Defendants-appellants Oxxford Clothes, Inc., and Oxxford Clothes XX, Inc. (Oxxford), appeal the district court’s judgment dismissing Oxxford’s affirmative defense of naked licensing and Oxxford’s state law dilution counterclaim in this trademark dispute with plaintiff-appellee Exxon Corporation (Exxon). We affirm.
Facts and Proceedings Below
Both the “Exxon” mark and the complementary stylized interlocking “XX” symbol have been used by Exxon since the early 1970’s, both marks receiving federal registration in 1972. In 1949, Oxxford federally registered as a trademark the name “Oxxford,” written in the romanized alphabet but not including any stylized or interlocking “XX” design.
*1073 For more than two decades Exxon has aggressively protected its mark from infringement and/or dilution by seeking out and negotiating with other companies using marks similar to its own. In lieu of conclusive litigation, many of these companies opted to enter “phase out” agreements with Exxon in which the other company agreed that after existing stores of stationary, advertising materials, and products bearing the offending mark were exhausted, use of that mark would be discontinued. These phase out periods afforded the potentially infringing or diluting companies time to develop and implement a new mark. The phase out agreements did not contain any quality control mechanisms ensuring the quality of goods or services offered under the offending mark during the phase out period. 1
In 1993, Oxxford began using a trademark featuring an interlocking “XX” design virtually identical to that long previously registered by Exxon. Exxon filed suit against Oxxford 2 in October of 1994, complaining that Oxxford’s use of the interlocking “XX” design infringed its federally-registered trademark, diluted Exxon’s mark, and otherwise constituted an unfair business practice. Exxon amended its complaint twice, ultimately dropping all but its Texas law dilution claim. 3
In response to Exxon’s second amendment of its complaint, Oxxford filed an amended answer raising a bevy of affirmative defenses, prime among these being an assertion that Exxon’s phase out agreements with other allegedly infringing and diluting companies constituted “naked licenses.” The gist of Oxxford’s argument was that these agreements, insofar as they authorized third parties to continue to use infringing or diluting marks with Exxon’s knowledge and approval, were “licenses”; and, because these “licenses” contained no quality control provision, they were “naked licenses” which, under prevailing law, could lead to forfeiture of Exxon’s rights in its licensed marks.
On May 31, 1995, Oxxford filed a counterclaim alleging that, under Texas law, Exxon’s use of its trade name, “Exxon” (without regard to the interlocking “XX” design), had diluted or tarnished its name and registered mark, “Oxxford.” The basis of Oxxford’s claim was a purported ease of association between “Exxon” and “Oxxford” which might lead aspects of Exxon’s alleged corporate reputation for general greed and environmental destructiveness to be negatively attributed to Oxxford. The requested relief was that Exxon be enjoined from using its registered marks.
Both parties filed a plethora of motions, the pertinent ones for purposes of this appeal being cross-motions for summary judgment on Oxxford’s affirmative defenses, motions by Exxon to dismiss Oxxford’s dilution counterclaim and to strike portions of that counterclaim, and a motion for partial summary judgment by Oxxford challenging Exxon’s laches defense to its counterclaim.
On March 18, 1996, the district court entered a memorandum opinion and order in which, inter alia, it granted Exxon summary judgment on Oxxford’s affirmative defense of naked licensing. The district court concluded that Exxon’s phase out agreements were not licenses because, contrary to Oxxford’s assertion that the agreements permitted *1074 third parties to continue misleading uses of Exxon’s mark, the phase out agreements were in fact an appropriate mechanism for halting such activities, i.e., legal settlements which ultimately secured Exxon’s rights in its marks while avoiding the time and expense associated with trademark litigation. The district court also opined that the allegedly infringing and/or diluting companies which were party to these phase out agreements would have had no interest in being associated with Exxon and thus no reason to consent to the quality control provisions; therefore, imposing such a condition would have led these third parties to balk at entering the phase out agreements, limiting the utility of these devices in the resolution of trademark disputes. Finally, noting that the failure to prosecute or pursue infringers or diluters does not necessarily result in forfeiture of the trademark holder’s exclusive rights in the mark, the district court posited that “[i]t would be anomalous for the Court to find facts supporting abandonment because Exxon has a strong enforcement program.”-
The district court also rendered summary judgment in Exxon’s favor on Oxxford’s tarnishment-dilution counterclaim. The district court rested its ruling on three separate determinations: 1) “Oxxford” is not a distinctive mark; 2) Oxxford failed to show that its mark had been used in an “unwholesome context” by Exxon; and 3) because Oxxford knew of the similarity between the marks for over twenty years and failed to act, the counterclaim is barred by laches. Based on the dismissal of Oxxford’s counterclaim, the district court also granted Exxon’s motion to strike those allegations in Oxxford’s counterclaim impugning Exxon’s reputation.
