Fitz v. Nunez et al

Filing 46

MEMORANDUM OPINION AND ORDER re: 26 Motion to Dismiss. Defendants' motion to dismiss is GRANTED as to the common law trademark infringement claim, which is DISMISSED WITHOUT PREJUDICE. The accounting remedy is already accounted for in the Complaint, therefore it is DISMISSED WITH PREJUDICE. The motion to dismiss is DENIED as to the Lanham Act infringement claim, common law unfair competition claim, and cancelation of trademark claim. (Ordered by Judge Jane J Boyle on 8/29/2024) (axm)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
ZEFERINO OCAMPO FITZ,
Plaintiff,
v.
ELIZABETH VENEGAS NUÑEZ,
EXECUTOR AND HEIR OF THE
ESTATE OF DAVID VENEGAS
FRIAS, ALEJANDRO AGUILERA
ROMAN, ALEXIS VENEGAS, GAEL
ORDAZ, EDGAR MELENDEZ,
ASCENSION QUIROZ, AND PETER
ANGEL,
Defendants.

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Civil Action No. 3:23-CV-02298-B

MEMORANDUM OPINION AND ORDER
Before the Court is Defendants Elizabeth Venegas Nuñez, Executor and Heir of the Estate
of David Venegas Frias (“Nuñez”), Alejandro Aguilera Roman, Alexis Venegas, Edgar Melendez,
Armando Carlos Ascencion Quiroz, and Peter Angel (collectively, “Responding Defendants” 1)’s
Amended Motion to Dismiss (Doc. 26). Having reviewed the briefing and applicable law, the
Court GRANTS IN PART and DENIES IN PART the Motion.

1

The Court vacated the Clerk’s Entry of Default as to Armando Carlos and Gael Ordaz after
Plaintiff notified the Court that “Armando Carlos” and “Ascencion Quiroz” refer to the same person. See
Doc 44, Mot. Vacate; Doc. 45, Order. Plaintiff has not since filed a renewed request to enter default
against Gael Ordaz, who is the sole defendant that has not moved to dismiss.

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I.
BACKGROUND
A battle between musical bands, this lawsuit was launched to settle the question: who has
priority use of the name “Los Yaguaru de Angel Venegas”? See generally Doc. 1, Compl. Plaintiff
Zerefino Ocampo Fitz and Responding Defendants are all citizens and residents of Mexico. Id.
¶¶ 4–15. Fitz is the longtime manager of a band called “Los Yaguaru de Angel Venegas,” also
known as “Los Yaguaru.” Id. ¶ 17. Angel Venegas (“Angel”) is the founder of Los Yaguaru de
Angel Venegas, which was formed more than 30 years ago. Id. ¶ 16. Los Yaguaru de Angel Venegas
began performing in the United States in the 1990s and has toured continuously in the United
States as early as 1998. Id.
Angel held all rights to the band’s name and business until he passed them to his successorin-interest, who then assigned the rights to Fitz in August 2014. Id. ¶ 17. Angel passed away in
October 2014. Id. ¶ 22. Fitz claims that he owns four trademarks, each of which are registered with
the Mexican trademark office, depicting variations of the Los Yaguaru name and logos (“Mexican
Marks”). See id. ¶ 18. The oldest mark depicts the band’s name “Los Yaguaru de Angel Venegas” in
distinct curved word art. Id. This mark was registered with the Mexican trademark office on June
27, 1997, and renewed in 2017. Id. Angel, Angel’s successor-in-interest, and Fitz have continuously
used all four marks in connection to the band’s live performances “since as early as 1998.” Id. ¶ 21.
The band today consists of many of the same band members originally led by Angel. Id. ¶ 22.
Responding Defendants are members of another musical band, which performs in the
United States as “David Venegas Cachorro Presenta Angel Venegas y su Orquesta Con Sabor.” Id.
¶ 24. However, “on occasion[] and more increasingly as of recently,” they have advertised their

