Savannah College of Art and Design, Inc. v. Sportswear, Inc.

Case: 15-13830 Date Filed: 10/03/2017 Page: 1 of 23

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT
________________________

No. 15-13830
________________________

D.C. Docket No. 1:14-cv-02288-TWT

SAVANNAH COLLEGE OF ART AND DESIGN, INC.,

Plaintiff - Appellant,

versus

SPORTSWEAR, INC.,
d.b.a. Prep Sportswear,

Defendant - Appellee.

________________________

Appeal from the United States District Court
for the Northern District of Georgia
________________________

(October 3, 2017)

Before MARTIN and JORDAN, Circuit Judges, and COOGLER, * District Judge.

*
The Honorable L. Scott Coogler, United States District Judge for the Northern District
of Alabama, sitting by designation.
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JORDAN, Circuit Judge:

“Imitation may be the sincerest form of flattery,” Charles C. Colton, Lacon,

Vol. 1, No. 183 (1820–22), in Bartlett’s Familiar Quotations 393:5 (16th ed. 1992),

but when the imitation consists of commercial reproduction for profit, all bets are

off. So when Sportswear, Inc. began using the federally-registered service marks

of the Savannah College of Art and Design without a license to sell apparel and

other goods on its website, SCAD did not take kindly to the copying and sued for

equitable and monetary relief. SCAD asserted a number of claims against

Sportswear, including service mark infringement under 15 U.S.C. § 1114; unfair

competition and false designation of origin under 15 U.S.C. § 1125; and unfair

competition under O.C.G.A. § 10-1-372.

This is SCAD’s appeal from the district court’s grant of summary judgment

in favor of Sportswear. The district court, relying on Crystal Entertainment

& Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1315–16 (11th Cir. 2011)—a case

involving a dispute over common-law trademark rights to a band name—

concluded that SCAD had failed to establish that it had enforceable rights in its

marks that extended to apparel. SCAD, which validly registered its marks only in

connection with the provision of “education services,” did not show that it had

used its marks on apparel earlier than Sportswear in order to claim common-law

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ownership (and priority) over its marks for “goods.” See Savannah Coll. of Art

& Design, Inc. v. Sportswear, Inc., 2015 WL 4626911, at *2 (N.D. Ga. 2015).

We reverse. This case, unlike Jurado, does not involve the alleged

infringement of a common-law trademark, and as a result the date of SCAD’s first

use of its marks on goods is not determinative. One of our older trademark cases,

Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d

1004 (5th Cir. 1975), controls, as it extends protection for federally-registered

service marks to goods. Although Boston Hockey does not explain how or why

this is so, it constitutes binding precedent that we are bound to follow.

I1

Founded in 1978, SCAD is a private, non-profit college based in Georgia,

and provides educational services to over 11,000 students from across the United

States and more than 100 countries. SCAD is primarily known for specialized

programs related to the arts, such as painting, sculpture, architecture, fashion,

photography, film, and design. In addition to providing educational programs,

SCAD fields athletic teams in a variety of sports.

To distinguish itself in the market and promote its programs and services,

SCAD holds four federally-registered marks:

1
Judge Martin joins all except Part IV.C of the opinion.
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The federal registrations for these marks were issued for “education

services,” i.e., the provision of “instruction and training at the undergraduate,

graduate, and post-graduate levels.” See, e.g., D.E. 1-1, 1-2. And the parties agree

that SCAD has continuously used its marks for the promotion of its “education

services.”2

SCAD has used the two word marks at issue here—“SCAD” (registered in

2003) and “SAVANNAH COLLEGE OF ART AND DESIGN” (registered in

2005)—since 1979, and they have now achieved incontestable status. In general,

this means that SCAD has filed the requisite affidavit of use and incontestability

