United States District Court, S.D. Texas, Houston Division
Tempur-Pedic North America, LLC, Sealy Mattress Company, Dan-Foam APS, and Sealy Technology LLC, Plaintiffs,
Mattress Firm, Inc., Defendant.
MEMORANDUM OPINION & ORDER
H. Miller United States District Judge
before the court are (1) the plaintiffs' second emergency
motion for a preliminary injunction (Dkt. 34); (2) the
plaintiffs' motion to strike portions of the
defendant's supplemental brief (Dkt. 56); and (3) the
plaintiffs' third emergency motion for preliminary
injunction (Dkt. 60). After considering the motions,
responses, the arguments made at the hearing, supplemental
briefing, evidentiary record, and the applicable law, the
court finds that (1) the plaintiffs' second motion for a
preliminary injunction (Dkt. 34) should be GRANTED IN PART;
(2) the plaintiffs' motion to strike portions of the
defendant's supplemental brief (Dkt. 56) should be
GRANTED IN PART AND DENIED IN PART; and (3) the
plaintiffs' third motion for a preliminary injunction
(Dkt. 60) should be DENIED AS MOOT.
case involves an on-going business dispute between the
plaintiffs, Tempur-Pedic North America, LCC
(“Tempur-Pedic”), Sealy Mattress Company
(“Sealy”), Dan-Foam APS, and Sealy Technology LLC
(collectively “Tempur-Sealy”), and the defendant
Mattress Firm, LLC (“Mattress Firm”). Dkts. 1,
27, 40, 59-1. Tempur-Sealy is a mattress manufacturer and
distributor which owns trademarks for Tempur, Tempur-Pedic,
Sealy, Sealy Posturepedic, Sterns and Foster, and others
(collectively, “Tempur-Sealy Marks”). Dkt. 3,
Exs. A, B. Mattress Firm is a mattress retailer that sold
Tempur-Sealy branded mattresses. Dkt. 7 at 9.
January 2017, the parties dissolved their retailer
agreements. Dkt. 46-1 (Master Retailer Agreements); Dkt. 59-1
at 3. Subsequently, the parties reached Letter Agreements to
allow Mattress Firm to continue to order inventory and sell
Tempur-Sealy products through April 2017. Id.; Dkt.
48-1-48-4 (Letter Agreements).
the termination of the retailer agreements, the parties
disputed whether Mattress Firm had a contractual right to
continue using Tempur-Sealy's intellectual property as it
wound down sales of its remaining Tempur-Sealy inventory.
See Dkt. 23. On March 30, 2017, Mattress Firm filed
suit against Tempur-Pedic and Sealy in Texas state court
seeking damages for breach of the Letter Agreements, damages
for tortious interference with prospective business
relationships, and a declaratory judgment that it can use
Tempur-Sealy's intellectual property for the sale of its
remaining inventory. Dkt. 19 at 2, Ex. A (Mattress Firm
v. Tempur-Pedic N. Am., LLC, No. 2017-22062, 165th
Judicial District Court of Harris County, Texas).
April 7, 2017, Tempur-Sealy filed a complaint in the Southern
District of Texas against Mattress Firm for breach of
contract and trademark infringement under common law and the
Lanham Act. Dkt. 1. Tempur-Sealy amended its complaint three
times to incorporate the allegations associated with its
requests for injunctive relief. Dkts. 27, 40, 59-1.
its initial complaint, Tempur-Sealy filed its first motion
for a temporary restraining order and preliminary injunctive
relief. Dkt. 6. Tempur-Sealy claimed that Mattress Firm was
violating its trademarks by continuing to use its
intellectual property in advertising despite the termination
of their retailer agreements. Id. Mattress Firm
responded that it was permitted to use Tempur-Sealy Marks,
per their contracts, while it sold its remaining Tempur-Sealy
inventory. Dkt. 18. The court denied Tempur-Sealy's
request for a temporary restraining order, and scheduled a
hearing on its motion for a preliminary injunction. Dkt. 23.
However, the parties reached an agreement and Tempur-Sealy
withdrew its motion for injunctive relief. Dkts. 31, 59-1 at
13. Both parties agree that, as of May 8, 2017, Mattress Firm
is no longer a Tempur-Sealy retailer. Id.; Dkt. 38
16, 2017, Tempur-Sealy filed a second emergency motion for a
preliminary injunction. Dkt. 34. In this motion, Tempur-Sealy
argued that Mattress Firm was infringing on its trademarks
with a web page designed to sell competing mattress products.