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concerts under the same name as Fitz’s band, “Los Yaguaru de Angel Venegas,” while using the
same logo as the Mexican Mark owned by Fitz. Compare id. ¶¶ 25–26 with id. ¶ 18. For example,
Responding Defendants used a poster, advertising an October 20, 2023 concert in Irving, Texas,
with the name “Los Yaguaru de Angel Vengas” and a “Yaguaru” logo resembling the mark Fitz
claims to own. Compare id. ¶ 26 with id. ¶ 18. Another poster advertising Responding Defendants’
concert in Fort Worth’s Rodeo West is titled “Los Yaguaru de Angel Venegas.” Id. ¶ 26.
Fitz and Responding Defendants’ musical groups are alleged to market their music to
“identical” markets, “i.e. the Latin music market of the United States.” Id. ¶¶ 42, 44. Therefore,
according to Fitz, Responding Defendants’ use of the same band name has confused consumers in
Texas as to what musical group is actually performing under the name “Los Yaguaru de Angel
Venegas.” Id. ¶¶ 26–28.
Defendant Nuñez owns a mark registered with the United States Patent and Trademark
Office (“USPTO”) called “Los Yaguaru de Angel Venegas” (“US Mark”). Id. ¶ 29, 36–37. She
inherited ownership of the US Mark from her deceased father, David Venegas Frias (“David”). Id.
¶ 37; see also Doc. 1-2, Compl. Ex. B, 1. David and Angel were brothers. Doc. 1, Compl., ¶ 29.
David applied for the US Mark in 2012, and the trademark registration was completed in 2020.
See Doc. 1-1, Ex. A, 2. In his application for the US Mark, David asserted that he used the mark
“Los Yaguaru de Angel Venegas” since as early as 1996 and that the mark was first used in
commerce on July 24, 2012. See Doc. 1-1, Ex. A, 14 (final draft), 54 (proposing edit to use in
commerce date). In support of his application, David represented to the USPTO that he had “full
and legal rights to the exclusive use of ‘Angel Venegas,’ which [he] claim[ed] as [his] pseudonym,
stage name.” Doc. 1, Compl., ¶¶ 33–34.

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Fitz asserts several claims against Defendants for their alleged use of the US Mark: false
association 2 under the Lanham Act, 15 U.S.C. §1125(a)(1)(A), state trademark infringement and
unfair competition, and cancellation of trademark registration under the Lanham Act, 15 U.S.C. §
1119. Doc. 1, Compl., ¶¶ 38–81. Fitz also asserts as an independent claim, an accounting of
Defendants’ profits. Id. ¶¶ 82–88. Responding Defendants moved to dismiss the Complaint,
arguing the following: (1) Fitz lacks standing to bring his Lanham Act unfair competition claims,
(2) the cancellation claim is insufficiently pled, (3) four claims are time-barred, and (4) the
accounting “cause of action” must be dismissed as an equitable remedy and not a stand-alone
claim. Doc. 26, Mot., 5–10. The Court addresses each argument in turn.
II.
LEGAL STANDARD
Federal Rule of Civil Procedure 12(b)(6) authorizes a court to dismiss a plaintiff’s
complaint for “failure to state a claim upon which relief can be granted.” Under Federal Rule of
Civil Procedure 8(a)(2), a complaint must contain “a short and plain statement of the claim
showing that the pleader is entitled to relief.” To survive a motion to dismiss, plaintiffs must plead
“enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007).

2

While Fitz labels his first cause of action as federal trademark infringement and unfair
competition, the Complaint expressly states his claim arises from Responding Defendants’ use of a
competing mark that “constitutes use of a . . . misleading description and representation of fact” under
§ 1125(a)(1)(A). Thus, the Court relies on the substance of Fitz’s allegations and construes the Complaint
as asserting a false association claim. See Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118,
122, (2014) (“Section 1125(a) thus creates two distinct bases of liability: false association, § 1125(a)(1)(A),
and false advertising, § 1125(a)(1)(B)”). False association claims are also referred to as false designation of
origin claims. See, e.g., Spicy Beer Mix, Inc. v. New Castle Beverage, Inc., No. CV 14-00720 SJO (JEMX), 2014
WL 12573409, at *4 (C.D. Cal. Oct. 10, 2014).

