PlaceMKR LLC v. Placemakr Hospitality, LLC
1:25-cv-00048
W.D. Tex.Aug 19, 2025Background
- Plaintiff PlaceMKR LLC uses PlaceMKR mark for real estate services; no trademark registration owned by Plaintiff.
- Defendants Placemakr Hospitality, LLC and Placemakr, Inc. use PLACEMAKR mark since 2022, expanding into Texas.
- Defendants filed USPTO applications for PLACEMKR; two registrations issued, others pending.
- In spring 2024, Defendants marketed extended-stay properties in Austin/San Antonio and promoted PLACEMAKR INVESTMENTS.
- Plaintiff alleges consumer/investor confusion and misdirected inquiries to Plaintiff; claims overlap in services.
- Plaintiff amended complaint (Jan 2025) to state Texas common law and state-law unfair competition claims; seeks injunction and cancellation; may seek enhanced damages.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Non-Texas common-law infringement viability | Plaintiff has rights nationwide via zone of natural expansion. | Plaintiff lacks rights outside Texas; infringement outside Texas not pleaded. | Denies dismissal; adequately pled rights outside Texas; discovery needed. |
| Unfair competition pleading standard | Rule 8(a) suffices; no heightened fraud pleading required. | Rule 9(b) applies due to fraud-like allegations of false designation. | Rule 8(a) applies; claims stated; proceed. |
| Cancellation claims under 15 U.S.C. § 1119 | Cancellation based on likelihood of confusion; pending applications cancellable. | Cancellation claims require fraud-based pleading or are not available for pending applications. | Cancellation claims allowed; court has authority over pending applications; Rule 8(a) applies. |
Key Cases Cited
- Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) (false designation of origin standards under §1125(a))
- Dorsey v. Portfolio Equities, Inc., 540 F.3d 333 (5th Cir. 2008) (Rule 9(b) applicability to fraud allegations)
- Farouk Systems, Inc. v. Costco Wholesale Corp., 700 F. Supp. 2d 780 (S.D. Tex. 2010) (elements for false designation of origin claim under §1125(a))
- Tempur-Pedic Int’l Inc. v. Angel Beds, LLC, 902 F. Supp. 2d 958 (S.D. Tex. 2012) (Rule 8(a) pleading standard for §1125(a) claims)
- Amy’s Ice Creams, Inc. v. Amy’s Kitchen, Inc., 60 F. Supp. 3d 738 (W.D. Tex. 2014) (jurisdiction over related trademark disputes and pending applications)
- BBK Tobacco & Foods LLP v. Central Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024) (court may adjudicate pending applications when related registered trademarks are at issue)
- Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018 (11th Cir. 1989) (zone of natural expansion concepts)
- RE/MAX Int’l, Inc. v. Trendsetter Realty, LLC, 655 F. Supp. 2d 679 (S.D. Tex. 2009) (likelihood of confusion standards for §1125(a))