Reservoir, Inc. et al v. Truesdell et al

Filing 37

MEMORANDUM AND ORDER ( Status Report due by 10/25/2013)(Signed by Judge Nancy F. Atlas) Parties notified.(sashabranner, 4)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
RESERVOIR, INC., et al.,
Plaintiffs,
v.
JUSTIN Z. TRUESDELL, et al.,
Defendants.

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CIVIL ACTION NO. 4:12-2756

MEMORANDUM AND ORDER
In this case alleging trademark infringement and other causes of action,
Plaintiffs Reservoir, Inc., and Mohammad Ayman Jarrah (“Plaintiffs”) have filed a
Motion for Partial Summary Judgment and Injunction [Doc. # 30] (“Motion”).
Plaintiffs’ Motion seeks summary judgment as to the equitable defenses to trademark
infringement asserted by Defendants Justin Z. Truesdell, Rainbow Cattle Co., Inc.,
Rebels Honky Tonk, LLC, and 26710 North I45 Limited Partnership (“Defendants”).
Plaintiffs also filed a Supplement [Doc. # 32] to their Motion, which Defendants
oppose. Defendants have filed a Response [Doc. # 33] to the Motion, and Plaintiffs
have replied [Doc. # 34]. The Motion is ripe for decision. Having considered the
parties’ briefing and exhibits, the applicable legal authorities, and all matters of
record, the Court concludes that the Motion should be granted in part and denied in

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part.
I.

BACKGROUND
As set forth in the Court’s previous Memorandum and Order [Doc. # 22],

Plaintiffs own and operate an establishment on Washington Avenue in Houston,
Texas, called Rebels Honky Tonk (“Rebels I”). Rebels I began operations in August
2009. Defendant Truesdell had a business relationship with Plaintiff Reservoir, but
the relationship ended before Rebels I opened in August 2009. Truesdell claims that
he personally developed the “Rebels Honky Tonk” name and concept during his
partnership with Reservoir.
In September 2009, Truesdell formed Rebels Honky Tonk, LLC. In November
2009, he opened an establishment in Austin called Rebels Honky Tonk (“Rebels II”).
On June 28, 2010, well after both the Houston and Austin establishments began
operating, Truesdell filed an Application with the United States Patent and Trademark
Office (“PTO”) for a trademark using the words “Rebels Honky Tonk.” The PTO
granted the Application, and the mark was registered on April 4, 2011.
In January 2012, Truesdell formed 26710 North I45 Limited Partnership;
shortly thereafter, in March 2012, Truesdell opened a Rebels Honky Tonk in Oak
Ridge North, Texas (“Rebels III”).
On February 28, 2012, Truesdell’s counsel sent a “cease and desist” letter to

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Plaintiffs claiming that Rebels I was infringing on his registered mark. On August 27,
2012, Plaintiffs filed this action in the 9th District Court of Montgomery County,
Texas. In this suit, Plaintiffs claim trademark rights to the words “Rebels Honky
Tonk”; the composite word and design mark featuring a cowboy hat with a star,
longhorns, and a sign reading “Rebels Honky Tonk”; and the website
rebelshonkytonkhouston.com.1 Plaintiffs allege that Defendants are infringing upon
their trademarks in violation of Section 43(a) of the Lanham Act.2 Defendants
removed the case to this Court on September 13, 2012. Notice of Removal [Doc. # 1].

On April 30, 2013, the Court granted in part Plaintiffs’ motion for judgment on
the pleadings as to Plaintiffs’ claim for trademark infringement under Section 43(a)
of the Lanham Act. Memorandum and Order [Doc. # 22]. The Court held that
Plaintiffs had established both elements of a claim under Section 43(a): (1) ownership
of a legally protectible mark, and (2) likelihood of confusion in the minds of potential

1

See Exhibit C to Motion (depictions of logo and website screen shots).

2

Plaintiff’s claims, as amended on February 28, 2013, are: (1) common law trademark
infringement; (2) common law unfair competition; (3) injury to business reputation
and trademark dilution under Texas Business and Commerce Code § 16.29; (4)
trademark infringement and unfair competition under Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a); and (5) trade dress infringement under Section 43 of the
Lanham Act. Plaintiffs seek cancellation of the Truesdell’s registration of the
trademark, among other remedies. First Amended Complaint [Doc. # 19] passim.

