Git-R-Done Productions, Inc. v. Giterdone C Store, LLC
ORDER denying 115 Motion for Summary Judgment Signed by Chief District Judge Louis Guirola, Jr on 12/28/2016 (Guirola, Louis)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
GIT-R-DONE PRODUCTIONS, INC.
CAUSE NO. 1:15CV386-LG-RHW
GITERDONE C STORE, LLC and
443-B YACHT CLUB DRIVE LLC
MEMORANDUM OPINION AND ORDER DENYING MOTION FOR
SUMMARY JUDGMENT FILED BY DEFENDANTS
BEFORE THE COURT is the  Motion for Summary Judgment filed by
Defendants Giterdone C Store, LLC and 443-B Yacht Club Drive LLC. Having
reviewed the parties’ submissions and the applicable law, the Court is of the opinion
that the Motion should be denied.1
This is an action for federal trademark infringement and related claims.
Plaintiff Git-R-Done Productions, Inc., originally sued Defendant Giterdone C Store,
LLC, the owner of the Giterdone gas station and convenience store located in
Diamondhead, Mississippi.2 Plaintiff contends that “Defendant has purposefully
misappropriated” the well-known Git-R-Done “tagline and trademark of the famous
comedian and actor, Daniel Lawrence Whitney, known by his stage name, Larry the
Cable Guy.” (Compl. 1 (¶1), ECF No. 1). It alleges that “Defendant’s actions are
The Court denies Defendants’ request for oral argument pursuant to
Uniform Local Civil Rule 7.
The Court later allowed Plaintiff to amend its Complaint to add Defendant
443-B Yacht Club Drive as a party to its claim for trademark cancellation. For ease
of reference, the Court will simply refer to “Plaintiff” and “Defendant” throughout
infringing [Plaintiff]’s trademark rights and causing it damages.” (Id.). Plaintiff’s
Complaint includes claims against Defendant for (1) trademark infringement under
federal law; (2) false designation of origin, passing off, and unfair competition under
federal law; (3) trademark dilution under federal law; (4) trademark infringement
and unfair competition under Mississippi common law; and (5) cancellation of
trademark. Defendant moves for summary judgment on all claims.
A motion for summary judgment shall be granted “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). The movant bears the initial
burden of identifying those portions of the pleadings and discovery on file, together
with any affidavits or declarations, which it believes demonstrate the absence of a
genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986).
The Court views the evidence in the light most favorable to the non-movant.
Abarca v. Metro. Transit Auth., 404 F.3d 938, 940 (5th Cir. 2005). If the movant
“fails to meet [its] initial burden, the motion must be denied, regardless of the
nonmovant’s response.” Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.
1994). If the movant carries its burden of demonstrating the absence of a genuine
issue of material fact, the burden shifts to the non-movant to show that summary
judgment should not be granted. Celotex, 477 U.S. at 323-25.
Defendant makes the following arguments in support of its Motion: (1)
Plaintiff’s mark is generic, and, thus, unprotected; (2) there is no likelihood of
confusion between Plaintiff’s mark and Defendant’s mark; (3) Plaintiff’s state law
claims fail as a matter of law; (4) Plaintiff cannot prove actual damages; and (5)
problems with Plaintiff’s expert support summary judgment in its favor.3 The
Court discusses each argument below.
Classification of “Git-R-Done”
“‘The threshold issue in any action for trademark infringement is whether
the word or phrase is initially registerable or protectable.’” Union Nat’l Bank of
Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th
Cir. 1990) (citations omitted). “To determine whether a word or phrase is
protectable, it must first be determined into which category, (1) generic, (2)
descriptive, (3) suggestive, or (4) arbitrary or fanciful, the word or phrase belongs.”
Id. The parties agree that “Git-R-Done” is not descriptive or suggestive. Defendant
claims that the phrase is generic, while Plaintiff claims that it is arbitrary.
“The significance of assigning a word or phrase to one of these categories is
that the assignment determines whether or not, or in what circumstances, the word
or phrase is eligible for trademark protection.” Id. “Generic terms are never
eligible for trademark protection.” Id. (emphasis omitted). “Descriptive terms may
only be protected after proof of secondary meaning, and suggestive, arbitrary or
While Defendant makes a single reference to its “fair use defense[,]” (see
Def. Mem. 2, ECF No. 116), it does not discuss “fair use” or otherwise inform the
Court as to why it is entitled to summary judgment in its favor based on this
defense, on which it bears the burden of proof. See, e.g., King-Size, Inc. v. Frank’s
King Size Clothes, Inc., 547 F. Supp. 1138, 1164 (S.D. Tex. 1982).
fanciful terms are all protectable without proof of secondary meaning.” Id.