under 15 U.S.C. § 1065(3), and that the U.S. Patent and Trademark Office has

2
SCAD may have been able to secure federal trademark registrations for the use of its word
marks on goods such as apparel, but apparently did not attempt to do so. “There is no doubt that
a given symbol can be used in such a way that it functions as both a trademark for goods and a
service mark for services, and be the subject of separate registrations.” 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 19:84 (4th ed. June 2017). See also id. at
§ 19:87 (“If a service company (or a producer of goods) puts its mark on promotional items to be
used by recipients, such as ball point pens and wearing apparel, the mark can be registered for
such goods.”); Hans C. Bick, Inc. v. Watson, 253 F.2d 344, 344 (D.C. Cir. 1958) (discussing
registrations for the word “Nylonized” as a trademark for women’s nylon hosiery and as a
service mark for the application of a nylon coat); In re McDonald’s Corp., 199 U.S.P.Q. 921,
1978 WL 21263, at *3 (T.T.A.B. 1978) (registering “McDonald’s” and “golden arches” marks
for clothing because they “indicat[e] the source of origin of the various items of apparel in [the]
applicant [McDonald’s Corporation]”).
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acknowledged that these two marks have been validly registered and in continuous

use for at least five years. See D.E. 49-3 at 5, 10, 15, 24.

Sportswear operates entirely online and uses an interactive website to market

and sell “fan” clothing and items like t-shirts, sweatshirts, baseball caps, and duffel

bags. Sportswear began selling apparel for K-12 schools in 2003, and it now offers

made-to-order apparel and related goods for other entities, including colleges,

Greek and military organizations, golf courses, professional sports teams, and even

fantasy sports teams with—and without—licensing agreements. To purchase an

item from Sportswear, a customer is generally required to select its preferred

organization’s “online store,” choose an item like a t-shirt or hat, and select that

organization’s emblem, mascot, or name. Sportswear’s website then generates a

sample of the selection, prompts the customer to checkout online, and ships the

final product to the customer’s home in a package indicating that it was delivered

from a Sportswear facility.

In February of 2014, a parent of a student-athlete forwarded Sportswear’s

website to one of SCAD’s coaches. As a result, SCAD learned that Sportswear

had been using its word marks on products without authorization (and without a

licensing agreement) since August of 2009. Seeking to protect its marks from

further unauthorized use, SCAD sued Sportswear in July of 2014. At that point,

Sportswear stopped selling products with SCAD’s word marks.

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During discovery, SCAD provided several examples of Sportswear’s

products featuring its word marks and a printout of Sportswear’s website-generated

“SCAD” store. SCAD also submitted images of current merchandise sold on its

own website and side-by-side comparisons of Sportswear’s products. Sportswear

conceded that it was selling products online with virtually indistinguishable

reproductions of the “SCAD” and “SAVANNAH COLLEGE OF ART AND

DESIGN” word marks, but asserted that its website contained a prominent

disclaimer showing that the products were in no way affiliated with the school.

Since 2011, SCAD has licensed Follett Education Group to operate its

online stores and Georgia-based on-campus bookstores, which sell clothing and

other goods displaying SCAD’s word marks. Sportswear agreed that Follett

markets and sells SCAD’s merchandise, but contested the degree of SCAD’s

involvement in approving and designing those items. SCAD admitted that it did

not submit evidence showing when it first used its word marks on apparel or

related goods.

At the close of discovery, the district court reviewed the parties’

cross-motions for summary judgment and ruled in favor of Sportswear. Relying on

Jurado, the district court held that SCAD failed to establish that its service mark

rights extended to apparel because it could not show priority in use as to goods.

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II

We exercise plenary review of the district court’s grant of summary

judgment in favor of Sportswear, viewing the record and drawing all factual

inferences in the light most favorable to SCAD. See Tana v. Dantanna’s, 611 F.3d

767, 772 (11th Cir. 2010). Summary judgment is appropriate when “there is no

genuine dispute as to any material fact” and the moving party is entitled to

judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett,

477 U.S. 317, 322 (1986).

III

Trademark law, as codified by the Lanham Act, see 15 U.S.C. § 1051

et seq., largely serves two significant but often conflicting interests. It “secure[s]

to the owner of the mark the goodwill of his business[;]” and it “protect[s] the

ability of consumers to distinguish among competing producers.” Park ‘N Fly,

Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).

The Lanham Act prohibits the infringement of trademarks that are used to

identify “goods,” and of service marks that are used to identify “services.” See 15

U.S.C. § 1127. Trademarks and service marks are used “to indicate the source of

the [goods and services], even if that source is unknown.” Id. Generally, “a

trademark serves to identify and distinguish the source and quality of a tangible

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product,” while “a service mark functions to identify and distinguish the source

and quality of an intangible service.” 3 McCarthy on Trademarks § 19:81.

