932 F. Supp. 2d 754
N.D. Tex.2013Background
- Plaintiff S & H Industries sues Karl Selander d/b/a ATCOA Inc. for Lanham Act violations and Texas unfair competition and dilution.
- Plaintiff owns the VIKING Mark and VIKING Logo; registrations obtained in the 1990s and 2000s.
- Defendant used the Mark without authorization to promote hand-held pneumatic tools, including on websites and online promotions.
- Plaintiff alleges continued unauthorized use after notice in 2010 and again through mid-2012; suit filed November 1, 2011.
- Magistrate Judge Ramirez recommended summary judgment for Plaintiff; Judge Lynn adopted findings and granted summary judgment and permanent injunction; Defendant’s cross-motion denied as moot.
- Plaintiff seeks permanent injunction under 15 U.S.C. § 1116 and Texas § 16.29, plus attorney’s fees under § 1117.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership and likelihood of confusion | Plaintiff owns valid, incontestable marks and Defendant’s use causes confusion. | Disputes authenticity of registrations and potential lack of confusion. | Plaintiff entitlement to summary judgment on infringement established. |
| Unfair competition under § 1125(a) | Defendant’s use is likely to confuse consumers and misappropriate goodwill. | No genuine dispute about confusion; no other defenses stated. | Summary judgment granted for unfair competition. |
| False advertising under § 1125(a)(1)(B) | Defendant’s use of the Mark misleads about affiliation and sponsorship. | Disputed impact of alleged misrepresentations; no material deception shown. | Summary judgment granted for false advertising. |
| Trademark dilution and Texas unfair competition | Defendant’s Mark use dilutes and harms Plaintiff’s distinctiveness. | No genuine issue of material fact on dilution. | Summary judgment granted for dilution claim under Texas law and related unfair competition. |
| Remedies: permanent injunction and attorney’s fees | Permanent injunction appropriate; fees as an exceptional case under § 1117(a). | Not applicable or not addressed as moot after grant of summary judgment. | Permanent injunction granted; fees to be determined by lodestar analysis; cross-motion moot. |
Key Cases Cited
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2012) (likelihood of confusion framework and strength of marks)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (distinctiveness and protectable mark; likelihood of confusion factors)
- Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2d Cir. 1986) (registered mark presumed distinctive and validity evidence)
- E. & J. Gallo Winery v. Spider Webs Ltd., 129 F.Supp.2d 1033 (S.D. Tex. 2001) (presumption of distinctiveness for registered marks; incontestability defenses)
- Mary Kay, Inc. v. Weber, 661 F.Supp.2d 632 (N.D. Tex. 2009) (injunction considerations in Lanham Act context)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) (four-factor test for perpetual injunctions)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (U.S. 1986) (summary judgment burden and evidence standard)