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Fraud claims are subject to a heightened standard requiring the plaintiff to plead “with
particularity the circumstances” surrounding the fraudulent claims alleged. FED. R. CIV. P. 9(b).
“Rule 9(b) requires the complaint to set forth ‘the who, what, when, where, and how’ of the events
at issue.” Dorsey v. Portfolio Equities, Inc., 540 F.3d 333, 339 (5th Cir. 2008) (quoting ABC Arbitrage
Plaintiffs Grp. v. Tchuruk, 291 F.3d 336, 350 (5th Cir. 2002)). Under Rule 9(b), “[m]alice, intent,
knowledge, and other conditions of a person’s mind may be alleged generally.” FED. R. CIV. P.
9(b). A pleading must nonetheless assert “specific facts supporting an inference of fraud.” Dorsey,
540 F.3d at 339.
A motion to dismiss based on a statute of limitations defense, is warranted only where it is
evident from the face of the complaint that the action is barred. Acad. of Allergy & Asthma in
Primary Care v. Quest Diagnostics, Inc., 998 F.3d 190, 196 (5th Cir. 2021). The burden of
establishing the statute of limitations affirmative defense is on the party pleading it. See id. at 200.
III.
ANALYSIS
A.

Statutory Standing to Bring Lanham Act Claims
Responding Defendants first argue that Fitz does not have statutory standing 3 to bring

the two Lanham Act counts—false association and false designation of origin—under 15 U.S.C. §
1125(a)(1)(A). Doc. 26, Am. Mot., 5. This statutory section of the Lanham Act provides:
Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false
or misleading representation of fact, which . . . is likely to cause
3

“Although statutory standing involves an inquiry into alleged injury, it is not synonymous with
Article III standing. Instead, a motion to dismiss for lack of statutory standing is analyzed under Rule
12(b)(6), not Rule 12(b)(1).” HCB Fin. Corp. v. McPherson, 8 F.4th 335, 339 (5th Cir. 2021).

