Rex Real Est I v. Rex Real Est
80 F.4th 607
| 5th Cir. | 2023Background:
- Rex Real Estate I, L.P. (Plaintiff) is a Texas real estate brokerage founded by Rex and Sherese Glendenning; the Glendennings used the marks REX, REX Real Estate, and a crown logo since the late 1980s/1990s.
- Plaintiff obtained federal registration for the crown logo in 2015 and later filed registrations (2018) for “REX” and “Rex Real Estate.” Mr. Glendenning’s prior sole-proprietor use predated the partnership.
- Rex Real Estate Exchange (Defendant) is an Austin-based, tech-driven residential brokerage/marketplace (started mid-2010s) that markets as “Rex,” “REX Real Estate,” and uses a crown logo in some materials.
- Plaintiff sued for trademark infringement (Lanham Act §§ 32(1) and 43(a)), dilution, and unfair competition; after Plaintiff rested at trial, the district court granted JMOL for Defendant. Plaintiff appealed only the federal infringement claims.
- The Fifth Circuit affirmed JMOL as to § 32(1) (registered-mark claim) because Plaintiff failed to prove an assignment/ownership of the registered marks, but reversed as to § 43(a) (unregistered-mark claim) and held a reasonable jury could find the marks protectable and a likelihood of confusion; the case was remanded for further proceedings.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Statutory standing/ownership under § 32(1) | Glendenning use and family control show the partnership acquired and owns the registered marks | Mr. Glendenning was the original user/owner and Plaintiff produced no written assignment or clear oral assignment to the LP | JMOL affirmed for Defendant on § 32(1): Plaintiff failed to prove assignment/ownership of federally registered marks |
| Protectability/distinctiveness of marks | Marks are at least inherently distinctive (suggestive/Latin meaning “rex”=king); crown logo and trade identity support protection | Marks are primarily the personal name “Rex” (surname/forename) and thus mere personal name marks requiring secondary meaning | District court erred to decide as a matter of law; evidence permits a reasonable jury to find the marks inherently distinctive (reversed as to § 43(a) protectability) |
| Likelihood of confusion (digits of confusion) | Similar marks and anecdotal misdirected contacts/phone calls show actual confusion and marketplace overlap | Different markets (commercial/investment vs. residential), different advertising mediums, and distinct customers make confusion unlikely | JMOL on likelihood of confusion reversed: several digits (mark similarity, some evidence of actual confusion, marketplace overlap) could support a jury finding of likely confusion under § 43(a) |
| Standard/weight of actual confusion evidence | Anecdotal instances (misdirected calls/chats, complaints) suffice to show actual confusion even without sales being swayed | Anecdotes are isolated, do not show diverted or swayed purchases, and are insufficient given volume of business and advertising | Court reaffirmed that actual confusion need not always show swayed purchases (initial-interest confusion is relevant); here anecdotes may carry weight for a jury though their significance is attenuated by business scale |
Key Cases Cited
- Foreman v. Babcock & Wilcox Co., 117 F.3d 800 (5th Cir. 1997) (standard for reviewing JMOL de novo and viewing evidence in nonmovant's favor)
- Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440 (5th Cir. 2017) (elements for trademark infringement and discussion of actual confusion evidence)
- Xtreme Lashes, L.L.C. v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (weight of minimal proof of actual confusion when purchases were swayed)
- Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (initial-interest confusion doctrine; confusion that brings customers in the door is actionable)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) (zone-of-interests and proximate-causation limits on standing under § 43(a))
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (inherent distinctiveness spectrum for marks)
- Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015) (priority of trademark rights determined by first use in commerce)
- Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311 (5th Cir. 1981) (isolated incidents of confusion weighed against business/advertising volume)
- Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252 (5th Cir. 1980) (isolated inquiries insufficient to show likelihood of confusion given large sales volumes)
- Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155 (5th Cir. 1982) (phone-call anecdotes can support a finding of actual confusion)