The district court entered an order certifying the dismissal of Oxxford’s counterclaim as a partial final judgment under Federal Rule of Civil Procedure 54(b). The district court also certified the order dismissing Oxxford’s affirmative defenses for interlocutory appeal pursuant to 28 U.S.C. § 1292(b). 4 Oxxford timely noticed an appeal from the Rule 54(b) judgment, and also petitioned this Court for interlocutory appeal under section 1292(b). Permission to pursue an interlocutory appeal was granted, and both appeals were docketed and later consolidated for purposes of oral argument and final disposition.
Discussion
Oxxford appeals the district court’s grant of summary judgment rejecting its affirmative defense of naked licensing and its tarnishment-dilution counterclaim.
5
Accordingly, the admissible evidence proffered by Exxon “must demonstrate the absence of a genuine issue of material fact, but need not negate the elements of [Oxxford’s claim and defense].”
Little v. Liquid Air Corp.,
I. Naked Licensing Defense
We consider first Oxxford’s claim that the district court erred in granting Exxon summary judgment on Oxxford’s affirmative defense of naked licensing.
6
A naked license is a trademark licensor's grant of permission to use its mark without attendant provisions to protect the quality of the goods or services provided under the licensed mark.
Moore Business Farms, Inc. v. Ryu,
Oxxford’s appeal raises two central questions in relation to its naked licensing defense: 1) were the phase out agreements between Exxon and the third parties “licenses,” and 2) did these agreements result in an abandonment of Exxon’s mark? We address these questions in turn.
“[A] license to use a mark ... is a transfer of limited rights, less than the whole interest which might have been transferred.”
Acme Valve & Fittings Co. v. Wayne,
However, not all agreements authorizing use of a protected mark may be categorized as “licenses.” As noted above, the essential inquiry is whether the right granted by the subject agreement permits an
infringing
use of the license. For example, some agreements which allow another party use of the subject mark constitute “consent-to-use” agreements and not licenses.
See, e.g., Moore,
Determining whether or not a particular agreement risks the possibility of allowing an infringing use of the mark,
i.e.,
a use that creates a likelihood of consumer confusion, is, like the entirety of Oxxford’s abandonment claim, ordinarily a factual inquiry.
Moore Business Forms,
*1077 “One must look at all of the surrounding circumstances ... to determine if the consent reflects the reality of no likelihood of confusion in the marketplace.... For example, the parties may prefer the simplicity of a consent to the encumbrances of a valid trademark license. However, if the goods of the parties are likely to be attributed to the same source because of the use of the same or a similar mark, a license (not merely a consent) is necessary to cure the conflict. See 1 J. McCarthy, Trademarks and Unfair Competition § 18:25, at 866 (2d ed.1984).” In re Mastic,829 F.2d at 1116-1117 .
Accordingly, if the goods or services of the concerned third parties were not ones which it is likely the public would confuse with those offered by Exxon, the phase out agreements are not licenses but rather some other, perhaps innominate, genre of trademark agreement. 8
The district court did not make any determination regarding the likelihood of consumer confusion presented by Exxon’s phase out agreements. Accordingly, we elect to assume, arguendo only, that these agreements constituted “licenses” in a technical sense. 9 This does not give us pause, however, since the question whether the third-party phase out agreements are “licenses” is merely, given the current posture of this case, a prelude to the ultimate question pre *1078 sented by Oxxford’s appeal, ie., whether the summary judgment evidence adduced would be adequate to support a finding that Exxon’s course of action resulted in abandonment of its trademarks.
The naked licensing defense has traditionally been used in the context of infringement claims brought by the trademark owner; and, this case began in such a mode.
See, however,
note 6,
swpra.
Federal law statutorily limits the defenses which may be invoked against a claim brought under the Lanham Act by the owner of an incontestable mark, as Exxon is, to the eight categories of affirmative defenses set out in subsections (1)-(8) of 15 U.S.C. § 1115(b).
Park ’N Fly, Inc. v. Dollar Park and Fly, Inc.,
Oxxford’s naked licensing defense, which as we have noted has ultimate relevance only to “abandonment,” is authorized by 15 U.S.C. § 1115(b)(2).
