Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist., 912 F.3d 805

Springboards to Education operates a monetary-themed literacy program (“Read a Million Words”) and registered four trademarks/service mark for related names and incentives used with school districts.
Houston Independent School District (HISD) independently ran a summer reading program called the “Houston ISD Millionaire Club,” using similar monetary-themed incentives (certificates, T‑shirts, fake money) and later rebranded the program.
Springboards sued HISD under the Lanham Act for trademark infringement, counterfeiting, false designation of origin, and dilution; district court granted summary judgment for HISD on grounds the use was not commercial.
On appeal, the Fifth Circuit affirmed on alternative grounds: Springboards could not show a likelihood of confusion (required element for infringement, counterfeiting, and false designation) and could not show its marks were “famous” for a dilution claim.
The court applied the eight-factor (digits) likelihood-of-confusion test, focusing on postsale confusion risk to third‑party purchasers (school districts), and concluded most digits weighed against confusion.
The court also affirmed denials of Springboards’ procedural requests to extend deadlines or amend pleadings because Springboards failed to show Rule 16(b) good cause.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Trademark infringement — likelihood of confusion	HISD’s use of “Houston ISD Millionaire Club” on materials and items would cause school districts or third‑party educators to believe Springboards was affiliated with HISD’s program	HISD argued its use did not create confusion: marks are commonly used, HISD developed program independently, and it did not market to Springboards’ customers	No likelihood of confusion; summary judgment for HISD affirmed
Counterfeiting	HISD’s labeled items were counterfeit uses of Springboards’ registered marks	Same defenses as to infringement; lack of confusion/intent	Counterfeiting claim fails for lack of likelihood of confusion; summary judgment affirmed
False designation of origin	HISD’s marks falsely designated Springboards as source/sponsor of HISD materials	HISD argues no confusion and no commercial use to mislead purchasers	Fails—likelihood of confusion lacking; summary judgment affirmed
Trademark dilution	Springboards’ marks are famous and diluted by HISD’s use	HISD: marks are not famous; limited market presence and widespread third‑party use	Fails—marks not famous; summary judgment affirmed
Procedural: extensions and amendments	Requested extensions and leave to amend to add late evidence / clarify complaint	HISD opposed; court found no good cause under Rule 16(b)	Denials affirmed for lack of good cause

Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir.) (defines likelihood-of-confusion standard)
Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440 (5th Cir.) (sets out eight "digits" of confusion framework)
Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir.) (digits are guides; consider consumer perception)
Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166 (5th Cir.) (third‑party use weakens mark strength; junior user identification reduces confusion)
Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311 (5th Cir.) (widespread third‑party use can dilute mark strength)
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539 (6th Cir.) (postsale confusion and relevance of product quality in some contexts)
Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 898 F.3d 1279 (11th Cir.) (discusses postsale confusion)
Squyres v. Heico Cos., 782 F.3d 224 (5th Cir.) (Rule 16(b) good‑cause factors for scheduling modifications)