Lack of Commercial Implementation Precludes Lanham Act Claims

Springboards to Education, Inc., launched a literacy program entitled “Read a Million Words campaign” in 2005. They marketed the program to school districts. In 2008, Houston Independent School District (HISD) implemented a similar program called “Houston ISD Millionaire Club”. After Springboards registered Trademarks for terms related to their program, they filed suit against HISD claiming “ its incentive items and informational material constituted counterfeiting, trademark infringement, false designation of origin, and trademark dilution, all in violation of the Lanham Act”. Because Springboards could not prove HISD marketed and sold its program in a commercial manner, the District Court denied Springboards’ Lanham arguments. On appeal, the Fifth Circuit affirmed the District Court’s decision. Learn how the Fifth Circuit applied eight nonexhaustive “digits of confusion” to the case.