Opinion · Court of Appeals for the Fifth Circuit
Springboards to Educ v. Pharr San Juan
33 F.4th 747
- Type
- Opinion
- Court
- Court of Appeals for the Fifth Circuit
- Jurisdiction
- Federal
- Date
- 2022-05-10
- Topic
- intellectual-property-and-technology
Case: 21-40336 Document: 00516313720 Page: 1 Date Filed: 05/10/2022 United States Court of Appeals for the Fifth Circuit United States Court of Appeals Fifth Circuit FILED May 10, 2022 No. 21-40336 Lyle W. Cayce Clerk Springboards to Education, Incorporated, Plaintiff—Appellant, versus Pharr-San Juan-Alamo Independent School District, Defendant—Appellee. Appeal from the United States District Court for the Southern District of Texas USDC No. 7:16-CV-524 Before Willett, Engelhardt, and Wilson, Circuit Judges. Kurt D. Engelhardt, Circuit Judge: This trademark infringement case is like déjà vu all over again. 1 After we affirmed another district court’s summary-judgment dismissal of the same plaintiff’s suit against another Texas school district, the district court granted summary judgment to the defendant school district here.
Citator
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Case: 21-40336 Document: 00516313720 Page: 1 Date Filed: 05/10/2022
United States Court of Appeals
for the Fifth Circuit United States Court of Appeals
Fifth Circuit
FILED
May 10, 2022
No. 21-40336 Lyle W. Cayce
Clerk
Springboards to Education, Incorporated,
Plaintiff—Appellant,
versus
Pharr-San Juan-Alamo Independent School District,
Defendant—Appellee.
Appeal from the United States District Court
for the Southern District of Texas
USDC No. 7:16-CV-524
Before Willett, Engelhardt, and Wilson, Circuit Judges.
Kurt D. Engelhardt, Circuit Judge:
This trademark infringement case is like déjà vu all over again. 1 After
we affirmed another district court’s summary-judgment dismissal of the
same plaintiff’s suit against another Texas school district, the district court
granted summary judgment to the defendant school district here. Because
the cases are materially indistinguishable, we AFFIRM.
1
Nate Scott, The 50 Greatest Yogi Berra Quotes, USA Today FTW (Mar. 28,
2019), https://ftw.usatoday.com/2019/03/the-50-greatest-yogi-berra-quotes.
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No. 21-40336
I.
Plaintiff-Appellant Springboards to Education, Inc. sells products to
school districts in connection with its “Read a Million Words Campaign.”
Designed by Springboards founder Johnny Lopez, the campaign “builds
excitement around reading” by incentivizing schoolchildren to read books
through promises of induction into the “Millionaire’s Reading Club,”
receipt of the “Millionaire Reader” award, and access to incentive items
such as certificates, T-shirts, drawstring backpacks, and fake money. See
Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist., 912 F.3d 805, 810
(5th
Cir. 2019). Springboards’ goods typically bear any combination of four
trademarks the company successfully registered with the U.S. Patent and
Trademark Office between 2011 and 2013: “Read a Million Words,”
“Million Dollar Reader,” “Millionaire Reader,” and “Millionaire’s Reading
Club.”
Defendant-Appellee Pharr-San Juan-Alamo Independent School
District (“PSJA”) is a public school district in Hidalgo County, Texas. On
July 20, 2016, Springboards sued PSJA and its library coordinator in federal
district court alleging trademark infringement, trademark counterfeiting,
trademark dilution, false designation of origin, and related Texas- and
common-law claims. On March 27, 2017, Springboards filed an amended
complaint removing its claims against PSJA’s library coordinator and its
state- and common-law claims against PSJA, but retaining its four Lanham
Act claims against PSJA. Four years later, the district court granted PSJA
summary judgment in an oral Zoom ruling.
In the meantime, we decided Springboards to Education, Inc. v. Houston
Independent School District. Observing obvious parallels between this case and
that case, the district court based its ruling here on our decision there. It was
correct to do so, for that case is a near twin of this one.
2
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Indeed, the Houston case and this case are functionally identical. In
both cases, the same plaintiff—Springboards—makes essentially the same
claims against a Texas school district for the district’s use of “millionaire”-
themed reading incentive programs allegedly “using products and services
bearing marks and branding identical to or confusingly similar to
Springboards’ marks.” 2 In Houston, we affirmed the district court’s ruling
against Springboards. We do the same here.
II.
We review a district court’s grant of summary judgment de novo.
Sanchez v. Smart Fabricators of Tex., L.L.C., 997 F.3d 564, 568
(5th Cir. 2021) (en banc). Summary judgment is appropriate where “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). In simple terms, then, “[s]ummary judgment is appropriate if a reasonable jury could not return a verdict for the nonmoving party.” Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co.,530 F.3d 395, 399
(5th Cir. 2008) (citing Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 248
(1986)).
Thus, sitting in the shoes of a reasonable jury, we must decide de novo
whether Springboards has a plausible shot at relief on its assortment of
Lanham Act claims. Congress enacted the Lanham Act “to protect persons
engaged in [] commerce against unfair competition” “by making actionable
the deceptive and misleading use of marks in such commerce.” 15 U.S.C. § 1127
. As it did in Houston, “Springboards seeks to enforce its trademarks
and service mark through four causes of action: trademark infringement,
[trademark] counterfeiting, false designation of origin, and trademark
2
This practice is not uncommon. In its brief, PSJA shows that use of
“millionaire”-themed reading challenges is widespread in the educational field.
3
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dilution.” See Houston, 912 F.3d at 811
. Like the Houston panel, we address
each claim in turn—albeit in briefer fashion, given our sister panel’s
extensive work there.