“A generic term is one which identifies a genus or class of things or services,
of which the particular item in question is merely a member.” Id. at 845. “An
example of a generic word is ‘fish.’ ‘Fish’ is a generic term which applies with equal
force to sole, haddock, perch, salmon, bass and carp.” Id. In contrast, “arbitrary
and fanciful terms or phrases are those which are either coined words or words
which are not suggestive of the product or service. Here we have a sub-set of
classifications within the categories.” Id. “Fanciful terms are most often coined
words such as ‘Xerox’ or ‘Kodak[,]’ [while] the term ‘arbitrary’ refers to ordinary
words which do not suggest or describe the services involved. An example is ‘Ivory’
as applied to Soap.” Id.
“[T]he categorization of a term is properly considered a matter of fact because
the appropriate categorization is not self-evident.” Id. at 846. “Because
categorization is a question of fact, summary judgment is rarely appropriate.”
Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 232 (5th Cir. 2009); see
also, e.g., Who Dat Yat Chat, LLC v. Who Dat, Inc., No. 10-1333, 2012 WL 2579815,
at *1 (E.D. La. July 3, 2012).
When considering whether a trademark is generic, the Court looks to
dictionary definitions, consumer surveys, the so-called ‘imagination
test,’4 whether others in the same business would generally need the
This test “asks the trier of fact, be it judge or jury, to measure the
relationship between the actual words of the mark and the product or service to
which they are applied.” Union Nat’l Bank, 909 F.2d at 847-48 (citation, quotation
marks, and brackets omitted).
word to adequately describe their product or service, expert testimony
by language and usage scholars, and evidence regarding how many
other businesses, in the same industry, use the term to describe their
Camowraps, LLC v. Quantum Digital Ventures LLC, 74 F. Supp. 3d 730, 735 (E.D.
La. 2015) (citing Union Nat’l Bank, 909 F.2d at 847-48) (quotation marks omitted).
None of the evidence cited by Defendant leads this Court to conclude as a
matter of law that Git-R-Done is generic. For example, Defendant cites to evidence
from its expert Bridget Anderson that the phrase “Get ‘er done” is a commonly used
phrase “in the American English lexicon[,]” (Anderson Report § 6, ECF No. 118-1),
but this evidence does not equate to a showing that “Git-R-Done” is generic. “[T]he
context in which a word or phrase appears is relevant to determining the proper
category for purposes of trademark protection eligibility. The word or phrase must
be compared to the product or service to which it is applied.” Union Nat’l Bank, 909
F.2d at 846 (emphasis added) (discussing how “fish” could be categorized into any of
the four categories depending on the product or service at issue). Moreover, “[t]he
context in which a particular word or phrase is used is examined, not just with
respect to how it is used with other words or the products or services to which it is
applied, but also to the audience to which the relevant product or service is
“This is not to be confused with the likelihood of confusion analysis where
the trier of fact looks to all third party use, not just use in the same industry, to
determine whether the mark is a ‘weak’ or a ‘strong’ mark.” Union Nat’l Bank, 909
F.2d at 848 n.24.
Likewise, the Court not persuaded by Defendant’s argument that Plaintiff’s
mark is not entitled to protection because Larry the Cable did not invent the term
“Git-R-Done.” “The fact that a word is common does not necessarily make it weak or
unworthy of protection as a trademark . . . .” Fisons Horticulture, Inc. v. Vigoro
Indus., Inc., 30 F.3d 466, 478 (3d Cir. 1994). “‘The significant factor is not whether
the word [or in this case, phrase] itself is common, but whether the way the word [or
phrase] is used in a particular context is unique enough to warrant trademark
protection.’” See id. (citation omitted) (emphasis added). “The words ‘shell,’ ‘camel’
and ‘apple’ are not uncommon, but they are arbitrary when applied to gasoline,
cigarettes and computers.” Id. Shell, Camel, and Apple, did not invent those
words, either, but they are still entitled to trademark protection in the context of
gasoline, cigarettes, and computers.
Plaintiff is not seeking to prohibit anyone anywhere from ever using the
phrase “Get ‘er done,” as Anderson’s report suggests, but is limited to the alleged
improper uses by Defendant. Anderson’s report does not address the uses of “Git-RDone” with respect to the products or services by either party to this lawsuit. While
Plaintiff has moved to exclude Anderson’s testimony, the Court need not decide that
issue at this juncture because, even considering that evidence, it finds that
summary judgment in favor of Defendant is not appropriate.