Id.; Dkt. 35. Specifically, Tempur-Sealy complained
that the Mattress Firm web page found at
http://www.mattressfirm.com/Tempur-Pedic (“Mattress Firm Web
Page”) uses Tempur-Sealy Marks in a way likely to
confuse consumers. Dkt. 35 at 8. Tempur-Sealy also complained
that Mattress Firm was purchasing advertisements on Google
and Yahoo that incorporated Tempur-Sealy Marks to direct
traffic to the Mattress Firm Web Page. Id. Mattress
Firm responded, admitting to the existence and contents of
its web page, but it asserted that its use of Tempur-Sealy
Marks is allowable comparative advertising under the doctrine
of nominative fair use. Dkt. 38 at 6-7.
23, 2017, the court held a preliminary injunction hearing.
Dkt. 43. At the hearing, the court requested that the parties
attempt to craft an agreed injunctive order within five days;
if that failed, the court ordered the parties to provide
supplemental briefings seven days later. Id. The
parties failed to reach an agreement, and each filed
supplemental briefings. Dkts. 54, 55. In its supplemental
brief, Tempur-Sealy reasserted its request for injunctive
relief barring Mattress Firm from using Tempur-Sealy Marks on
its website or in any other advertising. Dkt. 54-1. In its
supplemental brief, Mattress Firm, though expressing its
opposition to an injunction, offered a proposed order that
would limit its use of the Tempur-Sealy Marks while
continuing to permit it to use the marks for comparative
advertising. Dkt. 55 at 12 (referencing Dkt. 55-2).
Firm's supplemental briefing also included evidence of a
post-hearing revision to its web page. Dkt. 55, Ex. 1-A.
Tempur-Sealy filed a motion to strike portions of Mattress
Firm's supplemental brief. Dkt. 56. Mattress Firm
responded. Dkt. 58.
16, 2017, Tempur-Sealy filed a third emergency motion for a
preliminary injunction. Dkts. 60, 61. In its third motion,
Tempur-Sealy complains that Mattress Firm is using the
Tepur-Pedic name and mark in its advertising at
http://www.sleepexperts.com (“Sleep Experts
Web Page”) and through the purchase of advertisements
on Google to direct traffic to the Sleep Experts Web Page.
Dkt. 61 at 5-6. On the same day, Mattress Firm responded by
filing a letter that it sent to opposing counsel explaining
that the Sleep Expert Web Page belonged to a subsidiary
company which merged with Mattress Firm on May 31, 2017. Dkt.
62, Ex. A. Mattress Firm's letter states that the
advertisement for Tempur-Sealy products following the merger
was inadvertent and that it was removed by the filing date of
the third motion. Id.
Websites and Web Advertising
subjects of the second and third motions for preliminary
injunctions are the Mattress Firm Web Page and the Sleep
Expert Web Page, which Tempur-Sealy alleges infringe on its
marks. Dkts. 35, 61. Mattress Firm does not dispute any of
the evidence presented regarding the contents of its web
pages. Dkts. 38; 62. Rather, Mattress Firm argues that the
court should consider its revisions to the two web pages to
remove the alleged infringing conduct. Id.
Mattress Firm Web Page
subject of Tempur-Sealy's second motion for a preliminary
injunction is the Mattress Firm Web Page. Dkt. 35 at 11. This
web page has gone through at least four revisions. Dkts.
35-2, Exs. A (“first revision”), C (“second
revision”); Dkt. 38, Ex. A-3 (“third
revision”); Dkt. 55-1, Ex. A (“latest
revision”). The Mattress Firm Web Page can be accessed
by searching “Tempur-Pedic” with the Mattress
Firm “Product Search” tool. Dkt. 35-2 (Fine
Dec.). Beginning with the second revision, the Mattress Firm
Web Page directs users to a second web page that advertises
competing mattress brands. Dkt. 35-2, Ex. D; Dkt. 47-11.
First and Second Revision
first and second revisions of the Mattress Firm Web Page
contained a large banner at the top of the layout that
headlines, in large font, “Tempur-Pedic
Mattresses” and “Everything you need to know
about Tempur-Pedic mattresses.” Dkt. 35-2, Ex. A. Above
the banner, another smaller banner advertises “Same And
Next Day Delivery.” Id. The first and second
revisions of the web page contains several other banners that
describe Tempur-Pedic mattresses, the Tempur-Pedic product
lines, and the Tempur-Pedic company history. Id.
Finally, at the bottom of the web page, there is a table
comparing various Tempur-Pedic brand mattresses to competing
brands. Id. These two revisions had similar
features, but the second revision included more detailed
graphics, added a “Learn More” button that
directed users to different web page advertising competing
mattress brands, and contained a small disclaimer of
affiliation at the very bottom of the web page. Dkt. 35-2,
Firm's response describes the third revision of the
Mattress Firm Web Page. Dkt. 38, Ex. A at 4-5 (describing the
May 20, 2017 re-launch of the Mattress Firm Web Page). The
third revision changes the headline text in the large-font
banner from “Tempur Pedic Mattresses” to the
generic phrase “Memory Foam Mattresses” and it
removes the “same day delivery” banner. Dkt. 38,
Ex. A-3. The “Learn More” button was changed to
“Learn About Options.” Id. Finally, the
disclaimer of affiliation was re-positioned at the top of the
web page, right beneath the headline banner. Id. The
third revision retains multiple banners describing
Tempur-Pedic from the previous revisions and it also
continues to include a comparative list, comparing
Tempur-Pedic products to other mattress brands. Id.
