Fifth Circuit Schools Plaintiff on Likelihood of Confusion
Addressing whether the name of a public school district’s summer reading program infringed upon an education services company’s trademarks related to a literacy incentive program, the US Court of Appeals for the Fifth Circuit affirmed—on the alternative grounds of no likelihood of confusion—a summary judgment for the defendant. Springboards to Education, Inc. v. Houston Independent School District, Case No. 18-20119 (5th Cir. Jan. 29, 2019) (King, J).
In 2005, Springboards to Education launched a literacy incentive program 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 these trademarks and service marks.
In 2008, Houston Independent School District (HISD) launched a reading program called Houston ISD Millionaire Club to encourage students to read during the summer. Like Springboards’ program, participating students received rewards such as t-shirts, backpacks and fake money. HISD officials testified that they did not know about Springboards’ program when they came up with the name for their summer reading program.
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 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’ program.
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 inferior, customers might be less likely to purchase Springboards’ services because of a mistaken association with HISD.
Having placed its analysis in context, 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 its marks were widely recognizable (particularly in light of the many third-party reading programs using the word “millionaire”).
- Similarity of the Marks: The Court found that this factor favored 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 favor of a likelihood of confusion, because both parties offered incentive-based reading programs.
- Identity of Retail Outlets/Purchasers: The Court found that this factor modestly weighed in favor of a likelihood of confusion. HISD is a school district, and Springboards sells its reading program to school districts. Thus, someone could see HISD’s program and believe that HISD had purchased it from Springboards.
- Identity of Advertising Media: The Court found that this factor weighed not particularly relevant to the analysis as HISD did not market the Houston ISD Millionaire Clib. Noting the “awkward fit” of this factor with the circumstances of the case, the Court concluded that a third-party educator who might have seen HISD using its own reading program would not have “erroneously believed” that HISD was marketing to outside school districts, especially as Springboards’ explicitly targets school districtds 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 program without knowledge of Springboards’ marks.
- Actual Confusion: The Court found that this factor weighed minimally in favor of a likelihood of confusion in light of a declaration submitted by an educator stating that he thought the Houston ISD Millionaire Club was affiliated with Springboards.
- Degree of Care Exercised by Purchasers: The Court found that this weighed against a finding of a likelihood of confusion because public school districts, not individual consumers, are the purchasers of Springboards products and thus would exercise greater care in their purchasing decisions.
Finding that because the “great weight” of the factors indicated there was no likelihood of confusion, the Fifth Circuit affirmed summary judgment for HISD on Springboards’ claims for trademark infringement, trademark counterfeiting and false designation of origin. The Court also affirmed summary judgment for HISD on Springboards’ trademark dilution claim because there was no evidence that Springboards’ marks were widely recognized by the general consuming public.