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confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as
to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person . . . shall be liable in a
civil action by any person who believes that he or she is or is likely
to be damaged by such act.
15 U.S.C. § 1125(a)(1)(A) (emphasis added).
A person has statutory standing under § 1125(a) if her claim “fall[s] within the zone of
interests protected by” the statute and her “injuries are proximately caused by the violations of the
statute.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129 (2014) (citation
omitted).
Fitz has statutory standing under § 1125(a). He alleges that the band “Los Yaguaru de
Angel Venegas,” which he has managed for a long time, has toured in the United States since
1998. Doc. 1, Compl., ¶ 16. He has also alleged that Responding Defendants have brought their
band to perform in the United States under the same name “Los Yaguaru de Angel Venegas,”
which has led to consumer confusion. Id. ¶¶ 23–26. Responding Defendants’ use of the same
name to perform Mexican band music in at least one overlapping state, Texas, is alleged to
proximately cause Fitz reputational and monetary injuries. See id. ¶ 51. Such allegations are
sufficient to show Responding Defendants proximately caused damage to Fitz. See Lexmark Int’l,
572 U.S. at 132.
These same allegations support the Court’s finding that Fitz has standing to bring his
common law unfair competition claim. See RRK Foods Inc. v. Sree Nidhi Corp., No. 3:21-CV-2943-G,
2022 WL 3636676, at *4 (N.D. Tex. Aug. 23, 2022 (“In Texas, ‘unfair competition is a common
law tort that occurs when one business entity ‘palms off’ its products as those of another. The
determinative question is whether the tortfeasor's practices are likely to mislead customers into
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believing that the product emanates from or has been endorsed by the claimant.... [T]he test is
likelihood of confusion.’” (quoting Clark v. Dillard's, Inc., 460 S.W.3d 714, 725-26 (Tex. App. –
Dallas 2015, no pet.)))).
Responding Defendants seek dismissal of the false association claims under the Lanham
Act on the ground that Fitz has not alleged an injury to a commercial interest. Doc. 26, Am. Mot.,
5–6. Responding Defendants do not believe Fitz can have such an injury to form a federal
trademark right because he has a foreign trademark. Id. Moreover, they argue, the Mexican Marks
went into use after Nuñez’s mark. Id. In Lexmark Int’l, Inc., the Supreme Court expressly imposed a
pleading requirement for false advertising claims to fall within the Lanham Act’s zone of interests:
an injury to a commercial interest. 572 U.S. at 132. But lower courts are split on whether the
commercial interest injury must be pled for the Lanham Act’s other distinct claim of false
association. At least one court in this Circuit has explicitly rejected the argument that false
association claims require pleading a commercial injury. See Red River Bancshares, Inc. v. Red River
Emps. Fed. Credit Union, No. CV 17-1370, 2019 WL 4727857, at *5 (W.D. La. Sept. 26, 2019). The
Court finds the Red River court’s textual analysis of Lexmark persuasive and agrees Fitz need not
show an injury to a commercial interest to properly plead his false association claims.
Also in support of their commercial interest argument, Responding Defendants suggest the
statutory standing rules for 15 U.S.C. § 1114 apply to claims brought under § 1125(a). Doc. 26,
Am. Mot., 5 (citing case addressing claim under § 1114). However, they fail to offer any legal
support for the proposition that the standing rules for § 1114 and § 1125(a) overlap. Indeed, these
two provisions have different standing requirements. Standing under § 1114 requires a valid
registered mark but standing under § 1125(a)(1)(A) protects against “infringement of even

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unregistered marks.” Master Saddles Inc. v. Taylor, No. 3:20-CV-3709-B, 2021 WL 1814697, at *3
(N.D. Tex. May 6, 2021) (Boyle, J.) (citing 5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION

§ 27:9 (5th ed. 2021)). Thus, the argument that Fitz has a foreign mark

is unavailing.
Claims under § 1125(a)(1) are available to “any person who believes that he or she is likely
to be damaged” by the prohibited conduct. Id. (quoting § 1125(a)(1)). Fitz has pled sufficient facts
to show such damage is likely. That Nuñez purportedly used the US Mark first does not impact
Fitz’s standing to bring claims under § 1125(a).
B.

Common Law Trademark Infringement
Responding Defendants next challenge Fitz’s standing to bring his common law trademark

infringement claim because Fitz has “attach[ed] testamentary materials establishing Defendant
Nuñez’s prior and sole ownership of the Registered Mark over any purported common law rights
that Plaintiff claims to possess.” Doc. 26, Mot., 6. “The elements of common law trademark
infringement under Texas law are the same as those under the Lanham Act.” Streamline Prod. Sys.,
Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 450 (5th Cir. 2017). Standing to bring a trademark
infringement action under § 1114 is therefore an element of Fitz’s common law trademark
infringement claim. See id. “A plaintiff must establish ownership of a trademark to have standing
to sue under 15 U.S.C. § 1114(1).” Varsity Spirit LLC v. Varsity Tutors, LLC, No. 3:21-CV-0432-D,
2021 WL 9893514, at *4 (N.D. Tex. Sept. 17, 2021) (Fitzwater, J.). Section 1114(1) only extends
protections to a “registered mark,” 15 U.S.C. 1114, which is defined as “a mark registered in the
United States Patent and Trademark Office.” 15 U.S.C. § 1127. The Complaint does not allege
that Fitz holds any registered marks. Rather, he only holds applications to register the LOS

