, given these unanswered questions, you should view trademark protection extends for federally registered service marks to goods, and therefore beyond the area of registration listed in the certificate. Because of this broad view of trademark protection, it is important to get your trademarks federally registered to protect your product. For something as important to your business as your trademarks, contact us at Gleam Law to help your federally register your trademarks and ensure they are properly protected