SCOTUS Denies Review Of Important Trademark Infringement Case

• Published date: 14 October 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Armstrong Teasdale
• Author: Mr Travis Kearbey, Donna Frazier Schmitt and Kristen Mowery

The Supreme Court of the United States recently denied review of an 11th Circuit case addressing an important trademark infringement situation.

The Supreme Court refused defendant Prep Sportswear, Inc.'s request to review an 11th Circuit Court of Appeals decision (Savannah College of Art & Design, Inc. v. Sportswear, Inc., 983 F.3d 1273 (11th Cir. 2020)), which found that the defendant's sale of merchandise bearing Savannah College of Art & Design's (SCAD) trademarks without a license constituted infringement and permanently enjoined the defendant from using SCAD's trademarks in any way whatsoever. This is a big win for SCAD and paves the way for other educational institutions to enforce their rights and protect their brands. The decision is critical for schools and universities because the court recognized that a plaintiff can establish exclusive rights to a mark for use on goods even though the plaintiff only holds registrations for the mark in connection with services. Thus, a university is not required to hold a registration for its mark for the sale of goods, such as clothing, in order to enforce against a third party using its mark in connection with clothing. The court will analyze infringement like it would in any other case'whether the third party's use of the university's trademarks is likely to cause confusion among consumers.

Another powerful aspect of this decision involves the court still determining that Prep Sportswear is liable for infringement notwithstanding the fact that it included disclaimers on its website that the products were not sponsored by, endorsed by, or otherwise affiliated with SCAD, and that the products were produced by Prep...