11
See Stanfield v. Osborne Indus., Inc.,
A mark shall be deemed to be “abandoned” if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in the mark.
*1079 (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The definition of “abandonment” set forth in subpart (2) (formerly subpart (b)) is the specific statutory explication of unintentional abandonment, including abandonment due to naked licensing.
12
Sweetheart Plastics,
The language of subsection 1127(2) reflects that to prove “abandonment” the alleged infringer must show that, due to acts or omissions of the trademark owner, the incontestable mark has lost “its significance as a mark.”
See Defiance Button Mach. Co. v. C & C Metal Products,
Oxxford, pointing to recent precedent in this Circuit indicating that naked licensing results in an “involuntary trademark abandonment,” posits that when a defendant proves that the trademark owner has licensed its mark without any quality control provisions the courts should
presume
a loss of significance.
See Moore Business Forms,
With the applicable legal standard clarified, we turn to the record before us. Exxon, commensurate with its burden under Rule 56, directed the district court’s attention to Oxxford’s failure to meaningfully address what is an essential component of its third-party naked licensing defense, i.e., a loss of trademark significance in Exxon’s mark(s). Even were we to construe Oxxford’s pleadings to allege the unlikely proposition that Exxon’s registered marks, due to these third-party phase out agreements, have lost their distinctiveness as indicators of origin, Oxxford has offered absolutely no evidence to substantiate such a claim. Accordingly, we affirm the district court’s ruling because Oxxford has failed to adduce evidence sufficient to allow a reasonable factfinder to conclude that Exxon has abandoned its marks.
II. Tarnishment-Dilution Counterclaim
We turn next to the district court’s dismissal of Oxxford’s tarnishment-dilution counterclaim. Oxxford’s counterclaim, like Exxon’s remaining claim, seeks relief under section 16.29 of the Texas Business and Commerce Code:
§ 16.29. Injury to Business Reputation or Trade Name or Mark
A person may bring an action to enjoin an act likely to injure a business reputation *1081 or to dilute the distinctive quality of a mark registered under ... Title 15, U.S.C ____regardless of whether there is competition between the parties or confusion as to the source of goods or services.
The Texas statute, like that of twenty-five other states, including California, Illinois, and New York, is based upon language contained in Section 12 of the 1964 United States Trademark Association Model State Trademark Bill. 3 McCarthy, § 24:80, P. 24-125. As one court has already noted, the Texas statute tracks in particular the language of the New York dilution statute, New York Gen.Bus.L. § 368-d.
See Pebble Beach Co. v. Tour 18 I, Ltd.,
Under section 16.29, a plaintiff may seek an injunction to remedy ongoing dilution of a protected trademark even if it is not in business competition with the defendant(s) and irrespective of the existence
vel non
of any likelihood of consumer confusion. The owner of a distinctive mark
14
may obtain relief under an anti-dilution statute if there is a “likelihood of dilution” due to 1) “blurring,” a diminution in the uniqueness and individuality of the mark, or 2) “tarnishment,” an injury resulting from another’s use of the mark in a manner that tarnishes or appropriates the goodwill and reputation associated with the plaintiffs mark.
15
3 McCarthy, §§ 24:67-69;
The Sports Authority, Inc. v. Prime Hospitality Corp.,
We consider first Oxxford’s contention that the district court erred by finding its claim barred by laches.
16
Under Texas law the two elements of laches are “(1) unreasonable delay by one having legal or equitable rights in asserting them; and (2) a good faith change of position by another to his detriment because of the delay.”
Rogers v. Ricane Enterprises, Inc.,
Oxxford claims that its cause of action did not accrue until it suffered “reputational injury,” in this case “at the moment that Exxon’s reputation became unsavory enough to affect Oxxford.” Oxxford, relying upon the affidavit of one of its corporate officers, contends that its cause of action did not accrue until the Exxon Valdez verdict and attendant public outcry in late 1994. Noting that it could not have sued Exxon under section 16.29 prior to 1989, when the Texas statute was enacted, Oxxford concludes that Exxon’s laches defense should fail because it cannot fix a date certain upon which Oxxford became aware of the existence of an actionable dilution claim.
