LSU v. Smack Apparel: Trademark protection for color schemes

Background

Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California, and the schools’ licensing agent brought this trademark infringement action against Smack Apparel Company, alleging that Smack’s t-shirts create a likelihood of confusion among consumers. Smack produces t-shirts bearing the distinctive color schemes of various universities and professional sports teams, along with sarcasm or puns relating to some fact or indicia about the school or team such as events. The university-based items tend to relate to the school’s sports teams.

Smack’s products are unlicensed. In news interviews, the company claims to be “licensed only by the First Amendment.” Smack also paid no royalties to the schools.

The plaintiff Universities alleged that Smack’s products were identical to and competed directly with the Universities’ own officially licensed products. The Eastern District of Louisiana agreed with the Universities, finding that Smack’s use of the color schemes and other indicia constituted trademark infringement, granting summary judgment to plaintiffs and holding a jury trial as to damages. Smack appealed.

Color schemes can attain a secondary meaning

The Court noted that in order for an unregistered mark to obtain protectibility, “[t]he key is whether the mark is ‘capable of distinguishing the applicant’s goods from those of others.’” Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465, 475 (5th Cir. 2008) (citing Two Pesos Inc. v. Taco Cabana Inc., 5050 U.S. 763, 768 (1992). The Fifth Circuit agreed with the parties that a color scheme can be protected as an unregistered trademark when, as here, it has acquired secondary meaning and is non-functional. Id. at 475-476.Notably, the schools claimed a mark not in the color scheme alone, but in the combination of color scheme and school indicia on Smack’s products.

The court applied the multi-factor test for determining secondary meaning set forth in Pebble Beach Co. v. Tour 18 I Ltd., 115 F.3d 525, 541 (5th Cir. 1998): 1) length and manner of use of the mark or trade dress, 2) volume of sales, 3) amount and manner of advertising, 4) nature of use of the mark or trade dress in newspapers and magazines, 5) consumer-survey evidence, 6) direct consumer testimony, and 7) the defendant’s intent in copying the trade dress. Board of Supervisors for La. State Univ., at 476.

The plaintiff schools had been using their respective color schemes for more than 100 years; the colors were immediately identifiable with the school by those familiar with the school. The schools sell over $10 million in color scheme-marked merchandise every year, and the color schemes are included in all promotional material. The color schemes had been referenced multiple times in the media, and the schools often refer to themselves using their colors. Indeed, Smack intentionally incorporated the colors in their products in the belief that the colors had developed a secondary meaning. Because so many of the factors were met in this case, the court determined that the color schemes had developed a secondary meaning. Id. at 476- 477.

Smack’s products caused a likelihood of confusion

Once a plaintiff shows ownership in a protectable mark, he must show that defendant’s use of the mark “creates a likelihood of confusion in the minds of potential customers as to the ‘source, affiliation, or sponsorship” of the product at issue.” Id. at 478. In order the determine likelihood of confusion, the court assesses eight factors:1) the type of mark allegedly infringed, 2) the similarity between the two 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, and 8) the degree of care exercised by potential purchasers.  Id.

Analyzing the facts under these factors, the court found that plaintiffs adequately demonstrated a likelihood of confusion. The court found that the marks were strong despite some evidence of third party use of the colors. Id. at 479. Even though Smack asserted that its designs were not identical to any University-licensed shirts, the court found, after comparing the shirts, a “striking similarity.” Id. Both parties used similar media, advertising and retail outlets to sell products. Id. at 481. As to intent, Smack’s owner testified that it was “no coincidence” that his shirts incorporate the University color schemes and then he designed the shirts to make people think of the particular targeted school. Id. at 481-482.

In all, the court found a likelihood of confusion, stating: “Smack’s use of the Universities’ colors and indicia is designed to create the illusion of affiliation with the Universities and essentially obtain a “free ride” by profiting from confusion among the fans of the Universities’ football teams who desire to show support for and affiliation with those teams. Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989).  This creation of a link in the consumer’s mind between the t-shirts and the Universities and the intent to directly profit therefrom results in “an unmistakable aura of deception” and likelihood of confusion. Id. at 35.” Board of Supervisors for La. State Univ., at 483-484.

Conclusion

The Fifth Circuit’s decision serves as a partial guide for companies seeking to use unregistered color schemes in connection with unlicensed products or services. Clearly, the use of those color schemes in combination with indicia of the trademark owner’s entity constitutes infringement. However, the Court does not go so far as to state whether the color schemes alone, without the other collegiate indicia, would similarly have constituted protectable trademarks – that issue remains to be decided. Schools and companies can protect themselves against infringement by registering their color marks, which would create a presumption that the color scheme is a valid trademark.