REVISED DECEMBER 15, 2008

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 07-30580

BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY

AGRICULTURAL AND MECHANICAL COLLEGE; BOARD OF REGENTS

OF THE UNIVERSITY OF OKLAHOMA; OHIO STATE UNIVERSITY;

UNIVERSITY OF SOUTHERN CALIFORNIA

Plaintiffs-Appellees

v.

SMACK APPAREL CO; WAYNE CURTISS

Defendants-Appellants

Cons. w/ No. 07-30887

BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY

AGRICULTURAL AND MECHANICAL COLLEGE; BOARD OF REGENTS

OF THE UNIVERSITY OF OKLAHOMA; OHIO STATE UNIVERSITY;

UNIVERSITY OF SOUTHERN CALIFORNIA; COLLEGIATE LICENSING

COMPANY

Plaintiffs-Appellants

v.

SMACK APPAREL CO; WAYNE CURTISS

Defendants-Appellees

Appeal from the United States District Court

for the Eastern District of Louisiana

United States Court of Appeals

Fifth Circuit

F I L E D

November 25, 2008

Charles R. Fulbruge III

Clerk
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1 The Pasadena Tournament of Roses was also a plaintiff in the district court, but it was

dismissed upon joint motion of the parties and is not part of the instant appeal.

2

Before REAVLEY, STEWART, and OWEN, Circuit Judges.

REAVLEY, Circuit Judge:

These consolidated appeals concern a trademark dispute between four

universities and an apparel company and its principal. The Universities alleged

in the district court that the defendants violated the Lanham Act and infringed

their trademarks by selling t-shirts with the schools’ color schemes and other

identifying indicia referencing the games of the schools’ football teams. The

district court granted summary judgment to the Universities for trademark

infringement and conducted a jury trial as to damages, with the jury returning

a verdict favoring the plaintiffs. The defendants appeal the summary judgment

order, and the Universities appealthe district court’s denial oftheir post-verdict

motion for attorneys’ fees. We conclude that the colors, content, and context of

the offending t-shirts are likely to cause confusion as to their source,

sponsorship, or affiliation, and we AFFIRM.

I. Background

The plaintiffs are Louisiana State University (LSU), the University of

Oklahoma (OU), Ohio State University (OSU), the University of Southern

California (USC), and Collegiate Licensing Company (CLC), which is the official

licensing agent for the schools.1 The defendants are Smack Apparel Company

and its principal, Wayne Curtiss (collectively Smack).

Each university has adopted a particular two-color scheme as its school

colors (purple and gold for LSU, crimson and creme for OU, scarlet and gray for

OSU, and cardinal and gold for USC). The Universities have used their

respective color combinations for over one hundred years, and the color schemes
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3

are immediately recognizable to those who are familiar with the Universities.

The schools use these color schemes in many areas associated with university

life, including on campus signs and buildings, on printed brochures, journals,

and magazines, and on materials sentto potential donors. The Universities also

use the color schemes extensively in connection with their athletic programs,

particularly on team uniforms, resulting in wide-spread recognition ofthe colors

among college sports fans. Each university operates a successful collegiate

football program, and the respective football teams have appeared on numerous

occasions in nationally televised football games that have been viewed by

millions of people.

The schools also grant licenses for retail sales of products, including tshirts,that bear the university colors and trademarks. In recent years, the total

annual sales volume of products bearing the school colors along with other

identifying marks has exceeded $93 million for all the Universities combined.

The Universities hold registered trademarks in their respective names and

commonly used initials. They do not, however, possess registered trademarks

in their color schemes.

Smack Apparel Company is located in Tampa, Florida. Since 1998 Smack

has manufactured t-shirts targeted toward fans of college sports teams, and it

uses school colors and printed messages associated with the Universities on its

shirts. Smack sells some of the shirts over the Internet, but most are sold

wholesale to retailers and t-shirt vendors. The shirts frequently appear

alongside those that have been officially licensed by the Universities. The

instant case involves six of Smack’s t-shirt designs that concern the appearance

of the OU and LSU football teams in the 2004 Sugar Bowl in New Orleans,

Louisiana, and the number of national championships previously won by OSU

and USC. The district court described these Smack shirt designs as follows:
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2 438 F. Supp. 2d 653, 655 (E.D. La. 2006). 

4

• OU (2 shirt designs): (1) “Bourbon Street or Bust” (with the “ou”

in “Bourbon” in a different typestyle) (front), “Show us your beads!”

(with the “ou” in “your” in a different typestyle) and “Sweet as

Sugar!” (back) (2) “Beat Socal” (front), “And Let’s Make it Eight!”

(back). These shirts refer to 2004 Sugar Bowl contest in New

Orleans between the OU and LSU football teams. A victory in the

Sugar Bowl could have given OU a claim to an eighth national

football championship. One of OU’s principal rivals to this claim was

USC.

• LSU (2 shirt designs): (1) “Beat Oklahoma” (front), “And Bring it

Back to the Bayou!” and “2003 College Football National

Championship” (back) (2) “2003 College Football National

Champions” (front), colored circular depiction of game scores, with

“2003 College Football National Champions” and “Sweet as Sugar”

(back). These shirts refer to the 2004 Sugar Bowl contest in New

Orleans between OU and LSU, which was played to determine the

Bowl Championship Series national football champion.

• OSU: “Got Seven?” (front), “We do! 7 Time National Champs,”

with depiction of the state of Ohio and a marker noting “Columbus

Ohio” (back). This shirt refers to the seven college football national

titles claimed by OSU. 

• USC: “Got eight?” (front), “We Do! Home of the 8 Time National

Champions!” and depiction of the state of California with a star

marked “SoCal” (back). This design refers to USC’s claim to eight

college national football championships.

Bd. of Supervisors of LA State Univ. v. Smack Apparel Co.2In addition to the

messages described above, each shirt included Smack’s own logo in a space

approximately 2.5 inches wide and the words “Talkin’ the Talk.”

The Universities sued Smack, alleging that the above six shirt designs

infringed their trademark rights. The Universities alleged causes of action for

federaltrademark infringement and dilution, unfair competition, and deceptive
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5

trade practices under the Lanham Act, 15 U.S.C. §§ 1051–1141n; unfair trade

practices under the Louisiana Unfair Trade Practices and Consumer Protection

Act (LUTPA), LA. REV. STAT. § 51:1409; common law trademark infringement

and unfair competition; and state trademark dilution.The plaintiffs alleged that

each schools’ color combination acts as a source-identifier for the respective

schools, especially when used in connection with other indicia identifying or

suggesting the schools. They alleged that Smack’s shirts infringed their

unregistered trademarks by “combining Plaintiffs’ Marks with references to,

inter alia, . . . (a) well-known and highly-publicized athletic events in which a

University participated; (b) a University’s opponent in the referenced athletic

event;(c)the geographic area in which the referenced eventtakes place;(d)titles

and honors bestowed as a result of the referenced athletic event; (e) a

University’s earlier athletic successes and accomplishments; and (f) the

geographic area in which the University is located or associated.”

The Universities claimed that Smack’s products are similar to and

competed with goods sold or licensed by the Universities and are sold directly

alongside merchandise authorized by the plaintiffs at or near events referenced

in the shirts. In this way, according to the Universities, the sale of Smack’s

products is likely to deceive, confuse, and mislead consumers into believing that

Smack’s products are produced, authorized, or associated with the plaintiff

Universities. The Universities sought injunctive relief, lost profits, damages,

costs, and attorneys’ fees.

The parties filed cross-motions for summary judgment on the issue of

liability for trademark infringement. The district court granted summary

judgmentfor the Universities, holding that the Universities’ trademarks in their

color schemes, logos, and designs on shirts referring to the schools or their
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3

Id. at 657–58.

