Fifth Circuit schools plaintiff on likelihood of confusion

United States of America
  • Springboards to Education and Houston Independent School District both launched literacy incentive programmes that rewarded students with t-shirts, backpacks and fake money
  • Springboards raised claims against the HOUSTON ISD MILLIONAIRE CLUB marks on the grounds of infringement, counterfeiting, false designation of origin and dilution
  • The Fifth Circuit found that a “great weight” of factors indicated that there was no likelihood of confusion and affirmed summary judgment for HISD on all claims

 

In Springboards to Education, Inc v Houston Independent School District (Case 18-20119 (5th Cir 29 January 2019) (King, J)), the US Court of Appeals for the Fifth Circuit addressed whether the name of a public school district’s summer reading programme infringed on an education services company’s trademarks related to a literacy incentive programme and affirmed – on the alternative grounds of no likelihood of confusion – a summary judgment for the defendant.

Facts

In 2005 Springboards to Education launched a literacy incentive programme for students called the “Read a Million Words” campaign. Students who reached their reading goals could:

  • receive the Millionaire Reader award;
  • earn membership in the Millionaire’s Reading Club; and
  • receive rewards such as t-shirts, backpacks and fake money.

Springboards later secured federal registration for related trademarks and service marks.

In 2008 Houston Independent School District (HISD) launched a reading programme called “Houston ISD Millionaire Club” to encourage students to read during the summer. Similar to Springboards’ programme, participating students received rewards such as t-shirts, backpacks and fake money. HISD officials testified that they did not know about Springboards’ programme when they coined the name for their summer reading programme.

Springboards sued HISD for:

  • trademark infringement;
  • counterfeiting;
  • false designation of origin; and
  • dilution.

After HISD and Springboards filed cross-motions for summary judgment, the district court granted HISD’s motion on the ground that Springboards could not show that HISD had used the mark in commerce. Springboards appealed the decision.

Decision

The Fifth Circuit expressed no opinion about the district court’s ruling and instead affirmed the decision on the alternative ground that no reasonable juror could find that HISD’s use of HOUSTON ISD MILLIONAIRE CLUB caused a likelihood of confusion with Springboards’ programme.

In reaching its decision, the Fifth Circuit first identified who was likely to be confused and when that likelihood of confusion would arise. Given the circumstances of how the parties offered their services, the court reasoned that the only potential actionable likelihood of confusion would be post-sale confusion among third-party educators. Specifically, if third-party educators used HISD’s services and found them to be inferior, customers may be less likely to purchase Springboards’ services because of a mistaken association with HISD.

Having contextualised its analysis, the Fifth Circuit assessed the likelihood of confusion factors as follows:

  • Strength of Springboards’ marks – the court found that this factor weighed against a likelihood of confusion. Springboards’ marks were at best suggestive and there was no evidence that they were widely recognisable (particularly in light of the various third-party reading programmes using the word “millionaire”).
  • Similarity of the marks – the court found that this factor favoured neither party. While the parties’ marks had commonalities, the court noted that the addition of “Houston ISD” to HISD’s mark mitigated any likelihood of confusion.
  • Similarity of the services – the court found that this factor weighed in favour of a likelihood of confusion because both parties offered incentive-based reading programmes.
  • Identity of retail outlets and consumers – the court found that this factor modestly weighed in favour of a likelihood of confusion. HISD is a school district and Springboards sells its reading programme to school districts. Thus, a consumer could see HISD’s programme and believe that HISD had purchased it from Springboards.
  • Identity of advertising media – the court found that this factor was not particularly relevant to the analysis as HISD did not market the Houston ISD Millionaire Club. Noting the “awkward fit” of this factor with the circumstances of the case, the court concluded that a third-party educator who may have seen HISD using its own reading programme would not have “erroneously believed” that HISD was marketing to outside school districts, especially as Springboards explicitly targets school districts in its marketing.
  • Intent to confuse – the court found that this factor weighed against a likelihood of confusion. There was no direct evidence of intent to confuse and undisputed evidence showed that HISD had chosen the name of its programme without knowledge of Springboards’ marks.
  • Actual confusion – the court found that this factor weighed minimally in favour of a likelihood of confusion following a declaration submitted by an educator stating that he thought that the Houston ISD Millionaire Club was affiliated with Springboards.
  • Degree of care exercised by consumers the court found that this weighed against a finding of a likelihood of confusion because public school districts, rather than individual consumers, purchase Springboards products and thus would exercise greater care in their purchasing decisions.

Finding that the “great weight” of the factors indicated that there was no likelihood of confusion, the Fifth Circuit affirmed summary judgment for HISD on Springboards’ claims of trademark infringement, counterfeiting and false designation of origin. The court also affirmed summary judgment for HISD on Springboards’ dilution claim because there was no evidence that Springboards’ marks were widely recognised by the general public.

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