In most respects, the “analysis is the same under both [types of marks] and

courts thus treat the two terms as interchangeable in adjudicating infringement

claims.” Frehling Enterprises, Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1334

n.1 (11th Cir. 1999) (citations omitted). For both trademarks and service marks,

therefore, the “the touchstone of liability . . . is not simply whether there is

unauthorized use of a protected mark, but whether such use is likely to cause

consumer confusion.” Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d

641, 647 (11th Cir. 2007). See also 4 McCarthy on Trademarks § 23:1 (“The test

for infringement of a service mark is identical to the test of infringement of a

trademark: is there a likelihood of confusion?”).3

The Lanham Act provides different types of statutory protection. As

relevant here, § 32(a) of the Act, codified at 15 U.S.C. § 1114(1)(a), guards against

3
Many other circuits also analyze trademarks and service marks under the same legal standards.
See, e.g., Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001) (“Service marks
and trademarks are governed by identical standards.”); Circuit City Stores, Inc. v. CarMax, Inc.,
165 F.3d 1047, 1054 (6th Cir. 1999) (same); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt.,
Inc., 192 F.3d 337, 344 n.2 (2d Cir. 1999) (same); Walt-West Enterprises, Inc. v. Gannett Co.,
Inc., 695 F.2d 1050, 1054 (7th Cir. 1982) (same). This analytical overlap likely contributes to
the uncertainty about the scope of protection afforded to registered service marks. See generally
Paul M. Schoenhard, Why Marks Have Power Beyond the Rights Conferred: The Conflation of
Trademarks and Service Marks, 87 J. Pat. & Trademark Off. Soc’y 970, 971–72 (2005)
(explaining that the two distinct forms of intellectual property have been treated as the same even
though “service marks did not exist as a protectable form of intellectual property under [f]ederal
law prior to the passage of the [Lanham Act]”) (emphasis in original).

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“infringement”—the “reproduction, counterfeit, copy, or colorable imitation of a

registered mark”—while § 43(a), codified at 15 U.S.C. § 1125(a), protects against

“false designation of origin,” which we have referred to as “a federal cause of

action for unfair competition.” Custom Mfg., 508 F.3d at 647 (citation omitted). A

claim for infringement under § 1114(1)(a) lies only for federally-registered marks,

while a claim under § 1125(a) is broader and may also be based on unregistered

(i.e., common-law) marks. See Jurado, 643 F.3d at 1320.

The statutory claims at issue here more or less required SCAD to establish

two things. First, SCAD needed to show “enforceable trademark rights in [a] mark

or name[.]” Second, it had to prove that Sportswear “made unauthorized use of [its

marks] ‘such that consumers were likely to confuse the two.’” Custom Mfg., 508

F.3d at 647 (describing the requirements for a § 1125 claim) (citation omitted);

Dieter v. B & H Indus. of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.

1989) (same for a § 1114 claim).

We, like other circuits, often blur the lines between § 1114 claims and

§ 1125 claims because recovery under both generally turns on the confusion

analysis. See Tana, 611 F.3d at 773 n.5 (stating that the district court’s error in

analyzing a trademark case under § 1114 rather than § 1125 was irrelevant

“because the district court based its grant of summary judgment on the

likelihood-of-confusion prong”); Tally-Ho, Inc. v. Coast Community Coll. Dist.,

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889 F.2d 1018, 1026 n.14 (11th Cir. 1989) (“an unfair competition claim based

only upon alleged trademark infringement is practically identical to an

infringement claim”). Accord Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136,

1143 (10th Cir. 2013) (explaining that the “central inquiry is the same” for both

§ 1114 and § 1125); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d

108, 114 (2d Cir. 2006) (same); A & H Sportswear, Inc. v. Victoria’s Secret Stores,

Inc., 237 F.3d 198, 210 (3d Cir. 2000) (same). The district court here, however,

never reached likelihood of confusion. Under the district court’s rationale, the

infringement claim under § 1114 necessarily failed because the limited federal

registrations for “education services” meant that SCAD did not have rights as to

“goods,” and SCAD did not provide evidence showing that it used its marks on

apparel before Sportswear. 4

But the district court’s reliance on Jurado for that rationale was misplaced.

