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11th Circuit: Service Marks Extend to Goods

By William Vogeler, Esq. on October 13, 2017 7:00 AM

It's not every day that a judge admits fuzzy reasoning, much less in writing.

But the U.S. Eleventh Circuit Court of Appeal is not hiding from the truth. In reversing a trademark decision, the court said it often "blurs the lines" when analyzing certain claims.

In Savannah College of Art and Design v. Sportswear, it is actually a little worse than that. The judges practically said the precedent makes no sense.

Service Marks for Goods

The dispute began when Sportswear, Inc. started using federally-registered service marks of the Savannah College of Art and Design without a license. The company was selling apparel and other goods on its website.

The college sued, claiming a service mark infringement under 15 U.S.C. Section 1114, unfair competition, and false designation of origin under 15 U.S.C. Section 1125.

A trial judge granted Sportswear's summary judgment motion, saying the college could not show that its marks extended to apparel. The school had registered its marks for "education services" only.

The Eleventh Circuit reversed, relying on Boston Prof'l Hockey Ass'n v. Dallas Cap & Emblem Mfg., Inc. In that case, the U.S. Fifth Circuit Court of Appeals extended service marks to goods.

What Good Reason?

"Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow," the Eleventh Circuit panel said.

The judges said the Fifth Circuit decision does not provide "any basis for extending service mark rights to goods." They said it lacked "critical analysis" and made an "unexplained analytical leap."

Technically, the judges were not questioning their own reasoning. They did follow a questionable decision, however, and admitted they "often blur the lines" between Section 1114 and 1125 claims.

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