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customers. On June 25, 2013, the Court clarified that Defendants’ affirmative
defenses to trademark infringement remained pending, and that judgment regarding
Defendants’ liability under Section 43(a) would not be entered until the affirmative
defenses were resolved. Order [Doc. # 29].
Plaintiffs now move for partial summary judgment on Defendants’ equitable
defenses to Plaintiffs’ claim under Section 43(a). Plaintiffs also seek injunctive relief.
In support of their Motion, Plaintiffs have submitted an affidavit of Plaintiff Ayman
Jarrah (“Jarrah Affidavit”), which states that Rebels I in Houston opened in August
2009, and that Jarrah did not know that Rebels II was operating in Austin “until I
received a cease and desist letter from Albert Van Huff on or about February 28,
2012.” Jarrah Affidavit, dated July 25, 2013 (Exhibit B to Motion), at 1, ¶ 4. Jarrah
further states that he did not know that Rebels III was operating in Oak Ridge “until
it opened in March of 2012.” Id., ¶ 5. Plaintiffs also have submitted Defendants’
discovery responses dated July 31, 2013,3 in which Defendants admit that Truesdell
knew in August 2009 that Rebels I was operating; that, at the time of the Rebels II

3

Supplement [Doc. # 32]. Plaintiffs’ certificate of conference states that Defendants
object to the Supplement. The objections are overruled. The discovery responses
attached to the Supplement as Exhibit A are dated July 31, 2013, two days after the
pending Motion was filed on July 29, and thus Plaintiffs could not have attached them
to their Motion. The Supplement also was filed on August 9, 2013, which was only
two weeks after the discovery responses and, moreover, two weeks before
Defendants’ Response to the Motion.

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opening in November 2009, Defendants knew that Plaintiffs’ establishment (Rebels
I) was in operation; and, that Truesdell knew, when he hired a painter named Gary S.
Holman to paint the signage for Rebels II and Rebels III, that Holman previously had
painted the same signage for Rebels I.4
Defendants’ summary judgment response attaches an affidavit from Defendant
Truesdell dated August 23, 2013 (“Supplemental Truesdell Affidavit”). The only
difference between the Supplemental Truesdell Affidavit and the affidavit he filed in
response to Plaintiffs’ earlier motion on the merits of Plaintiffs’ Section 43 Lanham
Act claim is Truesdell’s statement that “Reservoir, Inc. gave me permission to use the
Rebels Honky Tonk name and concept I had developed.” Supplemental Truesdell
Affidavit (Exhibit A to Response), at 1, ¶ 4.5
Discovery in this case closed on September 9, 2013, and the parties’ deadline
for dispositive motions was October 3, 2013.
II.

SUMMARY JUDGMENT STANDARD
Rule 56 of the Federal Rules of Civil Procedure mandates the entry of summary

4

Defendants’ Response to Reservoir, Inc. and Mohammad Ayman Jarrah’s First Set
of Interrogatories, Requests for Production of Documents, and Requests for
Admission (Exhibit A to Supplement), at 3 (Requests for Admission Nos. 1-4), 6
(Requests for Admission Nos. 16-18).

5

See Affidavit of Justin Z. Truesdell, dated Feb. 4, 2013 (Exhibit A to Doc. # 16)
(“Original Truesdell Affidavit”).

