     Case: 18-20119    Document: 00514785922    Page: 1   Date Filed: 01/08/2019




        IN THE UNITED STATES COURT OF APPEALS
                 FOR THE FIFTH CIRCUIT
                                                             United States Court of Appeals
                                                                      Fifth Circuit


                                 No. 18-20119                       FILED
                                                              January 8, 2019
                                                               Lyle W. Cayce
SPRINGBOARDS TO EDUCATION, INCORPORATED,                            Clerk

             Plaintiff - Appellant

v.

HOUSTON INDEPENDENT SCHOOL DISTRICT,

             Defendant - Appellee



                Appeal from the United States District Court
                     for the Southern District of Texas


Before STEWART, Chief Judge, KING and OWEN, Circuit Judges.
KING, Circuit Judge:
      Springboards to Education, Inc., sued Houston Independent School
District under the Lanham Act for using its marks in the course of operating a
summer-reading program. The district court disposed of Springboards’ claims
on summary judgment because it concluded that a reasonable jury could not
find that the allegedly infringing use of Springboards’ marks was commercial
in nature. We AFFIRM, albeit on alternative grounds: as explained herein, a
reasonable jury could not find that the allegedly infringing use of the marks
created a likelihood of confusion.
                                      I.
      Plaintiff Springboards to Education, Inc., (“Springboards”) is an
education-services company that specializes in promoting literacy among low-
    Case: 18-20119    Document: 00514785922    Page: 2     Date Filed: 01/08/2019



                                No. 18-20119
income and English-as-a-second-language students. In 2005, Springboards
launched a program to motivate students to read that it entitled the “Read a
Million Words campaign.” Under that program, students who reach their goals
to read a certain number of books win the “Millionaire Reader award” and are
inducted into the “Millionaire’s Reading Club.” To incentivize students to join
the Millionaire’s Reading Club, Springboards hosts “red-carpet parties”
featuring rented limousines for the successful students.
      Springboards markets products and services to school districts to
implement the program. Springboards’ products include incentive items for
participating students such as certificates, T-shirts, drawstring backpacks,
and fake money. Between 2011 and 2013, Springboards successfully registered
four trademarks with the United States Patent and Trademark Office in
connection with the Read a Million Words campaign: “Read a Million Words,”
“Million Dollar Reader,” “Millionaire Reader,” and “Millionaire’s Reading
Club.” It also registered “Read a Million Words” as a service mark.
Springboards uses these marks on its incentive items and promotional
materials.
      Defendant Houston Independent School District (“HISD”) is the largest
public school district in Texas, serving more than 200,000 students. HISD,
which is not a Springboards customer, launched its own monetary-themed
incentive-based literacy program in 2008 called the “Houston ISD Millionaire
Club.” The Houston ISD Millionaire Club had a somewhat narrower focus than
Springboards’ program: it was a summer-reading program aimed at curbing
the so-called summer slide, a phenomenon in which students lose progress
gained over the academic year during summer vacation. HISD premised the
Houston ISD Millionaire Club on research showing that students can prevent
the summer slide by reading five books over the summer. HISD officials
testified that they developed the millionaire theme because HISD’s 200,000-
                                      2
     Case: 18-20119       Document: 00514785922         Page: 3    Date Filed: 01/08/2019



                                      No. 18-20119
plus students would read more than one million books over the summer if each
student read the requisite five books. These officials insisted that they were
not familiar with Springboards or its marks at the time they developed the
program.
       Like Springboards, HISD encouraged participation in the program by
rewarding students with items including certificates, T-shirts, drawstring
backpacks, and fake money—all labeled “Houston ISD Millionaire Club.” HISD
also distributed informational material referencing the name “Houston ISD
Millionaire Club.” HISD rebranded its summer-reading program in 2014 to
“Every Summer Has a Story” and ceased using the name “Houston ISD
Millionaire Club.”
       Springboards sued HISD in federal district court. It alleged that HISD’s
use of “Houston ISD Millionaire Club” on its incentive items and informational
material constituted counterfeiting, trademark infringement, false designation
of origin, and trademark dilution, all in violation of the Lanham Act. 1 The
parties filed cross-motions for summary judgment. The district court
determined that Springboards could not prove HISD used its marks in a
commercial manner, which, it opined, precluded each of Springboards’ Lanham
Act claims. The district court did not reach HISD’s several alternative
arguments, including its argument that Springboards could not show that
HISD created a likelihood of confusion by using its marks. Accordingly, the
district court granted HISD’s motion for summary judgment and denied
Springboards’ motion. Springboards subsequently filed a motion for
reconsideration, which the district court also denied. Springboards appeals.


