Wearable Shoe Tree, LLC v. Does 1-601
4:24-cv-00334
| E.D. Tex. | Mar 20, 2025

Background

  • Wearable Shoe Tree LLC owns U.S. Design Patent No. D970,203 (the '203 Patent) and three federally registered trademarks (notably the SHIELDS standard-character mark, Reg. No. 6,220,820).
  • Defendants are ~Does 1–601 (many foreign merchants operating online marketplaces) alleged to have sold infringing shoe‑shield products to U.S. customers; many were served by court‑approved email and did not appear.
  • Court entered a TRO and a preliminary injunction earlier; the Clerk entered defaults against the remaining non‑appearing defendants and Wearable Shoe Tree moved for default judgment and attorney's fees.
  • The court found liability by default for most defendants: 393 defaulting defendants liable in some respect; 257 found to infringe the '820 trademark; 376 found to infringe the '203 design patent (some overlap).
  • Remedies: court awarded statutory trademark damages of $1,000 per trademark violation (total $257,000), denied Wearable Shoe Tree's request for attorney's fees, entered permanent injunctions against trademark and patent infringers, and awarded no patent damages for lack of evidence.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Procedural availability of default judgment Defs were properly served, failed to answer, and clerk default entered; default judgment is warranted No responsive filings; no defense presented Default judgment procedurally warranted as to most Defaulting Defendants
Trademark infringement under 15 U.S.C. §1114(1) Wearable Shoe Tree owns valid registrations and many Defendants used marks (e.g., “SHIELDS”) creating likelihood of confusion No responses; implicitly no factual rebuttal Proven only for the '820 SHIELDS registration as to 257 Defendants; claims failed as to the '931 and '733 registrations
Design‑patent infringement under 35 U.S.C. §271 '203 design patent is valid and accused products are substantially the same under the ordinary‑observer test Defs did not contest validity or noninfringement Patent presumed valid; infringement found for 376 Defendants; injunction granted but no monetary patent damages awarded
Remedies: statutory damages, fees, injunction Seeks $200,000 per trademark violation (or up to $2,000,000 if willful), attorney's fees, and permanent injunctions No opposition presented Awarded statutory minimum $1,000 per trademark violation ($257,000 total), denied attorney's fees, permanent injunctions entered; no patent damages granted

Key Cases Cited

  • N.Y. Life Ins. v. Brown, 84 F.3d 137 (5th Cir. 1996) (default‑judgment procedural framework)
  • Lindsey v. Prive Corp., 161 F.3d 886 (5th Cir. 1998) (three‑part analysis for default judgment)
  • Nishimatsu Constr. Co. v. Hous. Nat'l Bank, 515 F.2d 1200 (5th Cir. 1975) (effects of defendant's default: admission of well‑pleaded facts)
  • Jackson v. FIE Corp., 302 F.3d 515 (5th Cir. 2002) (default does not establish damages automatically)
  • Wooten v. McDonald Transit Assocs., Inc., 788 F.3d 490 (5th Cir. 2015) (Rule 8 pleading standard guidance)
  • Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must raise plausible right to relief)
  • Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303 (5th Cir. 2008) (use of identical mark makes likelihood‑of‑confusion analysis unnecessary)
  • Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010) (federal registration is prima facie evidence of mark validity and exclusive rights)
  • Springboards to Educ., Inc. v. Hous. Indep. Sch. Dist., 912 F.3d 805 (5th Cir. 2019) (multi‑factor likelihood‑of‑confusion test)
  • Curver Luxembourg SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019) (design‑patent infringement governed by the ordinary‑observer test)
  • Samsung Elecs. Co. v. Apple Inc., 580 U.S. 53 (2016) (ordinary‑observer standard for design patents)
  • Proctor & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) (patents are presumed valid)
  • Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (judicial discretion to award fees in exceptional cases)
  • Baker Botts L.L.P. v. ASARCO LLC, 576 U.S. 121 (2015) (American Rule: fees require statutory or contractual basis)
  • Alliance for Good Government v. Coalition for Better Government, 919 F.3d 291 (5th Cir. 2019) (example of exceptional case warranting fees)
  • Spectrum Ass'n Mgmt. of Texas v. Lifetime HOA Mgmt., 5 F.4th 560 (5th Cir. 2021) (bad‑faith factors supporting fee awards)
  • Rex Real Est. I, L.P. v. Rex Real Est. Exch., Inc., 80 F.4th 607 (5th Cir. 2023) (statutory framework for registered‑mark claims)
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