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judgment, after adequate time for discovery and upon motion, against a party who
fails to make a sufficient showing of the existence of an element essential to the
party’s case, and on which that party will bear the burden at trial. Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986); Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th
Cir. 1994) (en banc); see also Baton Rouge Oil and Chem. Workers Union v.
ExxonMobil Corp., 289 F.3d 373, 375 (5th Cir. 2002). “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); Celotex Corp., 477 U.S. at 322–23; Weaver v. CCA Indus., Inc., 529 F.3d
335, 339 (5th Cir. 2008).
For summary judgment, the initial burden falls on the movant to identify areas
essential to the non-movant’s claim in which there is an “absence of a genuine issue
of material fact.” Lincoln Gen. Ins. Co. v. Reyna, 401 F.3d 347, 349 (5th Cir. 2005).
The moving party, however, need not negate the elements of the non-movant’s case.
See Boudreaux v. Swift Transp. Co., 402 F.3d 536, 540 (5th Cir. 2005). The moving
party may meet its burden by pointing out “the absence of evidence supporting the
nonmoving party’s case.” Duffy v. Leading Edge Products, Inc., 44 F.3d 308, 312
(5th Cir. 1995) (internal citations and quotations omitted).
If the moving party meets its initial burden, the non-movant must go beyond the
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pleadings and designate specific facts showing that there is a genuine issue of material
fact for trial. Littlefield v. Forney Indep. Sch. Dist., 268 F.3d 275, 282 (5th Cir. 2001)
(internal citation omitted). “An issue is material if its resolution could affect the
outcome of the action. A dispute as to a material fact is genuine if the evidence is
such that a reasonable jury could return a verdict for the nonmoving party.” DIRECT
TV Inc. v. Robson, 420 F.3d 532, 536 (5th Cir. 2006) (internal citations and quotation
marks omitted).
In deciding whether a genuine and material fact issue has been created, the facts
and inferences to be drawn from them must be reviewed in the light most favorable
to the nonmoving party. Reaves Brokerage Co. v. Sunbelt Fruit & Vegetable Co., 336
F.3d 410, 412 (5th Cir. 2003). However, factual controversies are resolved in favor
of the non-movant “only ‘when both parties have submitted evidence of contradictory
facts.”

Alexander v. Eeds, 392 F.3d 138, 142 (5th Cir. 2004) (quoting

Olabisiomotosho v. City of Houston, 185 F.3d 521, 525 (5th Cir. 1999)). The nonmovant’s burden is not met by mere reliance on the allegations or denials in the nonmovant’s pleadings. See Diamond Offshore Co. v. A&B Builders, Inc., 302 F.3d 531,
545 n.13 (5th Cir. 2002), overruled on other grounds, Grand Isle Shipyards, Inc., v.
Seacor Marine, LLC, 589 F.3d 778 (5th Cir. 2009).

Likewise, “conclusory

allegations” or “unsubstantiated assertions” do not meet the non-movant’s burden.
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Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 399 (5th
Cir. 2008). Instead, the nonmoving party must present specific facts which show “the
existence of a genuine issue concerning every essential component of its case.” Am.
Eagle Airlines, Inc. v. Air Line Pilots Ass’n, Int’l, 343 F.3d 401, 405 (5th Cir. 2003)
(citation and internal quotation marks omitted). In the absence of any proof, the court
will not assume that the non-movant could or would prove the necessary facts. Little,
37 F.3d at 1075 (citing Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888 (1990)).
Affidavits cannot preclude summary judgment unless they contain competent
and otherwise admissible evidence. See FED. R. CIV. P. 56(c)(4) (“An affidavit or
declaration used to support or oppose a motion must be made on personal knowledge,
set out facts that would be admissible in evidence, and show that the affiant or
declarant is competent to testify on the matters stated”); Love v. Nat’l Medical Enters.,
230 F.3d 765, 776 (5th Cir. 2000); Hunter-Reed v. City of Houston, 244 F. Supp. 2d
733, 745 (S.D. Tex. 2003). A party’s self-serving and unsupported statement in an
affidavit will not defeat summary judgment where the evidence in the record is to the
contrary. See In re Hinsely, 201 F.3d 638, 643 (5th Cir. 2000).
Finally, although the Court may consider all materials in the record when
deciding a summary judgment motion, “the court need consider only the cited
materials.” FED. R. CIV. P. 56(c)(3). “When evidence exists in the summary judgment
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record but the nonmovant fails even to refer to it in the response to the motion for
summary judgment, that evidence is not properly before the district court. Rule 56
does not impose upon the district court a duty to sift through the record in search of
evidence to support a party’s opposition to summary judgment.” Malacara v. Garber,
353 F.3d 393, 405 (5th Cir. 2003) (internal citations and quotation marks omitted).
III.

ANALYSIS
Plaintiffs’ Motion requests partial summary judgment on the equitable defenses

of laches, estoppel, and waiver; seeks a finding of liability under Section 43; and
requests injunctive relief, with damages reserved for later determination.
A.