The record reflects, without dispute, assertions by Oxxford executives as early as 1972 that the mark “Exxon” could possibly influence the distinctiveness and corollary goodwill of their “Oxxford” mark. 18 In addition, Oxxford’s final pleadings relate actions of Exxon stretching back to 1973 in an attempt to establish its tarnishment cause of action, declaring that “[a]s early as 1973, the Exxon name stood for greed and dishonesty.” The bulk of Oxxford’s allegations dwell upon Exxon’s activities in the late 1970s through the Exxon Valdez incident in 1989, only reaching the 1994 Valdez verdict by way of conclusion. Oxxford failed to bring its claim in the six years preceding this lawsuit, after the Texas cause of action became available. Moreover, Illinois, where Oxxford was headquartered in 1972 and still has its principal place of business, has had an anti-dilution statute since 1956. 111. Stat. ch. 765, § 1035/15.
*1083 Under these uncontroverted facts, the district court did not abuse its discretion in concluding there had been an unreasonable delay in bringing suit, thus satisfying the first prong of Texas’ laches inquiry. Regarding the second prong of this test, the record is undisputed that Exxon, relying upon the federal registration of its marks and its strict policing of similar marks, accrued tremendous investment costs and resultant goodwill in the challenged marks while Oxxford remained quiescent. Given this record, we affirm the ruling of the district court that Oxxford’s claim is barred by laches.
We further observe that even were Oxxford’s claim not barred by laches, it would plainly be an exercise in futility to remand the counterclaim, because Oxxford’s pleadings do not state a cause of action under Texas’ dilution statute.
19
Oxxford observes in its brief to this Court that it has long “enjoyed an outstanding reputation as a hand-made men’s suit manufacturer” and “in the American apparel market, Oxxford has remained ... the epitome of quality in U.S.made men’s business clothing.” Oxxford’s brief goes on to state that “[t]he essence of Oxxford’s counterclaim is that ... Exxon’s destruction of the environment and other corrupt business practices have lowered its esteem in the public’s eye to the point that its reputation, coupled with the association of its mark with Oxxford’s, is tarnishing the reputation of Oxxford.” The Texas statute, however, affords a plaintiff a remedy only for those “acts” which threaten dilution of a valid trademark.
20
We must perforce consider which “acts” give rise to a colorable dilution by tarnishment claim under the Texas statute.
See
3 McCarthy, §§ 24:104-107 (discussing different modes of tarnishment, including parody and competitive advertising, and listing cases);
Hormel Foods Corp. v. Jim Henson Productions, Inc.,
Oxxford seeks, through the vehicle of section 16.29 and a flimsy, attenuated assertion that there is an ease of association between the marks “Oxxford” and “Exxon,” to hold Exxon responsible for all activities and events within the last twenty-five years falling under its corporate aegis and resulting in general negative publicity for the corporation. Such an approach ignores the distinction between the use of the appellation “Exxon” as a device of corporate identity and its use as a trade name or trademark, i.e., as an indicator of origin and/or quality of particular goods and services. The “acts” which comprise the basis of Oxxford’s claim, such as the Exxon Valdez spill and resulting jury verdict, bear no relationship to the quality or reputation of the products sold or services provided under cover of Exxon’s marks (or to the quality or reputation of products sold or services provided under Oxxford’s marks).
*1084 What Oxxford seeks by its counterclaim is to enjoin Exxon from using Exxon’s registered marks. Section 16.29 is, at least in most respects, a garden variety dilution statute, and we have uncovered no authority even suggesting that a dilution by tamishment claim brought under such a statute which seeks to enjoin the defendant’s use of its mark can be premised upon matters wholly unrelated to the defendant’s use of the allegedly diluting mark as a trademark (or to any use of or attempt to benefit from plaintiffs trademark). 21 Under Oxxford’s theory, rights in an otherwise established, valid, and registered trademark which continue to noneonfusingly reflect to the public the origin and quality of the goods in connection with which it is used, may be lost merely because the mark’s owner has incurred a bad public reputation in respect to matters unrelated to the quality of its products. In fine, the trademark owner has a property right in his mark, but only so long as he personally is not unpopular with the general public. We reject this highly unorthodox view of trademark law. Therefore, even if we assume arguendo that Oxxford is a sufficiently strong mark to warrant protection under the Texas statute and that “Exxon” and “Oxxford” are similar enough to allow the public to make some attenuated subliminal association between the products and services offered under the two marks, we nonetheless conclude that Oxxford’s allegations, because they do not assert that some manner of deficiency or unsavoriness inures to the products or services sold under Exxon’s registered marks or that Exxon has infringed or attempted to benefit from Oxxford’s marks, do not state a cause of action under Tex.Bus. & Comm.Code § 16.29.