Finally, use of the phrase by other entities is not dispositive. Defendant
offers no evidence that the alleged other uses by thirteen different companies, (see
Def. Mem. 4-5, ECF No. 116), are in the same industry. See, e.g., Mar. Madness
Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786, 810 (N.D. Tex. 2003).
Even if they were, the thirteen other uses (some by Canadian companies who are
not subject to United States trademark law in any event) do not conclusively show
that Plaintiff’s mark is generic. See, e.g., Pebble Beach Co. v. Tour 18 I, Ltd., 942 F.
Supp. 1513, 1543 (S.D. Tex. 1996).
Likelihood of Confusion
Defendant argues that there is no genuine issue of material fact with respect
to the likelihood of confusion between its mark – “Giterdone” – and Plaintiff’s mark
– “Git-R-Done.” “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 products at issue.” Bd. of Supervisors for La. State Univ. Agric.
& Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008) (citation and
quotation marks omitted). “‘Likelihood of confusion is synonymous with a
probability of confusion, which is more than a mere possibility of confusion.’” Id.
When assessing the likelihood of confusion, [courts] 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, (6) the defendant’s intent, and (7) any evidence of actual
confusion. Courts also consider (8) the degree of actual care exercised
by potential purchasers. No single factor is dispositive, and a finding
of a likelihood of confusion need not be supported by a majority of the
Id. (citations and quotation marks omitted). After consideration of the interplay of
these factors,6 the Court concludes that Defendant has not satisfied its summary
judgment burden to establish a lack of genuine issue of material fact with respect to
the likelihood of confusion between its mark and Plaintiff’s mark.7
While Defendant argues that the marks are spelled differently, marks do not
have to be identical to create a likelihood of confusion. See, e.g., Xtreme Lashes, 576
F.3d at 234; Elvis Presley Enters. v. Capece, 141 F.3d 188, 201 (5th Cir. 1998). And,
the two marks here are identical in pronunciation. See, e.g., Dr. Ing. h.c.F. Porsche
AG v. Zim, 481 F. Supp. 2d 1247, 1250 (N.D. Tex. 1979). The Court further finds
that Defendant’s argument that “there is no similarity of product in that Plaintiff
engages in the comedy entertainment industry and Defendant engages in the
convenience store and gas station industry[,]” (Def. Mem. 16, ECF No. 116), is
disingenuous based on the pleadings and evidence before it. And, “[i]t is well
established . . . that evidence of actual confusion is not necessary for a finding of
likelihood of confusion.” Smack Apparel, 550 F.3d at 483.
For the sake of brevity, the Court finds it unnecessary to include a detailed
analysis of each of Defendant’s arguments.
Plaintiff argues that the Court should find likelihood of confusion in its
favor as a matter of law. The Court offers no opinion on that contention here, but,
rather, will take up that issue (and similar arguments for summary judgment in
Plaintiff’s favor) in deciding Plaintiff’s Motion for Summary Judgment.
State Law Claims
As with federal law, the benchmark of Mississippi common law on trademark
infringement and unfair competition is the likelihood of confusion. See, e.g.,
Richardson, 257 So. 2d at 880; Dollar Dep’t Stores of Miss., Inc. v. Laub, 120 So. 2d
139, 142-43 (Miss. 1960). Accordingly, Defendant’s argument that it is entitled to
summary judgment on Plaintiff’s state law claims because there is “no evidence of
unfair competition[,]” (Def. Mem. 18, ECF No. 116), is denied for the same reasons
already discussed herein.
Defendant cites to testimony that Plaintiff’s corporate representative “has no
knowledge of a financial loss to Plaintiff as a result of confusion between Plaintiff
and Defendant.” (Def. Mem. 9, ECF No. 116; see also id. at 24). Defendant
contends that the lack of evidence of actual damages precludes both the federal and
state law claims.
“For their [federal] trademark infringement claim, in order for [Plaintiff] to
prove a violation of [its] mark, [it] need only show a likelihood of confusion, and not
damage extending from actual confusion.” See Joseph Oat Holdings, Inc. v. RCM
Digesters, Inc., No. 06-4449(NLH)(JS), 2009 WL 4895262, at *2 (D.N.J. Dec. 11,
2009); see also 15 U.S.C. § 1125(a); Core, Inc. v. Abramson, 140 F. Supp. 516, 521
(S.D. Miss. 1956). Similarly, under Mississippi law for unfair competition, “[i]t is
not necessary to show actual confusion; [rather, it is] sufficient to show that
confusion is probable or likely to occur.” See Cockrell v. Davis, 23 So. 2d 256, 261
(Miss. 1945) (citation and quotation marks omitted).
