            REVISED DECEMBER 15, 2008
     IN THE UNITED STATES COURT OF APPEALS
                                      United States Court of Appeals
              FOR THE FIFTH CIRCUIT            Fifth Circuit

                                                            FILED
                                                       November 25, 2008
                           No. 07-30580
                                                      Charles R. Fulbruge III
                                                              Clerk
BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY
AGRICULTURAL AND MECHANICAL COLLEGE; BOARD OF REGENTS
OF THE UNIVERSITY OF OKLAHOMA; OHIO STATE UNIVERSITY;
UNIVERSITY OF SOUTHERN CALIFORNIA

                                    Plaintiffs-Appellees
v.

SMACK APPAREL CO; WAYNE CURTISS

                                    Defendants-Appellants


                       Cons. w/ No. 07-30887


BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY
AGRICULTURAL AND MECHANICAL COLLEGE; BOARD OF REGENTS
OF THE UNIVERSITY OF OKLAHOMA; OHIO STATE UNIVERSITY;
UNIVERSITY OF SOUTHERN CALIFORNIA; COLLEGIATE LICENSING
COMPANY

                                    Plaintiffs-Appellants
v.

SMACK APPAREL CO; WAYNE CURTISS

                                    Defendants-Appellees


            Appeal from the United States District Court
               for the Eastern District of Louisiana
                                       No. 07-30580
                                     c/w No. 07-30887


Before REAVLEY, STEWART, and OWEN, Circuit Judges.
REAVLEY, Circuit Judge:
       These consolidated appeals concern a trademark dispute between four
universities and an apparel company and its principal. The Universities alleged
in the district court that the defendants violated the Lanham Act and infringed
their trademarks by selling t-shirts with the schools’ color schemes and other
identifying indicia referencing the games of the schools’ football teams. The
district court granted summary judgment to the Universities for trademark
infringement and conducted a jury trial as to damages, with the jury returning
a verdict favoring the plaintiffs. The defendants appeal the summary judgment
order, and the Universities appeal the district court’s denial of their post-verdict
motion for attorneys’ fees. We conclude that the colors, content, and context of
the offending t-shirts are likely to cause confusion as to their source,
sponsorship, or affiliation, and we AFFIRM.
                                     I. Background
       The plaintiffs are Louisiana State University (LSU), the University of
Oklahoma (OU), Ohio State University (OSU), the University of Southern
California (USC), and Collegiate Licensing Company (CLC), which is the official
licensing agent for the schools.1 The defendants are Smack Apparel Company
and its principal, Wayne Curtiss (collectively Smack).
       Each university has adopted a particular two-color scheme as its school
colors (purple and gold for LSU, crimson and creme for OU, scarlet and gray for
OSU, and cardinal and gold for USC).                The Universities have used their
respective color combinations for over one hundred years, and the color schemes



       1
        The Pasadena Tournament of Roses was also a plaintiff in the district court, but it was
dismissed upon joint motion of the parties and is not part of the instant appeal.

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are immediately recognizable to those who are familiar with the Universities.
The schools use these color schemes in many areas associated with university
life, including on campus signs and buildings, on printed brochures, journals,
and magazines, and on materials sent to potential donors. The Universities also
use the color schemes extensively in connection with their athletic programs,
particularly on team uniforms, resulting in wide-spread recognition of the colors
among college sports fans. Each university operates a successful collegiate
football program, and the respective football teams have appeared on numerous
occasions in nationally televised football games that have been viewed by
millions of people.
      The schools also grant licenses for retail sales of products, including t-
shirts, that bear the university colors and trademarks. In recent years, the total
annual sales volume of products bearing the school colors along with other
identifying marks has exceeded $93 million for all the Universities combined.
The Universities hold registered trademarks in their respective names and
commonly used initials. They do not, however, possess registered trademarks
in their color schemes.
      Smack Apparel Company is located in Tampa, Florida. Since 1998 Smack
has manufactured t-shirts targeted toward fans of college sports teams, and it
uses school colors and printed messages associated with the Universities on its
shirts. Smack sells some of the shirts over the Internet, but most are sold
wholesale to retailers and t-shirt vendors.      The shirts frequently appear
alongside those that have been officially licensed by the Universities. The
instant case involves six of Smack’s t-shirt designs that concern the appearance
of the OU and LSU football teams in the 2004 Sugar Bowl in New Orleans,
Louisiana, and the number of national championships previously won by OSU
and USC. The district court described these Smack shirt designs as follows:


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      • OU (2 shirt designs): (1) “Bourbon Street or Bust” (with the “ou”
      in “Bourbon” in a different typestyle) (front), “Show us your beads!”
      (with the “ou” in “your” in a different typestyle) and “Sweet as
      Sugar!” (back) (2) “Beat Socal” (front), “And Let’s Make it Eight!”
      (back). These shirts refer to 2004 Sugar Bowl contest in New
      Orleans between the OU and LSU football teams. A victory in the
      Sugar Bowl could have given OU a claim to an eighth national
      football championship. One of OU’s principal rivals to this claim was
      USC.

      • LSU (2 shirt designs): (1) “Beat Oklahoma” (front), “And Bring it
      Back to the Bayou!” and “2003 College Football National
      Championship” (back) (2) “2003 College Football National
      Champions” (front), colored circular depiction of game scores, with
      “2003 College Football National Champions” and “Sweet as Sugar”
      (back). These shirts refer to the 2004 Sugar Bowl contest in New
      Orleans between OU and LSU, which was played to determine the
      Bowl Championship Series national football champion.

      • OSU: “Got Seven?” (front), “We do! 7 Time National Champs,”
      with depiction of the state of Ohio and a marker noting “Columbus
      Ohio” (back). This shirt refers to the seven college football national
      titles claimed by OSU.

      • USC: “Got eight?” (front), “We Do! Home of the 8 Time National
      Champions!” and depiction of the state of California with a star
      marked “SoCal” (back). This design refers to USC’s claim to eight
      college national football championships.

Bd. of Supervisors of LA State Univ. v. Smack Apparel Co.2 In addition to the
messages described above, each shirt included Smack’s own logo in a space
approximately 2.5 inches wide and the words “Talkin’ the Talk.”
      The Universities sued Smack, alleging that the above six shirt designs
infringed their trademark rights. The Universities alleged causes of action for
federal trademark infringement and dilution, unfair competition, and deceptive



      2
          438 F. Supp. 2d 653, 655 (E.D. La. 2006).

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trade practices under the Lanham Act, 15 U.S.C. §§ 1051–1141n; unfair trade
practices under the Louisiana Unfair Trade Practices and Consumer Protection
Act (LUTPA), LA. REV. STAT. § 51:1409; common law trademark infringement
and unfair competition; and state trademark dilution. The plaintiffs alleged that
each schools’ color combination acts as a source-identifier for the respective
schools, especially when used in connection with other indicia identifying or
suggesting the schools.       They alleged that Smack’s shirts infringed their
unregistered trademarks by “combining Plaintiffs’ Marks with references to,
inter alia, . . . (a) well-known and highly-publicized athletic events in which a
University participated; (b) a University’s opponent in the referenced athletic
event; (c) the geographic area in which the referenced event takes place; (d) titles
and honors bestowed as a result of the referenced athletic event; (e) a
University’s earlier athletic successes and accomplishments; and (f) the
geographic area in which the University is located or associated.”
      The Universities claimed that Smack’s products are similar to and
competed with goods sold or licensed by the Universities and are sold directly
alongside merchandise authorized by the plaintiffs at or near events referenced
in the shirts. In this way, according to the Universities, the sale of Smack’s
products is likely to deceive, confuse, and mislead consumers into believing that
Smack’s products are produced, authorized, or associated with the plaintiff
Universities. The Universities sought injunctive relief, lost profits, damages,
costs, and attorneys’ fees.
      The parties filed cross-motions for summary judgment on the issue of
liability for trademark infringement. The district court granted summary
judgment for the Universities, holding that the Universities’ trademarks in their
color schemes, logos, and designs on shirts referring to the schools or their