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YAGUARU marks with the USPTO. Doc. 1, Compl., ¶ 20. These applications remain “pending”
with the USPTO. See U.S. Trademark Application Serial Nos. 88414262 (filed Apr. 17, 2017) and
90778406 (filed June 16, 2021). Without a registered mark, Fitz lacks standing to bring a common
law trademark infringement claim. See Streamline Mfg., Inc., 851 F.3d at 450; Varsity Tutors, LLC,
2021 WL 9893514, at *6. Thus, the common law trademark infringement claim is dismissed. The
Court need not address Responding Defendants’ limitations arguments as to this claim.
C.

Failure to State a Claim for Cancellation of Mark Based Fraud
Fitz brings a cancellation of trademark registration claim, alleging that David obtained the

US Mark through fraudulent statements to the USPTO. Doc. 1, Compl., ¶¶ 72–81. The
petitioning party pleading cancelation must meet the requirements of Federal Rule of Civil
Procedure 9(b). Burnscraft Mfg. Corp. v. Nat’l Const. Rentals, Inc., No. CIV.A. H-13-2769, 2014 WL
1386300, at *4 (S.D. Tex. Apr. 9, 2014). A trademark application must include a verified statement
by the applicant that to the best of his knowledge “the facts recited in the application are accurate”
and that “no other person has the right to use such mark in commerce either in the identical form
thereof or in such near resemblance thereto as to be likely, when used on or in connection with
the goods of such other person, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C §
1051(a)(3)(B), (D). A trademark can be canceled for fraud where an applicant “knowingly makes
false, material representations of fact in connection with his application.” See In re Bose Corp., 580
F.3d 1240, 1243 (Fed. Cir. 2009). If a court determines that a trademark registrant has committed
fraud to obtain registration of his mark, the court may
registration.” 15 U.S.C. § 1119.

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order “cancelation of [the mark’s]

Fitz alleges David committed three acts of fraud to the USPTO when he applied to register
the US Mark in 2012. Doc. 1, Compl., ¶¶ 75–77. First, David falsely averred that he knew of “no
other person [that] ha[d] the right to use such mark in commerce” when he knew about Angel’s
continuous use of the same band name in conjunction with live music entertainment. Id. ¶ 75.
Second, David falsely averred that “Angel Venegas” was David’s pseudonym when he knew it was
his brother’s name. Id. ¶ 76. Third, David falsely held out the flyers containing the Mexican Mark,
with Angel’s face on the flyer, as being specimens of David’s mark. Id. ¶ 77. Responding
Defendants contend that Fitz has not stated his claim with the requisite particularity under Rule
9(b). Doc. 26, Am. Mot., 8–10.
The “who, what, when, and how” of the three alleged falsities are all supported within the
USPTO record for the US Mark, which is appended to the Complaint. Dorsey, 540 F.3d at 339; see
generally Doc. 1-1, Ex. A. With respect to the first falsity, on October 15, 2012, David, through his
“Duly Authorized Officer” voluntarily amended his trademark application to swear that “to the
best of his/her knowledge and belief no other person . . . has the right to use the mark in
commerce . . . . ” Doc. 1-1, Ex. A, 23. With respect to the second falsity, on August 6, 2012, David
amended his application to aver that “Angel Venegas” was his alias. Id. at 50–55. This amendment
was filed directly in response to the USPTO’s flag that the application materials “contain[ed] the
name ‘Angel Venegas’ and appear[ed] to identify a particular living individual” but “d[id] not
include this named party’s written consent to registration of the name as a service mark.” Id. at 64,
72. With respect to the third falsity, the August 6, 2012 amendment also included “specimens” of
David’s mark that David represented as “copies of various flyers used when [his] group performed
in various events.” Doc. 1-1, Ex. A, 56, 59–63. The flyers contain a name resembling the Mexican