Equitable Defenses
1.

Laches

Defendants argue that Plaintiffs’ Section 43(a) claim is subject to laches
because Plaintiffs delayed unreasonably in bringing their claim. This equitable
defense of laches requires proof that Plaintiffs delayed in asserting their trademark
rights, that the delay was inexcusable, and that the delay caused undue prejudice to
Defendants. See Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 334 (5th
Cir. 2008); Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 668 (5th Cir.
2000); Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 205 (5th Cir. 1998). See
Jaso v. The Coca Cola Co., 435 F. App’x 346, 356 (5th Cir. 2011).
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The first element of laches requires the Court to consider whether Plaintiffs
delayed in bringing their trademark infringement claim. Defendants argue that
Plaintiffs’ trademark infringement claim is barred by laches because Plaintiffs
“delayed” thirty-three months before bringing this suit in August 2012. Defendants
identify the starting date for the thirty-three month period as November 2009, when
they opened Rebels II in Austin. Plaintiffs dispute that November 2009 is the trigger
date; Plaintiffs argue, based on the Jarrah Affidavit, that Plaintiffs learned of Rebels
II in February 2012 and learned of Rebels III in March 2012.6
Defendants fail to provide competent summary judgment evidence that
Plaintiffs delayed assertion of their trademark rights. Defendants cite generally to the
Supplemental Truesdell Affidavit in support of their assertion that “Plaintiffs knew
about the alleged infringement in November of 2009.” Response, at 9-10. That
affidavit, however, contains nothing regarding when Plaintiffs acquired knowledge
of the existence or operation of Rebels II.7

In contrast, there is uncontroverted

6

Jarrah Affidavit, at 1, ¶ 4 (“I did not know that another Rebels Honky Tonk was
operating in Austin, Texas until I received a cease and desist letter from Albert Van
Huff on or about February 28, 2012.”); id., ¶ 5 (“I did not know a Rebels Honky Tonk
was operating in Oak Ridge, Texas until it opened in March of 2012.”)

7

The Supplemental Truesdell Affidavit contains some statements regarding the
relevant time period. Truesdell avers that his partnership with Reservoir dissolved
before Rebels I opened in August 2009, Supplemental Truesdell Affidavit, at 1, ¶ 3;
that Reservoir gave him permission to use the Rebels Honky Tonk name and concept
(continued...)

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evidence in the record that Plaintiffs only learned of Defendants’ use of the Rebels
Honky Tonk name and design in February 2012, when Plaintiffs received Defendants’
cease and desist letter. See Jarrah Affidavit, at 1, ¶ 4; Cease and Desist Letter, dated
February 28, 2012 (Exhibit D to Motion). Plaintiffs brought suit in August 2012, less
than six months thereafter. Defendants have not demonstrated a genuine issue of
material fact that Plaintiffs delayed inexcusably in asserting their claim.8
In addition, even if Defendants’ evidence could be deemed sufficient to
demonstrate that Plaintiffs had knowledge of Rebels II in November 2009, the
application of the equitable defense of laches would not be justified. Assuming that
Plaintiffs had knowledge of Rebels II in November 2009, Plaintiffs waited only thirtythree months before bringing their claim. Because the Lanham Act does not specify
a limitations period, courts applying the laches defense consider “‘the most analogous
state statute of limitations” when determining the appropriate period for bringing a
claim. See Jaso, 435 F. App’x at 356 (quoting Conopco, Inc. v. Campbell Soup Co.,

7

(...continued)
he had developed, id., ¶ 4; and that he opened Rebels II in Austin in November 2009,
id., ¶ 5. None of these statements provide support for Defendants’ assertion that
Plaintiffs knew about Defendants’ infringement in November 2009.