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accomplishments had acquired secondary meaning.3              The district court
concluded that the marks were strong, having been used for decades as a
reference to the Universities, and that Smack’s infringing shirts were likely to
cause confusion as to the source, affiliation, or sponsorship of the shirts.4 The
district court found that the marks at issue were virtually identical. The court
reasoned that Smack used the same color schemes and similar logos and designs
as the plaintiffs; that Smack marketed and sold its shirts in a manner similar
to the Universities’ products and sometimes alongside those of the Universities;
and that Smack used the color schemes, logos, and designs with the specific
intent to rely upon their drawing power in enticing fans of the Universities to
purchase its shirts.5 The court noted that Smack admitted using the school
colors and other indicia with the intent of identifying the Universities as the
subject of the message in the shirt designs.6 The court also noted that a
likelihood of confusion existed because the shirts, which are relatively
inexpensive, are not purchased with a high degree of care by consumers.7 The
district court rejected Smack’s defenses of functionality, nominative fair use, and
laches.8
      After deciding the liability issue, the district court conducted a jury trial
on the issue of damages. Smack moved for judgment as a matter of law, arguing
that there could be no actual damages because there had been no actual


      3
          Id. at 657–58.
      4
          Id. at 658–61.
      5
          Id.
      6
          Id. at 661.
      7
          Id.
      8
          Id. at 661–63.

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confusion. The district court denied the motion. The jury then returned a
verdict in favor of the plaintiffs and answered special interrogatories finding
that Smack’s “infringement caused actual confusion of the public or caused the
public to be deceived.” The jury awarded the Universities actual damages of
$10,506.80 and lost profits of $35,686. The district court also enjoined Smack
from manufacturing, distributing, selling, or offering for sale any of the six t-
shirt designs found to be infringing or any other similar designs.
                                       II. Discussion
      We review a district court’s grant of summary judgment de novo. Noble
Energy, Inc. v. Bituminous Cas. Co.9 Summary judgment is appropriate “if the
pleadings, the discovery and disclosure materials on file, and any affidavits show
that there is no genuine issue as to any material fact and that the movant is
entitled to judgment as a matter of law.”10 “No genuine issue of material fact
exists if the summary-judgment evidence is such that no reasonable juror could
find in favor of the nonmovant.” Jenkins v. Methodist Hosps. of Dallas, Inc.11
Although the secondary meaning of a mark and the likelihood of confusion are
ordinarily questions of fact, Elvis Presley Enterprises, Inc. v. Capece,12 summary
judgment may be upheld if the summary judgment record compels the
conclusion that the movant is entitled to judgment as a matter of law.
Beef/Eater Rests., Inc. v. James Burrough Ltd.13




      9
          529 F.3d 642, 645 (5th Cir. 2008).
      10
           FED. R. CIV. P. 56(C).
      11
           478 F.3d 255, 260 (5th Cir.), cert. denied, 128 S. Ct. 181 (2007).
      12
           141 F.3d 188, 196 (5th Cir. 1998).
      13
           398 F.2d 637, 639 (5th Cir. 1968).

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       To prevail on their trademark infringement claim, the plaintiffs must
show two things. First, they must establish ownership in a legally protectible
mark, and second, they must show infringement by demonstrating a likelihood
of confusion. Am. Rice, Inc. v. Producers Rice Mill, Inc.14 Smack argues first
that the district court erroneously found no genuine issue of fact whether there
are legally protectible marks at issue in this case.
                A. Protectible trademark and secondary meaning
       The Lanham Act provides that a trademark may be “any word, name,
symbol, or device, or any combination thereof” that is used or intended to be used
“to identify and distinguish” a person’s goods “from those manufactured or sold
by others and to indicate the source of the goods, even if that source is
unknown.”15 A mark need not be registered in order to obtain protection because
“[o]wnership of trademarks is established by use, not by registration.” Union
Nat’l Bank of Tex., Laredo v. Union Nat’l Bank of Tex., Austin.16 The marks at
issue in this case are unregistered, and, as noted by the district court, were
described by the Universities as “color schemes in the context of merchandise
that makes reference to the Plaintiff Universities or their accomplishments and
is directed to their fans and other interested consumers.”17
       The protectibility of unregistered marks is governed generally by the same
principles that qualify a mark for registration under the Lanham Act. Two




       14
          518 F.3d 321, 329 (5th Cir. 2008); see also Elvis Presley Enters., 141 F.3d at 194
(noting “the threshold requirement that the plaintiff must possess a protectible mark, which
must be satisfied before infringement can be actionable”).
       15
            15 U.S.C. § 1127.
       16
            909 F.2d 839, 842 (5th Cir. 1990).
       17
            See Bd. of Supervisors, 438 F. Supp. 2d at 657 (quotation marks and citation omitted).

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Pesos, Inc. v. Taco Cabana, Inc.18 The key is whether the mark is “capable of
distinguishing the applicant’s goods from those of others.”19 Marks are generally
classified as (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5)
fanciful.20 The parties here do not articulate a classification for the marks at
issue, but the briefs show that they, and indeed the district court, have treated
the marks as descriptive. This type of mark is not inherently distinctive because
it does not inherently identify a particular source of the product; instead, it
requires secondary meaning to be protected under the Lanham Act.21
      The parties correctly agree that a color scheme can be protected as a
trademark when it has acquired secondary meaning and is non-functional.
Qualitex Co. v. Jacobson Prods. Co.22 Although the parties discuss color at
length in their briefs, the Universities do not claim that every instance in which
their team colors appear violates their respective trademarks. Instead, the
claimed trademark is in the colors on merchandise that combines other
identifying indicia referring to the Universities. It is appropriate therefore to
consider not only the color but also the entire context in which the color and
other indicia are presented on the t-shirts at issue here.
      Smack contends that the claimed marks are too broad to encompass a
trademark because the concept of color along with other identifying indicia is not
distinctive. We disagree. As noted, the statute contemplates that a trademark




      18
           505 U.S. 763, 768, 112 S.Ct. 2753, 2757 (1992).
      19
           Id.
      20
           Id.
      21
           Id. at 769, 112 S. Ct. at 2757.
      22
           514 U.S. 159, 163–64, 115 S. Ct. 1300, 1303–04 (1995).

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may include any word, name, or symbol “or any combination thereof.”23 The
Supreme Court has recognized that the Lanham Act describes the universe of
permissible marks “in the broadest of terms.”24 Because the Court recognizes
that trademarks may include color, we see no reason to exclude color plus other
identifying indicia from the realm of protectible marks provided the remaining
requirements for protection are met. Thus, the first step here is to ask whether
the Universities’ claimed marks have acquired secondary meaning.
       Secondary meaning “occurs when, ‘in the minds of the public, the primary
significance of a [mark] is to identify the source of the product rather than the
product itself.’” Wal-Mart Stores, Inc. v. Samara Bros., Inc.25 The inquiry is one
of the public’s mental association between the mark and the alleged mark
holder. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.26 A mark has acquired
secondary meaning when it “has come through use to be uniquely associated
with a specific source.” Pebble Beach Co. v. Tour 18 I Ltd.27 We have applied a
multi-factor test for determining secondary meaning. The factors include:
“(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3)
amount and manner of advertising, (4) nature of use of the mark or trade dress
in newspapers and magazines, (5) consumer-survey evidence, (6) direct




       23
            15 U.S.C. § 1127 (emphasis added).
       24
            Qualitex, 514 U.S. at 162, 115 S. Ct. at 1302.
       25
            529 U.S. 205, 211, 120 S. Ct. 1339, 1343 (2000) (citation omitted).
       26
          791 F.2d 423, 427 (5th Cir. 1986) (“[T]he prime element of secondary meaning is ‘a
mental association in buyers’ minds between the alleged mark and a single source of the
product.’” (citation omitted)).
       27
         155 F.3d 526, 536 (5th Cir. 1998) (internal quotation marks omitted), abrogation on
other grounds recognized by Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351,
356 (5th Cir. 2002).