A.
We begin with trademark infringement. As applicable here, the
Lanham Act imposes civil liability on any person who without consent uses
“in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark in connection with the sale, offering for sale, distribution,
or advertising of any goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114
(1)(a). Following the Houston panel’s lead, we focus on what is perhaps
§ 1114(1)(a)’s most foundational threshold inquiry: whether PSJA’s use of
Springboards’ marks was “likely to cause confusion[] . . . mistake, or to
deceive” in the first place. See id. It was not.
To prove infringement, a mark holder must show that an infringer’s
use of the mark in question “create[d] a likelihood of confusion in the minds
of potential consumers as to the source, affiliation, or sponsorship” of the
infringer’s products or services. Houston, 912 F.3d at 811–12 (alteration in
original) (quoting Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188
, 193 (5th
Cir. 1998)). By extension, when a defendant’s use of a plaintiff’s mark would
not confuse potential consumers, the plaintiff has no claim for trademark
infringement.
This makes confusion the name of the game. To determine the
likelihood of confusion, we consult eight nonexhaustive and flexible “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,
4
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(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.
Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465, 478
(5th Cir. 2008) (quoting Westchester Media v. PRL USA Holdings, Inc.,214 F.3d 658, 663
(5th Cir. 2000)). These “digits” are mere guideposts on the road to a finding of confusion; they are not “an exact calculus” for reaching such a finding. Scott Fetzer Co. v. House of Vacuums Inc.,381 F.3d 477, 485
(5th Cir. 2004).
We need not parse the individual digits here, however, for the
practical effect of any conceivable confusion on the sophisticated school
districts to which Springboards markets its products is at most exceedingly
remote. 3 Indeed, worlds apart from an unwitting shopper expecting Coca-
Cola but finding instead an inferior beverage in the red can she brought home
from the store, 4 PSJA’s most brazen use of Springboards’ marks could place
Springboards’ institutional customers at little risk of confusion at most.
Distinguishing between Springboards’ catalog of “millionaire”-themed
goods and unaffiliated “millionaire”-themed goods other educational
entities have elected to deploy is not difficult, and unique imprints on
“millionaire”-themed reading challenges are widespread in the educational
field. 5 As in Houston, Springboards does not allege that PSJA itself is in the
business of competing with Springboards by selling its own “millionaire”-
themed products to the school districts that make up Springboards’ customer
3
Recall, importantly, that the touchstone of trademark infringement is consumer
confusion.
4
This classic example refers to the analogous area of trade dress but is otherwise
right on the money for illustrative purposes.
5
See supra note 2.
5
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base. Consequently, Springboards’ theory for trademark infringement is as
overwrought as it is hard to grasp—there is simply no evidence in the record
that PSJA’s use of a million-word reading challenge confuses (or intends to
confuse) the sophisticated school districts that Springboards targets with its
marks.
Importantly, this is not a patents case or a trade-secrets case. There is
no claim, for instance, that PSJA has misappropriated Springboards’
intellectual property by tapping into the educational genius of a “million-
word challenge.” Instead, Springboards’ claims fall exclusively in the
trademark lane, where PSJA’s influence on consumers of the products at
issue is our lodestar. Like the Houston courts, the district court was correct
that no reasonable jury could find a likelihood that consumers of
Springboards’ niche products would be confused by PSJA’s implementation
of a reading program using words and phrases bearing abstract similarity to
Springboards’ marks.
Springboards’ attempts to distinguish this case from Houston are
unavailing. To the extent they are apt to begin with, 6 none move the needle.
Springboards contends that the Houston school district had just one summer
reading program whereas PSJA has had several year-long reading programs,
that the requirements of PSJA’s reading program are identical—and not
merely similar—to the requirements of Springboards’ model program, and
that Springboards’ founder Johnny Lopez “worked his entire career in
education in Hidalgo County where PSJA is located and visited the schools,
teachers and administrators at PSJA—unlike the district in Houston that is
over 300 miles away.” But any marginal risk of confusion these differences
6
It is hard to see how some are. Consider, for example, Springboards’ observation
that “[t]he student population of PSJA is 10% of the size of the district in Houston.”
Analytically speaking, this seems to be a distinction without a difference.
6
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may add remains trumped by far more foundational flaws with Springboards’
attempt to jam square pegs into round holes. One decisive fact remains all the
same: sophisticated school-district customers can tell the difference between
goods Springboards is selling them and goods and slogans PSJA is not. 7
B.
Springboards’ remaining claims—for trademark counterfeiting, false
designation of origin, and trademark dilution—are more easily dispatched.
Springboards’ claims for trademark counterfeiting and false designation of
origin likewise require a threshold showing of likelihood of confusion that, as
we’ve already explained, Springboards does not make. 8
That leaves Springboards’ trademark dilution claim. To prove
trademark dilution, a mark holder must show that its marks are “famous.”
Houston, 912 F.3d at 818
; Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co.,671 F.3d 526, 536
(5th Cir. 2012). A “famous” mark is one that is “widely recognized by the general consuming public of the United States.”15 U.S.C. § 1125
(c)(2)(A). That, Springboards’ marks are not.
Accordingly, the district court is AFFIRMED.
7
If any doubt remains, Springboards’ claims likely suffer from a host of other fatal
flaws as well. The district court’s belt-and-suspenders findings on commercial use, fair use,
and ornamentality are all plausible. We need not and do not address these issues, however.
8
See Houston, 912 F.3d at 818
(“Likelihood of confusion is also an element of counterfeiting.”); King v. Ames,179 F.3d 370, 374
(5th Cir. 1999) (likelihood of confusion
is “essential element” of Lanham Act false designation of origin).
7