The district court did not err in dismissing Oxxford’s counterclaim. 22
Conclusion
The district court did not err by rejecting Oxxford’s defenses or by dismissing Oxxford’s counterclaim, and those rulings are AFFIRMED.
Notes
. Phase out agreements orchestrated by Exxon during the 1970s did give Exxon quality control rights over the alleged infringer or diluter's products. Later phase out agreements, however, did not give Exxon such rights. It is these later agreements on which Oxxford’s naked licensing defense is based. There are some fourteen of these later agreements. One of these has a three-year phase out period. All the rest are shorter, the next longest period being one year, which is provided for in four of these agreements; one has a ten-month period; two have six months; the remainder are three months or less. Five of these agreements settle litigation then actually pending.
. Exxon initially filed suit against Oxxford Clothes, Inc. In December of 1994, two months after this suit was filed, the assets of Oxxford Clothes, Inc., were purchased through a foreclosure sale by another corporation, John F. Mc-Donough, Inc., a wholly-owned subsidiary of Tom James Company. John F. McDonough, Inc., subsequently changed its name to Oxxford Clothes XX, Inc. Oxxford Clothes XX, Inc., was added to this lawsuit in its capacity as successor-in-interest to Oxxford Clothes, Inc., pursuant to Fed. R. Civ. Pro. 25(c).
. Jurisdiction over Exxon’s final complaint was founded on diversity.
. The district court initially certified the order dismissing Oxxford's affirmative defenses as a partial final judgment under Rule 54(b). Oxxford noticed an appeal from that judgment, which was docketed in this Court under No. 96-20397 and has been dismissed for lack of appellate jurisdiction in a separate opinion issued this date. Nonetheless, we consider here all issues fairly presented by the district court's order of dismissal pursuant to section 1292(b).
Yamaha Motor Corp. v. Calhoun,
— U.S. -,
. The district court's memorandum opinion and order embrace a large number of issues; Oxxford has chosen to brief only two, the dismissal of its affirmative defense of naked licensing and its dilution counterclaim. All other issues, not raised or briefed on appeal, are waived.
Cavallini v. State Farm Mut. Auto Ins. Co.,
. Both parties in briefing this issue have relied exclusively upon jurisprudence articulating the parameters of the naked licensing defense in the context of a federal trademark infringement claim, forgetting, apparently, that the only claim alleged by Exxon which remains extant is its state law dilution claim. No court construing Texas law has ever discussed, much less applied, the naked licensing defense in a trademark dispute. Furthermore, we have been unable to locate any cases construing federal trademark law which recognize naked licensing as a defense against a
dilution
(as opposed to an infringement) claim, perhaps because a federal cause of action for trademark dilution was apparently not available until the Lanham Act was amended to include one in 1996.
See
15 U.S.C. § 1125(c),
added by
Pub.L. 104-98, § 3(a) (1996);
Community Federal Savings & Loan Assoc. v. Orondorff,
Despite these difficulties, our review of the record and briefs convinces us that by addressing the issue as framed by the parties we may fairly adjudicate this case. Furthermore, we have previously found that, in considering a
res nova
issue under Texas trademark law,
Erie
requires this Court to decide the issue as a Texas court would, namely by adhering "to the general common law principles that other courts have uniformly applied.”
Association of Co-Operative Members, Inc. v. Farmland Industries, Inc.,
. There is an exception to this proposition. The licensee in a purported naked license may also invoke the naked licensing defense as a form of estoppel.
See, e.g., Sheila’s Shine Products, Inc.
v.
Sheila Shine, Inc.,
We reject Oxxford’s argument that, this single, here-inapplicable exception aside, naked licensing has any presently relevant ultimate significance apart from its relevance in showing unintentional abandonment.
. This emphasis on the likelihood of consumer confusion dovetails with the policy considerations giving rise to the naked licensing defense.
See Taco Cabana,
. Courts have construed a variety of agreements and relationships entered into for a range of reasons, including the cessation or forbearance of litigation, to be trademark licenses subject to the naked licensing defense.
E. & J. Gallo Winery
v.
Gallo Cattle Co.,
Oxxford also suggests that Exxon, by virtue of allegations made in the course of the abortive litigation which preceded a number of the phase out agreements, is judicially estopped from denying that the parties to those phase out agreements were engaged in an “infringing use” of Exxon's mark. Assuming,
arguendo only,
the potential viability of such a contention in an appropriate case, the record here does not reveal that any of these allegations were accepted as true by the respective courts; accordingly, the doctrine of judicial estoppel is inapplicable.