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consumer testimony, and (7) the defendant’s intent in copying the trade dress.”28
These factors in combination may show that consumers consider a mark to be
an indicator of source even if each factor alone would not prove secondary
meaning.29
       There is no dispute in this case that for a significant period of time the
Universities have been using their color schemes along with other indicia to
identify and distinguish themselves from others. Smack admits in its brief that
the Universities’ colors are well known among fans “as a shorthand nonverbal
visual means of identifying the universities.” But according to Smack, the
longstanding use of the school colors to adorn licensed products is not the same
as public recognition that the school colors identify the Universities as a unique
source of goods. We think, however, that the factors for determining secondary
meaning and an examination of the context in which the school colors are used
and presented in this case support the conclusion that the secondary meaning
of the marks is inescapable.
       The record shows that the Universities have been using their color
combinations since the late 1800s.30 The color schemes appear on all manner of
materials, including brochures, media guides, and alumni materials associated
with the Universities. Significantly, each university features the color schemes
on merchandise, especially apparel connected with school sports teams, and such
prominent display supports a finding of secondary meaning.31 The record also



       28
            Pebble Beach, 155 F.3d at 541.
       29
            Id.
       30
       OSU adopted its school colors in 1878, while LSU has been using its colors since 1893,
and OU and USC since 1895.
       31
         See Pebble Beach, 155 F.3d at 541–52 (prominent display of golf hole’s trade dress in
advertising supported finding of secondary meaning as a designator of source).

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shows that sales of licensed products combining the color schemes with other
references to the Universities annually exceed the tens of millions of dollars.32
As for advertising, the district court held that the Universities “advertise items
with their school colors in almost every conceivable manner . . . .”33 It is not clear
from the summary judgment evidence where and how the Universities advertise
their merchandise, but they certainly do use their color schemes and indicia in
numerous promotional materials aimed at students, faculty, alumni, and the
public in general, which strengthens the conclusion that the color schemes and
indicia viewed in context of wearing apparel also serves as an indicator of the
Universities as the source or sponsor of the apparel. Furthermore, the district
court correctly observed that the school color schemes have been referenced
multiple times in newspapers and magazines and that the schools also
frequently refer to themselves using the colors.34 The district court did not
specifically refer to any consumer-survey evidence or direct consumer testimony,
but it noted that Smack admitted it had incorporated the Universities’ color
schemes into its shirts to refer to the Universities and call them to the mind of
the consumer. Thus, Smack itself believed that the Universities’ color schemes
had secondary meaning that could influence consumers, which further supports
the conclusion that there is secondary meaning here.35 Given the longstanding


       32
         For example, LSU sells between $10 and $20 million worth of goods each year, while
the annual sales volume for the other schools is approximately $13 million for USC, $20 million
for OU, and $50 million for OSU.
       33
            Bd. of Supervisors, 438 F. Supp. 2d at 658.
       34
        For example, LSU and third parties have referred to that university as the “Purple
and Gold.”
       35
          See also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir. 1995).
We also note that the record does contain survey evidence compiled by the Universities
indicating that approximately thirty percent of consumers interviewed believed two of Smack’s
t-shirts were produced or sponsored by the Universities. We have indicated that survey

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use of the color scheme marks and their prominent display on merchandise, in
addition to the well-known nature of the colors as shorthand for the schools
themselves and Smack’s intentional use of the colors and other references, there
is no genuine issue of fact that when viewed in the context of t-shirts or other
apparel, the marks at issue here have acquired the secondary meaning of
identifying the Universities in the minds of consumers as the source or sponsor
of the products rather than identifying the products themselves.
       We think this conclusion is consistent with the importance generally
placed on sports team logos and colors by the public. We have previously noted,
although not in the context of secondary meaning, that team emblems and
symbols are sold because they serve to identify particular teams, organizations,
or entities with which people wish to identify. See Boston Prof’l Hockey Ass’n v.
Dallas Cap & Emblem Mfg., Inc.36 We think this desire by consumers to
associate with a particular university supports the conclusion that team colors
and logos are, in the minds of the fans and other consumers, source indicators
of team-related apparel. By associating the color and other indicia with the
university, the fans perceive the university as the source or sponsor of the goods
because they want to associate with that source.
       Smack argues that because photographs of businesses near the campuses
of the Universities show use of school colors by those businesses, consumers in
college towns merely associate school colors with “support of the home team.”
Smack cites no authority or supporting evidence for its contention, however.


evidence often may be the most direct and persuasive evidence of secondary meaning. Sugar
Busters LLC v. Brennan, 177 F.3d 258, 269 (5th Cir. 1999). Nevertheless, Smack moved in
limine to exclude the Universities’ survey evidence, and the district court found it unnecessary
to rule on the motion because of the other evidence in the record. Because no party has raised
the issue, we express no opinion on the correctness of the district court’s belief and merely note
the presence of the survey evidence in the record.
       36
            510 F.2d 1004, 1011 (5th Cir. 1975).

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Moreover, the fact that other businesses in college towns may use the same
colors as a local university does not create an issue of fact as to the secondary
meaning of the colors used in merchandise that the Universities indisputably
produce, especially given Smack’s admission of intentional use of the colors to
influence consumers.
       Smack also argues that because the Universities grant licenses to many
licensees, a consumer may not identify a university as the single source of the
product. The fact that the Universities may grant licenses to many licensees to
sell authorized products does not negate the fact that the schools are still the
sources of the marks.37 We conclude that the record establishes secondary
meaning in the marks here.
                               B. Likelihood of confusion
       Once a plaintiff shows ownership in a protectible trademark, he must next
show that the defendant’s use of the mark “creates a likelihood of confusion in
the minds of potential customers as to the ‘source, affiliation, or sponsorship’” of
the product at issue.            Westchester Media v. PRL USA Holdings, Inc.38
“Likelihood of confusion is synonymous with a probability of confusion, which is
more than a mere possibility of confusion.”39 When assessing the likelihood of
confusion, we consider a nonexhaustive list of so-called “digits of confusion,”
including: “(1) the type of mark allegedly infringed, (2) the similarity between
the two marks, (3) the similarity of the products or services, (4) the identity of
the retail outlets and purchasers, (5) the identity of the advertising media used,


       37
        Cf. Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1121 (5th Cir. 1991)
(“An owner may license its trademark or trade dress and retain proprietary rights if the owner
maintains adequate control over the quality of goods and services that the licensee sells with
the mark or dress.”).
       38
            214 F.3d 658, 663 (5th Cir. 2000) (citation omitted).
       39
            Id. at 663–64.

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(6) the defendant’s intent, and (7) any evidence of actual confusion.”40 Courts
also consider (8) the degree of care exercised by potential purchasers.41 No single
factor is dispositive, and a finding of a likelihood of confusion need not be
supported by a majority of the factors.42
      Smack argues that there were genuine issues of material fact whether its
t-shirt designs were likely to cause confusion among consumers. We disagree.
The first digit, the type of mark, refers to the strength of the mark.43 Generally,
the stronger the mark, the greater the likelihood that consumers will be
confused by competing uses of the mark.44 We agree with the district court that
the plaintiffs’ marks, which have been used for over one hundred years, are
strong.45 As noted above, Smack concedes that the Universities’ color schemes
are well-known and are used to identify the plaintiff Universities. It argues,
however, that the district court disregarded evidence of third-party use of the
Universities’ team colors in a non-trademark manner, and it cites Sun Banks of
Florida, Inc. v. Sun Federal Savings and Loan Association46 in support of its
argument.
      In Sun Banks, we held that “extensive” third-party use can weaken a mark
and negate a likelihood of confusion.47 In that case there were “over 4400


      40
           Id. at 664.
      41
           Am. Rice, 518 F.3d at 329.
      42
           Id.
      43
           Elvis Presley Enters., 141 F.3d at 201.
      44
           Id.
      45
           See Bd. of Supervisors, 438 F. Supp. 2d at 659.
      46
           651 F.2d 311 (5th Cir. 1981)
      47
           Sun Banks, 651 F.2d at 316.