       1 Springboards additionally asserted analogous state-law claims, which the district
court dismissed for lack of subject-matter jurisdiction. It likewise alleged HISD took its
property without just compensation in violation of the Texas and United States constitutions.
The district court dismissed those claims on summary judgment. Springboards only raises
its Lanham Act claims on appeal.
                                             3
    Case: 18-20119    Document: 00514785922     Page: 4   Date Filed: 01/08/2019



                                 No. 18-20119
                                       II.
      We review the parties’ motions for summary judgment de novo, applying
the same standard as the district court. Am. Family Life Assurance Co. of
Columbus v. Biles, 714 F.3d 887, 895 (5th Cir. 2013) (per curiam). “The court
shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a
matter of law.” Fed. R. Civ. P. 56(a). In reviewing the party’s cross-motions for
summary judgment, we examine “each party’s motion independently” and view
“the evidence and inferences in the light most favorable to the nonmoving
party.” JP Morgan Chase Bank, N.A. v. Data Treasury Corp., 823 F.3d 1006,
1011 (5th Cir. 2016) (quoting Morgan v. Plano Indep. Sch. Dist., 589 F.3d 740,
745 (5th Cir. 2009)). “A genuine issue of material fact exists if a reasonable
jury could enter a verdict for the non-moving party.” Biles, 714 F.3d at 896.
“Because our review is de novo, our analysis is not limited to that employed by
the district court, and we ‘may affirm the district court’s decision on any basis
presented to the district court.’” Id. (quoting LeMaire v. La. Dep’t of Transp. &
Dev., 480 F.3d 383, 387 (5th Cir. 2007)).
      The Lanham Act is intended, inter alia, “to protect persons engaged in
such commerce against unfair competition[] [and] to prevent fraud and
deception in such commerce by the use of reproductions, copies, counterfeits,
or colorable imitations of registered marks.” 15 U.S.C. § 1127. It does so by
“making actionable the deceptive and misleading use of marks” through
various causes of action vested in the marks’ owners. Id. Springboards seeks
to enforce its trademarks and service mark through four such causes of action:
trademark infringement, counterfeiting, false designation of origin, and
trademark dilution. We address each in turn.




                                       4
    Case: 18-20119     Document: 00514785922      Page: 5   Date Filed: 01/08/2019



                                  No. 18-20119
                                        A.
      A defendant is liable for Lanham Act infringement if the defendant uses
“in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark in connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§ 1114(1)(a). The district court focused on the requirement that the allegedly
infringing use be “in connection with the sale, offering for sale, distribution, or
advertising” of goods or services. Relying on out-of-circuit precedent, it
concluded that this language requires the allegedly infringing use be
commercial in nature, and it concluded that no reasonable jury could find HISD
used “Houston ISD Millionaire Club” in connection with any commercial
exchange. We express no opinion on the correctness of the district court’s
analysis; instead, we focus on HISD’s alternative argument that its use of
“Houston ISD Millionaire Club” was not “likely to cause confusion, or to cause
mistake, or to deceive.” Id.
      To prove infringement, Springboards must show that HISD’s use of
“Houston ISD Millionaire Club” “create[d] a likelihood of confusion in the
minds of potential consumers as to the source, affiliation, or sponsorship” of
HISD’s products or services. Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188,
193 (5th Cir. 1998). “Likelihood of confusion is synonymous with a probability
of confusion, which is more than a mere possibility of confusion.” Id. In other
words, Springboards must show that potential consumers, when confronted
with “Houston ISD Millionaire Club,” would believe Springboards is somehow
affiliated with HISD’s summer-reading program or the branded incentive
items and informational material HISD distributed in connection with its
summer-reading program.