In Jurado neither party had a federally-registered trademark, see 643 F.3d at 1316,

and as a result both sides could only assert common-law trademark rights. That is

why priority of use became a critical issue in that case. As we explained:

“Common-law trademark rights are appropriated only through actual prior use in

commerce. . . . Crystal [the plaintiff] bore the burden of proving its prior use.” Id.

(citations and internal quotation marks omitted). Because SCAD’s claims revolve

4
Because the district court did not expressly distinguish between SCAD’s statutory causes of
action, we assume that its analysis applied to both the § 1114 and § 1125 claims.
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around federally-registered marks, Jurado cannot inform our analysis of the

infringement claim under § 1114, a provision which requires a federally-registered

mark, or under § 1125, a provision which can apply to a federally-registered mark.

IV

The question for us is whether SCAD has enforceable service mark rights

that extend—beyond the services listed in its federal registrations—to goods in

order to satisfy the first prong of an infringement analysis: the validity and scope

of a contested mark. See Dieter, 880 F.2d at 326 (observing that a plaintiff must

show that a mark is valid before a likelihood of confusion analysis becomes

necessary). As we explain, we do not write on a clean slate, and Boston Hockey

provides the answer to that question.

A

Before discussing Boston Hockey, we analyze University of Georgia

v. Laite, 756 F.2d 1535 (11th Cir. 1985), a case that SCAD also relies on. SCAD

argues that Laite stands for the principle that even if a mark is registered only for

services, the mark holder is entitled to broader protection in order to prevent any

infringing conduct that is likely to cause confusion. See Appellant’s Br. at 17–21.

We disagree with SCAD’s reading of Laite. Although at first glance the facts of

that case closely resemble those here, there is one significant difference, and

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SCAD’s argument conflates the standards for service mark protection under § 1114

and § 1125.

In Laite, the University of Georgia Athletic Association sued to enjoin a

novelty beer wholesaler from selling “Battlin’ Bulldog” beer. See 756 F.2d at

1537. The UGAA sued the wholesaler under § 1125 and state trademark law, but

it did not (and could not) sue for infringement under § 1114. See id. at 1538.

SCAD correctly points out that the UGAA had filed state registrations for its marks

only for “athletic services,” but downplays a significant fact—at the time of the

litigation, it had not yet acquired federal registrations for the contested “Georgia

Bulldog” mark. See id. at 1537 & n.2. Federally-registered marks were not, as

SCAD infers, part of the analytical line up in that case.

The key holding in Laite was that proof of secondary meaning (i.e., “the

power of a name . . . to symbolize a particular business, product, or company”) is

only required for descriptive marks. See id. at 1540 (citation omitted). Reasoning

that the “Georgia Bulldog” mascot was not a descriptive mark, we affirmed, on

clear error review, the district court’s finding that the UGAA had established a

likelihood of confusion based on the similarity of the Bulldog designs and the beer

wholesaler’s intent. See id. at 1541, 1543–46. Laite therefore does not stand for

the principle SCAD advocates. See Belen Jesuit Preparatory Sch., Inc.

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v. Sportswear, Inc., 2016 WL 4718162, at *6 (S.D. Fla. May 3, 2016) (explaining

that Laite did not involve or analyze federally-registered marks).

B

Although Laite does not resolve the question before us, our binding 1975

decision in Boston Hockey stands on different footing. As SCAD correctly asserts,

Boston Hockey extends protection for federally-registered service marks to goods,

and therefore beyond the area of registration listed in the certificate.

In Boston Hockey, the National Hockey League and twelve of its member

teams sued to prevent a manufacturer from selling embroidered sew-on patches

featuring the teams’ federally-registered service marks. See 510 F.2d at 1008.

Like SCAD, most of the hockey teams had registered marks only in connection

with the provision of services, and held no registrations for goods, apparel, or

promotional merchandise. See id. at 1009. Two of the hockey teams had also

registered their marks for certain goods, see Boston Prof’l Hockey Ass’n Inc. v.

Dallas Cap & Emblem Mfg., Inc., 360 F. Supp. 459, 461 (N.D. Tex. 1973), but we

conducted the § 1114 infringement analysis without distinguishing the teams on

that basis. See 510 F.2d at 1011.

