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Texas Outhouse Inc. v. Fresh Can, LLC

United States District Court, S.D. Texas, Houston Division

July 14, 2017

TEXAS OUTHOUSE INC, et al., Plaintiffs,
v.
FRESH CAN, LLC dba TEXAS WASTE, Defendant.

          MEMORANDUM AND ORDER ON MOTIONS FOR SUMMARY JUDGMENT

          HON. KEITH P. ELLISON UNITED STATES DISTRICT JUDGE.

         This is 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.

         I. BACKGROUND

         Plaintiffs 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.)

(Image Omitted)

         Defendant 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.

(Image Omitted)

         Both 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' trademark.

         II. LEGAL STANDARD

         A. Summary Judgment

         Summary 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.

         The 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. at 322.

         B. Lanham Act

         “A 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).

         III. ANALYSIS

         Although many of the claims and counterclaims involve overlapping issues, the court considers each in turn.

         A. Defendant's Motion for Summary Judgment on Plaintiffs' Claims

         1. Federal Trademark Infringement of the ...


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