This week the Eleventh Circuit ruled on service mark infringement claims brought by Savannah College of Art and Design ("SCAD") against Sportswear, Inc. for selling unlicensed apparel and other goods on its website. The district court in the Northern District of Georgia had found that though SCAD had registered marks in connection with education services, SCAD failed to establish its mark's rights extended to apparel. More specifically, in relying on precedent concerning unregistered marks, SCAD could not show common law priority because SCAD could not show prior use of the mark on apparel before Sportswear.
On appeal, Judge Adalberto Jordan published a decision reversing the district court's findings, relying on 1975 precedent Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., to find that SCAD's registered service mark protection may extend to goods as well. While recognizing that infringement claims under § 1114(1)(a) are based on federally-registered marks, claims under § 1125(a) can be based on federally-registered or unregistered marks, and the oft-blurred lines between both claims, both claims nonetheless required SCAD to establish the following: (1) enforceable trademark rights in the mark (validity and scope); and (2) likelihood of confusion from the infringer's unauthorized use of its mark. In informing the first part of the analysis, the Court found it instructive to follow Boston Hockey based on SCAD's registered service marks. The precedent, which is not without criticism, "extends protection for federally-registered service marks to goods, and therefore beyond the area of registration listed in the certificate." The case was therefore remanded for further proceedings under the § 1114(1)(a) and § 1125(a) claims in light of Boston Hockey.