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businesses” in Florida that were using the word “Sun” in their names, and we
noted that “a significant number” fell within the same category of financial
institutions as the plaintiff.48
       Smack presented photographs of three businesses in Louisiana, eight
businesses in Ohio, and approximately 20 businesses in Oklahoma that
incorporated in their signage color schemes similar to the school colors of LSU,
OSU, and OU, respectively. The businesses included several restaurants and
bars, a driving school, a pain management clinic, a theater, a furniture store, a
dry cleaners, a motel, a donut shop, an apartment complex, and a car care
company. All third-party use of a mark, not just use in the same industry as a
plaintiff, may be relevant to whether a plaintiff’s mark is strong or weak.49 But
the key is whether the third-party use diminishes in the public’s mind the
association of the mark with the plaintiff—surely lacking where colors are shown
on a store wall. See Univ. of Ga. Athletic Ass’n v. Laite.50 Smack’s evidence falls
far below that of extensive use, and the specific photographs of third-party use
here fail to create an issue of fact concerning the public’s association between the
plaintiffs and color schemes and other indicia that clearly reference the
Universities. We conclude that the Universities possess strong marks in their
use of color schemes and other identifying indicia on college sports-themed
merchandise.




       48
            Id.
       49
         Union Nat’l Bank of Tex., 909 F.2d at 848 n.24; see also 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:88 (4th ed.) (“[E]vidence of
extensive third party use on a wide range of goods and services does tend to weaken strength
and narrow the scope of protection.”).
       50
            756 F.2d 1535, 1545 n.27 (11th Cir. 1985).

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      The second digit is the similarity of the marks. This factor requires
consideration of the marks’ appearance, sound, and meaning.51 The district
court held that the marks at issue are virtually identical.52 Smack argues that
there was no evidence that any of its shirts were identical to any shirts licensed
by the Universities and that its t-shirt designs are not at all similar to any of the
Universities’ licensed products. Smack’s contention is belied by the record, and
even a cursory comparison of Smack’s designs with the plaintiffs’ licensed
products reveals striking similarity.53
      For example, one of Smack’s shirt designs in purple and gold is referred
to as the “sundial” shirt and was targeted toward LSU fans. The front of the
shirt proclaims “2003 National Champions,” and the back contains the scores
from twelve games won by LSU. The scores are arranged in a circle with a short
phrase poking fun at each opponent. The shirt also contains the final score of
the 2004 Sugar Bowl, which LSU won, and the phrase “Sweet as Sugar!”
Although the shirt does not use the initials “LSU” anywhere, its identification
of LSU as the national champion is unmistakable from the colors and from the
references to the games in which LSU played. This shirt is strikingly similar to
LSU’s own merchandise that also uses the purple and gold colors and proclaims
LSU as the national champion. Several of the official designs contain the scores
of the games from LSU’s season and at least two designs present those scores in
a circular arrangement. The official designs also contain the phrases “Ain’t It
Sweet!” and “Pour It On!”




      51
           Elvis Presley Enters., 141 F.3d at 201.
      52
           Bd. of Supervisors, 438 F. Supp. 2d at 659–60.
      53
        See Beef/Eater Rests., 398 F.2d at 639 (“[T]he trial judge, by inspection of the
trademarks, may himself determine, and must determine, the likelihood of confusion.”).

                                               17
                                 No. 07-30580
                               c/w No. 07-30887

      Another Smack shirt directed at LSU fans is the “Beat Oklahoma” shirt.
It states, “Bring it Back to the Bayou.” This is very similar to two official
designs that state in part “Bring It Home” and “We’ll Have Big Fun on the
Bayou.”
      The evidence of similarity is not limited to the shirts targeted toward LSU
fans. For example, the “Bourbon Street or Bust!” shirt directed at OU fans
highlights the letters “OU” in a different type face in the words “Bayou” and
“your.” It also states “Sweet as Sugar,” references beads, and contains a picture
of a mardi gras mask. OU presented evidence of official t-shirt designs that also
highlight the letters “OU,” contain phrases such as “Ain’t Nothin’ Sweeter” and
“100% Pure Sugar,” and contain depictions of mardi gras masks and beads.
Another Smack OU design encourages, “Let’s Make it Eight,” while official
designs proclaim “Sugar is Sweet But . . . 8 is Great!”
      In the district court, Smack presented the affidavit of its principal, Wayne
Curtiss, who explained that Smack uses humor and creative language to
distinguish its t-shirt designs from those of the purportedly more conservative
licensed or school-endorsed apparel. Curtiss asserted that the “got seven?” and
“got eight?” shirts directed toward OSU and USC fans, respectively, are parodies
of the “got milk” campaign. He further averred that he has used a similar design
on shirts for LSU and OU fans. It is clear from the record, however, that use of
creative language is not unique to Smack and does not make Smack’s shirts
dissimilar to the Universities’ own products. For example, LSU presented
evidence of a school-endorsed design that included the phrase “got sugar?” We
conclude that Smack’s shirts and the Universities’ products are similar in look,
sound, and meaning, and contain very similar color schemes, words, and images.
The similarities in design elements are overwhelming and weigh heavily in favor




                                       18
                                        No. 07-30580
                                      c/w No. 07-30887

of a likelihood of confusion. The district court correctly held there is no genuine
issue of material fact with respect to this digit of confusion.54
       The third digit in the likelihood of confusion analysis is the similarity of
the products or services. We disagree with Smack’s assertion that the district
court did not find a great deal of similarity between the plaintiffs’ products and
the t-shirts at issue, as the district court specifically held that “[i]t is undisputed
that both Smack and the universities market shirts bearing the same color
schemes, logos, and designs.”55 The district court went on to reject Smack’s
argument that its t-shirts differed from the Universities’ products because of the
use of irreverent phrases or slang language, reasoning that Smack’s use of such
phrases and language was a misuse of the Universities’ good will in its marks.
Smack denies that it appropriated the Universities’ good will, but it does not
make an argument here that its shirts are distinguishable from those of the
Universities because of particular language on its shirts. We therefore find this
factor weighs in favor of a likelihood of confusion.
       Smack concedes that the fourth factor of the analysis–identity of retail
outlets and purchasers–weighs in favor of a likelihood of confusion because the
Universities’ licensed products are often sold wholesale to the same retailers who
purchase Smack’s products.
       The fifth digit is the identity of advertising media. The district court found
that Smack used the Universities’ color schemes, logos, and designs in

       54
          Because we conclude that there is no issue of fact as to the similarity of the use of the
marks in the t-shirt designs, we need not consider Smack’s contention that the district court
erroneously stated there had been instances where consumers actually believed Smack’s shirts
were affiliated with or sponsored by the Universities. Smack points to a stipulation by the
parties at the summary judgment stage that there was no evidence any consumer purchased
a Smack shirt believing it to be licensed by one of the Universities. Actual confusion on the
part of a consumer is not required to find a likelihood of confusion, however. Elvis Presley
Enters., 141 F.3d at 203.
       55
            Bd. of Supervisors, 438 F. Supp. 2d at 660.

