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Board of Supervisors for Lousiana State University v Smack Apparel

Name:Board of Supervisors for LA State v. Smack Apparel

Cite:550 F.3d 465


  • Court:United State Court of Appeals Fifth Circuit


  • Background and Description:Plaintiffs included four major college universities (LSU, Oklahoma, Ohio State and USC) as well Collegiate Licensing Company. They brought suit against Smack Apparel Company, who manufactured T-Shirts? for fans of college sports teams containing school colors and printed messages associated with the Universities. For example, one of the shirts in question, had the saying "Got eight?" on the front and "Home of the 8 Time National Champions" on the back with a deptiction of the state of California marked "SoCal", in the team colors of USC, who has 8 championships and plays in Southern California.

  • Holding:(i) universities' color schemes combined with other identifying indicia had acquired secondary meaning (ii) manufacturer's use of universities' color schemes and other identifying indicia created a likelihood of confusion (iii) they were nonfunctional and (iv) it was not considered nominative use.

  • Analysis:In order to state a valid claim, the universitis had to show both ownership in a legally protectible mark as well as likelihood of confusion. Under Qualitex, both parties agreed that a color scheme can be protected as a trademark if it has acquired secondary meaning. The universities had each been using the color schemes for over 100 years. The court looked at factors including sales and advertising to reach the conclusion that the colors had obtained a secondary meaning.

The court then took into consideration eight factors in determining whether there was a likelihood of confusion.
1) the type of mark allegedly infringed
2) the similarity between the 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
7) any evidence of actual confusion
8) the degree of care exercised by potential purchasers

The court concluded on factor 1 that the universities possessed strong marks. On factor 2 they concluded that the shirts are similar in like sound and menaing and contain similar color schemes words and images. Based on factor 3, the court conluded that Smack's unique language did not make them distinguishable. Smack conceded that factor 4 weighed heavily toward likelihood of confusion because the products were sold to the same retailers. Similarly for factor 5, the court concluded they both use similar avenues to market products. Smack also admitted that they had an intent to identify with the university plaintiffs based upon the colors and messaging, weighing factor 6 heavily against them. Based on the district court's findings, there was not enough evidence to determine whether there had been any actual confusion (factor 7). Finally, because t-shirt purchases are usually inexpensive impulse items, customers are not likely to purchase with a high degree of care, meaning factor 8 also weighed toward finding a likelihood of confusion.

With almost all the factors weighing toward finding a likelihood of confusion, the Fifth Circuit had no problems upholding the finidng of infringement. The court also offered policy rationales such as eliminating a free rider problem.

Smack tried to argue under TrafFix?, that the product feature was functional and thus shouldn't get protection. Relying on Boston Hockey, the court concluded that the logos and color schemes had no significance other than to identify the Universities and therefore non-functional.

Finally, the court also found against Smack that their use had constituted nominative fair use. In order to prove nominative fair use, the defendant (i) may only use so much of the mark as necessary to identifythe product or service, and (2) may not do anything that suggests affiliation, sponsorship, or endorsement by the markholder. The Fifth Circuit agreed with the district court that Smack had copid the mark with an intent to rely upon the drawing power in enticing fans of the particular universities to purchase their shirts and did so in a way that improperly suggested affiliation, sponsorship or endorsement.

  • Discussion:This case has a few interesting aspects. First, by claiming the mark related to the color scheme, the universities avoid the more difficult hurdle of whether they could have protection in their school names, which are geographic in nature. If Smack had simply made shirts that simply said Oklahoma and were Maroon (the teams color), the case might have been a lot closer. The use of a sayings directly relating to the schools football programs made the likelihood of confusion an easier case. Secondly, the active policing of these types of uses shows the ever growing commercial power that universities have based upon their sports programs. It will be interesting to see if this enormous market power soon comes back to hurt college sports teams, especally if the government decides to bring antitrust suits against certain actions by the NCAA, specifically the BCS.


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