Case: 21-40337 Document: 00516727092 Page: 1 Date Filed: 04/26/2023
United States Court of Appeals
for the Fifth Circuit United States Court of Appeals
Fifth Circuit
____________ FILED
April 26, 2023
No. 21-40337
____________ Lyle W. Cayce
Clerk
Springboards to Education, Incorporated,
Plaintiff—Appellant/Cross-Appellee,
versus
Mission Independent School District,
Defendant—Appellee/Cross-Appellant.
______________________________
Appeal from the United States District Court
for the Southern District of Texas
USDC No. 7:16-CV-527
______________________________
Before Elrod, Ho, and Wilson, Circuit Judges.
Per Curiam: *
We must determine whether the district court correctly granted
summary judgment dismissing Springboards to Education’s
(“Springboards”) trademark infringement claims. Springboards faces an
uphill battle, as three of our sister panels have already rejected Springboards’
arguments in near-twin cases. We see no basis to diverge from those
opinions, so we affirm.
_____________________
*
This opinion is not designated for publication. See 5th Cir. R. 47.5.
Case: 21-40337 Document: 00516727092 Page: 2 Date Filed: 04/26/2023
No. 21-40337
I.
Springboards offers a suite of products and services to school districts
that Springboards calls its “Read a Million Words” campaign (“the
Campaign”). The Campaign fosters literacy and builds excitement around
reading by encouraging students to read a million words during the school
year. Each iteration of the Campaign is tailored to the individual school, and
successful “millionaire readers” receive an induction party and various
prizes to celebrate their accomplishment. To facilitate the Campaign,
Springboards registered the trademarks “Read a Million Words,”
“Millionaire Reader,” “The Millionaire’s Reading Club,” and “Million
Dollar Reader.”
Mission Independent School District (“Mission”) is located in
Hidalgo County, Texas. Mission also developed a reading program that
encouraged students to read a million words during the school year. It
identified students who did so as “millionaire readers” and provided various
accolades to successful students that identified them as “millionaire
readers.” Additionally, at least one Mission school had its own “millionaire
club.”
Springboards sued Mission under the Lanham Act, alleging trademark
infringement, counterfeiting, dilution, 1 and false designation of origin.
Mission moved to dismiss under Federal Rule of Civil Procedure 12(b)(1),
arguing that it was immune from suit under the Eleventh Amendment. The
parties then cross-moved for summary judgment on the merits. The district
court held that Mission was not immune from suit but granted Mission’s
summary judgment motion on the merits. Springboards timely appealed, and
Mission cross-appealed the district court’s denial of Eleventh Amendment
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1
The dilution claim was dropped and is not at issue in this appeal.
2
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immunity. Consistent with our precedent, we affirm. See Springboards to
Educ., Inc. v. McAllen Indep. Sch. Dist., 62 F.4th 174 (5th Cir. 2023)
(“McAllen”); Springboards to Educ., Inc. v. Pharr-San Juan-Alamo Indep. Sch.
Dist., 33 F.4th 747 (5th Cir. 2022) (“Pharr-San Juan-Alamo”); Springboards
to Educ., Inc. v. Houston Indep. Sch. Dist., 912 F.3d 805 (5th Cir. 2019), as
revised (Jan. 29, 2019), as revised (Feb. 14, 2019) (“Houston”).
II.
We review both the district court’s holding regarding Eleventh
Amendment immunity and its grant of summary judgment de novo. McAllen,
62 F.4th at 178.
A.
We begin with the threshold jurisdictional issue. “The Eleventh
Amendment recognizes the background constitutional principle that states,
as separate sovereigns, are inherently immune from suit without their
consent.” Id. Eleventh Amendment immunity extends to “arms of the
state,” and we use the “Clark factors” to determine whether an entity is an
arm of the state:
(1) whether state statutes and case law view the entity as an arm
of the state; (2) the source of the entity’s funding; (3) the
entity’s degree of local autonomy; (4) whether the entity is
concerned primarily with local, as opposed to statewide,
problems; (5) whether the entity has the authority to sue and
be sued in its own name; and (6) whether it has the right to hold
and use property.