                                               19
                                        No. 07-30580
                                      c/w No. 07-30887

advertising its shirts at the same or similar venues as those used by the
Universities.56      The court based its finding on Smack’s admission that it
participated in the same trade shows as the Universities and that it displayed
its shirts at the trade shows. The Universities do not point us to evidence that
trade shows are a significant advertising channel for the kinds of products at
issue in this case. Although the t-shirts are sold to the public at the same retail
outlets as officially licensed merchandise, Curtiss testified that beside limited
sales on Smack’s web site, Smack does not sell directly to the public and does not
advertise. Curtiss testified that Smack sells mainly to wholesalers. Some of
these wholesalers may include Smack’s shirts in advertisements that promote
their own business, but Curtiss was unable to provide much information about
these ads. We conclude that this digit, based on trade show advertising, is
minimally probative.
      The sixth digit of confusion further supports a likelihood of confusion.
Although not necessary to a finding of likelihood of confusion, a defendant’s
intent to confuse may alone be sufficient to justify an inference that there is a
likelihood of confusion.57 As noted by the district court, Smack admitted that it
“‘used school colors and ‘other indicia’ with the intent of identifying the
university plaintiffs as the subject of the message expressed in the shirt
design.’”58 Curtiss testified that it was “no coincidence” that Smack’s shirts
incorporated the color schemes of the plaintiff Universities and that he designed
the shirts to make people think of the particular school that each shirt targeted.
Smack asserts that its intent to copy is not the same as an intent to confuse.
The circumstances of this case show, however, that Smack intended to capitalize

      56
           Id.
      57
           Elvis Presley Enters., 141 F.3d at 203.
      58
           Bd. of Supervisors, 438 F. Supp. 2d at 661 (citation omitted).

                                               20
                                        No. 07-30580
                                      c/w No. 07-30887

on the potential for confusion. Smack knew that its shirts were sold in the same
venues as and sometimes alongside officially licensed merchandise, and it
intentionally incorporated color marks to create the kind of association with the
Universities that would influence purchasers.
      The Eleventh Circuit found a likelihood of confusion based on a similar
intent by the defendant to capitalize on the popularity of a college sports team.
Univ. of Ga. Athletic Ass’n v. Laite.59 In Laite, the defendant used school colors
and a mark strikingly similar to the University of Georgia’s bulldog mascot on
cans to sell “Battlin’ Bulldog Beer.”60 After concluding that the defendant’s
bulldog mark was similar to the university’s mark, the court turned to the
defendant’s intent, concluding “there can be no doubt that Laite hoped to sell
‘Battlin’ Bulldog Beer’ not because the beer tastes great, but because the cans
would catch the attention of University of Georgia football fans.”61 Significantly,
the court found “the defendant’s intent and the similarity of design between the
two marks sufficient to support the district court’s finding of a ‘likelihood of
confusion . . . .’”62 The same is true here. Smack did not hope to sell its t-shirts
because of some competitive difference in quality or design compared with the
Universities’ licensed products, but rather it intended to take advantage of the
popularity of the Universities’ football programs and the appearance of the
school teams in the college bowl games. We have previously said that when a
“mark was adopted with the intent of deriving benefit from the reputation of [the
mark holder] that fact alone ‘may be sufficient to justify the inference that there



      59
           756 F.2d 1535 (11th Cir. 1985).
      60
           Id. at 1537.
      61
           Id. at 1545 (footnote omitted).
      62
           Id. at 1545.

                                             21
                                        No. 07-30580
                                      c/w No. 07-30887

is confusing similarity.’” Amstar Corp. v. Domino’s Pizza, Inc.63 We believe that
Smack’s admitted intent and the similarity in appearance between Smack’s
shirts and the Universities’ licensed products is strong evidence of a likelihood
of confusion.
       Smack argues that an intent to confuse is negated by its use of its own logo
and the words “Talkin’ the Talk,” which it maintains identifies it as the source
of the shirt. We are not persuaded. Smack’s logo appears in a space that is only
2.5 inches wide.         We cannot conclude, without more, that this small and
inconspicuous placement of the logo would disabuse consumers of a mistaken
belief that the Universities sponsored, endorsed or were otherwise affiliated with
the t-shirts.64       Smack has not pointed to evidence that its own logo is
recognizable by consumers or that it was acting to trade off its own reputation
as a producer of specialty t-shirts.65 Nor are we convinced that Smack’s logo on
the shirts acts as a disclaimer. The Universities point out that they require all
licensed products to contain the licensee’s name. Therefore, a consumer could
believe that Smack’s logo merely indicated that it was a licensee.66 We conclude

       63
             615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF TORTS § 729, comment
f (1938)).
       64
          See Pebble Beach, 155 F.3d at 552 (noting that “conspicuous disclaimers that disclaim
affiliation may reduce or eliminate confusion”).
       65
          See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1244–45, 1247–48 (D. Kan.
Mar. 19, 2008) (finding a likelihood of confusion with respect to defendant’s manufacture of t-
shirts that were substantially similar to officially licensed goods, but not shirts that it found
contained substantial differences, in part because “[t]he high degree of similarity weighs
strongly in favor of a finding of intent; the use of almost identical marks supports a conclusion
that defendants intended to derive a benefit from KU’s reputation, rather than rely upon their
own”).
       66
         See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 692 (2d Cir. 1972)
(defendant’s placement of its own name on pen also bearing mark similar to plaintiff’s mark
“does not save the day; a purchaser could well think plaintiff had licensed defendant as a
second user and the addition is thus ‘an aggravation, and not a justification’” (citation
omitted)).

                                              22
                                           No. 07-30580
                                         c/w No. 07-30887

that the intent digit weighs in favor of a conclusion that there is a likelihood of
confusion.
         The seventh digit is evidence of actual confusion.                  Evidence that
consumers have been actually confused in identifying the defendant’s use of a
mark as that of the plaintiff may be the best evidence of a likelihood of
confusion.67 It is well established, however, that evidence of actual confusion is
not necessary for a finding of a likelihood of confusion.68 The district court did
not resolve whether there was sufficient evidence of actual confusion, and
because such evidence is not required we also find it unnecessary to pass on the
question further.69
         With respect to the eighth digit of confusion–the degree of care exercised
by potential purchasers–the district court held that the t-shirts at issue are
relatively inexpensive impulse items that are not purchased with a high degree
of care.70 Where items are relatively inexpensive, a buyer may take less care in
selecting the item, thereby increasing the risk of confusion.71 Smack contends
there was insufficient evidence for the district court’s conclusion. In response,
the Universities note Curtiss’ testimony that he hoped customers’ decisions to
purchase Smack’s shirts would be “quick,” and they point out that the shirts sell
for less than $18. Smack cites no evidence to demonstrate an issue of fact on

         67
              Elvis Presley Enters., 141 F.3d at 203.
         68
              Id.; Pebble Beach, 155 F.3d at 545; Amstar, 615 F.2d at 263.
         69
        The Universities contend that there was evidence of actual confusion consisting of
consumer surveys concerning two of the six t-shirt designs and testimony from Curtiss that “I
have had people come up and go–at the booth and go, ‘Are these licensed?’” The evidence is
arguably minimal, see Amstar, 615 F.2d at 263, but as discussed we need not resolve the
matter.
         70
              Bd. of Supervisors, 438 F. Supp. 2d at 661.
         71
              Sun-Fun-Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d 186, 191 (5th Cir.
1981).

                                                  23
                                        No. 07-30580
                                      c/w No. 07-30887

this point, and we agree with the district court that this digit weighs in favor of
a likelihood of confusion.
       After reviewing the record, we conclude that there is no genuine issue of
fact that Smack’s use of the Universities’ color schemes and other identifying
indicia creates a likelihood of confusion as to the source, affiliation, or
sponsorship of the t-shirts. As noted above, the digits of confusion—particularly
the overwhelming similarity of the marks and the defendant’s intent to profit
from the Universities’ reputation—compel this conclusion. This is so, we have
noted, because Smack’s use of the Universities’ colors and indicia is designed to
create the illusion of affiliation with the Universities and essentially obtain a
“free ride” by profiting from confusion among the fans of the Universities’
football teams who desire to show support for and affiliation with those teams.72
This creation of a link in the consumer’s mind between the t-shirts and the
Universities and the intent to directly profit therefrom results in “an
unmistakable aura of deception” and likelihood of confusion.73
       Smack contends that there is no evidence that consumers care one way or
the other whether t-shirts purchased for wear at a football game are officially
licensed and that, absent evidence that consumers prefer licensed merchandise,
it was error for the district court to conclude there was a likelihood of confusion.
Smack relies in part on our decision in Supreme Assembly, Order of Rainbow for
Girls v. J. H. Ray Jewelry Company.74 The context of that case is different from
the instant case.