8

See Alexander, 392 F.3d at 142 (factual controversies are resolved in favor of the nonmovant only when both parties have submitted evidence of contradictory facts). The
non-movant’s burden is not satisfied by conclusory allegations or unsubstantiated
assertions. See Delta, 530 F.3d at 399

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95 F.3d 187, 191 (2d Cir. 1996)). Plaintiffs argue that the presumptive period for
timeliness of Section 43(a) claims, based on the analogous Texas limitations period
for fraud, is four years, and Defendants’ briefing does not dispute this contention. The
Fifth Circuit has not decided the issue. However, in Jaso, the Court of Appeals
accepted the parties’ agreement that the four year period applied.9 Taking the same
approach, the Court concludes that a delay of thirty-three months, which is well within
the four year limitations period for fraud claims, does not warrant application of a
laches defense.10
Summary judgment is granted for Plaintiffs regarding the affirmative defense
of laches on Plaintiffs’ claim of trademark infringement under Section 43(a).

9

See id. (“The parties do not dispute, and we assume for purposes of this case, that the
most analogous Texas statute of limitations for a Lanham Act claim is the four-year
statute of limitations applied to fraud claims under § 16.004 of the Texas Civil
Practice & Remedies Code.”). See also Mary Kay, Inc. v. Weber, 601 F. Supp. 2d
839, 859–60 (N.D. Tex. 2009) (“In Texas, a Lanham Act violation is governed by the
four year statute of limitations under Texas law.”).

10

The Court is the finder of fact on equitable defenses, as the constitutional guarantee
of a jury trial applies only to claims that are legal, rather than equitable, in nature. See
Curtis v. Loether, 415 U.S. 189, 193 (1974); Ross v. Bernhard, 396 U.S. 531, 533
(1970); Nimrod Mktg. (Overseas) Ltd. v. Tex. Energy Inv. Corp., 769 F.2d 1076,
1079-1080 (5th Cir. 1985). Also, when evaluating equitable defenses, a court has
considerable discretion. See Nat’l Ass’n of Gov. Employees v. City Pub. Serv. Bd., 40
F.3d 698, 707 (5th Cir. 1994); Radiator Specialty Co. v. Pennzoil-Quaker State Co.,
207 F. App’x 361, 362 (5th Cir. 2004). Defendants have not identified any facts to
justify the Court’s exercise of discretion to apply laches.

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2.

Waiver

Defendants argue that Plaintiffs’ claims are waived because Plaintiffs did not
file suit until August 2012, thirty-three months after Rebels II opened in Austin in
November 2009 and six months after Plaintiffs received Defendants’ cease and desist
letter. At this stage of the proceedings, the Court assumes without deciding that
waiver is a viable defense to a trademark infringement claim. See RE/MAX Int’l, Inc.
v. Trendsetter Realty, LLC, 655 F. Supp. 2d 679, 711 n.12 (S.D. Tex. 2009)
(Rosenthal, J.) (“It is unclear whether the Fifth Circuit recognizes a separate defense
of waiver or estoppel in the trademark context”).
Under Texas law, “‘[w]aiver is the intentional relinquishment of a right actually
known, or intentional conduct inconsistent with claiming that right.’” Id. (quoting
Ulico Cas. Co. v. Allied Pilots Ass’n, 262 S.W.3d 773, 778 (Tex. 2008)). Defendants
assert that the equitable defense of waiver should apply because Plaintiffs gave
Truesdell permission to use the Rebels Honky Tonk name and design, and that
“[g]ranting him permission was a manifestation of an unequivocal intention to no
longer assert a right to the mark.” Response, at 7. In support of this position,
Defendants cite to Truesdell’s Supplemental Affidavit, which in Paragraph Four
makes the cursory statement that “Reservoir, Inc. gave me [Truesdell] permission to
use the Rebels Honky Tonk name and concept I had developed.” Supplemental

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Truesdell Affidavit, at 1, ¶ 4.11 The affidavit does not provide any further detail
regarding the circumstances of Truesdell’s receipt of the alleged permission.
Construing the evidence in the light most favorable to the non-movant, at this
summary judgment stage, the affidavit is deemed sufficient to raise a genuine issue
of material fact as to whether Plaintiffs intentionally relinquished their trademark
rights.12 These matters are best decided at trial. Summary judgment is denied on
Defendants’ affirmative defense of waiver.
In connection with the Joint Pretrial Order, the parties must brief the issue of
whether the equitable defense of waiver is a valid defense to a claim of trademark
infringement under the Lanham Act. See Trendsetter, 655 F. Supp. 2d at 711 n.12.

