589 F.Supp.3d 624
N.D. Tex.2022Background
- Signature Stag (menswear) created and sold a crossed-revolvers logo on apparel beginning in 2016 (first sales Nov. 2016); Savage Tavern (bar) opened 2018 and later adopted the same logo.
- Savage Tavern obtained federal registration for the logo (service mark) in Sept. 2020 and then filed suit alleging trademark infringement; Signature Stag answered, counterclaimed, and moved for a preliminary injunction.
- Signature Stag produced evidence of first commercial use in 2016 and witnesses who saw Savage Tavern apparel bearing the same logo after Signature Stag’s use.
- The district court applied the Lanham Act likelihood-of-confusion framework (the Fifth Circuit eight-factor test) and concluded Signature Stag was the senior user and the mark was protectable.
- The court found a likelihood of confusion, irreparable harm (including the statutory presumption), and that the equities and public interest favored injunctive relief.
- Court granted a preliminary injunction (Mar. 8, 2022) enjoining Savage Tavern from any use of the mark pending final disposition.
Issues
| Issue | Plaintiff's Argument (Savage Tavern) | Defendant's Argument (Signature Stag) | Held |
|---|---|---|---|
| Protectability of the logo | Registration establishes the mark is valid and protectable | The mark is distinctive and inherently protectable; PTO approval aids but is not dispositive | Mark is protectable (PTO approval + Seabrook/Seabrook-style analysis supports inherent distinctiveness) |
| Priority / Ownership | Registration confers ownership; Savage Tavern is registrant | Rights accrue by first use in commerce; Signature Stag used the mark in 2016 | Signature Stag is senior user; ownership determined by prior use, not later registration |
| Likelihood of confusion | Registration and use by plaintiff make confusion unlikely to favor defendant | Identical marks on overlapping goods/advertising and evidence of confusion support likelihood | Court found likelihood of confusion (7 factors favor confusion, 1 neutral) |
| Evidence of intent to confuse | Denies adopting mark to confuse; relied on registration | Savage Tavern expanded mark use into apparel after awareness of Signature Stag, suggesting intent | Court found sufficient evidence of intent (awareness + imitation) |
| Actual confusion | Registration and use show public recognition; disputes evidence | Witnesses (customer and owner) perceived confusion on seeing Savage Tavern apparel | Court found anecdotes supported initial-interest or at least suggestive actual confusion; counts toward likelihood of confusion |
| Irreparable harm & remedy | Injunction would harm Savage Tavern’s business and undermine value of registration | Loss of control over goodwill, reputational harm, and statutory presumption of irreparable harm | Irreparable harm presumed upon likelihood of success; injunction warranted |
| Applicability of 15 U.S.C. § 1125(c)(6) (bar) | Registration bars certain state-law dilution claims and limits defendant’s relief | Defendant seeks federal Lanham Act relief and cancellation of the registration; §1125(c)(6) inapplicable | §1125(c)(6) does not preclude defendant’s federal claims or counterclaim for cancellation; not a bar here |
| Scope of preliminary relief | Plaintiff argued for protection of its registration rights and operations | Defendant sought an injunction restoring last peaceable state (pre-junior use) | Court issued broad prohibitory injunction against any use of the mark pending final judgment |
Key Cases Cited
- Univ. of Tex. v. Camenisch, 451 U.S. 390 (U.S. 1981) (purpose of preliminary injunction is to preserve the relative positions of the parties)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (inherently distinctive trade dress entitled to protection)
- Wal–Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (U.S. 2000) (product design requires secondary meaning to be protectable)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (U.S. 2015) (priority by use and implications for PTO determinations)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (U.S. 2004) (likelihood-of-confusion requirement in trademark infringement)
- Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440 (5th Cir. 2017) (Fifth Circuit application of eight-factor likelihood-of-confusion test)
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (actual confusion and strength-of-mark considerations)
- Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (advertising use of a mark is highly probative of confusion)