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Marks with either one man behind the band name or the entire band. See id. 59–63. Fitz alleges
the flyers contain the Mexican Marks and actually picture David’s brother “Angel Venegas and his
band.” Doc. 1, Compl., ¶ 77.
The question that remains is whether Fitz has sufficiently pleaded facts that give rise to an
inference that David knew each of the alleged misrepresentations was false when he made them to
the USPTO. See Burnscraft Mfg. Corp., 2014 WL 1386300, at *5. The Court finds that he has. Fitz
alleges that Angel’s, and now his, Mexican musical band played in the United States under the
name Los Yaguaru de Angel Venegas “as early as the 1900s” and “has toured continuously since . . .
as early as 1998 to the present in the United States”. Doc. 1, Compl., ¶ 16. Fitz alleges Angel
obtained the Mexican Marks of Los Yaguaru de Angel Venegas, with the earliest trademark
obtained in 1997. Id. ¶ 18. Fitz alleges he and his predecessors-in-interest have “continuously used
the [Mexican] Marks in commerce since as early as 1998 in connection with live performances of
the musical group” Id. ¶ 21. Approximately 14 years later, David filed his trademark application for
the US Mark, which has the same exact name as Angel’s band and Fitz’s Mexican Marks. See
generally Doc. 1-1, Ex. A. David and Angel are alleged to be brothers. Doc. 1, Compl., ¶ 29. Angel’s
name is in the disputed marks. E.g., id. ¶¶ 18, 26 29. All of these allegations suffice to show that
David knew of Angel and his successor-in-interest’s consistent use of “Los Yaguaru de Angel
Venegas” such that David knew of their potential right to use the mark in commerce. The
allegations are also sufficient to show that David misrepresented his alias as “Angel Venegas.”
Finally, these allegations permit the reasonable inference that the “specimens” David offered were
flyers depicting the Mexican Marks and Angel’s band.
Thus, Fitz has properly stated a claim for cancellation of a trademark.

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D.

Statute of Limitations
“A statute of limitations may support dismissal under Rule 12(b)(6) where it is evident

from the plaintiff’s pleadings that the action is barred, and the pleadings fail to raise some basis for
tolling or the like.” Jones v. Deutsche Bank Nat’l Tr. Co., No. 3:15-CV-1038-N, 2015 WL 11120589,
at *1 (N.D. Tex. Aug. 5, 2015) (Godbey, J.) (quoting Jones v. Alcoa, Inc., 339 F.3d 359, 366 (5th
Cir. 2003)). The burden of establishing the statute of limitations defense is on the party pleading
it. Acad. of Allergy & Asthma in Primary Care, 998 F.3d at 200. Here, Responding Defendants argue
that all of Fitz’s claims are time-barred but they have not met their burden.
Responding Defendants cite in support of their limitations argument Jaso v. The Coca Cola
Co., 435 F. App’x 346, 356 (5th Cir. 2011). Doc. 26, Am. Mot., 7. Jaso stands for the proposition
that the Lanham Act includes no statute of limitations for trademark claims, so “courts apply the
defense of laches to untimely claims.” Id. However, a defendant bears the burden of establishing a
laches defense. To prevail on a laches defense, a defendant must show “(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.” Westchester Media v. PRL Holdings, Inc., 214 F.3d 658, 668 (5th Cir. 2000). A
defendant can raise laches in a motion to dismiss, but a court should not grant a motion to dismiss
based on laches unless the complaint affirmatively shows the claim is barred. Herron v. Herron, 255
F.2d 589, 593 (5th Cir. 1958).
Notwithstanding the fact that Responding Defendants have not explicitly raised the laches
defense, they have not met their burden. Id. The Court agrees with Fitz that the laches defense also
is not apparent from the face of the Complaint. See Doc. 38, Resp., 8–9. Nor does the Motion to
Dismiss raise the defense. See PRL Holdings, Inc., 214 F.3d at 668. For example, Responding