4

Id. at 658–61.

5

Id.

6

Id. at 661. 

7

Id.

8

Id. at 661–63.

6

accomplishments had acquired secondary meaning.

3 The district court

concluded that the marks were strong, having been used for decades as a

reference to the Universities, and that Smack’s infringing shirts were likely to

cause confusion as to the source, affiliation, or sponsorship of the shirts.4 The

district court found that the marks at issue were virtually identical. The court

reasoned that Smack used the same color schemes and similar logos and designs

as the plaintiffs; that Smack marketed and sold its shirts in a manner similar

to the Universities’ products and sometimes alongside those of the Universities;

and that Smack used the color schemes, logos, and designs with the specific

intent to rely upon their drawing power in enticing fans of the Universities to

purchase its shirts.5 The court noted that Smack admitted using the school

colors and other indicia with the intent of identifying the Universities as the

subject of the message in the shirt designs.6 The court also noted that a

likelihood of confusion existed because the shirts, which are relatively

inexpensive, are not purchased with a high degree of care by consumers.7 The

district court rejected Smack’s defenses of functionality, nominative fair use, and

laches.8

After deciding the liability issue, the district court conducted a jury trial

on the issue of damages. Smack moved for judgment as a matter of law, arguing

that there could be no actual damages because there had been no actual
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9 529 F.3d 642, 645 (5th Cir. 2008).

10 FED. R. CIV. P. 56(C).

11 478 F.3d 255, 260 (5th Cir.), cert. denied, 128 S. Ct. 181 (2007).

12 141 F.3d 188, 196 (5th Cir. 1998).

13 398 F.2d 637, 639 (5th Cir. 1968).

7

confusion. The district court denied the motion. The jury then returned a

verdict in favor of the plaintiffs and answered special interrogatories finding

that Smack’s “infringement caused actual confusion of the public or caused the

public to be deceived.” The jury awarded the Universities actual damages of

$10,506.80 and lost profits of $35,686. The district court also enjoined Smack

from manufacturing, distributing, selling, or offering for sale any of the six tshirt designs found to be infringing or any other similar designs.

II. Discussion

We review a district court’s grant of summary judgment de novo. Noble

Energy, Inc. v. Bituminous Cas. Co.9 Summary judgment is appropriate “if the

pleadings,the discovery and disclosure materials on file, and any affidavits show

that there is no genuine issue as to any material fact and that the movant is

entitled to judgment as a matter of law.”10 “No genuine issue of material fact

exists if the summary-judgment evidence is such that no reasonable juror could

find in favor of the nonmovant.” Jenkins v. Methodist Hosps. of Dallas, Inc.11

Although the secondary meaning of a mark and the likelihood of confusion are

ordinarily questions of fact, Elvis Presley Enterprises, Inc. v. Capece,

12 summary

judgment may be upheld if the summary judgment record compels the

conclusion that the movant is entitled to judgment as a matter of law.

Beef/Eater Rests., Inc. v. James Burrough Ltd.

13
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14 518 F.3d 321, 329 (5th Cir. 2008); see also Elvis Presley Enters., 141 F.3d at 194

(noting “the threshold requirement that the plaintiff must possess a protectible mark, which

must be satisfied before infringement can be actionable”).

15 15 U.S.C. § 1127. 

16 909 F.2d 839, 842 (5th Cir. 1990).

17 See Bd. of Supervisors, 438 F. Supp. 2d at 657 (quotation marks and citation omitted).

8

To prevail on their trademark infringement claim, the plaintiffs must

show two things. First, they must establish ownership in a legally protectible

mark, and second, they must show infringement by demonstrating a likelihood

of confusion. Am. Rice, Inc. v. Producers Rice Mill, Inc.14 Smack argues first

that the district court erroneously found no genuine issue of fact whether there

are legally protectible marks at issue in this case.

A. Protectible trademark and secondary meaning

The Lanham Act provides that a trademark may be “any word, name,

symbol, or device, or any combination thereof”thatis used or intended to be used

“to identify and distinguish” a person’s goods “from those manufactured or sold

by others and to indicate the source of the goods, even if that source is

unknown.”15 A mark need not be registered in order to obtain protection because

“[o]wnership of trademarks is established by use, not by registration.” Union

Nat’l Bank of Tex., Laredo v. Union Nat’l Bank of Tex., Austin.

16 The marks at

issue in this case are unregistered, and, as noted by the district court, were

described by the Universities as “color schemes in the context of merchandise

that makes reference to the Plaintiff Universities or their accomplishments and

is directed to their fans and other interested consumers.”17

The protectibility of unregistered marks is governed generally by the same

principles that qualify a mark for registration under the Lanham Act. Two
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18 505 U.S. 763, 768, 112 S.Ct. 2753, 2757 (1992).

19 Id.

20 Id.

21 Id. at 769, 112 S. Ct. at 2757.

22 514 U.S. 159, 163–64, 115 S. Ct. 1300, 1303–04 (1995).

9

Pesos, Inc. v. Taco Cabana, Inc.18 The key is whether the mark is “capable of

distinguishing the applicant’s goods from those of others.”19 Marks are generally

classified as (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5)

fanciful.20 The parties here do not articulate a classification for the marks at

issue, but the briefs show that they, and indeed the district court, have treated

the marks as descriptive. This type of mark is not inherently distinctive because

it does not inherently identify a particular source of the product; instead, it

requires secondary meaning to be protected under the Lanham Act.21

The parties correctly agree that a color scheme can be protected as a

trademark when it has acquired secondary meaning and is non-functional.

Qualitex Co. v. Jacobson Prods. Co.22 Although the parties discuss color at

length in their briefs, the Universities do not claim that every instance in which

their team colors appear violates their respective trademarks. Instead, the

claimed trademark is in the colors on merchandise that combines other

identifying indicia referring to the Universities. It is appropriate therefore to

consider not only the color but also the entire context in which the color and

other indicia are presented on the t-shirts at issue here. 

Smack contends that the claimed marks are too broad to encompass a

trademark because the concept of color along with other identifying indicia is not

distinctive. We disagree. As noted, the statute contemplates that a trademark
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23 15 U.S.C. § 1127 (emphasis added).

24 Qualitex, 514 U.S. at 162, 115 S. Ct. at 1302.

25 529 U.S. 205, 211, 120 S. Ct. 1339, 1343 (2000) (citation omitted).

26 791 F.2d 423, 427 (5th Cir. 1986) (“[T]he prime element of secondary meaning is ‘a

mental association in buyers’ minds between the alleged mark and a single source of the

product.’” (citation omitted)).

27 155 F.3d 526, 536 (5th Cir. 1998) (internal quotation marks omitted), abrogation on

other grounds recognized by Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351,

356 (5th Cir. 2002).

10

may include any word, name, or symbol “or any combination thereof.”23 The

Supreme Court has recognized that the Lanham Act describes the universe of

permissible marks “in the broadest of terms.”24 Because the Court recognizes

that trademarks may include color, we see no reason to exclude color plus other

identifying indicia from the realm of protectible marks provided the remaining

requirements for protection are met. Thus, the first step here is to ask whether

the Universities’ claimed marks have acquired secondary meaning.

Secondary meaning “occurs when, ‘in the minds of the public, the primary

significance of a [mark] is to identify the source of the product rather than the

product itself.’” Wal-Mart Stores, Inc. v. Samara Bros., Inc.25 The inquiry is one

of the public’s mental association between the mark and the alleged mark

holder. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.26 A mark has acquired

secondary meaning when it “has come through use to be uniquely associated

with a specific source.” Pebble Beach Co. v. Tour 18 I Ltd.27 We have applied a

multi-factor test for determining secondary meaning. The factors include:

“(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3)

amount and manner of advertising, (4) nature of use of the mark or trade dress

in newspapers and magazines, (5) consumer-survey evidence, (6) direct
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28 Pebble Beach, 155 F.3d at 541. 