       72
          See Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir. 1989) (“Defendants’
shirts are clearly designed to take advantage of the Boston Marathon and to benefit from the
good will associated with its promotion by plaintiffs. Defendants thus obtain a ‘free ride’ at
plaintiffs’ expense.”).
       73
            Id. at 35.
       74
            676 F.2d 1079 (5th Cir. 1982).

                                             24
                                     No. 07-30580
                                   c/w No. 07-30887

      In Rainbow for Girls, a fraternal organization and its official jeweler sued
a retailer for trademark infringement based on the retailer’s sale of jewelry
bearing the organization’s registered mark.           Purchasers in the fraternal-
organization jewelry market bought jewelry to show membership and status in
the organization.75 We upheld the district court’s finding of no likelihood of
confusion, concluding that “[t]he fact that purchasers purchased Rainbow
jewelry as a direct result of the presence of the Rainbow emblem does not compel
the conclusion that they did so believing that the jewelry was in any way
endorsed, sponsored, approved or otherwise associated with Rainbow, given the
court’s findings.”76 The district court had held that there was no historic custom
or practice specific to Rainbow jewelry or to the fraternal jewelry industry that
Rainbow jewelry could be manufactured only with Rainbow’s sponsorship or
approval.77 Instead, the court noted that fraternal organizations exercised little
control over the manufacture of jewelry bearing their emblems.78 Furthermore,
the court had held that because Rainbow’s “official jeweler” was itself well-
advertised and used its own distinctive mark on the jewelry, any jewelry without
that distinctive mark could not cause confusion.79 We noted that the district
court’s findings distinguished the case from our decision in Boston Professional
Hockey Association v. Dallas Cap & Emblem Manufacturing.80




      75
           Id. at 1084.
      76
           Id. (emphasis added).
      77
           Id. at 1083.
      78
           Id.
      79
           Id.
      80
           Id.

                                         25
                                       No. 07-30580
                                     c/w No. 07-30887

      In Boston Hockey, we held that the defendant infringed the plaintiff’s
trademark rights by selling embroidered patches containing the emblems of
professional hockey teams.81 There, the emblems were sold for use by the public
to show “allegiance to or identification with the teams.”82 We held that the
likelihood of confusion requirement was met because the defendant duplicated
and sold the emblems “knowing that the public would identify them as being the
teams’ trademarks” and because the public’s “certain knowledge . . . that the
source and origin of the trademark symbols were in plaintiffs satisfies the
requirements of the act.”83
      Subsequently, in Kentucky Fried Chicken Corporation v. Diversified
Packaging Corporation, we recognized that Boston Hockey might be read to
dispose of the confusion issue when buyers undoubtedly know that the plaintiff
is the source and origin of a mark.84 We reiterated that a showing of likelihood
of confusion was still required.85 But we noted that the circumstances in Boston
Hockey supported the likelihood of confusion there insofar as the sale of products
“universally associated” with the hockey team “supported the inescapable
inference that many would believe that the product itself originated with or was
somehow endorsed by Boston Hockey.”86 In Rainbow for Girls, the district court
opinion, which we upheld, also recognized in reference to Boston Hockey
that “‘(i)t is not unreasonable to conclude, given the degree to which sports


      81
           510 F.2d 1004 (5th Cir. 1975).
      82
           Id. at 1011.
      83
           Id. at 1012.
      84
           549 F.2d 368, 389 (5th Cir. 1977).
      85
           Id.
      86
           Id.

                                                26
                                         No. 07-30580
                                       c/w No. 07-30887

emblems are used to advertise teams and endorse products, that a consumer
seeing the emblem or name of a team on or associated with a good or service
would assume some sort of sponsorship or association between the product’s
seller and the team.’”87
        We agree with this reasoning as applied to this case, which is more like
Boston Hockey than Rainbow for Girls. We hold that given the record in this
case and the digits of confusion analysis discussed above—including the
overwhelming similarity between the defendant’s t-shirts and the Universities’
licensed products, and the defendant’s admitted intent to create an association
with the plaintiffs and to influence consumers in calling the plaintiffs to
mind—that the inescapable conclusion is that many consumers would likely be
confused and believe that Smack’s t-shirts were sponsored or endorsed by the
Universities. The Universities exercise stringent control over the use of their
marks on apparel through their licensing program. It is also undisputed that the
Universities annually sell millions of dollars worth of licensed apparel. We
further recognize the public’s indisputable desire to associate with college sports
teams by wearing team-related apparel. We are not persuaded that simply
because some consumers might not care whether Smack’s shirts are officially
licensed the likelihood of confusion is negated. Whether or not a consumer cares
about official sponsorship is a different question from whether that consumer
would likely believe the product is officially sponsored. For the foregoing
reasons, we conclude that a likelihood of confusion connecting the presence of the
Universities’ marks and the Universities’ themselves was demonstrated in this
case.
                                      C. Functionality



        87
             Rainbow for Girls, 676 F.2d at 1085.

                                               27
                                         No. 07-30580
                                       c/w No. 07-30887

      A product feature that is functional does not qualify for protection under
the Lanham Act.88 The party seeking protection under the Lanham Act has the
burden of establishing nonfunctionality. TrafFix Devices, Inc. v. Marketing
Displays, Inc.89 The Supreme Court has recognized two tests for determining
functionality. “[T]he primary test for determining whether a product feature is
functional is whether the feature is essential to the use or purpose of the product
or whether it affects the cost or quality of the product.”90 This is the “traditional”
test.91 “Under this traditional definition, if a product feature is ‘the reason the
device works,’ then the feature is functional.”92 Under a secondary test for
functionality “a functional feature is one the exclusive use of which would put
competitors at a significant non-reputation-related disadvantage.”93 This is the
“competitive necessity” test.94
      In Boston Hockey, we held that emblems of a hockey team sold on
embroidered patches had no demonstrated value other than their significance
as the trademarks of the team.95 Relying on our decision in Boston Hockey, the
district court here similarly held that the Universities’ color schemes, logos, and
designs also had no significance other than to identify with the Universities and




      88
           Qualitex, 514 U.S. at 164–65, 115 S. Ct. at 1304; Eppendorf, 289 F.3d at 355.
      89
           532 U.S. 23, 32, 121 S. Ct. 1255, 1261 (2001).
      90
           Eppendorf, 289 F.3d at 356 (citing TrafFix, 532 U.S. at 32–33, 121 S. Ct. at 1261–62).
      91
           Id. at 355.
      92
           Id.
      93
           Id. at 356 (internal quotation and citation omitted).
      94
           Id.
      95
           Boston Prof’l Hockey, 510 F.2d at 1013.

                                               28
                                        No. 07-30580
                                      c/w No. 07-30887

were therefore nonfunctional.96 We agree. Fans and other members of the
public purchase Smack’s shirts only because the shirts contain the plaintiffs’
colors and indicia identifying the Universities’ football teams, just as people
purchased the defendant’s emblems in Boston Hockey only because they
contained the hockey team’s trademarks.97 In other words, the presence of the
plaintiffs’ marks serve no function unrelated to trademark.
       Smack argues that the Universities’ colors do perform functions unrelated
to trademark because the Universities use the colors in activities and programs
in connection with student life, buildings, and other programs and events and
that the colors are not used solely to identify the Universities as a source of
goods. However, the claimed trademarks are in the color schemes and other
indicia of the Universities when combined on merchandise that refer to the
Universities. It is proper, therefore, to examine that context when determining
the functionality of the claimed marks.98 As explained above, the Universities’
colors and indicia when used on merchandise creates secondary meaning tending
to identify the Universities in the minds of consumers as the producers,
sponsors, or endorsers of the product.
       The school colors and other indicia used here do not make the t-shirts
“work.” The t-shirts would function just as well as articles of clothing without
the colors and designs. Smack’s t-shirts are sold not because of any functionality
in the marks Smack placed on them but rather because they bear the




       96
            Bd. of Supervisors, 438 F. Supp. 2d at 661–62.
       97
            See Boston Prof’l Hockey, 510 F.2d at 1013.
       98
        Cf. Elvis Presley Enters., 141 F.3d at 197 (“Courts consider marks in the context that
a customer perceives them in the marketplace . . . .”).