                                        5
     Case: 18-20119      Document: 00514785922        Page: 6    Date Filed: 01/08/2019



                                     No. 18-20119
      In assessing likelihood of confusion, we examine eight nonexhaustive
“digits of confusion”:
      ‘(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, (6) the defendant’s intent, . . . (7) any
      evidence of actual confusion[,]’ . . . [and] (8) the degree of care
      exercised by potential purchasers.

Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 453 (5th Cir.
2017) (alterations and omissions in original) (quoting Bd. of Supervisors for La.
State Univ. Agricultural & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465,
478 (5th Cir. 2008)). These digits are flexible: “They do not apply mechanically
to every case and can serve only as guides, not as an exact calculus.” Scott
Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 485 (5th Cir. 2004).
Accordingly, must keep in mind two important principles while applying these
digits: (1) “we must consider the application of each digit in light of the specific
circumstances of the case”; and (2) “we must ‘consider the marks in the context
that a customer perceives them in the marketplace.’” Id. (quoting Elvis Presley
Enters., 141 F.3d at 197).
      We will examine each digit in turn. But given the atypical facts of this
case, we first digress to consider the context in which this dispute arises. That
context will then help channel our discussion of the eight digits of confusion.
      We begin our detour by stating what is perhaps obvious, though easy to
lose sight of when considering some of the parties’ arguments: Springboards
brings a trademark claim—not a patent claim. 2 Accordingly, Springboards
does not challenge HISD’s use of a monetary-themed incentive-based literacy



      2 The record does not indicate whether Springboards holds a utility patent on the
methods it uses in its Read a Million Words literacy program. We do not intend to opine on
whether such a patent would be available to Springboards.
                                            6
    Case: 18-20119     Document: 00514785922      Page: 7    Date Filed: 01/08/2019



                                  No. 18-20119
program. HISD could have copied the methodologies used in the Read a Million
Words campaign step by step, and, whatever other problems that might have
engendered, as long as it used clearly distinguishable nomenclature,
Springboards would have no argument that HISD violated the Lanham Act in
doing so. Thus, although the similarity between the parties’ products and
services is a digit of confusion relevant to the analysis, the focus of the analysis
is on whether HISD misappropriated Springboards’ marks, not whether HISD
misappropriated Springboards’ literacy-promotion methods.
      Next, we must identify the class of consumers at risk of confusion and
the point in the transaction at which the risk of confusion arises. See Astra
Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir.
1983) (“If likelihood of confusion exists, it must be based on the confusion of
some relevant person; i.e., a customer or purchaser.”); accord Elec. Design &
Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992). In the
typical likelihood-of-confusion case, these questions require little inquiry.
Normally, the alleged infringer appropriates the senior mark user’s goodwill
by selling a product or service that the consumer might mistake as being in
some manner affiliated with the senior mark user. See, e.g., Viacom Int’l v. IJR
Capital Invs., L.L.C., 891 F.3d 178, 183-84 (5th Cir. 2018). The risk in such a
case is that the purchaser will be confused at the point of the sale. See 4
McCarthy on Trademarks and Unfair Competition § 23:5 (5th ed. 2018 update)
(“The most common and widely recognized type of confusion that creates
infringement is purchaser confusion of source which occurs at the time of
purchase: point of sale confusion.”).
      The relevant risk of confusion is not as clear in this case. Springboards’
business model is premised on marketing the Read a Million Words campaign
to school districts and selling those districts the products and services needed
to implement the campaign. But Springboards does not allege that HISD
                                         7
     Case: 18-20119      Document: 00514785922        Page: 8     Date Filed: 01/08/2019