U.S. for Use of American Bank v. CIT Constr., Inc. of Texas,
. Unlike patents and copyrights, there is no specific constitutional provision making the regulation of trademarks a federal concern, and the first constitutional federal trademark act, passed pursuant to the Commerce Clause, was not enacted until 1905. 1 McCarthy, § 5.3.
See also Trade-Mark Cases,
. Both Oxxford and Exxon point to subsection 1115(b)(3) as the or a basis for Oxxford’s naked licensing defense. This subsection provides a defense to an infringement claim if "the registered mark is being used ... so as to misrepresent the source of the goods or services on or in connection with which the mark is used.” A review of the jurisprudence construing this defense reveals that it is a defense of "unclean hands," only applicable when the origin or source of goods distributed under the subject mark is misrepresented.
See General Motors Corp. v. Gibson Chemical & Oil,
. A number of courts have also cited to section 1055, often in tandem with section 1127, as statutory authority for the naked licensing defense.
Visa, U.S.A., Inc. v. Birmingham Trust Nat. Bank,
§ 1055. Use by related companies affecting validity and registration
Where a registered mark ... is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant ... and such use shall not affect the validity of such mark or of its registration, provided such mark is not used to deceive the public. (Emphasis added).
The term “related companies” is defined in section 1127 as follows:
The term “related company" means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
See also Health Industries,
Section 1055 does not of itself establish a naked licensing defense. So far as here relevant, its effect is merely to reflect conditions under which certain conduct is not per se precluded from consideration, as supportive, to the extent that it may logically do so in a given setting, of a determination that there has been abandonment as defined in section 1127(2).
. The alternative to the phase out agreements latent in Oxxford’s argument is that Exxon either ignore or immediately and relentlessly litigate with all perceived infringers. Unless Exxon were able to perfunctorily obtain preliminary injunctions against these parties, one must wonder whether, given the delays which are part of conventional civil litigation between entrenched corporate opponents, any resultant consumer confusion might well be abated more rapidly than under the phase out agreements. We further observe that a number of treatises and cases either explicitly or implicitly recognize that such agreements are often an appropriate manner in which to resolve trademark disputes.
See, e.g.,
Siegrun D. Kane,
Trademark Law 200
(2d ed.1991);
Minnesota Pet Breeders, Inc. v. Schell & Kampeter, Inc.,
. "It is clear that anti-dilution statutes ... are designed to protect only strong, well-recognized marks.”
Accuride International, Inc. v. Accuride Corp.,
. Some courts have found a third manner in which "likelihood of dilution” may be proven under certain state statutes, namely an injury to the value of the mark caused by actual or potential consumer confusion.
See Jordache Enterprises, Inc. v. Hogg Wyld, Ltd.,
. Exxon claims that the material facts relevant to laches are undisputed and therefore review is more properly conducted under an abuse of discretion standard.
National Ass’n of Gov't Employees v. City Pub. Serv. Bd.,
. Some Texas courts have also noted, albeit usually in the context of laches asserted within the statutory limitations period, that as a general rule laches is inappropriate when the controversy is one governed by a statute of limitations.
See, e.g., Stevens v. State Farm Fire & Cas. Co.,
.Exxon contends, and Oxxford does not dispute, that Oxxford Clothes XX, Inc., is bound by the knowledge of its predecessor-in-interest, Oxford Clothes, Inc.
See
note 2,
supra; Vincent Murphy Chevrolet Co., Inc. v. United States,
. It is well-established that this Court may affirm a summary judgment on any grounds supporting such a ruling which are manifest in the record.
Rizzo v. Children's World Learning Centers, Inc.,
. The Texas statute, like the model bill, states that in addition to enjoining trademark dilution a plaintiff may enjoin acts likely to injure business reputation. It is unclear whether this language creates a separate cause of action or merely expresses the "tarnishment” prong of the typical dilution cause of action. "While the statute speaks in terms of protecting against two distinct harms — injury to business reputation and dilution of a mark's distinctive quality — the first harm has consistently been deemed subsumed into the second.”
Plasticolor Molded Products v. Ford Motor Co.,
. Oxxford relies upon severed cases in which courts have found that uses of a similar mark which undermine the quality assurance of the plaintiff's mark can result in tamishment.
See Tiffany & Co. v. Boston Club, Inc.,
. We need not reach Exxon’s contentions that Oxxford's asserted cause of action necessitates a retroactive application of the anti-dilution statute contrary to the legislature's intent and is in any case forbidden by the Texas and federal constitutions.