Firm claims in its supplemental briefing that it revised its
web page one more time. Dkt. 55-1, Ex. A. The latest revision
further reduces the number of times Tempur-Pedic is
mentioned, deletes many of the Tempur-Pedic product
descriptions, modifies the disclaimer to remove references to
the termination of the parties retailer agreements, and
changes the format of the comparative information into a more
tabular form. Id.
Google and Yahoo AdWords
Tempur-Sealy alleges that Mattress Firm purchased Google and
Yahoo AdWords (collectively, “AdWords”) to direct
internet traffic to the Mattress Firm Web Page following
searches for phrases containing Tempur-Sealy brand names.
Dkt. 35-2, Ex. B. Mattress Firm does not dispute that it
purchased AdWords; however, its representative claims that it
has at least temporarily ceased this practice. Dkt. 49 at 36;
Dkt. 55 at 8. Mattress Firm counters that Tempur-Sealy
purchases AdWords containing the trademarked brand name
“Mattress Firm.” Dkt. 38, Exs. A (Goodman Dec.),
A-1, A-2; B (Hochman Dec.); Dkt. 42 at 22, 30.
Sleep Experts Web Page
subject of the third motion for preliminary injunction is the
Sleep Experts Web Page. Dkts. 60; 60-1 (Fine Dec.).
Tempur-Sealy alleges that this website has content on the
“Sale” tab that uses the Tempur-Pedic logo
combined with an advertisement that says “Get $300 in
accessories.” Dkt. 60-1 at 2. Further, Tempur-Sealy
alleges that when a user selects the “click here”
button under the Tempur-Pedic logo, it brings up another
website that sells competing mattress brands. Id.
Finally, Tempur-Sealy alleges Mattress Firm purchased AdWords
for various phrases that include “Tempur” and
“Sealy” to direct traffic to the Sleep Experts
Web Page. Id.
seeking a preliminary injunction pursuant to Rule 65 of the
Federal Rules of Civil Procedure must demonstrate four
elements: (1) a substantial likelihood of success on the
merits; (2) a substantial threat of irreparable injury if the
injunction is denied; (3) that the threatened injury
outweighs any prejudice the injunction might cause the
defendant; and (4) that the injunction will not disserve the
public interest. Bluefield Water Ass'n, Inc. v. City
of Starkville, Miss., 577 F.3d 250, 252-53 (5th Cir.
2009); Affiliated Prof'l Home Health Care Agency v.
Shalala, 164 F.3d 282, 285 (5th Cir. 1999). Injunctive
relief, particularly at the preliminary stages of litigation,
is an extraordinary remedy that requires an unequivocal
showing of the need for the relief to issue. Valley v.
Rapides Parish Sch. Bd., 118 F.3d 1047, 1050 (5th Cir.
1997). Thus, injunctive relief should only be granted where
the movant has “clearly carried the burden of
persuasion.” Bluefield Water Ass'n, 577
F.3d at 252-53; Anderson v. Jackson, 556 F.3d 351,
360 (5th Cir. 2009).
prevail on a claim of trademark infringement under the Lanham
Act, the plaintiff must show: (1) it possesses a valid mark;
and (2) the defendant's use of its trademarks creates a
likelihood of confusion as to source, affiliation, or
sponsorship. Elvis Presley Enters., Inc. v. Capece,
141 F.3d 188, 193 (5th Cir. 1998). However, “mere
reproduction of a trademark does not constitute trademark
infringement if there is no likelihood of confusion.” 4
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 25:28 (4th ed. 2009). And,
“likelihood of confusion” is not possible
confusion, it is probable confusion. Bd. of Supervisors
for LSU A&M Coll. v. Smack Apparel Co., 550 F.3d
465, 478 (5th Cir. 2008). In this respect, “[c]ontext
is especially critical, ” and a court is required to
“consider the marks in the context that a customer
perceives them in the marketplace.” Scott Fetzer
Co. v. House of Vacuums Inc., 381 F.3d 477, 485 (5th
mark is used in advertisement, the court must consider the
“digits of confusion” in assessing whether the
advertising “creates a likelihood of confusion as to
affiliation or endorsement.” House of Vacuums
Inc., 381 F.3d at 483 (citing Pebble Beach Co. v.
Tour 18 I Ltd., 155 F.3d 526, 537 (5th Cir. 1998),
abrogated on ...