29 Id.

30 OSU adopted its school colors in 1878, while LSU has been using its colors since 1893,

and OU and USC since 1895.

31 See Pebble Beach, 155 F.3d at 541–52 (prominent display of golf hole’s trade dress in

advertising supported finding of secondary meaning as a designator of source).

11

consumer testimony, and (7)the defendant’s intentin copying the trade dress.”28

These factors in combination may show that consumers consider a mark to be

an indicator of source even if each factor alone would not prove secondary

meaning.29

There is no dispute in this case that for a significant period of time the

Universities have been using their color schemes along with other indicia to

identify and distinguish themselves from others. Smack admits in its brief that

the Universities’ colors are well known among fans “as a shorthand nonverbal

visual means of identifying the universities.” But according to Smack, the

longstanding use of the school colors to adorn licensed products is not the same

as public recognition that the school colors identify the Universities as a unique

source of goods. We think, however, that the factors for determining secondary

meaning and an examination of the context in which the school colors are used

and presented in this case support the conclusion that the secondary meaning

of the marks is inescapable.

The record shows that the Universities have been using their color

combinations since the late 1800s.30 The color schemes appear on all manner of

materials, including brochures, media guides, and alumni materials associated

with the Universities. Significantly, each university features the color schemes

on merchandise, especially apparel connected with school sports teams, and such

prominent display supports a finding of secondary meaning.31 The record also
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32 For example, LSU sells between $10 and $20 million worth of goods each year, while

the annual sales volume for the other schools is approximately $13 million for USC, $20 million

for OU, and $50 million for OSU. 

33 Bd. of Supervisors, 438 F. Supp. 2d at 658.

34 For example, LSU and third parties have referred to that university as the “Purple

and Gold.”

35 See also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir. 1995).

We also note that the record does contain survey evidence compiled by the Universities

indicating that approximately thirty percent of consumers interviewedbelievedtwo ofSmack’s

t-shirts were produced or sponsored by the Universities. We have indicated that survey

12

shows that sales of licensed products combining the color schemes with other

references to the Universities annually exceed the tens of millions of dollars.32

As for advertising, the district court held that the Universities “advertise items

with their school colors in almost every conceivable manner . . . .”33 It is not clear

from the summary judgment evidence where and how the Universities advertise

their merchandise, but they certainly do use their color schemes and indicia in

numerous promotional materials aimed at students, faculty, alumni, and the

public in general, which strengthens the conclusion that the color schemes and

indicia viewed in context of wearing apparel also serves as an indicator of the

Universities as the source or sponsor of the apparel. Furthermore, the district

court correctly observed that the school color schemes have been referenced

multiple times in newspapers and magazines and that the schools also

frequently refer to themselves using the colors.34 The district court did not

specifically refer to any consumer-survey evidence or direct consumer testimony,

but it noted that Smack admitted it had incorporated the Universities’ color

schemes into its shirts to refer to the Universities and call them to the mind of

the consumer. Thus, Smack itself believed that the Universities’ color schemes

had secondary meaning that could influence consumers, which further supports

the conclusion that there is secondary meaning here.35 Given the longstanding
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evidence often may be the most direct and persuasive evidence of secondary meaning. Sugar

Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999). Nevertheless, Smack moved in

limine to exclude the Universities’ survey evidence, and the district court found it unnecessary

to rule on the motion because of the other evidence in the record. Because no party has raised

the issue, we express no opinion on the correctness of the district court’s belief and merely note

the presence of the survey evidence in the record.

36 510 F.2d 1004, 1011 (5th Cir. 1975).

13

use of the color scheme marks and their prominent display on merchandise, in

addition to the well-known nature of the colors as shorthand for the schools

themselves and Smack’s intentional use ofthe colors and other references,there

is no genuine issue of fact that when viewed in the context of t-shirts or other

apparel, the marks at issue here have acquired the secondary meaning of

identifying the Universities in the minds of consumers as the source or sponsor

of the products rather than identifying the products themselves.

We think this conclusion is consistent with the importance generally

placed on sports team logos and colors by the public. We have previously noted,

although not in the context of secondary meaning, that team emblems and

symbols are sold because they serve to identify particular teams, organizations,

or entities with which people wish to identify. See Boston Prof’l Hockey Ass’n v.

Dallas Cap & Emblem Mfg., Inc.36 We think this desire by consumers to

associate with a particular university supports the conclusion that team colors

and logos are, in the minds of the fans and other consumers, source indicators

of team-related apparel. By associating the color and other indicia with the

university, the fans perceive the university as the source or sponsor of the goods

because they want to associate with that source.

Smack argues that because photographs of businesses near the campuses

of the Universities show use of school colors by those businesses, consumers in

college towns merely associate school colors with “support of the home team.”

Smack cites no authority or supporting evidence for its contention, however.
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37 Cf. Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991)

(“An owner may license its trademark or trade dress and retain proprietary rights if the owner

maintains adequate control over the quality of goods and services that the licensee sells with

the mark or dress.”).

38 214 F.3d 658, 663 (5th Cir. 2000) (citation omitted). 

39 Id. at 663–64.

14

Moreover, the fact that other businesses in college towns may use the same

colors as a local university does not create an issue of fact as to the secondary

meaning of the colors used in merchandise that the Universities indisputably

produce, especially given Smack’s admission of intentional use of the colors to

influence consumers.

Smack also argues that because the Universities grant licenses to many

licensees, a consumer may not identify a university as the single source of the

product. The fact that the Universities may grant licenses to many licensees to

sell authorized products does not negate the fact that the schools are still the

sources of the marks.37 We conclude that the record establishes secondary

meaning in the marks here.

B. Likelihood of confusion

Once a plaintiff shows ownership in a protectible trademark, he must next

show that the defendant’s use of the mark “creates a likelihood of confusion in

the minds of potential customers as to the ‘source, affiliation, or sponsorship’” of

the product at issue. Westchester Media v. PRL USA Holdings, Inc.38

“Likelihood of confusion is synonymous with a probability of confusion, which is

more than a mere possibility of confusion.”39 When assessing the likelihood of

confusion, we consider a nonexhaustive list of so-called “digits of confusion,”

including: “(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 retail outlets and purchasers, (5) the identity of the advertising media used,
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40 Id. at 664.

41 Am. Rice, 518 F.3d at 329.

42 Id.

43 Elvis Presley Enters., 141 F.3d at 201.

44 Id.

45 See Bd. of Supervisors, 438 F. Supp. 2d at 659.

46 651 F.2d 311 (5th Cir. 1981)

47 Sun Banks, 651 F.2d at 316.

15

(6) the defendant’s intent, and (7) any evidence of actual confusion.”40 Courts

also consider (8)the degree of care exercised by potential purchasers.41 No single

factor is dispositive, and a finding of a likelihood of confusion need not be

supported by a majority of the factors.42

Smack argues that there were genuine issues of material fact whether its

t-shirt designs were likely to cause confusion among consumers. We disagree.

The first digit, the type of mark, refers to the strength of the mark.43 Generally,

the stronger the mark, the greater the likelihood that consumers will be

confused by competing uses of the mark.44 We agree with the district court that

the plaintiffs’ marks, which have been used for over one hundred years, are

strong.45 As noted above, Smack concedes that the Universities’ color schemes

are well-known and are used to identify the plaintiff Universities. It argues,

however, that the district court disregarded evidence of third-party use of the

Universities’ team colors in a non-trademark manner, and it cites Sun Banks of

Florida, Inc. v. Sun Federal Savings and Loan Association46in support of its

argument.