                                               29
                                        No. 07-30580
                                      c/w No. 07-30887

identifiable marks of the plaintiff Universities.99 The marks fail under the
traditional test for functionality and are protectible.
       Smack urges, however, that the Universities’ colors on the t-shirts serve
several functional purposes. It contends that the shirts allow groups of people
to bond and show support for a philosophy or goal; facilitate the expression of
loyalty to the school and a determination of the loyalties of others; and identify
the wearer as a fan and indicate the team the fan is supporting. These claimed
functional uses are nothing more than the kind of aesthetic uses at issue in
Boston Hockey. Our circuit has consistently rejected the concept of aesthetic
functionality.100
       Smack asserts that the Supreme Court has recognized aesthetic
functionality, and it relies on the interplay between the Court’s decisions in
Qualitex and TrafFix. As noted above, the Court recognized in Qualitex that
color alone could be protected as a trademark.101 In its discussion of
functionality, the Court noted that the purpose of the functionality doctrine is
to prevent use of a product’s feature as a trademark where doing so would hinder
competition, and it set forth the traditional definition where functionality turns
on whether the feature is “‘essential to the use or purpose of the article’ or
‘affects [its] cost or quality.’”102 After discussing aesthetic functionality in the
Restatement (Third) of Unfair Competition, the Court went on to state that
“where a color serves a significant nontrademark function . . . courts will
examine whether its use as a mark would permit one competitor (or a group) to


       99
            See Boston Hockey, 510 F.2d at 1013.
       100
             See id.; Sno-Wizard, 791 F.2d at 426 n.3; Pebble Beach, 155 F.3d at 540 n.6.
       101
             Qualitex, 514 U.S. at 163–64, 115 S. Ct. at 1303–04.
       102
         Id. at 169, 115 S.Ct. at 1306 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
844, 850 n.10, 102 S. Ct. 2182, 2186 n.10 (1982)).

                                               30
                                         No. 07-30580
                                       c/w No. 07-30887

interfere with legitimate (nontrademark-related) competition through actual or
potential exclusive use of an important product ingredient. That examination
should not discourage firms from creating esthetically pleasing mark designs,
for it is open to their competitors to do the same.”103
      In TrafFix, the Court reiterated the traditional test for functionality and
expanded on the secondary “competitive necessity” test.104 The Court explained
that if a product feature is found to be functional under the traditional test,
which it was in that case, the inquiry ends and there is no need to consider
whether the feature is a competitive necessity.105 The Court went on to state,
however, that it is proper to inquire into the competitive necessity test in cases
of aesthetic functionality, which the Court stated “was the central question” in
Qualitex.106
      Smack relies on this pronouncement in TrafFix for the proposition that the
Supreme Court has recognized the aesthetic functionality doctrine. We note that
the TrafFix Court’s characterization of the issue in Qualitex has been harshly
criticized by commentators.107            Nevertheless, neither Qualitex nor TrafFix
addressed aesthetic functionality as the dispositive issue, let alone the purported
aesthetic functionality of a color-scheme that acts to identify and create a desired




      103
            Id. at 170, 115 S. Ct. at 1306.
      104
            TrafFix, 532 U.S. at 32, 121 S. Ct. at 1261.
      105
          Id. at 33, 121 S. Ct. at 1262. The product feature at issue in TrafFix was a
dual-spring mechanism designed to keep outdoor signs upright in the wind.
      106
            Id.
      107
          See 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 7:80 (4th ed.) (calling “amazing and incomprehensible [the] statement that in the 1995
Qualitex case, ‘aesthetic functionality was the central question’”).

                                               31
                                         No. 07-30580
                                       c/w No. 07-30887

association with the particular source.108 We do not believe that the Court’s
dictum in TrafFix requires us to abandon our long-settled view rejecting
recognition of aesthetic functionality.109
       Furthermore, we believe application of the competitive necessity test does
not require a different result. Smack contends that it will be placed at a
significant non-reputation-related disadvantage if it “is unable to satisfy
consumer demand for game day clothing that allows fans to conform to the
crowd, or satisfy consumer demand for game day clothing that matches other
items of clothing worn by the consumer.” Smack has admitted that the colors
and indicia on its shirts are designed to call the Universities to the mind of the
fans, and it acknowledges in its brief that fans purchase t-shirts to wear to
football games to show the colors of the team that the consumer is supporting.
In other words, fans desire to wear the t-shirts precisely because they show the
Universities’ marks.           The Court in Qualitex stressed that the focus of
functionality is “legitimate (non-trademark-related) competition.”110 But here
any demand for Smack’s t-shirts is inextricably tied to the Universities’
trademarks themselves.111 We agree with the Ninth Circuit that “the fact that
a trademark is desirable does not, and should not, render it unprotectable.”112



       108
           See id. (stating that “the Supreme Court has never directly addressed aesthetic
functionality as a dispositive issue in a case”); see also Au-Tomotive Gold, Inc. v. Volkswagen
of Am., Inc., 457 F.3d 1062, 1070 (9th Cir. 2006) (“The Supreme Court has yet to address
aesthetic functionality as it applies to logos and insignia in contrast to product features.”).
       109
           See N.L.R.B. v. Datapoint Corp., 642 F.2d 123, 129 (5th Cir. 1981) (“Without a
clearly contrary opinion of the Supreme Court or of this court sitting en banc, we cannot
overrule a decision of a prior panel of this court . . . .” (emphasis added)).
       110
             Qualitex, 514 U.S. at 170, 115 S. Ct. at 1306.
       111
             Au-Tomotive Gold, 457 F.3d at 1074.
       112
             Id. at 1072.

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Smack’s alleged competitive disadvantage in the ability to sell game day apparel
relates solely to an inability to take advantage of the Universities’ reputation
and the public’s desired association with the Universities that its shirts create.
This is not an advantage to which it is entitled under the rubric of legitimate
competition.113 We conclude that the district court correctly held that the marks
at issue here are nonfunctional.
                               D. Nominative fair use
       Smack argues that it incorporated the Universities’ colors in its t-shirts to
identify the Universities as the subject of the shirts. It contends that this was
a protected nominative fair use.
       The nominative fair use doctrine provides that “one who has lawfully
copied another’s product can tell the public what he has copied.”114 It also
permits one to “use another’s mark truthfully to identify another’s goods or
services in order to describe or compare its product to the markholder’s
product.”115 The right of fair use is limited, however, insofar as “the use cannot
be one that creates a likelihood of confusion as to source, sponsorship, affiliation,
or approval.”116
       We have held that a nominative fair use claim is a claim that a mark’s use
is noninfringing and therefore creates no likelihood of confusion.117 Thus, we
have also said that a court ordinarily should consider a nominative fair use claim

       113
          See Pebble Beach, 155 F.3d at 539 (“To define functionality based upon commercial
success would allow the second comer to trade on the first comer’s goodwill, purely because it
would be easier to market his product and not because he could not produce a viable,
competitive product.”).
       114
             Id. at 545.
       115
             Id. at 546.
       116
             Id.
       117
             Id. at 545.