The Boston Hockey panel phrased the issue of first impression as “whether

the unauthorized, intentional duplication of a professional hockey team’s symbol

. . . to be sold . . . as a patch for attachment to clothing, violates any legal right of

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the team to the exclusive use of that symbol.” Id. at 1008. As SCAD has done in

this case, the NHL and its hockey teams sued for violations of §§ 1114 and 1125 of

the Lanham Act, and for common-law unfair competition. Id. at 1009. The

material facts here are very similar to those in Boston Hockey, with one main

exception. The manufacturer in Boston Hockey sold only mark-replica patches,

and did not affix the teams’ marks to other goods such as t-shirts or jackets. See id.

The panel acknowledged that trademark law generally protects against the sale of

“something other than the mark itself,” see id. at 1010, but concluded that each

team had an interest in its mark “entitled to legal protection against such

unauthorized duplication.” Id. at 1008.

Recognizing that its “decision . . . [could] slightly tilt the trademark laws

from the purpose of protecting the public to the protection of the business interests

of [the teams],” the Boston Hockey panel was persuaded that granting relief was

appropriate because the teams’ efforts gave commercial value to the patches, and

“the sale of a reproduction of the trademark itself on [a patch] is an accepted use of

such team symbols” in the arena of professional sports. See id. at 1011. When it

came to the statutory claim under § 1114, the panel reasoned that the teams’ marks

were validly registered and skipped straight to determining whether the

manufacturing company’s use was likely to cause confusion. See id. Absent from

the panel’s analysis was an explanation for how or why the teams’ registrations for

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“hockey entertainment services” provided statutory protection as to goods like

embroidered patches.

In the end, the Boston Hockey panel rejected the manufacturer’s argument

that consumer confusion must derive from the “source of the manufacture” of the

mark because the mark, “originated by the team, [was] the triggering mechanism

for the sale of the [patch].” Id. at 1012. In other words, “[t]he confusion . . .

requirement [wa]s met by the fact that the [manufacturer] duplicated the protected

trademarks and sold them to the public knowing that the public would identify

them as being the teams’ trademarks.” Id.

Boston Hockey, though in our view lacking critical analysis, implicitly but

necessarily supports the proposition that the holder of a federally-registered service

mark need not register that mark for goods—or provide evidence of prior use of

that mark on goods—in order to establish the unrestricted validity and scope of the

service mark, or to protect against another’s allegedly infringing use of that mark

on goods. On remand, the district court will have to review SCAD’s claims under

§ 1114 and § 1125 in light of Boston Hockey.5

Among other things, the district court will need to assess the strength of

SCAD’s word marks. See, e.g., Welding Servs., Inc. v. Forman, 509 F.3d 1351,

5
Given that Boston Hockey controls, we need not and do not address whether SCAD used its
word marks on apparel prior to Sportswear or whether the district court properly excluded an
article on a website submitted by SCAD.
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1357–58 (11th Cir. 2007) (describing the “four gradations of distinctiveness”).

And it will have to consider whether SCAD has demonstrated that Sportswear’s

use of its word marks is likely to create consumer confusion as to origin, source,

approval, affiliation, association, or sponsorship. See Burger King Corp. v. Mason,

710 F.2d 1480, 1491–92 (11th Cir. 1983); Professional Golfers Ass’n of Am. v.

Bankers Life & Casualty Co., 514 F.2d 665, 670 (5th Cir. 1975).

Once a party has shown an enforceable right in a mark, a court usually

considers a number of factors in assessing whether an infringing use is likely to

cause confusion. These are “(1) the strength of the allegedly infringed mark; (2)

the similarity of the infringed and infringing marks; (3) the similarity of the goods

and services the marks represent; (4) the similarity of the parties’ trade channels

and customers; (5) the similarity of advertising media used by the parties; (6) the

intent of the alleged infringer to misappropriate the proprietor’s good will; and (7)

the existence and extent of actual confusion in the consuming public.” Florida

Int’l Univ. Bd. of Trustees v. Florida Nat’l Univ., Inc., 830 F.3d 1242, 1255 (11th

Cir. 2016). Generally, “the type of mark and the evidence of actual confusion are

the most important” factors. Id. (citation omitted); Caliber Auto. Liquidators, Inc.

v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 935 (11th Cir. 2010).