In Sun Banks, we held that“extensive” third-party use can weaken a mark

and negate a likelihood of confusion.47 In that case there were “over 4400
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48 Id.

49 Union Nat’l Bank of Tex., 909 F.2d at 848 n.24; see also 2 J. THOMAS MCCARTHY,

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:88 (4th ed.) (“[E]vidence of

extensive third party use on a wide range of goods and services does tend to weaken strength

and narrow the scope of protection.”).

50 756 F.2d 1535, 1545 n.27 (11th Cir. 1985).

16

businesses” in Florida that were using the word “Sun” in their names, and we

noted that “a significant number” fell within the same category of financial

institutions as the plaintiff.48

Smack presented photographs of three businesses in Louisiana, eight

businesses in Ohio, and approximately 20 businesses in Oklahoma that

incorporated in their signage color schemes similar to the school colors of LSU,

OSU, and OU, respectively. The businesses included several restaurants and

bars, a driving school, a pain management clinic, a theater, a furniture store, a

dry cleaners, a motel, a donut shop, an apartment complex, and a car care

company. All third-party use of a mark, not just use in the same industry as a

plaintiff, may be relevant to whether a plaintiff’s mark is strong or weak.49 But

the key is whether the third-party use diminishes in the public’s mind the

association ofthe mark with the plaintiff—surely lacking where colors are shown

on a store wall. See Univ. of Ga. Athletic Ass’n v. Laite.

50 Smack’s evidence falls

far below that of extensive use, and the specific photographs of third-party use

here failto create an issue of fact concerning the public’s association between the

plaintiffs and color schemes and other indicia that clearly reference the

Universities. We conclude that the Universities possess strong marks in their

use of color schemes and other identifying indicia on college sports-themed

merchandise.
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51 Elvis Presley Enters., 141 F.3d at 201.

52 Bd. of Supervisors, 438 F. Supp. 2d at 659–60.

53 See Beef/Eater Rests., 398 F.2d at 639 (“[T]he trial judge, by inspection of the

trademarks, may himself determine, and must determine, the likelihood of confusion.”).

17

The second digit is the similarity of the marks. This factor requires

consideration of the marks’ appearance, sound, and meaning.51 The district

court held that the marks at issue are virtually identical.52 Smack argues that

there was no evidence that any of its shirts were identical to any shirts licensed

by the Universities and that its t-shirt designs are not at all similar to any of the

Universities’ licensed products. Smack’s contention is belied by the record, and

even a cursory comparison of Smack’s designs with the plaintiffs’ licensed

products reveals striking similarity.53

For example, one of Smack’s shirt designs in purple and gold is referred

to as the “sundial” shirt and was targeted toward LSU fans. The front of the

shirt proclaims “2003 National Champions,” and the back contains the scores

from twelve games won by LSU. The scores are arranged in a circle with a short

phrase poking fun at each opponent. The shirt also contains the final score of

the 2004 Sugar Bowl, which LSU won, and the phrase “Sweet as Sugar!”

Although the shirt does not use the initials “LSU” anywhere, its identification

of LSU as the national champion is unmistakable from the colors and from the

references to the games in which LSU played. This shirt is strikingly similar to

LSU’s own merchandise that also uses the purple and gold colors and proclaims

LSU as the national champion. Several of the official designs contain the scores

of the games from LSU’s season and at least two designs present those scores in

a circular arrangement. The official designs also contain the phrases “Ain’t It

Sweet!” and “Pour It On!”
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18

Another Smack shirt directed at LSU fans is the “Beat Oklahoma” shirt.

It states, “Bring it Back to the Bayou.” This is very similar to two official

designs that state in part “Bring It Home” and “We’ll Have Big Fun on the

Bayou.”

The evidence of similarity is notlimited to the shirts targeted toward LSU

fans. For example, the “Bourbon Street or Bust!” shirt directed at OU fans

highlights the letters “OU” in a different type face in the words “Bayou” and

“your.” It also states “Sweet as Sugar,” references beads, and contains a picture

of a mardi gras mask. OU presented evidence of official t-shirt designs that also

highlight the letters “OU,” contain phrases such as “Ain’t Nothin’ Sweeter” and

“100% Pure Sugar,” and contain depictions of mardi gras masks and beads.

Another Smack OU design encourages, “Let’s Make it Eight,” while official

designs proclaim “Sugar is Sweet But . . . 8 is Great!”

In the district court, Smack presented the affidavit of its principal, Wayne

Curtiss, who explained that Smack uses humor and creative language to

distinguish its t-shirt designs from those of the purportedly more conservative

licensed or school-endorsed apparel. Curtiss asserted that the “got seven?” and

“got eight?” shirts directed toward OSU and USC fans, respectively, are parodies

ofthe “got milk” campaign. He further averred that he has used a similar design

on shirts for LSU and OU fans. It is clear from the record, however, that use of

creative language is not unique to Smack and does not make Smack’s shirts

dissimilar to the Universities’ own products. For example, LSU presented

evidence of a school-endorsed design that included the phrase “got sugar?” We

conclude that Smack’s shirts and the Universities’ products are similar in look,

sound, and meaning, and contain very similar color schemes, words, and images.

The similarities in design elements are overwhelming and weigh heavily in favor
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54 Because we conclude that there is no issue of fact as to the similarity of the use of the

marks in the t-shirt designs, we need not consider Smack’s contention that the district court

erroneously stated therehadbeeninstances where consumers actually believed Smack’s shirts

were affiliated with or sponsored by the Universities. Smack points to a stipulation by the

parties at the summary judgment stage that there was no evidence any consumer purchased

a Smack shirt believing it to be licensed by one of the Universities. Actual confusion on the

part of a consumer is not required to find a likelihood of confusion, however. Elvis Presley

Enters., 141 F.3d at 203.

55 Bd. of Supervisors, 438 F. Supp. 2d at 660.

19

of a likelihood of confusion. The district court correctly held there is no genuine

issue of material fact with respect to this digit of confusion.54

The third digit in the likelihood of confusion analysis is the similarity of

the products or services. We disagree with Smack’s assertion that the district

court did not find a great deal of similarity between the plaintiffs’ products and

the t-shirts at issue, as the district court specifically held that“[i]tis undisputed

that both Smack and the universities market shirts bearing the same color

schemes, logos, and designs.”55 The district court went on to reject Smack’s

argumentthatits t-shirts differed from the Universities’ products because ofthe

use of irreverent phrases or slang language, reasoning that Smack’s use of such

phrases and language was a misuse of the Universities’ good will in its marks.

Smack denies that it appropriated the Universities’ good will, but it does not

make an argument here that its shirts are distinguishable from those of the

Universities because of particular language on its shirts. We therefore find this

factor weighs in favor of a likelihood of confusion.

Smack concedes that the fourth factor of the analysis–identity of retail

outlets and purchasers–weighs in favor of a likelihood of confusion because the

Universities’ licensed products are often sold wholesale to the same retailers who

purchase Smack’s products.

The fifth digitis the identity of advertising media. The district court found

that Smack used the Universities’ color schemes, logos, and designs in
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56 Id.

57 Elvis Presley Enters., 141 F.3d at 203.

58 Bd. of Supervisors, 438 F. Supp. 2d at 661 (citation omitted).

20

advertising its shirts at the same or similar venues as those used by the

Universities.56 The court based its finding on Smack’s admission that it

participated in the same trade shows as the Universities and that it displayed

its shirts at the trade shows. The Universities do not point us to evidence that

trade shows are a significant advertising channel for the kinds of products at

issue in this case. Although the t-shirts are sold to the public at the same retail

outlets as officially licensed merchandise, Curtiss testified that beside limited

sales on Smack’s web site, Smack does not sell directly to the public and does not

advertise. Curtiss testified that Smack sells mainly to wholesalers. Some of

these wholesalers may include Smack’s shirts in advertisements that promote

their own business, but Curtiss was unable to provide much information about

these ads. We conclude that this digit, based on trade show advertising, is

minimally probative.

