United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER ON MOTIONS FOR SUMMARY
KEITH P. ELLISON UNITED STATES DISTRICT JUDGE.
a trademark infringement case between two companies that
deliver, service and remove on-site portable toilets,
dumpster units, and restroom trailers. Pending before the
Court are both parties' motions for summary judgment, as
well as the Defendant's motion to strike. (Doc. Nos. 29,
30 and 43.) After considering the motions, responses, oral
argument, and the applicable law, the Court finds that it
must grant Plaintiffs' motion for summary judgment and
grant in part and deny in part Defendant's motions for
summary judgment and to strike.
Texas Outhouse and Gainsborough Waste were founded in 1994.
They advertise through word of mouth and “visual
recognition of the Texas Outhouse brand.” Specifically,
their portable toilets are beige units with green doors that
bear the “iconic State of Texas mark on the front and
sides.” (Doc. No. 1 ¶ 17.) Plaintiffs claim they
began using their mark in 2008 and registered it with the
U.S. Patent and Trademark Office (“PTO”) as Reg.
No. 4, 884, 106 on January 12, 2016. (Doc. No. 1 ¶ 20.)
Plaintiffs' registered State of Texas mark is pictured
below, and described as:
The mark consists of the shape of a red, segmented oval.
Within the oval is the shape of the state of Texas outlined
in black. Inside the shape of the state of Texas, and
slightly protruding, is a star design in black and red. Over
the top of the shape of the state of Texas, and slightly
overlapping the top, is the word "Texas" in black.
Across the bottom of the shape of the state of Texas, and
slightly overlapping the bottom, is the word
"Outhouse" in black. Around the outside of the
shape of the state of Texas, and behind the words
"Texas" and "Outhouse" are the two red
lines that form the shape of the broken oval. (Doc. No. 1-4.)
Texas Waste began operating in 1999 under the name
"Fresh Can." In 2013, Defendant changed its name to
Texas Waste Co. and designed its current logo. At that time,
its portable toilet inventory included various colors. Since
2013, Defendant has purchased light blue and tan portable
toilets. It has few green portable toilets, and none that is
tan with a green door. In 2013, Defendant ordered 250 oval
stickers; all of its other stickers are square shaped. (Doc.
No. 12 ¶¶ 15-38.) Texas Waste's logo is
pictured below, and the picture on the right reflects its
logo on one of the oval stickers.
companies operate in the Houston area. (Doc. Nos. 1, 12.)
Plaintiffs filed this suit alleging trademark and trade dress
infringement and dilution, in violation of state and federal
law. (Doc. No. 1.) Defendant denies all claims and responded
with counterclaims, seeking cancellation of Plaintiffs'
judgment is proper when there is no genuine dispute as to any
material fact and the moving party is entitled to judgment as
a matter of law. Fed.R.Civ.P. 56(a). A genuine issue of
material fact exists if a reasonable jury could enter a
verdict for the non-moving party. Crawford v. Formosa
Plastics Corp., 234 F.3d 899, 902 (5th Cir. 2000). The
court can consider any evidence in “the pleadings,
depositions, answers to interrogatories, and admissions on
file, together with the affidavits, if any.”
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
The Court must view all evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Crawford, 234 F.3d at 902.
party moving for summary judgment bears the burden of
demonstrating the absence of a genuine dispute of material
fact. Kee v. City of Rowlett, 247 F.3d 206, 210 (5th
Cir. 2001). If the moving party meets this burden, the
non-moving party must go beyond the pleadings to find
specific facts showing that a genuine issue of material fact
exists for trial. Little v. Liquid Air Corp., 37
F.3d 1069, 1075 (5th Cir. 1994). Summary judgment is
appropriate if a party “fails to make a showing
sufficient to establish the existence of an element essential
to that party's case.” Celotex, 477 U.S.
plaintiff establishes Lanham Act liability by showing that
the defendant uses in commerce any word, term, name, symbol,
or device that is likely to cause confusion, or to cause
mistake about the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another
person. The analysis proceeds in two steps. The court first
considers whether the plaintiff has a protectable right in
the mark and then whether there is a likelihood of confusion
between the marks.” T-Mobile US, Inc. v. AIO
Wireless LLC, 991 F.Supp.2d 888, 903 (S.D. Tex. 2014)
(citing Paulsson Geophysical Servs., Inc. v. Sigmar,
529 F.3d 303, 309 (5th Cir.2008); Sec. Ctr., Ltd. v.
First Nat'l Sec. Ctrs., 750 F.2d 1295, 1298 (5th
Cir.1985); 15 U.S.C. § 1125(a)(1)(A)) (internal
quotation marks omitted).
many of the claims and counterclaims involve overlapping
issues, the court considers each in turn.
Defendant's Motion for Summary Judgment on
Federal Trademark Infringement of the ...