11

This assertion of permission is new to the Supplemental Affidavit, which was
executed by Truesdell only after Plaintiffs’ current partial summary judgment motion
was filed. Other than the assertion of permission in Paragraph Four, the content of
the Supplemental Affidavit is identical to that of the Original Truesdell Affidavit,
signed February 4, 2013.

12

The record contains substantial evidence supporting Plaintiffs’ position that they did
not intentionally relinquish their rights. In particular, Plaintiffs opened Rebels I in
Houston in August 2009 using the Rebels Honky Tonk trademark and trade dress,
Plaintiffs have continued operations to the present day, and Plaintiffs have filed this
lawsuit to prevent Defendants from using the trademark and trade dress. Moreover,
it is clear from Defendants’ discovery responses that Defendants knew about
Plaintiffs’ use of the trademark when Defendants took steps to create and operate their
two competing establishments. See Defendants’ Response to Requests for Admission
(Exhibit A to Supplement), at 3, 6.

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3.

Estoppel

Defendants argue that the equitable defense of estoppel should be applied to bar
Plaintiffs’ Section 43(a) claim. As with the waiver doctrine, the Court will assume,
without deciding, that estoppel is a viable defense to trademark infringement.13 Under
Texas law, the doctrine of equitable estoppel requires “‘(1) a false representation or
concealment of material facts; (2) made with knowledge, actual or constructive, of
those facts; (3) with the intention that it should be acted on; (4) to a party without
knowledge or means of obtaining knowledge of the facts; (5) who detrimentally relies
on the representations.’” Ulico, 262 S.W.3d at 778 (quoting Johnson & Higgins of
Tex., Inc. v. Kenneco Energy, Inc., 962 S.W.2d 507, 515–16 (Tex. 1998)). See
Monumental Life Ins. Co. v. Hayes-Jenkins, 403 F.3d 304, 311 (5th Cir. 2005); Med.
Care Am., Inc. v. Nat’l Union Fire Ins. Co. of Pittsburgh, Penn., 341 F.3d 415, 422
(5th Cir. 2003). “‘The burden of proving an estoppel and the essential elements
thereof is on the party asserting it and the failure to prove any one or more of the
elements is fatal.’” Med. Care, 341 F.3d at 422-23 & n.20 (quoting Barfield v.
Howard M. Smith Co. of Amarillo, 426 S.W.2d 834, 838 (Tex.1968)).
Defendants assert that estoppel applies because “Plaintiffs made a false
representation when they told Justin Z. Truesdell he had their permission to use the

13

See id. (“It is unclear whether the Fifth Circuit recognizes a separate defense of
waiver or estoppel in the trademark context”).

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mark, they intended for him to rely on it, he reasonably relied on the representation
to his detriment, and now plaintiffs have changed their position.” Response, at 8. In
support, Defendants cite generally to the Supplemental Truesdell Affidavit. The only
portion of the Supplemental Affidavit that potentially addresses Defendants’ estoppel
assertions is Paragraph Four, in which Truesdell superficially states that Reservoir
“gave [Truesdell] permission to use the Rebels Honky Tonk name and concept [he]
had developed.” In light of the need for a trial on Defendants’ affirmative defense of
waiver, the Court denies summary judgment as to the affirmative defense of estoppel.
In connection with the Joint Pretrial Order, the parties must brief the issue of
whether the equitable defense of estoppel is a valid defense to a claim of trademark
infringement under the Lanham Act. See Trendsetter, 655 F. Supp. 2d at 711 n.12.
B.

Plaintiffs’ Claim under Section 43(a)

Plaintiffs’ Motion seeks entry of judgment on their Section 43(a) claim. This
Court previously held that Plaintiffs have proved the two elements of a Section 43(a)
claim, namely (1) ownership of a legally protectible mark, and (2) likelihood of
confusion in the minds of potential consumers. See Memorandum and Order [Doc.
# 22]. The Court refrained from entering judgment in Plaintiffs’ favor because it had
not adjudicated the equitable defenses raised by Defendants. See Order [Doc. # 29].
Because two of Defendants’ affirmative defenses remain pending, judgment will not

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be entered on Plaintiffs’ claim of statutory trademark infringement under Section
43(a).
C.