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in conjunction with its likelihood-of-confusion analysis in order to avoid lowering
the standard for confusion.118 Smack argues that the district court here first
determined that there was a likelihood of confusion and then determined that
there could be no nominative fair use because of that likelihood, thereby lowing
the confusion standard. We are not convinced of any error. Although the alleged
nominative fair use should usually be considered along with the likelihood-of-
confusion analysis, we have declined to require any particular method for the
consideration in cases where the nominative use is not a significant factor in the
liability determination.119 We think this is such a case.
      In order to avail oneself of the nominative fair use defense “the defendant
(1) may only use so much of the mark as necessary to identify the product or
service and (2) may not do anything that suggests affiliation, sponsorship, or
endorsement by the markholder.”120 Smack used the Universities’ colors and
indicia in more than a nominative sense. It did not incorporate the colors and
other indicia to describe or compare its shirts with shirts licensed by the
Universities, nor did it do so to tell the public what it had copied. Smack did
incorporate the marks to identify the Universities as the subject of the shirts,
but it did so in a way that improperly suggested affiliation, sponsorship, or
endorsement.
      To take a simple example, two shirt designs targeted toward the fans of
OSU and USC refer to the number of national championships those universities
have won and ask, respectively, “got seven?” and “got eight?” Both shirts
proclaim “WE DO!” and contain other specific indicia identifying the schools.
Smack did not win any national championships—the respective Universities did.

      118
            Id. at 547.
      119
            Id. at 547 n.14.
      120
            Id. at 546.

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The use of the inclusive first-person personal pronoun “we” easily permits the
inference that the schools are the speakers in the shirts and therefore endorsed
the message.
         As noted by the district court, Smack copied the mark with “an intent to
rely upon the drawing power in enticing fans of the particular universities to
purchase their shirts.”121 Such an attempt to capitalize on consumer confusion
is not a nominative fair use.122 We conclude that the district court correctly
granted summary judgment to the Universities on this issue.
                                            E. Laches
         Smack asserts that it is undisputed the LSU Athletic Department
purchased several of its purple and gold t-shirt designs, none of which are at
issue in this case, for sale in the LSU stadium gift shop between 2001 and 2004.
It argues that because LSU never objected to the shirt designs even though they
were similar to the designs involved in this case, the doctrine of laches is
applicable.
         Laches is “an inexcusable delay that results in prejudice to the
defendant.”123 “Laches comprises three elements: (1) delay in asserting one’s
trademark rights, (2) lack of excuse for the delay, and (3) undue prejudice to the
alleged infringer caused by the delay.”124                 A defendant who intentionally
infringes a trademark with the bad faith intent to capitalize on the markholder’s




         121
               Bd. of Supervisors, 438 F. Supp. 2d at 661 (internal quotation marks omitted).
         122
               See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir.
1992).
         123
               Elvis Presley Enters., 141 F.3d at 205 (internal quotation marks omitted).
         124
               Westchester Media, 214 F.3d at 668.

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good will lacks the clean hands necessary to assert the equitable defense. Conan
Props., Inc. v. Conans Pizza, Inc.125
         The district court held that because Smack admitted it intentionally copied
the plaintiffs’ color schemes, Smack’s bad faith precluded the assertion of
laches.126 In Conan Properties, we held that although a defendant’s intentional
use of a plaintiff’s mark may give rise to “a presumption that the defendant
intended to cause public confusion as to the source or sponsorship of the
product,” such an intentional use “does not give rise to a presumption that the
defendant intended to appropriate the plaintiff’s good will.”127 Unlike Conan
Properties, the record here establishes the substantive and knowing bad faith
necessary to foreclose an equitable defense.128 Smack did not simply admit that
it knew the plaintiff Universities used marks similar to its own. Rather, it
admitted that it intentionally incorporated the Universities’ color schemes and
other indicia in order to specifically call the Universities to the public’s mind,
thus deriving a benefit from the Universities’ reputation.129 The district court
properly declined to apply the defense of laches.130

         125
               752 F.2d 145, 150–51 & n.2 (5th Cir. 1985).
         126
               Bd. of Supervisors, 438 F. Supp. 2d at 663.
         127
               See Conan Props., 752 F.2d at 151 n.2.
         128
               See id.
         129
               See id.; Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 1159 n.7 (5th Cir.
1982).
         130
           The district court separately held that (1) OU was entitled to summary judgment on
its claim that Smack’s shirts highlighting “OU” infringed OU’s unregistered mark in those
initials, and (2) LSU was entitled to summary judgment on its LUTPA claim. Bd. of
Supervisors, 438 F. Supp. 2d at 663. The court reasoned that its digits-of-confusion analysis
applied with equal force to OU’s claim and that the requirements for a claim under LUTPA
mirror those of the Lanham Act. Id. We agree with the district court. See also Louisiana
World Exposition, Inc. v. Logue, 746 F.2d 1033, 1039 (5th Cir. 1984) (holding that likelihood
of confusion is the essential ingredient for claims under both LUTPA and the Lanham Act).

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                                    F. Actual damages
       Smack argues that the district court erroneously denied its motion for
judgment as a matter of law at the trial on damages. It asserts that the
plaintiffs were not entitled to recover actual damages without evidence of actual
confusion. It is settled in this circuit, however, that actual confusion is not a
necessary prerequisite to an award of money damages.131
                                     G. Attorneys’ fees
       The Universities separately appeal the district court’s denial of their
request for an award of attorneys’ fees.               The district court may award a
prevailing party its reasonable attorneys’ fees under the Lanham Act “in
exceptional cases.”132 We review the district court’s determination as to whether
a case is exceptional for clear error, and we review the district court’s decision
whether to award attorneys’ fees for an abuse of discretion. Scott Fetzer Co. v.
House of Vacuums, Inc.133
       The prevailing party bears the burden of demonstrating the exceptional
nature of the case by clear and convincing evidence.134 “An exceptional case is
one where the violative acts can be characterized as malicious, fraudulent,




       131
           Taco Cabana, 932 F.2d at 1126. Although Smack asserts that the Universities
presented no evidence from which the jury could find actual confusion, its argument addresses
the plaintiffs’ entitlement to damages and does not contest the jury’s specific award of damages.
We therefore do not consider whether the damages themselves were supported by sufficient
evidence.
       132
             15 U.S.C. § 1117(a).
       133
             381 F.3d 477, 490 (5th Cir. 2004).
       134
             Id.

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                                      c/w No. 07-30887

deliberate, or willful.”135 The necessary showing demands a “high degree of
culpability on the part of the infringer, for example bad faith or fraud.”136
       Smack intentionally copied the Universities’ color schemes for use on its
shirts and admitted doing so. Yet, we have held that deliberate copying does not
render a case per se exceptional.137                When assessing whether a case is
exceptional, courts must consider all the facts and circumstances.138 We are
further mindful that the district court, having heard the evidence, observed the
witnesses, and appraised the parties’ motives, is in the best position to make this
determination.139 The district court determined at the summary judgment stage
that Smack acted in bad faith and was precluded from asserting the equitable
defense of laches. However, an actor’s bad faith in violating the Lanham Act
does not per se equate to malicious, fraudulent, or willful conduct justifying an
award of attorneys’ fees.140 The district court here credited Curtiss’ testimony
that he believed based on a settlement agreement in another case that he could
use school colors and design elements in his shirts as long as he did not use the
school’s name or initials.141 As the district court also recognized, this case



       135
             Pebble Beach, 155 F.3d at 555 (internal quotation marks and citation omitted).
       136
             Id. at 556.
       137
             Id.
       138
             Id. at 555.
       139
             Taco Cabana, 932 F.2d at 1127.
       140
          See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 370 (4th
Cir. 2001) (holding that defendant’s bad faith in violating the anti-cybersquating statute did
not compel a finding of malicious, fraudulent, willful or deliberate behavior for attorneys’ fees
under the Lanham Act).
       141
           See Pebble Beach, 155 F.3d at 556 (“‘[a] district court normally should not find a case
exceptional where the party presents what it in good faith believes may be a legitimate
defense’” (citation omitted)).

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                                      c/w No. 07-30887

presents somewhat novel issues—also evident by the presence of several amicus
briefs—concerning the trademark protection for color schemes used by the
Universities. A party does not act in bad faith by predicating his legal claim or
defense on an unsettled legal theory.142
      We have carefully considered the Universities’ arguments but conclude
that the district court neither clearly erred nor abused its discretion. We
therefore affirm the denial of attorneys’ fees.
AFFIRMED.




      142
            See Scott Fetzer Co., 381 F.2d at 490.

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