                                     No. 18-20119
directly competed with it by marketing the Houston ISD Millionaire Club to
outside school districts. Rather, Springboards argues that HISD itself would
have purchased Springboards’ services were it not infringing on those services.
Springboards does not argue—and it would be nonsensical to argue—that
HISD confused itself into developing its own literacy program thinking that it
was instead purchasing Springboards’ program. The archetype therefore does
not fit this case. But Springboards alludes to alternative sources of confusion,
which we briefly explore.
      Springboards suggests HISD’s students and their parents might have
been confused into thinking that HISD was using Springboards’ program
instead of its own. Regardless of whether that might have been the case,
HISD’s students and their parents are not the appropriate focus of the
likelihood-of-confusion analysis. Although the ultimate recipients of HISD’s
services and products, the students and their parents were not purchasers in
any ordinary sense. 3 They are better characterized as the “users” of the
allegedly infringing products and services. See 4 McCarthy, supra, at § 23:7
(discussing circumstances under which “[c]onfusion of users” may be
actionable). User confusion is actionable in some cases, but as the Federal
Circuit has cautioned, only confusion in “those users who might influence
future purchasers” is actionable. Elec. Design & Sales, 954 F.2d at 718. Here,
absent any evidence that HISD students or their parents exercise any
influence over HISD’s purchasing decisions, we need not consider the
likelihood that HISD students and parents were confused about Springboards’
role in the Houston ISD Millionaire Club initiative.




      3 Nor is there evidence that Springboards directly marketed its products and services
to students or parents.
                                            8
     Case: 18-20119        Document: 00514785922          Page: 9     Date Filed: 01/08/2019



                                        No. 18-20119
       Next, Springboards suggests there is a risk that third-party educators
were confused. Courts call this genus of confusion postsale confusion. 4 See, e.g.,
Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 898 F.3d 1279, 1295 (11th
Cir. 2018). See generally 4 McCarthy, supra, at § 23:7. In such cases, the
purchaser of the infringing product or service understands the product or
service is not affiliated with the senior mark user, but there remains a
likelihood of confusion in third-party potential purchasers. See Gibson Guitar
Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 552 (6th Cir. 2005). The
paradigmatic postsale confusion case arises when a consumer knowingly
purchases a counterfeit of a luxury item—a designer handbag, for example. See
4 McCarthy, supra, at § 23:7 (collecting cases). Those who later observe the
counterfeit item might mistake it as genuine, thus harming the senior mark
user’s goodwill by potentially leading the observer to believe the senior mark
user’s product is less scarce or of a lower quality than it actually is. See id.
       Although there is no evidence that scarcity is important to Springboards’
business model, there is some risk that if HISD’s literacy program were
inferior to Springboards’ literacy program, then Springboards’ potential
customers might be deterred from purchasing Springboards’ products and
services by a mistaken association between HISD and Springboards. This
would be actionable. 5 We therefore focus our digits-of-confusion analysis on


       4  We use the term “postsale confusion” to ground the alleged confusion here within the
conceptual framework, although we recognize there was no actual sale involved.
        5 We note that there is some question about whether Springboards must present

evidence that HISD’s program is inferior to its own to proceed on a theory of likelihood of
postsale confusion. The Sixth Circuit has held that when such postsale confusion is at issue,
the senior mark user must present evidence that the junior user’s product or service is
“clearly inferior” to the senior user’s; otherwise, postsale confusion would not deter the senior
user’s potential purchasers. Gibson Guitar Corp., 423 F.3d at 552. The Eleventh Circuit has
explained “that the quality of a defendant’s product is relevant to the harm suffered by the
plaintiff” but has declined to “require a threshold showing that the defendant’s product is
inferior in quality.” Yellowfin Yachts, 898 F.3d at 1295 & n.14. The parties do not address
this question, so we do not endeavor to resolve it.
                                               9
   Case: 18-20119     Document: 00514785922     Page: 10    Date Filed: 01/08/2019



