Boston Professional Hockey Ass’n v. Dallas Cap & Emblem Mfg., Inc. - 510 F.2d 1004 (5th Cir. 1975)

Rule:

A cause of action for the infringement of a registered mark in violation of 15 U.S.C.S. § 1114 exists where a person uses (1) any reproduction, counterfeit, copy or colorable imitation of a mark; (2) without the registrant's consent; (3) in commerce; (4) in connection with the sale, offering for sale, distribution or advertising of any goods; (5) where such use is likely to cause confusion, or to cause mistake or to deceive.

Facts:

The Boston Professional Hockey Association (“BPHA”) brought an action to enjoin Dallas Cap & Emblem Manufacturing, Inc. from manufacturing and selling embroidered emblems that depicted their trademarks. BPHA have authorized National Hockey League Services, Inc. (NHLS) to act as their exclusive licensing agent. NHLS has licensed various manufacturers to use the team symbols on merchandise and has granted to one manufacturer, Lion Brothers Company, Inc., the exclusive license to manufacture embroidered emblems depicting the marks in question. In August of 1968 and June of 1971, Dallas Cap & Emblem Mfg. Inc. sought to obtain from NHLS an exclusive license to make embroidered emblems representing the team motifs. Although these negotiations were unsuccessful, it went ahead and manufactured and sold without authorization emblems which were substantial duplications of the marks. During the month of April 1972, Dallas Cap & Emblem sold approximately 24,603 of these emblems to sporting goods stores in various states. Dallas Cap & Emblem deliberately reproduced BPHA’s marks on embroidered emblems and intended the consuming public to recognize the emblems as the symbols of the various hockey teams and to purchase them as such. BPHA asserted a cause of action for common law unfair competition and sought relief under 15 U.S.C.S. §§ 1114 and 1125 of the Lanham Act. The district court denied Lanham Act relief and granted only limited relief for unfair competition, requiring solely that defendant place on the emblems or the package a notice that the emblems were not authorized by or had not emanated from plaintiffs. BPHA’s claim for damages was denied. BPHA appealed.

Issue:

Was the unauthorized, intentional duplication of BPHA’s symbol by Dallas Cap & Emblem violative of the team’s intellectual property rights?

Answer:

Yes.

Conclusion:

The fourth requisite of a § 1114 cause of action is that the infringing use of the registered mark must be in connection with the sale, offering for sale, distribution or advertising of any goods. Although the district court did not expressly find that BPHA had failed to establish element four, such a finding was implicit in the court's statement that "in the instant case, the registered trade mark is, in effect, the product itself." Dallas Cap & Emblem  in the business of manufacturing and marketing emblems for wearing apparel. These emblems are the products, or goods, which it sells. When Dallas Cap & Emblem caused BPHA’s marks to be embroidered upon emblems which it later marketed, defendant used those marks in connection with the sale of goods as surely as if Dallas Cap & Emblem had embroidered the marks upon knit caps. The fact that the symbol covered the entire face of Dallas Cap & Emblem’s product did not alter the fact that the trademark symbol was used in connection with the sale of the product. The sports fan in his local sporting goods store purchased Dallas Cap & Emblem’s fabric and thread emblems because they were embroidered with the symbols of ice hockey teams. Were Dallas Cap & Emblem to embroider the same fabric with the same thread in other designs, the resulting products would still be emblems for wearing apparel but they would not give trademark identification to the customer. The conclusion was inescapable that, without BPHA’s marks, Dallas Cap & Emblem would not have a market for his particular product among ice hockey fans desiring to purchase emblems embroidered with the symbols of their favorite teams. It became clear that Dallas Cap & Emblem’s use of BPHA’s marks is in connection with the sale, offering for sale, distribution, or advertising of goods and that plaintiffs have established the fourth element of a § 1114 cause of action.

The fifth element of a cause of action for mark infringement under 15 U.S.C.A. § 1114 is that the infringing use is likely to cause confusion, or to cause mistake or to deceive. The district court decided that there was no likelihood of confusion because the usual purchaser, a sports fan in his local sporting goods store, would not be likely to think that Dallas Cap & Emblem’s emblems were manufactured by or had some connection with BPHA. This court has held that the findings of a district court as to likelihood of confusion are factual and not to be overturned unless clearly erroneous. In this case, however, the district court overlooked the fact that the act was amended to eliminate the source of origin as being the only focal point of confusion. The confusion question here was conceptually difficult. It could have been said that the public buyer knew that the emblems portrayed the teams' symbols. Thus, it could have been argued, the buyer was not confused or deceived. This argument misplaced the purpose of the confusion requirement. The confusion or deceit requirement was met by the fact that Dallas Cap & Emblem duplicated the protected trademarks and sold them to the public knowing that the public would identify them as being the teams' trademarks. The certain knowledge of the buyer that the source and origin of the trademark symbols were in BPHA satisfied the requirement of the act. The argument that confusion must be as to the source of the manufacture of the emblem itself was unpersuasive, where the trademark, originated by the team, was the triggering mechanism for the sale of the emblem.