33 F.4th 747
5th Cir.2022Background
- Springboards to Education, Inc. (Springboards) owns federally registered marks used in a “Read a Million Words” / “Millionaire Reader” reading-incentive program sold to school districts.
- Pharr-San Juan-Alamo Independent School District (PSJA), a Texas public school district, ran its own “millionaire”-themed reading programs and used similar slogans/materials.
- Springboards sued PSJA under the Lanham Act for trademark infringement, trademark counterfeiting, false designation of origin, and dilution; PSJA moved for summary judgment.
- The district court granted summary judgment for PSJA; Springboards appealed to the Fifth Circuit.
- The Fifth Circuit treated this case as materially indistinguishable from Springboards v. Houston ISD, which had already affirmed summary judgment against Springboards on similar claims.
- The Fifth Circuit affirmed the district court, concluding no likelihood of consumer confusion and that Springboards’ marks are not legally “famous.”
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement (likelihood of confusion) | Springboards: PSJA’s use of identical or confusingly similar “millionaire” wording and materials creates confusion about source/affiliation | PSJA: Uses are widespread, generic in education, and purchasers (school districts) are sophisticated and unlikely to be confused | No likelihood of confusion; summary judgment for PSJA affirmed |
| Trademark counterfeiting & false designation of origin | Springboards: PSJA’s materials counterfeit or falsely designate Springboards as source | PSJA: These claims require a showing of likelihood of confusion, which is absent here | Claims fail for lack of likelihood of confusion; judgment affirmed |
| Trademark dilution | Springboards: PSJA’s use dilutes Springboards’ marks | PSJA: Springboards’ marks are not famous under the statute | Marks are not “famous”; dilution claim fails |
Key Cases Cited
- Springboards to Educ., Inc. v. Houston Indep. Sch. Dist., 912 F.3d 805 (5th Cir. 2019) (affirming dismissal for lack of likelihood of confusion in a near-identical dispute)
- Sanchez v. Smart Fabricators of Tex., L.L.C., 997 F.3d 564 (5th Cir. 2021) (en banc) (standard of review for summary judgment)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard regarding reasonable jury verdict)
- Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (the eight "digits" of likelihood-of-confusion analysis)
- Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000) (factors for likelihood-of-confusion)
- Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (digits of confusion are nonexhaustive guideposts)
- Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526 (5th Cir. 2012) (requirement that mark be "famous" for dilution claim)