The sixth digit of confusion further supports a likelihood of confusion.

Although not necessary to a finding of likelihood of confusion, a defendant’s

intent to confuse may alone be sufficient to justify an inference that there is a

likelihood of confusion.57 As noted by the district court, Smack admitted that it

“‘used school colors and ‘other indicia’ with the intent of identifying the

university plaintiffs as the subject of the message expressed in the shirt

design.’”58 Curtiss testified that it was “no coincidence” that Smack’s shirts

incorporated the color schemes of the plaintiff Universities and that he designed

the shirts to make people think of the particular school that each shirt targeted.

Smack asserts that its intent to copy is not the same as an intent to confuse.

The circumstances ofthis case show, however,that Smack intended to capitalize
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59 756 F.2d 1535 (11th Cir. 1985).

60 Id. at 1537.

61 Id. at 1545 (footnote omitted).

62 Id. at 1545.

21

on the potential for confusion. Smack knew that its shirts were sold in the same

venues as and sometimes alongside officially licensed merchandise, and it

intentionally incorporated color marks to create the kind of association with the

Universities that would influence purchasers.

The Eleventh Circuit found a likelihood of confusion based on a similar

intent by the defendant to capitalize on the popularity of a college sports team.

Univ. of Ga. Athletic Ass’n v. Laite.

59 In Laite, the defendant used school colors

and a mark strikingly similar to the University of Georgia’s bulldog mascot on

cans to sell “Battlin’ Bulldog Beer.”60 After concluding that the defendant’s

bulldog mark was similar to the university’s mark, the court turned to the

defendant’s intent, concluding “there can be no doubt that Laite hoped to sell

‘Battlin’ Bulldog Beer’ not because the beer tastes great, but because the cans

would catch the attention of University of Georgia football fans.”61 Significantly,

the court found “the defendant’s intent and the similarity of design between the

two marks sufficient to support the district court’s finding of a ‘likelihood of

confusion . . . .’”62 The same is true here. Smack did not hope to sell its t-shirts

because of some competitive difference in quality or design compared with the

Universities’ licensed products, but rather it intended to take advantage of the

popularity of the Universities’ football programs and the appearance of the

school teams in the college bowl games. We have previously said that when a

“mark was adopted with the intent of deriving benefitfrom the reputation of [the

mark holder] that fact alone ‘may be sufficient to justify the inference that there
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63 615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF TORTS § 729, comment

f (1938)).

64 SeePebble Beach, 155 F.3d at 552 (noting that“conspicuous disclaimers that disclaim

affiliation may reduce or eliminate confusion”).

65 See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1244–45, 1247–48 (D. Kan.

Mar. 19, 2008) (finding a likelihood of confusion with respect to defendant’s manufacture of tshirts that were substantially similar to officially licensed goods, but not shirts that it found

contained substantial differences, in part because “[t]he high degree of similarity weighs

strongly in favor of a finding of intent; the use of almost identical marks supports a conclusion

that defendants intended to derive a benefit from KU’s reputation, rather than rely upon their

own”).

66 See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir. 1972)

(defendant’s placement of its own name on pen also bearing mark similar to plaintiff’s mark

“does not save the day; a purchaser could well think plaintiff had licensed defendant as a

second user and the addition is thus ‘an aggravation, and not a justification’” (citation

omitted)).

22

is confusing similarity.’” Amstar Corp. v. Domino’s Pizza, Inc.63 We believe that

Smack’s admitted intent and the similarity in appearance between Smack’s

shirts and the Universities’ licensed products is strong evidence of a likelihood

of confusion.

Smack argues that an intentto confuse is negated by its use of its own logo

and the words “Talkin’ the Talk,” which it maintains identifies it as the source

of the shirt. We are not persuaded. Smack’s logo appears in a space that is only

2.5 inches wide. We cannot conclude, without more, that this small and

inconspicuous placement of the logo would disabuse consumers of a mistaken

beliefthatthe Universities sponsored, endorsed or were otherwise affiliated with

the t-shirts.64 Smack has not pointed to evidence that its own logo is

recognizable by consumers or that it was acting to trade off its own reputation

as a producer of specialty t-shirts.65 Nor are we convinced that Smack’s logo on

the shirts acts as a disclaimer. The Universities point out that they require all

licensed products to contain the licensee’s name. Therefore, a consumer could

believe that Smack’s logo merely indicated that it was a licensee.66 We conclude
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67 Elvis Presley Enters., 141 F.3d at 203.

68 Id.; Pebble Beach, 155 F.3d at 545; Amstar, 615 F.2d at 263.

69 The Universities contend that there was evidence of actual confusion consisting of

consumer surveys concerning two of the six t-shirt designs and testimony from Curtiss that “I

have had people come up and go–at the booth and go, ‘Are these licensed?’” The evidence is

arguably minimal, see Amstar, 615 F.2d at 263, but as discussed we need not resolve the

matter.

70 Bd. of Supervisors, 438 F. Supp. 2d at 661.

71 Sun-Fun-Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 191 (5th Cir.

1981).

23

that the intent digit weighs in favor of a conclusion that there is a likelihood of

confusion.

The seventh digit is evidence of actual confusion. Evidence that

consumers have been actually confused in identifying the defendant’s use of a

mark as that of the plaintiff may be the best evidence of a likelihood of

confusion.67 It is well established, however, that evidence of actual confusion is

not necessary for a finding of a likelihood of confusion.68 The district court did

not resolve whether there was sufficient evidence of actual confusion, and

because such evidence is not required we also find it unnecessary to pass on the

question further.69

With respect to the eighth digit of confusion–the degree of care exercised

by potential purchasers–the district court held that the t-shirts at issue are

relatively inexpensive impulse items that are not purchased with a high degree

of care.70 Where items are relatively inexpensive, a buyer may take less care in

selecting the item, thereby increasing the risk of confusion.71 Smack contends

there was insufficient evidence for the district court’s conclusion. In response,

the Universities note Curtiss’ testimony that he hoped customers’ decisions to

purchase Smack’s shirts would be “quick,” and they point out that the shirts sell

for less than $18. Smack cites no evidence to demonstrate an issue of fact on
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72 See Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989) (“Defendants’

shirts are clearly designed to take advantage of the Boston Marathon and to benefit from the

good will associated with its promotion by plaintiffs. Defendants thus obtain a ‘free ride’ at

plaintiffs’ expense.”).

73 Id. at 35.

74 676 F.2d 1079 (5th Cir. 1982).

24

this point, and we agree with the district court that this digit weighs in favor of

a likelihood of confusion.

After reviewing the record, we conclude that there is no genuine issue of

fact that Smack’s use of the Universities’ color schemes and other identifying

indicia creates a likelihood of confusion as to the source, affiliation, or

sponsorship ofthe t-shirts. As noted above, the digits of confusion—particularly

the overwhelming similarity of the marks and the defendant’s intent to profit

from the Universities’ reputation—compel this conclusion. This is so, we have

noted, because Smack’s use of the Universities’ colors and indicia is designed to

create the illusion of affiliation with the Universities and essentially obtain a

“free ride” by profiting from confusion among the fans of the Universities’

football teams who desire to show support for and affiliation with those teams.72

This creation of a link in the consumer’s mind between the t-shirts and the

Universities and the intent to directly profit therefrom results in “an

unmistakable aura of deception” and likelihood of confusion.73

Smack contends that there is no evidence that consumers care one way or

the other whether t-shirts purchased for wear at a football game are officially

licensed and that, absent evidence that consumers prefer licensed merchandise,

it was error for the district court to conclude there was a likelihood of confusion.

