The US Court of Appeals for the 11th Circuit concluded that in the context of federally registered service marks (as opposed to common law trademarks), the trademark owner’s first use of its marks on goods was not determinative. Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., Case No. 15-13830 (11th Cir., Oct. 3, 2017) (Jordan, J). 

Sportswear began using federally registered service marks owned by Savannah College of Art & Design in connection with apparel and other goods on its website, without permission from the college. Savannah College sued, arguing that Sportswear had infringed its service marks, among other things. The district court concluded that Savannah College had failed to establish that it had enforceable rights in its marks that extended to apparel because the college had only registered its service marks for use in connection with educational services, and had not shown that it had used its marks on apparel earlier than Sportswear. Savannah College appealed.

On appeal, the 11th Circuit reversed the district court, concluding that the case did not simply involve infringement of a common law trademark, and consequently the date of Savannah College’s first use of its trademarks on goods was not determinative. According to the controlling case law, protection is extended for federally registered service marks to goods. The Court explained that the case law upon which the district court relied was inappropriate because in the cited precedent case, “neither party had a federally-registered trademark and as a result both sides could only assert common-law trademark rights. . . . That is why priority of use became a critical issue in that case.” Here, Savannah College’s claims revolved around federally registered marks.

The 11th Circuit instead relied on the 1975 US Court of Appeals for the Fifth Circuit decision in Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., which extended protection for federally registered service marks to goods. The Court concluded that Boston Hockey, despite “lacking critical analysis, implicitly but necessarily supports the proposition that the holder of a federally-registered service mark need not register that mark for goods—or provide evidence of prior use of that mark on goods—in order to establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing use of that mark on goods.”

Therefore, the 11th Circuit concluded that that the district court erred in finding that Savannah College had failed to establish that it used its mark first on goods, since first use on goods is not determinative in the case of federally registered service marks.