We add one final note about the confusion analysis. The confusion

discussion in Boston Hockey, 510 F.2d at 1012, came under strong criticism

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because it “did not require proof of a likelihood that customers would be confused

as to the source or affiliation or sponsorship of [the] defendant’s product,” and

instead only asked whether “customers recognized the products as bearing a mark

of the plaintiff[s].” 4 McCarthy on Trademarks § 24:10 (describing the “heresies”

of Boston Hockey and concluding that its “attempt to stretch trademark law

failed”). See also Stacey L. Dogan & Mark A. Lemley, The Merchandising Right:

Fragile Theory or Fait Accompli?, 54 Emory L.J. 461, 474 (2005) (“The court [in

Boston Hockey] . . . presumed actionable confusion based solely on the consumer’s

mental association between the trademark and the trademark holder.”).

In a binding decision issued only two years later, however, we read Boston

Hockey narrowly, limited its confusion analysis to the facts in the case, and

explained that it did not do away with traditional confusion analysis. See Kentucky

Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 389 (5th Cir.

1977) (“[W]e do not believe Boston Hockey equates knowledge of the symbol’s

source with confusion sufficient to establish trademark infringement, and we deem

the confusion issue unresolved by our existing decisions.”). The current Fifth

Circuit echoed that discussion and similarly retreated from a broad reading of

Boston Hockey. See Bd. of Supervisors for Louisiana State Univ. Agric. & Mech.

Coll. v. Smack Apparel Co., 550 F.3d 465, 485 (5th Cir. 2008) (reiterating “that a

showing of likelihood of confusion [i]s still required [and] . . . not[ing] that the

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circumstances in Boston Hockey supported . . . ‘the inescapable inference that

many would believe that the product itself originated with or was somehow

endorsed by [the teams]’”) (citation omitted); Supreme Assembly, Order of

Rainbow for Girls v. J. H. Ray Jewelry Co., 676 F.2d 1079, 1084–85 & n.7 (5th

Cir. 1982) (clarifying that confusion must stem from a perceived connection

between the product and the rightful owner of the mark because “[i]t is not enough

that typical buyers purchase the items because of the presence of the mark”). 6

So, although the district court on remand is to apply Boston Hockey as to the

validity and scope of SCAD’s service marks, it will have to analyze what impact, if

any, the case has on the confusion issue.

C

We pause to note the unexplained analytical leap in Boston Hockey. Under

the Lanham Act, registration is “prima facie evidence of the validity of the

registered mark . . . , of the registrant’s ownership of the mark, and of the

registrant’s exclusive right to use the registered mark in commerce on or in

connection with the goods or services specified in the registration.” § 1115(a)

(emphasis added). If that is so, then one would think that there should be some

legal basis for extending the scope of a registered service mark in a certain field
6
In passing, we note that Laite has also been recognized—albeit to a much lesser extent—as
providing protection where the owner of a common-law mark has not adequately established
confusion as to the origin of a contested product. See, e.g., Steve McKelvey & Ari J. Sliffman,
The Merchandising Right Gone Awry: What “Moore” Can Be Said?, 52 Am. Bus. L.J. 317, 343
(2015) (discussing the “judicial trend expanding the concept of a ‘merchandising right’”).
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(e.g., educational services) to a different category altogether (e.g., goods). As we

have noted elsewhere, “[d]etermining whether an infringement has taken place is

but the obverse of determining whether the service mark owner’s property right

extends into a given area.” Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716

F.2d 833, 839 (11th Cir. 1983).

Yet Boston Hockey does not provide any basis for extending service mark

rights to goods. This silence is potentially problematic for several reasons.

First, other circuits have said that service marks do not by their nature

extend to goods or products. See Murphy v. Provident Mut. Life Ins. Co. of

Philadelphia, 923 F.2d 923, 927 (2d Cir. 1990) (“Clearly, the term [‘services’ in

the Lanham Act] does not apply to goods or products.”); Application of Radio

Corp. of Am., 205 F.2d 180, 182 (C.C.P.A. 1953) (“Clearly had Congress intended

service marks to apply to goods or products, we believe it would have so stated.”).

See also A. Samuel Oddi, The Functioning of ‘Functionality’ in Trademark Law,

22 U. Houston L. Rev. 925, 958 (1985) (“In fact, the marks that had been

registered by the hockey teams [in Boston Hockey] were service marks, and it may

be questioned whether it is appropriate to extend service mark protection to

‘goods’ [the patches].”). If these other circuits and commentators are wrong, in

whole or in part, we should explain why.