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Defendants have not shown how they are unduly prejudiced by the allegedly delayed claims. See id.
Thus, the Court does not find the laches defense to bar Fitz’s Lanham Act claims nor is “it is
evident from [Fitz’s] pleading that his claims are barred.” Jones, 2015 WL 11120589, at *1.
There is additionally nothing in the Complaint that justifies dismissing the common law
unfair competition claim as time-barred. Such claims are subject to a two-year statute of
limitations. TEX. CIV. PRAC. & REM. CODE § 16.003(a). Fitz invokes the continuing tort doctrine
to protect his claims from being time-barred. Doc. 38, Reply, 9–10. In Texas, unfair competition
based on trademark infringement as a continuing tort, which means that the cause of action does
not accrue until the allegedly wrongful conduct ends. Springboards to Educ., Inc. v. Scholastic Book
Fairs, Inc., No. 3:17-CV-0054-B, 2018 WL 1806500, at *8 (N.D. Tex. Apr. 17, 2018) (Boyle, J.)
(“Texas law treats trademark-infringement as a ‘continuing tort,”’” (citing Horseshoe Bay Resort Sales
Co. v. Lake Lyndon B. Johnson Imp. Corp., 53 S.W.3d 799, 812 (Tex. App.—Austin 2001, pet.
denied))); see also Derrick Mfg. Corp. v. Sw. Wire Cloth, Inc., 934 F. Supp. 796, 807 (S.D. Tex. 1996).
There is nothing in the Complaint to suggest that Responding Defendants’ alleged
infringement has ended. Fitz pleads only that “on occasions and more increasingly as of recently,”
Responding Defendants have advertised their concerts under Fitz’s same band name and logo.
Compare Doc. 1, Compl., ¶¶ 25–26, with id. ¶ 18. The Complaint thus suggests the alleged
infringement is ongoing. Therefore, the Court declines to dismiss Fitz’s common law unfair
competition claim as time-barred. See Scholastic Book Fairs, Inc., 2018 WL 1806500, at *8.
E.

Accounting
Fitz’s last cause of action is for accounting “under the common law of the State of Texas.”

Doc. 1, Compl., ¶¶ 82–88. Responding Defendants argue that accounting is not a cause of action,

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but rather an equitable remedy. Doc. 26, Mot., 10. Fitz responds that he has properly alleged “an
entitlement of accounts of the Defendants’ profits under 15 U.S.C. § 1117(a).” Doc. 38, Resp., 13.
Alternatively, Fitz asks the Court to allow him to amend his pleading to seek this relief if the
Court dismisses his accounting cause of action. See id. Responding Defendants are correct that
accounting is not an independent claim, but “merely the means by which the value of . . . damages
may be calculated.” Garcia v. Koch Oil Co. of Tex. Inc., 351 F.3d 636, 640 (5th Cir. 2003); see also
Watson v. Aurora Loan Servs. LLC, No. 4:11-CV-301-BJ, 2012 WL 3594233, at *10 (N.D. Tex. Aug.
21, 2012) (Cureton, M.J.) (“[A]n accounting is an equitable remedy that is not an independent
cause of action.”). Therefore, the Court dismisses Claim V. Fitz’s prayer for relief already seeks
“accounting of all monies” and “damages . . . pursuant to 15 U.S.C. § 1117(a).” Doc. 1, Compl.,
21. Therefore, leave to amend the Complaint to request accounting is not necessary.
IV.
CONCLUSION
In sum, Responding Defendants’ motion to dismiss is GRANTED as to the common law
trademark infringement claim, which is DISMISSED WITHOUT PREJUDICE. The accounting
remedy is already accounted for in the Complaint, therefore it is DISMISSED WITH
PREJUDICE. The motion to dismiss is DENIED as to the Lanham Act infringement claim,
common law unfair competition claim, and cancelation of trademark claim.
SO ORDERED.
SIGNED: August 29, 2024.
_________________________________
JANE J. BOYLE
UNITED STATES DISTRICT JUDGE
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