1 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSThere are number of interesting issues currently being litigated in school trademark cases

2 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSThere are number of interesting issues currently being litigated in school trademark cases These raise concerns for those who represent clients involved in academic trademarks

3 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSThere are number of interesting issues currently being litigated in school trademark cases These raise concerns for those who represent clients involved in academic trademarks The issues being raised here have broader implications for trademark litigation generally

4 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSBut before we get to that, how about some Lil Wayne?

5 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSThe Bands A Make Her Dance Video Today

6 The Bands A Make Her Dance Pre-Blurring VersionA FAILING GRADE SCHOOLS AND APPAREL TRADEMARKS The Bands A Make Her Dance Pre-Blurring Version

7 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSWho is Prep Sportswear? Apparel stores for many thousands of academic institutions across the nation Hard line position on licensing, i.e., they don’t take licenses

8 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSTwo Pronged attack: Separating trademark rights in educational services from rights in apparel and other goods Attacking the apparel/goods rights for lack of evidence of trademark rights or failure to enforce rights

9 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSFirst Prong: Separating trademark rights in educational services from rights in apparel and other goods The Plaintiff admits that it does not have registrations for the marks related to apparel. Instead, the Plaintiff argues that it needs no such registrations. That is not the case. Because the Plaintiff does not have registered marks for apparel, it must show that it used the marks in commerce prior to the Defendant's use. Savannah College of Art and Design, v. Sportswear, Inc U.S. Dist. LEXIS *5

10 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSFirst Prong: Separating trademark rights in educational services from rights in apparel and other goods The Court agrees with Defendant that notwithstanding Plaintiff’s registration of the BELEN JESUIT Text Mark with the Principal Registry, it is undisputed that this Mark was registered solely for the purpose of providing educational services, and this protection does not extend to other goods and services, specifically the sale of clothing and apparel. Belen Jesuit Preparatory Academy v. Sportswear, Inc. (Case 1:15-cv UU) (Summary Judgment Order of , p. 11).

11 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSSecond Prong: Attacking the apparel/goods rights for lack of evidence of trademark rights or failure to enforce rights 13. At trial, Plaintiff failed to show it used any of the Alleged Text Marks in commerce in connection with the sale of clothing before 2008, the date when Defendant first sold goods printed with the terms. Transcript 1 at 112:1-24; Plaintiff's Exhibit No. 21; D.E ¶ 19. …. 20. Based on the totality of the circumstances, Plaintiff failed to carry its burden of proving its Alleged Text Marks are valid and entitled to protection as a matter of law. Belen Jesuit Preparatory Sch., Inc. v. Sportswear, Inc., 2016 U.S. Dist. LEXIS , (S.D. Fla. 2016)

12 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSBelen loses its registered mark claim and goes to trial on common law rights. Belen loses after a bench trial and chooses not to appeal. SCAD’s entire case is disposed of on summary judgment. SCAD’s appeal is currently pending before the 11th Circuit. (Case No ).

13 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSWhat’s wrong with these decisions dismissing counts for registered mark infringement?

14 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSIt sets a dangerous precedent by reducing the entire likelihood of confusion analysis to a single factor and making that factor dispositive

15 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSTHE LOC FACTORS: the strength or distinctiveness of the mark; the similarity of the two marks; the similarity of the goods and services that the marks identify; the similarity of the facilities that the two parties use in their businesses; the similarity of the advertising the two parties use; the defendant's intent; and actual confusion. Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 933 (4th Cir. Va. 1995)

16 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSRelatedness of the goods/services isn’t even one of the two most important factors; see e.g. Lone Star, 122 F.3d at 1382 (11th Cir. Ga. 1997) (“Of these seven factors, we consider the type of mark and the evidence of actual confusion to be the two most important factors.”)

17 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSIt sets a dangerous precedent by invading the province of the jury SPECTRUM: Plaintiff SJ Jury Question Defendant SJ Some Connection? Goods/Services Completely Unrelated Goods/Services Same Goods/Services

18 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSShould this be a jury question? “falsely suggesting affiliation with the trademark owner in a manner likely to cause confusion as to source or sponsorship constitutes infringement.” Prof'l Golfers Ass'n of Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 670 (5th Cir. 1975) In granting summary judgment on the educational services claim, isn’t the court necessarily concluding that no one would be likely to conclude that a school sponsors or licenses apparel?

19 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSThese decisions are also difficult, if not impossible, to reconcile with 11th Circuit precedent The UGA v. Laite decision is on point. Univ. of Ga. Ath. Ass'n v. Laite, 756 F.2d 1535, 1547 (11th Cir. 1985)

20 A FAILING GRADE SCHOOLS AND APPAREL TRADEMARKSAny questions? Stephen Luther Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A. 255 South Orange Avenue, Suite 1401 Orlando, FL 32801