## Facts

- Several universities, through a licensing agent, licensed school-related indicia for apparel and related merchandise, generating substantial licensing revenue.
- Each university had long used distinctive color combinations closely associated with its identity (e.g., LSU purple and gold; Oklahoma crimson and cream; Ohio State scarlet and gray; USC cardinal and gold).
- The schools used these colors for decades on signage, publications, uniforms, and merchandise, and asserted that the colors—especially when paired with school-specific references—identified the schools as the source or sponsor.
- Smack Apparel, an unaffiliated seller, manufactured and sold T-shirts using the universities’ color combinations together with phrases and references tied to particular seasons, games, and championships.
- Smack admitted it chose specific color combinations to call particular universities to consumers’ minds and to benefit from fan demand associated with the schools’ athletic success.
- The district court granted summary judgment for the universities on trademark infringement, entered injunctive relief and damages after trial, and denied the universities’ request for attorneys’ fees.

## Issues

1. Whether the universities owned legally protectable marks in their color schemes when used in combination with other identifying indicia, including whether those combinations had acquired secondary meaning.
2. Whether Smack’s use created a likelihood of confusion as to source, sponsorship, approval, or affiliation under the Lanham Act.
3. Whether the asserted color-scheme marks were functional and therefore not protectable.
4. Whether Smack established nominative fair use.
5. Whether laches barred relief and whether the case was “exceptional” to justify attorneys’ fees.

## Decision

- The Fifth Circuit affirmed liability for trademark infringement based on protectable marks and a likelihood of confusion.
- The court held the universities’ color schemes, in combination with contextual and school-identifying indicia, had acquired secondary meaning and were protectable even if unregistered.
- The court held Smack’s use was likely to cause confusion about sponsorship or affiliation, supported in part by Smack’s intent to capitalize on the universities’ goodwill.
- The court rejected Smack’s functionality defense, treating the colors and associated indicia as source-identifying rather than utilitarian features.
- The court rejected nominative fair use because Smack used more than reasonably necessary to identify the universities and its overall presentation implied affiliation.
- The court held Smack’s knowing bad faith defeated laches.
- The court affirmed the denial of attorneys’ fees, concluding the circumstances did not warrant fee-shifting under the Lanham Act’s “exceptional case” standard.
- The judgment and injunction were largely affirmed, with limited remand consistent with the court’s partial reversal.

## Legal Principles

- Unregistered trade dress or color-based marks are protectable under the Lanham Act when the plaintiff shows ownership of a legally protectable mark (including secondary meaning) and infringement through likelihood of confusion.
- Secondary meaning may be established where a combination of colors and other contextual indicia, through long and consistent use, comes to identify a particular source or sponsor in consumers’ minds.
- Likelihood of confusion can be established as a matter of law on summary judgment where the evidentiary record compels that conclusion, including evidence of intent to benefit from another’s goodwill.
- A mark is not functional when its role is source identification rather than providing a utilitarian advantage, even if consumers find the feature desirable for expressive reasons.
- Nominative fair use does not apply where the defendant uses more of the plaintiff’s mark than necessary or suggests sponsorship or affiliation.
- Equitable defenses such as laches may be unavailable where the defendant acted in knowing bad faith.
- Attorneys’ fees under the Lanham Act require an “exceptional” case determination; bad faith alone does not mandate fees.

## Conclusion

The Fifth Circuit held that universities’ long-used color schemes, when combined with school-identifying references, could function as protectable marks with secondary meaning, and that an unaffiliated seller infringed by using those combinations in a manner likely to confuse consumers about sponsorship; injunctive relief and damages stood, but attorneys’ fees were denied.


Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008)