                                 No. 18-20119
whether there is a probability that HISD’s use of “Houston ISD Millionaire
Club” would confuse third-party educators into believing that Springboards is
affiliated with Houston’s summer-reading program.
                                       1.
      The first digit of confusion, the type of the mark, “refers to the strength
of the mark.” Elvis Presley Enters., 141 F.3d at 201. The more distinct and
recognizable the senior user’s mark, “the greater the likelihood that consumers
will confuse the junior user’s use with that of the senior user.” Id. We analyze
two factors in determining the strength of a mark: (1) the mark’s position along
the distinctiveness spectrum, and (2) “the standing of the mark in the
marketplace.” Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 330 (5th
Cir. 2008).
      The first factor refers to the five categories of increasing distinctiveness
that marks generally fall into: generic, descriptive, suggestive, arbitrary, and
fanciful. See Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227
(5th Cir. 2009). A generic mark is simply the ordinary name of the product. See
id. A descriptive mark conveys information about the product or service. See
Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th
Cir. July 1981). A suggestive mark “suggests, but does not describe, an
attribute of the good; it requires the consumer to exercise his imagination to
apply the trademark to the good.” Xtreme Lashes, 576 F.3d at 227. Arbitrary
and fanciful marks have no relation to the product or service. See 2 McCarthy,
supra, at §§ 11.5, 11.11.
      Springboards argues that its marks are arbitrary. We disagree. “Read a
Million Words” is descriptive. It states the goal of Springboards’ campaign in
plain English; no imagination is needed to understand what the mark is meant
to convey. Springboards’ other three marks—“Millionaire Reader,” “Million
Dollar Reader,” and “Millionaire’s Reading Club”—are suggestive. It requires
                                       10
    Case: 18-20119      Document: 00514785922        Page: 11    Date Filed: 01/08/2019



                                    No. 18-20119
some imagination to equate the traditional concept of a millionaire with a
student who has read a million words. But the terms used in the marks are
nevertheless related to Springboards’ products: items given to students who
read one million words in a monetary-themed literacy program.
      On the second factor, a reasonable jury could not conclude that
Springboards’ marks enjoy strong standing in the market. Springboards cites
to no evidence in the summary-judgment record showing that its marks are
widely recognizable. 6 To the contrary, Springboards’ damages expert conveyed
that 87 percent of Springboards’ revenue comes from a single school district in
Edinburg, Texas.
      Moreover, HISD presented unrebutted evidence of numerous other
literacy programs predating Springboards’ “Read a Million Words” campaign
that use phrases identical or nearly identical language to Springboards’ marks.
These programs include an elementary school’s initiative called “The Reading
Millionaire’s Project”; two different public libraries’ reading programs called
“Who Wants to Be a Million Dollar Reader?”; a Miami high school’s contest
called “the Million Words Campaign”; the Denver public school district’s
“Million Word Campaign”; and a Texas public school district’s program that
honors students as “Millionaire Readers” and inducts them into a “Millionaire’s
Club.” Extensive third-party use of a term throughout the market suggests
that consumers will not associate the junior mark’s use with the senior mark
user. See Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986)
(explaining common use of “XL” mark with various consumer goods “dilute[d]
the strength of the mark”); Sun Banks, 651 F.2d at 316 (noting that prolific use


      6  Citing primarily to evidence of HISD’s success with its summer-reading program,
Springboards argues that its marks are strong because there is high demand for literacy
programs targeted at low-income students. But Springboards cites to no authority, and we
therefore express no view, on whether the demand for a generic product has any bearing on
the strength of the mark.
                                           11
   Case: 18-20119       Document: 00514785922      Page: 12   Date Filed: 01/08/2019



                                    No. 18-20119
of “sun” by Florida financial institutions weakened mark); Duluth News–
Tribune, a Div. of Nw. Publ’ns, Inc. v. Mesabi Publ’g Co., 84 F.3d 1093, 1097
(8th Cir. 1996) (“[T]he widespread use of the words ‘news’ and ‘tribune’
throughout the newspaper industry precludes plaintiff from claiming exclusive
privilege to use these words.”).
      In sum, although the fact that three of Springboards’ marks are
suggestive would normally indicate that the marks are strong, the strength of
Springboards’ marks is substantially undercut by their lack of recognition in
the market and widespread third-party use. See Sun Banks, 651 F.2d at 315-
17 (concluding arbitrary mark was weak because of widespread third-party
use). Accordingly, the first digit suggests no likelihood of confusion.
                                          2.
      The second digit is the similarity of the marks. There is no doubt that
there are commonalities between the marks, especially between Springboards’
“Millionaire Reader Club” and HISD’s “Houston ISD Millionaire Club.” But
“the use of identical dominant words does not automatically equate to
similarity between marks.” Sensient Techs. Corp. v. SensoryEffects Flavor Co.,
613 F.3d 754, 765 (8th Cir. 2010). Although we do not entirely discount the
common use of “Millionaire” and “Club” in both marks, viewing the marks as
a whole, a reasonable jury could not conclude these similarities suggest a
likelihood of confusion. See Oreck, 803 F.2d at 171. HISD’s use of “Houston
ISD” in the mark especially mitigates the likelihood of confusion. See id.
(concluding second digit weighed against confusion in part because junior user
clearly identified itself on advertisement). The second digit favors neither
party.
                                          3.
         The third digit is the similarity of the products or services. There can be
little dispute that this digit favors Springboards. Both programs involve
                                          12
    Case: 18-20119    Document: 00514785922       Page: 13   Date Filed: 01/08/2019