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Second, a right in a mark is not a “right in gross.” United Drug Co.

v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918). This means that “[t]here is no

property in a [mark] apart from the business or trade in connection with which it is

employed.” American Steel Foundries v. Robertson, 269 U.S. 372, 380 (1926)

(addressing trademarks). The decision in Boston Hockey, however, seems to

provide the holder of a service mark with a form of monopolistic protection, a

so-called “independent right to exclude.” 4 McCarthy on Trademarks § 24:10.

See also United States v. Giles, 213 F.3d 1247, 1250 (10th Cir. 2000) (noting that

even though the teams in Boston Hockey “had not registered their marks for use on

patches, the [former Fifth Circuit] essentially gave the[m] a monopoly over use of

the trademark in commercial merchandising”); Int’l Order of Job’s Daughters v.

Lindeburg & Co., 633 F.2d 912, 919 (9th Cir. 1980) (“Interpreted expansively,

Boston Hockey holds that a trademark’s owner has a complete monopoly over its

use, including its functional use, in commercial merchandising. But our reading of

the Lanham Act and its legislative history reveals no congressional design to

bestow such broad property rights on trademark owners.”) (footnote omitted).

Third, it is well-settled that trademark (and service mark) rights are derived

through use, see, e.g., United Drug, 248 U.S. at 97, and we have not critically

analyzed whether the procedural advantages of a mark’s registration, see Laite 756

F.2d at 1541, or incontestability, see Dieter, 880 F.2d at 325–26, can serve as a

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basis for expanding the scope of service mark protection to a tangible good or

product. See 3 McCarthy on Trademarks § 19:3 (explaining that, although

registering a mark provides procedural and legal benefits, “the registration does not

create the trademark”); id. at § 32:141 (observing that “the case law usually

discusses incontestability when a plaintiff asserts incontestability as the source of

its right to be secure from a challenge to the validity of its mark”). Cf. In re Save

Venice N.Y., Inc., 259 F.3d 1346, 1353 (Fed. Cir. 2001) (observing that “[a]

registered mark is incontestable only in the form registered and for the goods or

services claimed”).

We recognize that, as to federally-registered trademarks, we have not limited

protection to the actual product or products listed in the certificate of registration.

“The remedies of the owner of a registered trademark,” we have held, “are not

limited to the goods specified in the certificate, but extend to any goods on which

the use of an infringing mark is ‘likely to cause confusion.’” Continental Motors

Corp. v. Continental Aviation Corp., 375 F.2d 857, 861 (5th Cir. 1967) (citation

omitted). See also E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imports, Inc.,

756 F.2d 1525, 1530 (11th Cir. 1985) (examining the similarity of products factor,

we acknowledged that registered trademark rights may “extend to any goods

related in the minds of consumers in the sense that a single producer is likely to put

out both goods”). Accord 6 McCarthy on Trademarks §§ 32:137, 32:152. Yet

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extending the scope of a registered trademark (which identifies “goods”) to a

different product appears to be qualitatively different from extending the scope of a

registered service mark (which identifies “services”) to a different category of

“goods.”

There may be a sound doctrinal basis for what Boston Hockey did. But

unless the concept of confusion completely swallows the antecedent question of

the scope of a registered mark, we have yet to hear of it.

V

On some level, we understand that allowing a party to “take a free ride on

another’s registered trademark,” see B. H. Bunn Co. v. AAA Replacement Parts

Co., 451 F.2d 1254, 1261 (5th Cir. 1971), simply feels wrong. Trademark rights,

however, do “not confer a right to prohibit the use of [a] word or words” generally

and exist “to protect the owner’s good will against the sale of another’s product as

his.” Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924).

If Boston Hockey did not exist, the district court’s rationale might provide a

reasonable way of analyzing the alleged infringement of registered service marks

through their use on goods. But Boston Hockey is in the books, and it compels

reversal of summary judgment in favor of Sportswear. Although there may be

“error in [that] precedent,” United States v. Romeo, 122 F.3d 941, 942 n.1 (11th

Cir. 1997), we do not have the authority, as a later panel, to disregard it. The case

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is remanded to the district court for further proceedings consistent with this

opinion.

REVERSED AND REMANDED.

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