Smack relies in part on our decision in Supreme Assembly, Order of Rainbow for

Girls v. J. H. Ray Jewelry Company.

74 The context of that case is different from

the instant case. 
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75 Id. at 1084.

76 Id. (emphasis added).

77 Id. at 1083.

78 Id.

79 Id.

80 Id.

25

In Rainbow for Girls, a fraternal organization and its official jeweler sued

a retailer for trademark infringement based on the retailer’s sale of jewelry

bearing the organization’s registered mark. Purchasers in the fraternalorganization jewelry market bought jewelry to show membership and status in

the organization.75 We upheld the district court’s finding of no likelihood of

confusion, concluding that “[t]he fact that purchasers purchased Rainbow

jewelry as a direct result ofthe presence ofthe Rainbow emblem does not compel

the conclusion that they did so believing that the jewelry was in any way

endorsed, sponsored, approved or otherwise associated with Rainbow, given the

court’s findings.”76 The district court had held that there was no historic custom

or practice specific to Rainbow jewelry or to the fraternal jewelry industry that

Rainbow jewelry could be manufactured only with Rainbow’s sponsorship or

approval.77 Instead, the court noted that fraternal organizations exercised little

control over the manufacture of jewelry bearing their emblems.78 Furthermore,

the court had held that because Rainbow’s “official jeweler” was itself welladvertised and used its own distinctive mark on the jewelry, any jewelry without

that distinctive mark could not cause confusion.79 We noted that the district

court’s findings distinguished the case from our decision in Boston Professional

Hockey Association v. Dallas Cap & Emblem Manufacturing.

80
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81 510 F.2d 1004 (5th Cir. 1975).

82 Id. at 1011.

83 Id. at 1012.

84 549 F.2d 368, 389 (5th Cir. 1977).

85 Id.

86 Id.

26

In Boston Hockey, we held that the defendant infringed the plaintiff’s

trademark rights by selling embroidered patches containing the emblems of

professional hockey teams.81 There, the emblems were sold for use by the public

to show “allegiance to or identification with the teams.”82 We held that the

likelihood of confusion requirement was met because the defendant duplicated

and sold the emblems “knowing that the public would identify them as being the

teams’ trademarks” and because the public’s “certain knowledge . . . that the

source and origin of the trademark symbols were in plaintiffs satisfies the

requirements of the act.”83

Subsequently, in Kentucky Fried Chicken Corporation v. Diversified

Packaging Corporation, we recognized that Boston Hockey might be read to

dispose of the confusion issue when buyers undoubtedly know that the plaintiff

is the source and origin of a mark.84 We reiterated that a showing of likelihood

of confusion was still required.85 But we noted that the circumstances in Boston

Hockey supported the likelihood of confusion there insofar as the sale of products

“universally associated” with the hockey team “supported the inescapable

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

somehow endorsed by Boston Hockey.”86 In Rainbow for Girls, the district court

opinion, which we upheld, also recognized in reference to Boston Hockey

that “‘(i)t is not unreasonable to conclude, given the degree to which sports
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87 Rainbow for Girls, 676 F.2d at 1085.

27

emblems are used to advertise teams and endorse products, that a consumer

seeing the emblem or name of a team on or associated with a good or service

would assume some sort of sponsorship or association between the product’s

seller and the team.’”87

We agree with this reasoning as applied to this case, which is more like

Boston Hockey than Rainbow for Girls. We hold that given the record in this

case and the digits of confusion analysis discussed above—including the

overwhelming similarity between the defendant’s t-shirts and the Universities’

licensed products, and the defendant’s admitted intent to create an association

with the plaintiffs and to influence consumers in calling the plaintiffs to

mind—that the inescapable conclusion is that many consumers would likely be

confused and believe that Smack’s t-shirts were sponsored or endorsed by the

Universities. The Universities exercise stringent control over the use of their

marks on apparelthrough their licensing program. Itis also undisputed thatthe

Universities annually sell millions of dollars worth of licensed apparel. We

further recognize the public’s indisputable desire to associate with college sports

teams by wearing team-related apparel. We are not persuaded that simply

because some consumers might not care whether Smack’s shirts are officially

licensed the likelihood of confusion is negated. Whether or not a consumer cares

about official sponsorship is a different question from whether that consumer

would likely believe the product is officially sponsored. For the foregoing

reasons, we conclude that a likelihood of confusion connecting the presence of the

Universities’ marks and the Universities’ themselves was demonstrated in this

case.

C. Functionality
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88 Qualitex, 514 U.S. at 164–65, 115 S. Ct. at 1304; Eppendorf, 289 F.3d at 355. 

89 532 U.S. 23, 32, 121 S. Ct. 1255, 1261 (2001).

90 Eppendorf, 289 F.3d at 356 (citing TrafFix, 532 U.S. at 32–33, 121 S. Ct. at 1261–62).

91 Id. at 355.

92 Id.

93 Id. at 356 (internal quotation and citation omitted).

94 Id.

95 Boston Prof’l Hockey, 510 F.2d at 1013.

28

A product feature that is functional does not qualify for protection under

the Lanham Act.88 The party seeking protection under the Lanham Act has the

burden of establishing nonfunctionality. TrafFix Devices, Inc. v. Marketing

Displays, Inc.89 The Supreme Court has recognized two tests for determining

functionality. “[T]he primary test for determining whether a product feature is

functional is whether the feature is essential to the use or purpose ofthe product

or whether it affects the cost or quality ofthe product.”90 This is the “traditional”

test.91 “Under this traditional definition, if a product feature is ‘the reason the

device works,’ then the feature is functional.”92 Under a secondary test for

functionality “a functional feature is one the exclusive use of which would put

competitors at a significant non-reputation-related disadvantage.”93 This is the

“competitive necessity” test.94

In Boston Hockey, we held that emblems of a hockey team sold on

embroidered patches had no demonstrated value other than their significance

as the trademarks of the team.95 Relying on our decision in Boston Hockey, the

district court here similarly held that the Universities’ color schemes, logos, and

designs also had no significance other than to identify with the Universities and
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96 Bd. of Supervisors, 438 F. Supp. 2d at 661–62.

97 See Boston Prof’l Hockey, 510 F.2d at 1013.

98 Cf. Elvis Presley Enters., 141 F.3d at 197 (“Courts consider marks in the context that

a customer perceives them in the marketplace . . . .”).

29

were therefore nonfunctional.96 We agree. Fans and other members of the

public purchase Smack’s shirts only because the shirts contain the plaintiffs’

colors and indicia identifying the Universities’ football teams, just as people

purchased the defendant’s emblems in Boston Hockey only because they

contained the hockey team’s trademarks.97 In other words, the presence of the

plaintiffs’ marks serve no function unrelated to trademark.

Smack argues thatthe Universities’ colors do perform functions unrelated

to trademark because the Universities use the colors in activities and programs

in connection with student life, buildings, and other programs and events and

that the colors are not used solely to identify the Universities as a source of

goods. However, the claimed trademarks are in the color schemes and other

indicia of the Universities when combined on merchandise that refer to the

Universities. It is proper, therefore, to examine that context when determining

the functionality of the claimed marks.98 As explained above, the Universities’

colors and indicia when used on merchandise creates secondary meaning tending

to identify the Universities in the minds of consumers as the producers,

sponsors, or endorsers of the product.

