SANDBOX LOGISTICS, LLC et al v. LAVOIE et al

Filing 49

OPINION on Partial Summary Judgment. (Signed by Judge Lynn N. Hughes) Parties notified.(rosaldana, 4)

SOUTHERN DISTRICT OF TEXAS

UNffiD STATES DISTRICT COURT

Sandbox Logistics, lie, ct al.,
Plaintiffs,
versus

Claude Lavoie,

ct

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§
§
§
§
§

Civil Action H'12'3351

§

al.,

Defendants.

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§

Opinion on Partial Summary Judgment
I.

]

ohn Oren - through Sandbox Logistics, lie - and Claude Lavoie - through TBM Sand

and Storage Logistics, lie - transport sand that oil companies use for fracturing.

2.

In early 20II, Lavoie had not named his company - much less developed a coherent
marketing strategy. He met with a few prospective clients and referred abstractly to his
technology as a sandbox. Oren also marketed a similar product to five clients - calling
his a sandbox as well.

3.

In November of 20II, Lavoie and Oren discussed working together. Lavoie told Oren
that he planned to name his business Future Frac Sand Storage Systems. Oren
suggested they market it by using the name Sandbox.

4.

In December of 20II, Lavoie advertised the business as Sandbox. Oren registered a
Sandbox website and incorporated Sandbox Logistics, lie, in Texas.

5.

Although Lavoie applied for a trademark with the United States Patent and Trademark
Office inJanuary of 2012, both Lavoie and Oren say that they owned the mark before
it was registered.

6.

A person owns an unregistered mark if he has used it in the ordinary course of trade.

I

Commercial use is public; it distinguishes and identifies the product in the minds of
prospective customers. 2 Private or transitory use of mark cannot establish ownership.

7.

Compelling evidence of commercial use is testimony from competitors or customers
that they recognize your mark.3 A few sales presentations or a single advertisement of
an unregistered mark is not sufficiently distinguishing to show ownership.4

8.

Lavoie used the term sandbox first, but he was not using it as a label for his business or
technology. He was describing his invention in layman's terms. He had planned to call
his business Future Frac Sand Storage Systems until Oren convinced him that Sandbox
was better.

9.

Oren first marketed the company as Sandbox. He designed a logo, hired graphic
consultants, incorporated Sandbox Logistics in Texas, and registered a Sandbox
Logistics website before Lavoie applied for a trademark.

10.

Because Oren invested in designing a logo and then used his mark to advance his new
company's marketing before Lavoie applied to trademark the term, Lavoie's motions for
partial summary judgment and to stay the case will be denied.

Signed on February -=1-,2014, at Houston, Texas.

--EC3k-

,.~_ _ _

Lynn N. Hughes
United States DistrictJudge

I

II U.s.c. § II27 (2012).

2

Blue Bell, Inc. v. Farah Mfg. Co., Inc. 508 F.2d 1260,1266 (5th Gr. 1975).

Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., I46 F.3d 350,
358 (6th Gr. 1998).
3

Lucent Information Management, Inc. v. Lucent Tech., Inc., I86 F.3d 3II, 3I5
(3 rd Gr. 1999)'
4