                                  No. 18-20119
monetary-themed incentive-based literacy programs, and they distribute many
of the same branded incentive items, including certificates, T-shirts,
drawstring backpacks, and fake money. That Springboards’ program seeks to
encourage students to read during the academic year while HISD’s program
seeks to encourage students to read during the summer is not a meaningful
difference. Accordingly, the third digit suggests a likelihood of confusion.
                                         4.
      The fourth digit is the identity of retail outlets and purchasers. This digit
is an awkward fit to the facts of the case as HISD did not market the Houston
ISD Millionaire Club and therefore had no retail outlets or purchasers.
Nevertheless, HISD is a school district, and Springboards markets its products
and services to school districts. Because we are focused on the risk that third-
party observers will confuse HISD’s program with Springboards’ program, this
overlap suggests some likelihood of confusion—an outside observer could have
seen HISD using its own program and believed it purchased the program from
Springboards. The fourth digit does not weigh nearly as strongly in
Springboards’ favor as it would if HISD had marketed the program to third
parties, but a jury could attribute to it modest weight nonetheless.
                                         5.
      The fifth digit is the identity of the advertising media used. This digit
also does not fit neatly into this case because HISD did not market the Houston
ISD Millionaire Cub and therefore did not advertise. Springboards argues that
this digit suggests a likelihood of confusion because “both parties use their
marks on printed brochures, branded merchandise, the internet, and materials
provided to consumers.” Even to the extent this could be considered advertising
in some literal sense of the word, it is not relevant to the likelihood-of-confusion
analysis. The HISD advertising materials Springboards references were all
either informational material distributed to parents and students to encourage
                                        13
    Case: 18-20119    Document: 00514785922      Page: 14    Date Filed: 01/08/2019



                                  No. 18-20119
participation in the program or incentive items distributed to the students as
part of the program. Third-party observers who saw such material would not
have erroneously believed HISD was marketing its services to outside school
districts. By contrast, Springboards produced marketing material explicitly
targeting school districts. This digit suggests no likelihood of confusion.
                                        6.
      The sixth digit is intent to confuse. Springboards points to no direct
evidence of an intent to confuse, but it argues that the similarity of the parties’
marks is circumstantial evidence of intent to confuse. Even assuming arguendo
the similarity of marks alone could provide evidence of intent to confuse, the
similarity of the marks does not provide such evidence in this case.
Uncontradicted testimony from HISD officials established that HISD
developed the millionaire theme for its summer reading program because the
program’s goal was for each of HISD’s 200,000-plus students to read five books
over the summer—exceeding one million books total. Officials who helped
develop the program testified that they had not heard of Springboards or its
marks at the time. And as discussed above, millionaire-themed literacy
programs were prevalent even before Springboards entered the equation, so it
is not surprising that HISD would have developed the idea for the Houston
ISD Millionaire Club independently of Springboards. Even when viewing the
evidence in the light most favorable to Springboards, this digit weighs against
a likelihood of confusion.
                                        7.
      The seventh digit is evidence of actual confusion. Springboards presents
four declarations from witnesses who saw material from HISD discussing or
promoting the Houston ISD Millionaire Club. But only two of those four
witnesses identified themselves as educators. And neither of those two testified
that he or she has any authority to purchase Springboards’ products or services
                                        14
   Case: 18-20119     Document: 00514785922      Page: 15   Date Filed: 01/08/2019