The school colors and other indicia used here do not make the t-shirts

“work.” The t-shirts would function just as well as articles of clothing without

the colors and designs. Smack’s t-shirts are sold not because of any functionality

in the marks Smack placed on them but rather because they bear the
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99 See Boston Hockey, 510 F.2d at 1013.

100 See id.; Sno-Wizard, 791 F.2d at 426 n.3; Pebble Beach, 155 F.3d at 540 n.6.

101 Qualitex, 514 U.S. at 163–64, 115 S. Ct. at 1303–04.

102 Id. at 169, 115 S.Ct. at 1306 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.

844, 850 n.10, 102 S. Ct. 2182, 2186 n.10 (1982)).

30

identifiable marks of the plaintiff Universities.99 The marks fail under the

traditional test for functionality and are protectible.

Smack urges, however, that the Universities’ colors on the t-shirts serve

several functional purposes. It contends that the shirts allow groups of people

to bond and show support for a philosophy or goal; facilitate the expression of

loyalty to the school and a determination of the loyalties of others; and identify

the wearer as a fan and indicate the team the fan is supporting. These claimed

functional uses are nothing more than the kind of aesthetic uses at issue in

Boston Hockey. Our circuit has consistently rejected the concept of aesthetic

functionality.100

Smack asserts that the Supreme Court has recognized aesthetic

functionality, and it relies on the interplay between the Court’s decisions in

Qualitex and TrafFix. As noted above, the Court recognized in Qualitex that

color alone could be protected as a trademark.101 In its discussion of

functionality, the Court noted that the purpose of the functionality doctrine is

to prevent use of a product’s feature as a trademark where doing so would hinder

competition, and it set forth the traditional definition where functionality turns

on whether the feature is “‘essential to the use or purpose of the article’ or

‘affects [its] cost or quality.’”102 After discussing aesthetic functionality in the

Restatement (Third) of Unfair Competition, the Court went on to state that

“where a color serves a significant nontrademark function . . . courts will

examine whether its use as a mark would permit one competitor (or a group) to
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103 Id. at 170, 115 S. Ct. at 1306.

104 TrafFix, 532 U.S. at 32, 121 S. Ct. at 1261.

105 Id. at 33, 121 S. Ct. at 1262. The product feature at issue in TrafFix was a

dual-spring mechanism designed to keep outdoor signs upright in the wind.

106 Id.

107 See 1 J.THOMASMCCARTHY, MCCARTHY ONTRADEMARKSANDUNFAIRCOMPETITION

§ 7:80 (4th ed.) (calling “amazing and incomprehensible [the] statement that in the 1995

Qualitex case, ‘aesthetic functionality was the central question’”).

31

interfere with legitimate (nontrademark-related) competition through actual or

potential exclusive use of an important product ingredient. That examination

should not discourage firms from creating esthetically pleasing mark designs,

for it is open to their competitors to do the same.”103

In TrafFix, the Court reiterated the traditional test for functionality and

expanded on the secondary “competitive necessity” test.104 The Court explained

that if a product feature is found to be functional under the traditional test,

which it was in that case, the inquiry ends and there is no need to consider

whether the feature is a competitive necessity.105 The Court went on to state,

however, that it is proper to inquire into the competitive necessity test in cases

of aesthetic functionality, which the Court stated “was the central question” in

Qualitex.

106

Smack relies on this pronouncementin TrafFix for the proposition thatthe

Supreme Court has recognized the aesthetic functionality doctrine. We note that

the TrafFix Court’s characterization of the issue in Qualitex has been harshly

criticized by commentators.107 Nevertheless, neither Qualitex nor TrafFix

addressed aesthetic functionality as the dispositive issue, let alone the purported

aesthetic functionality of a color-scheme that acts to identify and create a desired
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108 See id. (stating that “the Supreme Court has never directly addressed aesthetic

functionality as a dispositive issue in a case”); see also Au-Tomotive Gold, Inc. v. Volkswagen

of Am., Inc., 457 F.3d 1062, 1070 (9th Cir. 2006) (“The Supreme Court has yet to address

aesthetic functionality as it applies to logos and insignia in contrast to product features.”).

109 See N.L.R.B. v. Datapoint Corp., 642 F.2d 123, 129 (5th Cir. 1981) (“Without a

clearly contrary opinion of the Supreme Court or of this court sitting en banc, we cannot

overrule a decision of a prior panel of this court . . . .” (emphasis added)).

110 Qualitex, 514 U.S. at 170, 115 S. Ct. at 1306.

111 Au-Tomotive Gold, 457 F.3d at 1074.

112 Id. at 1072.

32

association with the particular source.108 We do not believe that the Court’s

dictum in TrafFix requires us to abandon our long-settled view rejecting

recognition of aesthetic functionality.109

Furthermore, we believe application ofthe competitive necessity test does

not require a different result. Smack contends that it will be placed at a

significant non-reputation-related disadvantage if it “is unable to satisfy

consumer demand for game day clothing that allows fans to conform to the

crowd, or satisfy consumer demand for game day clothing that matches other

items of clothing worn by the consumer.” Smack has admitted that the colors

and indicia on its shirts are designed to call the Universities to the mind of the

fans, and it acknowledges in its brief that fans purchase t-shirts to wear to

football games to show the colors of the team that the consumer is supporting.

In other words, fans desire to wear the t-shirts precisely because they show the

Universities’ marks. The Court in Qualitex stressed that the focus of

functionality is “legitimate (non-trademark-related) competition.”110 But here

any demand for Smack’s t-shirts is inextricably tied to the Universities’

trademarks themselves.111 We agree with the Ninth Circuit that “the fact that

a trademark is desirable does not, and should not, render it unprotectable.”112
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113 See Pebble Beach, 155 F.3d at 539 (“To define functionality based upon commercial

success would allow the second comer to trade on the first comer’s goodwill, purely because it

would be easier to market his product and not because he could not produce a viable,

competitive product.”).

114 Id. at 545.

115 Id. at 546.

116 Id.

117 Id. at 545.

33

Smack’s alleged competitive disadvantage in the ability to sell game day apparel

relates solely to an inability to take advantage of the Universities’ reputation

and the public’s desired association with the Universities that its shirts create.

This is not an advantage to which it is entitled under the rubric of legitimate

competition.113 We conclude that the district court correctly held that the marks

at issue here are nonfunctional.

D. Nominative fair use

Smack argues thatitincorporated the Universities’ colors in its t-shirts to

identify the Universities as the subject of the shirts. It contends that this was

a protected nominative fair use.

The nominative fair use doctrine provides that “one who has lawfully

copied another’s product can tell the public what he has copied.”114 It also

permits one to “use another’s mark truthfully to identify another’s goods or

services in order to describe or compare its product to the markholder’s

product.”115 The right of fair use is limited, however, insofar as “the use cannot

be one that creates a likelihood of confusion as to source, sponsorship, affiliation,

or approval.”116

We have held that a nominative fair use claim is a claim that a mark’s use

is noninfringing and therefore creates no likelihood of confusion.117 Thus, we

have also said that a court ordinarily should consider a nominative fair use claim
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118 Id. at 547.

119 Id. at 547 n.14.

120 Id. at 546.

34

in conjunction with its likelihood-of-confusion analysis in order to avoid lowering

the standard for confusion.118 Smack argues that the district court here first

determined that there was a likelihood of confusion and then determined that

there could be no nominative fair use because of that likelihood, thereby lowing

the confusion standard. We are not convinced of any error. Although the alleged

nominative fair use should usually be considered along with the likelihood-ofconfusion analysis, we have declined to require any particular method for the

consideration in cases where the nominative use is not a significant factor in the

liability determination.119 We think this is such a case.

