Three other third party uses of trademarks and express disclaimer of affiliation insufficient to defeat claim of trademark infringement against sportswear manufacturer by college

Recently, the Supreme Court of the United States denied review in Savannah College of Art and Design v. Sportswear, Inc., 983 F.3d 1273 (11th Cir. 2020), a trademark case in the United States Court of Appeals for the Eleventh Circuit, which comprises the federal courts in Florida, Georgia, and Alabama. 

In that case, the Savannah College of Art and Design (“SCAD”), a college in Savannah, Georgia, sued Sportswear, Inc. for trademark infringement of its service mark registrations for the provision of educational services. Sportswear, Inc. is a sportswear and clothing manufacturer. When SCAD discovered that Sportswear, Inc. sold products inscribed with SCAD’s name and mascot, SCAD sued Sportswear, Inc. for trademark infringement even though Sportswear, Inc. described on its website that the “clothing was not sponsored, endorsed by, or affiliated with SCAD and that all products were exclusively produced and fulfilled by Sportswear.” Sportswear, Inc. also alleged that SCAD’s service marks were weak because three other third-party apparel manufacturers used the service marks at issue.

Important to the 11th Circuit here was that although three other third party apparel manufacturers used the SCAD service marks, such use was insufficient to show that the service marks at issue were weak. And although it noted that no particular number of uses is dispositive on the strength of the mark factor to trademark infringement, it noted that the three uses were significantly less than previous findings of eight, twelve, and twenty-seven third party uses as weakening a trademark’s strength. Further, Sportswear disclaimed any affiliation with SCAD was insufficient, particularly because the merchandise sold had an affiliation with SCAD by virtue of containing the service marks and were purchased by consumers precisely because of that affiliation and were meaningful to the purchasers in that regard. 

The takeaway message here is that a client should be very careful in selecting and using trademarks in connection with a trade or business. And that one could still be held liable for trademark infringement, even if a trademark is used in connection with a service instead of a good, or even expressly disclaims affiliations. In this regard, care should be exercised in selecting or using any potential trademarks.