Remedies

Plaintiffs’ First Amended Complaint seeks both damages and injunctive relief.
For purposes of the upcoming trial, certain deficiencies in the record need to be
addressed.14 Although Plaintiffs’ Motion addresses injunctive relief, their briefing
does not adequately address all relevant issues. A permanent injunction is an
extraordinary equitable remedy.
The party seeking a permanent injunction must meet a four-part test. It
must establish (1) success on the merits; (2) that a failure to grant the
injunction will result in irreparable injury; (3) that said injury outweighs
any damage that the injunction will cause the opposing party; and (4)
that the injunction will not disserve the public interest.
VRC LLC v. City of Dallas, 460 F.3d 607, 611 (5th Cir. 2006) (citations omitted). See
O’Connor v. Smith, 427 F. App’x 359, 365 (5th Cir. 2011).15 Other Fifth Circuit
authority recognizes that the inadequacy of monetary damages also is a factor in the
14

Plaintiffs’ Motion does not address damages, except to request that the quantum of
damages be reserved for future determination. The Court soon will address a pending
discovery dispute on the damages issue. See Doc. # 35 (letter alerting Court to
discovery dispute); Doc. # 39 (setting discovery conference for Oct. 15, 2013).

15

Plaintiffs set forth the standard for a preliminary injunction, rather than permanent
injunctive relief. Their First Amended Complaint seeks a permanent injunction. The
standard for a preliminary injunction is similar to that for a permanent injunction set
forth above, although a party seeking a preliminary injunction must show a
“substantial likelihood of success on the merits,” see Janvey v. Alguire, 647 F.3d 585,
595 (5th Cir. 2011), rather than achieve actual success on the merits.

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analysis.16 Permanent injunctions are “never lightly given” and are “hedged about
with circumspection.” Posada v. Lamb County, 716 F.2d 1066, 1070 (5th Cir. 1983).
To win a permanent injunction, a petitioner “must show a clear threat of continuing
illegality portending immediate harmful consequences irreparable in any other
manner.” Id.17
Plaintiffs’ briefing is insufficient as it does not identify the conduct by
Defendants that Plaintiffs now seek to enjoin.18 If Plaintiffs continue to seek
injunctive relief in this case, they must specify the particular conduct they seek
enjoined with citation to authority supporting each aspect of the requested relief.
Plaintiffs also must demonstrate how the relief satisfies the Fifth Circuit’s factors
listed above.
D.

Remaining Claims in Lawsuit

Plaintiffs in their First Amended Complaint plead common law trademark
infringement under Texas law, common law unfair competition under Texas law,

16

See ITT Educ. Servs., Inc. v. Arce, 533 F.3d 342, 347 (5th Cir.2008) (quoting eBay,
Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).

17

Accord Ballenger v. Mobil Oil Corp., 138 F. App’x 615, 622 (5th Cir. 2005). See
Westchester, 214 F.3d at 671-75 (affirming lower court’s ruling regarding trademark
infringement but finding error in the award of broad injunctive relief and remanding
for further factual development).

18

The First Amended Complaint, at 13-14, enumerates some requested injunctive relief
that Plaintiffs may still seek.

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injury to business reputation and trademark dilution under Texas Business and
Commerce Code § 16.29, and trade dress infringement under Section 43(a) . The
parties have not briefed these claims, nor sought a ruling on summary judgment. On
or before October 25, 2013, Plaintiffs must notify the Court whether they intend to
proceed to trial on one or more of these claims.
IV.

CONCLUSION
For the foregoing reasons, it is hereby
ORDERED that Plaintiffs’ Motion for Partial Summary Judgment and

Injunction [Doc. # 30] is GRANTED in part and DENIED in part. Summary
judgment is GRANTED in favor of Plaintiffs as to Defendants’ equitable defense of
laches. Summary judgment is DENIED without prejudice as to Defendants’
equitable defenses of waiver and estoppel. It is further
ORDERED that, on or before October 25, 2013, Plaintiffs must file a status
report with the Court that discloses whether Plaintiffs intend to pursue at trial its
claims other than statutory trademark infringement under Section 43(a).
SIGNED at Houston, Texas, this 9th day of October, 2013.

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