                                  No. 18-20119
for his or her employer or otherwise influences such purchasing decisions.
Further, only one of the educators, Raul Soto, attested that he believed the
Houston ISD Millionaire Club was affiliated with Springboards. The other
educator, Amy Rocha-Trevino, testified that she saw HISD’s “‘copycat’
products” and that she saw a “Houston ISD Millionaire Club” night at a
Houston Rockets game that “had nothing to do with Springboards.” There is
thus no direct evidence of any actual confusion by potential Springboards
customers. A jury could conclude that Springboards’ evidence of actual
confusion weighs minimally in favor of finding a likelihood of confusion.
                                        8.
      The eighth and final digit is the degree of care exercised by potential
purchasers. Under this digit, the greater the care potential purchasers
exercise, the less likely it is they will confuse a junior mark user’s products or
services with the senior mark user’s products or services. See Streamline Prod.,
851 F.3d at 458. We have held that “professional and institutional” purchasers
“are virtually certain to be informed, deliberative buyers.” Oreck, 803 F.2d at
173. There is no question this includes public school districts shopping for
outside literacy programs. Nevertheless, Springboards argues that purchasers
do not exercise care because many of its individual products—the incentive
items distributed to the students—are low value. Springboards ignores the
reality of its own program: it markets the program as a whole, not individual
items. This digit suggests there is no likelihood of confusion.


                                        9.
      The ultimate question is whether a reasonable jury could conclude that
it is likely potential purchasers of Springboards’ products would have believed
that Springboards was affiliated with HISD’s summer-reading program. See
Scott Fetzer, 381 F.3d at 484-85. Looking to the digits of confusion for guidance,
                                       15
   Case: 18-20119     Document: 00514785922     Page: 16   Date Filed: 01/08/2019



                                 No. 18-20119
we conclude that no reasonable jury could find a likelihood of confusion.
Springboards’ marks are not widely known and are similar or identical to
multiple third-party marks. HISD did not market the Houston ISD Millionaire
Club to Springboards’ potential customers—i.e., third-party school districts.
There is no evidence of an intent to confuse. And Springboards’ potential
customers are sophisticated institutional purchasers that are not easily
confused. The only digit pointing unwaveringly in Springboards’ favor is the
similarity of the products. But even this does not strongly suggest a likelihood
of confusion given the popularity of millionaire-themed literacy programs.
Otherwise, there is some overlap in markets considering that HISD is a school
district and Springboards markets to school districts, but the importance of
this digit is undercut by the fact that HISD did not market the Houston ISD
Millionaire Club externally.
      Accordingly, the great weight of the digits suggests there is no likelihood
of confusion. Without being able to show a likelihood of confusion,
Springboards cannot succeed on its infringement claim, so the district court
properly granted summary judgment to HISD on this issue.
                                       B.
      Springboards next alleges that HISD counterfeited its marks in violation
of the Lanham Act. Likelihood of confusion is also an element of counterfeiting.
See 15 U.S.C. § 1114(1)(a); cf. 4 McCarthy, supra, at § 25.10 (“[C]ounterfeiting
is ‘hard core’ or ‘first degree’ trademark infringement . . . .”). Accordingly,
Springboards’ counterfeiting claim also fails because a reasonable jury could
not find a likelihood of confusion. The district court therefore properly granted
summary judgment to HISD on this issue as well.
                                       C.
      Springboards must also show likelihood of confusion to succeed on its
false-designation-of-origin claim. See King v. Ames, 179 F.3d 370, 374 (5th Cir.
                                       16
    Case: 18-20119      Document: 00514785922        Page: 17     Date Filed: 01/08/2019



                                     No. 18-20119
1999) (explaining that likelihood of confusion is “essential element” for
Lanham Act false designation of origin). Thus, the district court properly
granted summary judgment to HISD on this issue.
                                           D.
      Lastly, Springboards alleges trademark dilution. To succeed on its
dilution claim, Springboards must show that its marks are “famous.” 15 U.S.C.
§ 1125(c)(1); see also Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671
F.3d 526, 536 (5th Cir. 2012). For a mark to be famous, it must be “widely
recognized by the general consuming public of the United States.”
§ 1125(c)(2)(A). As discussed above, Springboards cannot make this showing.
There is no evidence in the summary-judgment record that Springboards’
marks are widely known among educators, never mind the general consuming
public. On the contrary, the evidence shows that Springboards conducts 87
percent of its business in a single Texas school district. Further, Springboards’
marks are identical or similar to marks used by several other literacy
programs. Accordingly, no reasonable jury could find Springboards’ marks are
famous and distinct, so the district court properly granted summary judgment
to HISD on this issue. 7