Id. at 178–79 (citing Clark v. Tarrant Cnty., 798 F.2d 736, 744–45 (5th
Cir. 1986)).
McAllen largely controls our analysis. There, we considered whether
the McAllen Independent School District was an “arm of the state” for the
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purposes of the Eleventh Amendment. We extensively cited Texas case law
and statutes in concluding that factors one and three weighed in favor of
immunity, while the rest cut against immunity. Id. at 183–84. For the most
part, that analysis applies equally here because Mission is bound by the same
Texas case law and statutes as the school district in McAllen. We must
consider, however, one distinction as to the second factor, the source of the
entity’s funding.
Mission avers that it depends on the state for roughly 72% of its
funding, which is a higher proportion than the “roughly half” that the school
district in McAllen received from the state. See id. at 183. But this slight
distinction does not flip the second factor in Mission’s favor for two reasons.
First, Mission still receives a substantial component of its funding from non-
state sources. Second, Mission “maintain[s] the power to levy certain taxes
and issue bonds,” id. at 183–84 (citing Tex. Educ. Code §§ 45.001,
45.002), and “[t]he ability to self-finance weighs heavily against immunity,”
id. at 184 (citing Pendergrass v. Greater New Orleans Expressway Comm’n, 144
F.3d 342, 346 (5th Cir. 1998)). Therefore, we discern no reason to deviate
from our holding in McAllen: Mission is not an arm of the state for the
purposes of the Eleventh Amendment, so it is not entitled to immunity. Id.;
see also San Antonio Indep. Sch. Dist. v. McKinney, 936 S.W.2d 279, 284 (Tex.
1996) (holding that “an independent school district is more like a city or
county than it is like an arm of the State of Texas and is amenable to suit in
federal court under the Eleventh Amendment”).
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B.
We turn to the merits of Springboards’ trademark claims. We note
that Springboards’ briefing in this case is nearly identical to its briefing in
McAllen, portending a similar result.
The Lanham Act imposes liability on anyone who 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” without the consent of the holder of the mark. 15 U.S.C.
§ 1114(1)(a). To succeed on any of its trademark claims, Springboards must
establish “a likelihood of confusion in the minds of potential customers as to
the source, affiliation, or sponsorship” of Mission’s reading program.
McAllen, 62 F.4th at 184 (quoting Elvis Presley Enters., Inc. v. Capece, 141 F.3d
188, 193 (5th Cir. 1988)).
In some cases, such as this one, the threshold question of the identity
of the relevant class of “consumers” is not immediately clear. Springboards
contends that the relevant consumers are students, parents, and educators
affiliated with Mission. We have repeatedly rejected that argument. See
McAllen, 62 F.4th at 185; Pharr-San Juan-Alamo, 33 F.4th at 750. Rather, as
we have held before, the relevant class of consumers is third-party school
districts who may be misled into thinking that Mission’s reading program is
affiliated with Springboards’ Campaign. McAllen, 62 F.4th at 185.
Ordinarily, with that threshold question answered, we would analyze
the “digits of confusion” 2 at this juncture. “We need not parse the
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2
The “digits of confusion” are:
(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
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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.” Pharr-San Juan-Alamo,
33 F.4th at 750. In other words, though some of the digits of confusion weigh
in Springboards’ favor, see Houston, 912 F.3d at 814–18, its antecedent error
of misidentifying the relevant class of consumers severely weakens the
viability of its likelihood of confusion argument because Springboards did not
present evidence germane to the relevant class of consumers. “One decisive
fact” sounds the death knell of Springboards’ case: “[S]ophisticated school-
district customers can tell the difference between goods Springboards is
selling them and goods and slogans [Mission] is not.” Pharr-San Juan-
Alamo, 33 F.4th at 751.
III.
For the reasons provided here and in our prior cases, the district court
did not err either in concluding that Mission is not entitled to immunity from
suit or in granting Mission’s motion for summary judgment on the merits.
AFFIRMED.
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retail outlets and purchasers, (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.
Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 453 (5th Cir. 2017)
(citation omitted).
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