IP Law Daily, TRADEMARK—5th Cir.: Another school district’s reading program did not infringe education company’s marks, (May 11, 2022)

By Thomas K. Lauletta, J.D.

The education company failed to show a likelihood of confusion between the marks, or that its marks were famous.

A district court's grant of summary judgment in favor of the Pharr-San Juan-Alamo Independent School District (“PSJA”) on claims that its “millionaire”-themed reading challenges infringed and diluted an education company's "Millionaire's Reading Club" mark and similar marks has been affirmed by the U.S. Court of Appeals in New Orleans. The district court dismissed the plaintiff's Lanham Act claims based on the appellate court’s prior holding in the “materially indistinguishable” case of Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist. The Lanham Act claims for trademark infringement, trademark counterfeiting, and false designation were dismissed because the education company failed to show a likelihood of confusion between its products and those used by the school district’s program. The claim for trademark dilution was dismissed on the ground that the education company failed to show that its marks were “famous” (Springboards to Education, Inc. v. Pharr-San Juan-Alamo Independent School District, May 10, 2022, Engelhardt, K.).

Springboards to Education, Inc., is an education-services company. In 2005, Springboards launched a program to motivate students to read that it entitled the “Read a Million Words campaign.” Springboards markets products and services to school districts to implement the program. Between 2011 and 2013, Springboards registered four trademarks with the United States Patent and Trademark Office in connection with the Read a Million Words campaign: “Read a Million Words,” “Million Dollar Reader,” “Millionaire Reader,” and “Millionaire's Reading Club.” It also registered “Read a Million Words” as a service mark. Springboards uses its marks in connection with its program and on its incentive items and promotional materials.

Defendant Pharr-San Juan-Alamo Independent School District (“PSJA”) is a public school district in Hidalgo County, Texas. PSIA used “millionaire” themed reading incentive programs that Springboards alleged used “products and services bearing marks and branding identical to or confusingly similar to Springboards’ marks.” On an amended complaint filed in March 2017, Springboards sued PSJA in federal district court alleging trademark infringement, trademark counterfeiting, trademark dilution, and false designation of origin. Four years later, the district court granted PSJA summary judgment against the claims based on the Fifth Circuit’s decision in the “materially indistinguishable” case in of Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist., which involved PSJA’s infringement suit against another Texas school system’s use of a similar millionaire reading incentive program. PSJA appealed the district court’s decision in the instant case. The appellate court affirmed the district court decision.

Trademark infringement. The appellate court focused on the question of whether PSJA’s use of Springboards’ marks was likely to cause confusion. To assess the likelihood of confusion, courts in the Fifth Circuit consider eight nonexhaustive “digits” of confusion: (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) evidence of actual confusion, and (8) the degree of care exercised by potential purchasers. The appellate court in the instant case found that likelihood of confusion based on the above digits was “exceedingly remote.” The court noted Springboard’s products and services were purchased by sophisticated school district customers that could tell the difference between goods that Springboards is selling them and good and slogans PSJA is using, which are not for sale. Accordingly, the appellate court upheld the district court’s grant of summary judgment against Springboard’s trademark infringement claims.

Trademark counterfeiting, false designation of origin. Because it determined that Springboards did not show a likelihood of confusion on its trademark infringement claim, its claims for Lanham Act trademark counterfeiting and false designation of origin also failed.

Trademark dilution. The appellate court upheld the district court decision that Springboard’s trademark dilution claim failed. To prove trademark dilution, a mark holder must show that its marks are “famous,” that is, that the marks are “widely recognized by the general consuming public of the United States.” Using this standard, the court held that Springboard’s marks were not famous.

The appellate court affirmed the district court’s decision granting summary judgement against Springboard’s Lanham Act claims.

The case is No. 21-40336.

Attorneys: Valerie Yanaros (Yanaros Law, PC) for Springboards to Education, Inc. David Jay Campbell (O'Hanlon, Demerath & Castillo Law Firm) for Pharr San Juan Alamo Independent School District.

Companies: Springboards to Education, Inc.; Pharr San Juan Alamo Independent School District

Cases: Trademark LouisianaNews MississippiNews TexasNews GCNNews