                                          III.
      Lastly, we address Springboards’ challenges to three procedural rulings
the district court issued below. First, Springboards argues that the district
court improperly denied its motion to extend the dispositive-motion deadline.
Second, Springboards argues the district court improperly denied it leave to


      7 Because no reasonable jury could return a verdict for Springboards on any of its
claims, it follows a fortiori that a reasonable jury could return a verdict for HISD.
Accordingly, the district court properly denied Springboards’ summary-judgment motion.
Likewise, because we conclude de novo that HISD is entitled to summary judgment, we also
conclude that the district court properly denied Springboards’ motion for reconsideration.
                                           17
   Case: 18-20119     Document: 00514785922      Page: 18   Date Filed: 01/08/2019



                                  No. 18-20119
amend its motion for summary judgment. Third, Springboards argues the
district court improperly denied it leave to amend its complaint. We review
each of these rulings for abuse of discretion. See Squyres v. Heico Cos., 782 F.3d
224, 236-37 (5th Cir. 2015).
      The district court originally ordered discovery in this case to conclude by
September 1, 2017. But Hurricane Harvey hit coastal Texas near the end of
August 2017, disrupting multiple eleventh-hour depositions the parties had
planned. The district court accordingly granted a series of extensions,
eventually extending the discovery deadline to September 25, 2017.
Springboards then moved to extend the deadline for dispositive motions from
October 1 to October 25. Springboards explained that it would have difficulty
complying with the deadline because Hurricane Harvey delayed the end of
discovery and left it with little time to finalize its summary-judgment motion.
It further argued that HISD had failed to produce certain “key documents.”
The district court denied that motion. Springboards filed a timely motion for
summary judgment, then later moved to amend its motion to add certified
deposition transcripts it did not receive until after the dispositive-motion
deadline.
      A scheduling order “may be modified only for good cause.” Fed. R. Civ. P.
16(b)(4). As we have expounded:
      There are four relevant factors to consider when determining
      whether there is good cause under Rule 16(b)(4): “(1) the
      explanation for the failure to timely [comply with the scheduling
      order]; (2) the importance of the [modification]; (3) potential
      prejudice in allowing the [modification]; and (4) the availability of
      a continuance to cure such prejudice.”

Squyers, 782 F.3d at 237 (alterations in original) (quoting Meaux Surface Prot.,
Inc. v. Fogleman, 607 F.3d 161, 167 (5th Cir. 2010)). Although the difficulty
Hurricane Harvey caused is certainly a sufficient explanation for the delay,

                                       18
   Case: 18-20119     Document: 00514785922     Page: 19   Date Filed: 01/08/2019



                                 No. 18-20119
Springboards failed to elaborate on its need for the missing evidence in either
its pre-deadline motion to extend or its post-deadline motion to amend.
Accordingly, Springboards did not meet its burden to show good cause, and the
district court did not abuse its discretion in denying those motions.
      We also conclude the district court did not abuse its discretion in denying
Springboards’ motion to amend its complaint. Springboards moved to amend
its complaint after the deadline for amended pleadings had passed.
Springboards did not seek to add any claims; rather, it sought to drop its state-
law trademark claims and “clarify” certain factual matters. The district court
denied the motion. On appeal, Springboards argues that the district court
should have granted the motion because the amended complaint would not
have caused any delay below. But Springboards must show more than a lack
of delay; parties must meet Rule 16(b)(4)’s good-cause standard to amend
pleadings once the deadline to do so has passed. See Filgueira v. U.S. Bank
Nat’l Ass’n, 734 F.3d 420, 422 (5th Cir. 2013) (per curiam). Springboards failed
to explain below and again fails to explain on appeal the importance of the
amendment to its case. It therefore cannot show good cause. See id.
                                      IV.
      For the foregoing reasons, we AFFIRM the judgment of the district court.




                                       19