In order to avail oneself of the nominative fair use defense “the defendant

(1) may only use so much of the mark as necessary to identify the product or

service and (2) may not do anything that suggests affiliation, sponsorship, or

endorsement by the markholder.”120 Smack used the Universities’ colors and

indicia in more than a nominative sense. It did not incorporate the colors and

other indicia to describe or compare its shirts with shirts licensed by the

Universities, nor did it do so to tell the public what it had copied. Smack did

incorporate the marks to identify the Universities as the subject of the shirts,

but it did so in a way that improperly suggested affiliation, sponsorship, or

endorsement.

To take a simple example, two shirt designs targeted toward the fans of

OSU and USC refer to the number of national championships those universities

have won and ask, respectively, “got seven?” and “got eight?” Both shirts

proclaim “WE DO!” and contain other specific indicia identifying the schools. 

Smack did not win any national championships—the respective Universities did.
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121 Bd. of Supervisors, 438 F. Supp. 2d at 661 (internal quotation marks omitted).

122 See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir.

1992).

123 Elvis Presley Enters., 141 F.3d at 205 (internal quotation marks omitted).

124 Westchester Media, 214 F.3d at 668.

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The use of the inclusive first-person personal pronoun “we” easily permits the

inference that the schools are the speakers in the shirts and therefore endorsed

the message.

As noted by the district court, Smack copied the mark with “an intent to

rely upon the drawing power in enticing fans of the particular universities to

purchase their shirts.”121 Such an attempt to capitalize on consumer confusion

is not a nominative fair use.122 We conclude that the district court correctly

granted summary judgment to the Universities on this issue.

E. Laches

Smack asserts that it is undisputed the LSU Athletic Department

purchased several of its purple and gold t-shirt designs, none of which are at

issue in this case, for sale in the LSU stadium gift shop between 2001 and 2004.

It argues that because LSU never objected to the shirt designs even though they

were similar to the designs involved in this case, the doctrine of laches is

applicable.

Laches is “an inexcusable delay that results in prejudice to the

defendant.”123 “Laches comprises three elements: (1) delay in asserting one’s

trademark rights, (2) lack of excuse for the delay, and (3) undue prejudice to the

alleged infringer caused by the delay.”124 A defendant who intentionally

infringes a trademark with the bad faith intentto capitalize on the markholder’s
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125 752 F.2d 145, 150–51 & n.2 (5th Cir. 1985).

126 Bd. of Supervisors, 438 F. Supp. 2d at 663.

127 See Conan Props., 752 F.2d at 151 n.2.

128 See id.

129 See id.; Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 1159 n.7 (5th Cir.

1982).

130 The district court separately held that (1) OU was entitled to summary judgment on

its claim that Smack’s shirts highlighting “OU” infringed OU’s unregistered mark in those

initials, and (2) LSU was entitled to summary judgment on its LUTPA claim. Bd. of

Supervisors, 438 F. Supp. 2d at 663. The court reasoned that its digits-of-confusion analysis

applied with equal force to OU’s claim and that the requirements for a claim under LUTPA

mirror those of the Lanham Act. Id. We agree with the district court. See also Louisiana

World Exposition, Inc. v. Logue, 746 F.2d 1033, 1039 (5th Cir. 1984) (holding that likelihood

of confusion is the essential ingredient for claims under both LUTPA and the Lanham Act).

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good will lacks the clean hands necessary to assertthe equitable defense. Conan

Props., Inc. v. Conans Pizza, Inc.125

The district court held that because Smack admitted it intentionally copied

the plaintiffs’ color schemes, Smack’s bad faith precluded the assertion of

laches.126 In Conan Properties, we held that although a defendant’s intentional

use of a plaintiff’s mark may give rise to “a presumption that the defendant

intended to cause public confusion as to the source or sponsorship of the

product,” such an intentional use “does not give rise to a presumption that the

defendant intended to appropriate the plaintiff’s good will.”127 Unlike Conan

Properties, the record here establishes the substantive and knowing bad faith

necessary to foreclose an equitable defense.128 Smack did not simply admit that

it knew the plaintiff Universities used marks similar to its own. Rather, it

admitted that it intentionally incorporated the Universities’ color schemes and

other indicia in order to specifically call the Universities to the public’s mind,

thus deriving a benefit from the Universities’ reputation.129 The district court

properly declined to apply the defense of laches.130
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131 Taco Cabana, 932 F.2d at 1126. Although Smack asserts that the Universities

presented no evidence from which the jury could find actual confusion, its argument addresses

the plaintiffs’ entitlementto damages and does not contestthe jury’s specific awardof damages.

We therefore do not consider whether the damages themselves were supported by sufficient

evidence.

132 15 U.S.C. § 1117(a).

133 381 F.3d 477, 490 (5th Cir. 2004).

134 Id.

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F. Actual damages

Smack argues that the district court erroneously denied its motion for

judgment as a matter of law at the trial on damages. It asserts that the

plaintiffs were not entitled to recover actual damages without evidence of actual

confusion. It is settled in this circuit, however, that actual confusion is not a

necessary prerequisite to an award of money damages.131

G. Attorneys’ fees

The Universities separately appeal the district court’s denial of their

request for an award of attorneys’ fees. The district court may award a

prevailing party its reasonable attorneys’ fees under the Lanham Act “in

exceptional cases.”132 We review the district court’s determination as to whether

a case is exceptional for clear error, and we review the district court’s decision

whether to award attorneys’ fees for an abuse of discretion. Scott Fetzer Co. v.

House of Vacuums, Inc.133

The prevailing party bears the burden of demonstrating the exceptional

nature of the case by clear and convincing evidence.134 “An exceptional case is

one where the violative acts can be characterized as malicious, fraudulent,
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135 Pebble Beach, 155 F.3d at 555 (internal quotation marks and citation omitted).

136 Id. at 556.

137 Id.

138 Id. at 555.

139 Taco Cabana, 932 F.2d at 1127.

140 See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 370 (4th

Cir. 2001) (holding that defendant’s bad faith in violating the anti-cybersquating statute did

not compel a finding of malicious, fraudulent, willful or deliberate behavior for attorneys’ fees

under the Lanham Act).

141 See Pebble Beach, 155 F.3d at 556 (“‘[a] district court normally should not find a case

exceptional where the party presents what it in good faith believes may be a legitimate

defense’” (citation omitted)).

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deliberate, or willful.”135 The necessary showing demands a “high degree of

culpability on the part of the infringer, for example bad faith or fraud.”136

Smack intentionally copied the Universities’ color schemes for use on its

shirts and admitted doing so. Yet, we have held that deliberate copying does not

render a case per se exceptional.137 When assessing whether a case is

exceptional, courts must consider all the facts and circumstances.138 We are

further mindful that the district court, having heard the evidence, observed the

witnesses, and appraised the parties’ motives, is in the best position to make this

determination.139 The district court determined at the summary judgment stage

that Smack acted in bad faith and was precluded from asserting the equitable

defense of laches. However, an actor’s bad faith in violating the Lanham Act

does not per se equate to malicious, fraudulent, or willful conduct justifying an

award of attorneys’ fees.140 The district court here credited Curtiss’ testimony

that he believed based on a settlement agreement in another case that he could

use school colors and design elements in his shirts as long as he did not use the

school’s name or initials.141 As the district court also recognized, this case
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142 See Scott Fetzer Co., 381 F.2d at 490.

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presents somewhat novel issues—also evident by the presence of several amicus

briefs—concerning the trademark protection for color schemes used by the

Universities. A party does not act in bad faith by predicating his legal claim or

defense on an unsettled legal theory.142

We have carefully considered the Universities’ arguments but conclude

that the district court neither clearly erred nor abused its discretion. We

therefore affirm the denial of attorneys’ fees.

AFFIRMED.