If Plaintiff proves liability, it would be entitled to recover Defendant’s profits,
the costs of the action, and possibly attorney’s fees. See Joseph Oat, 2009 WL
4895262, at *2; see also 15 U.S.C. § 1117(a); Premiere Hot Tubs, Inc. v. A-Tex
Family Fun Ctr., Inc., No. A-12-CA-824-SS, 2013 WL 12078249, at *5 (W.D. Tex.
Mar. 28, 2013). Plaintiff could also recover Defendant’s profits under Mississippi
common law. See Richardson v. Thomas, 257 So. 2d 877, 881 (Miss. 1972).
The Court has already ruled that the survey performed by Plaintiff’s expert,
Sarah Butler, and her accompany report go to weight of the evidence, not
admissibility. (See Order Denying Mot. In Lim., ECF No. 140). Defendant’s
replicated arguments seeking exclusion of that evidence are insufficient to show
that Defendant is entitled to judgment as a matter of law on Plaintiff’s claims.
Nonetheless, Defendant also claims that the survey fails to show a likelihood
of confusion between its mark and Plaintiff’s mark. However, Butler is not offering
an opinion on the likelihood of confusion, as she does not reference Defendant’s
mark at all except in discussing the Complaint allegations. Rather, Butler opines
about “the extent to which the general population has any association with the
phrase GIT-R-DONE.” (Butler Rep. 4, ECF No. 118-8). Her opinions also
encompass the extent to which the general population associates that phrase with
Mr. Whitney/Larry the Cable Guy, which is directly relevant, at the very least, to
the trademark dilution claim. (See id. at 4-5, 16-17); 15 U.S.C. § 1125 (trademark
dilution requires that a mark be “widely recognized by the general consuming
public of the United States as a designation of source of the goods or services of the
mark’s owner”); Dallas Cowboys Football Club, Ltd. v. Am.’s Team Props., Inc., 616
F. Supp. 2d 622, 643 (N.D. Tex. 2009).
Defendant points to Anderson’s opinion “that the phrase ‘Git ‘er Done’ is not
associated linguistically with any particular brand of goods or services, but rather
with a variety of goods and services.” (Def. Mem. 21-22, ECF No. 116). Again,
while Plaintiff has moved to exclude Anderson’s testimony, the Court need not
decide that issue at this juncture. Even considering that testimony, Butler’s report
directly contradicts Anderson’s report, and, at a minimum, shows that there is a
genuine issue of material fact on this issue. (See, e.g., Butler Rep. 4-5, 16-17, ECF
No. 118-8); Dallas Cowboys, 616 F. Supp. at 643. Accordingly, the Court is
unpersuaded by Defendant’s arguments, (see, e.g., Def. Mem. 24, 28, ECF No. 116),
that there is no evidence of association between Plaintiff and its trademarked
Defendant further argues that “Plaintiff’s own survey shows that at least
51.5% of the public” does not associate the phrase with Larry the Cable Guy at all.
(See id. at 9). Defendant does not cite any law – and the Court has found none in
the Fifth Circuit or elsewhere – that failure to establish a minimum percentage of
recognition mandates summary judgment on a dilution claim. See Xuan-Thao N.
Nguyen, The New Wild West: Measuring and Proving Fame and Dilution Under the
Federal Trademark Dilution Act, 63 Alb. L. Rev. 201, 202 (1999) (“[N]o court has
provided a cut-off percentage for finding fame and/or dilution . . . .”); see also id. at
234 (advocating for a 40% cut-off). The statute itself does not quantify “the
requisite degree of recognition . . . ” See 15 U.S.C. § 1125. In short, summary
judgment is not warranted based on Defendant’s attacks on Plaintiff’s expert.
To the extent the Court has not addressed any of the parties’ arguments, it
has considered them and determined that they would not alter this result. None of
arguments advanced demonstrate that Defendants are entitled to judgment as a
matter of law.
IT IS THEREFORE ORDERED AND ADJUDGED that the  Motion
for Summary Judgment filed by Giterdone C Store, LLC and 443-B Yacht Club
Drive LLC is DENIED.
SO ORDERED AND ADJUDGED this the 28th day of December, 2016.
Louis Guirola, Jr.
LOUIS GUIROLA, JR.
CHIEF U.S. DISTRICT JUDGE
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