Last week, the United States Court of Appeals for the Eleventh Circuit affirmed a district court grant of summary judgment in Savannah College of Art and Design, Inc. v. Sportswear, Inc., No. 19-11258 (Dec. 22, 2020). Defendant Sportswear appealed a decision from the Northern District of Georgia granting the college’s motion for summary judgment that Sportswear’s use of all or portions of three of the college’s service-marks—SAVANNAH COLLEGE OF ART AND DESIGN; SCAD; and a design mark including a depiction of the college’s mascot, Art the Bee—to sell apparel was likely to cause consumer confusion.
Sportswear sold apparel bearing the college’s marks through its website from 2009 to 2014, when the college first became aware of these sales and sued Sportswear. Sportswear had not obtained the college’s consent to its use of the marks and included a disclaimer on its website indicating that the apparel was not endorsed or approved by the college. After the college sued, Sportswear sought summary judgment that the college lacked enforceable rights because the college’s service-marks could not cover goods like those sold by Sportswear. The district court granted Sportswear’s motion, but the 11th Circuit reversed and remanded for consideration of the Eleventh Circuit’s likelihood of confusion factors. On remand, the district court followed this mandate and granted the college’s motion for summary judgment of infringement.
On appeal, the Court weighed the seven likelihood of confusion factors applicable in the Eleventh Circuit. Applying its own precedent, the Court explained that three factors were entitled to lesser weight where, as here, the concern for confusion arises from the defendant’s misuse of the plaintiff’s reputation and goodwill as embodied in the plaintiff’s mark. These factors were (1) the similarity of the parties’ products, (2) the identity of retail outlets and purchasers, and (3) the identity of advertising media utilized by the parties. The Court found that, of the remaining factors, only the absence of actual confusion weighed in Sportswear’s favor. Given the small volume of Sportswear’s sales using the college’s marks, however, the Court held that the absence of actual confusion was not dispositive. Because the absence of actual confusion was afforded relatively little weight and the remaining significant factors favored the college, the Court affirmed the district court’s grant of summary judgment for the college.