United States District Court, W.D. Texas, Austin Division
PITMAN, UNITED STATES DISTRICT JUDGE.
the Court are cross-motions for summary judgment filed by
Plaintiff Gorgeous Gals, LLC d/b/a Hey Gorgeous, (Dkt. 25),
and by Defendant Hey Gorgeous! Spa & Wellness, LLC, (Dkt.
28). Having reviewed the filings, the relevant law, and the
factual record, the Court issues the following order.
2012, Plaintiff has offered spa services in Austin, Texas,
using its HEY GORGEOUS mark (the “Mark”).
(Pl.'s Mot. Summ J., Dkt. 25, at 1). Defendant, since
2013, has offered spa services in San Antonio, Texas, through
its business Hey Gorgeous! (Def.'s Mot. Summ. J., Dkt.
28, at 3). The two businesses are approximately 100 miles
away from each other. (Id.). Plaintiff has a Texas
trademark registration for HEY GORGEOUS under Reg. No.
801764907. (Pl.'s Mot. Summ. J., Dkt. 25, at 5).
sued Defendant on July 25, 2016, claiming trademark
infringement and unfair competition under the Lanham Act, as
well as trademark infringement, unfair competition, and
unjust enrichment under Texas common law. (Compl., Dkt. 1, at
1). Plaintiff filed its Motion for Summary Judgment on July
18, 2017, (Dkt. 25), and Defendant filed its Motion for
Summary Judgment on August 10, 2017, (Dkt. 28).
STANDARD OF REVIEW
judgment is appropriate under Rule 56 of the Federal Rules of
Civil Procedure only “if the movant shows there is no
genuine dispute as to any material fact and that the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A dispute is genuine if the evidence is
such that a reasonable jury could return a verdict for the
nonmoving party. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 254 (1986).
party moving for summary judgment bears the initial burden of
“informing the district court of the basis for its
motion, and identifying those portions of [the record] which
it believes demonstrate the absence of a genuine issue of
material fact.” Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). If the moving party bears the burden of
persuasion at trial, it must also “support its motion
with credible evidence . . . that would entitle it to a
directed verdict if not controverted at trial.”
Id. at 331.
the movant carries its initial burden, the burden shifts to
the nonmoving party to establish the existence of a genuine
issue for trial. Matsushita Elec. Indus. Co., Ltd. v.
Zenith Radio Corp., 475 U.S. 574, 585-87 (1986);
Wise v. E.I. Dupont de Nemours & Co., 58 F.3d
193, 195 (5th Cir. 1995). The non-movant must respond to the
motion by presenting evidence indicating there is a genuine
issue for trial. Miss. River Basin Alliance v.
Westphal, 230 F.3d 170, 174 (5th Cir. 2000). The parties
may satisfy their respective burdens by tendering
depositions, affidavits, and other competent evidence.
Topalian v. Ehrman, 954 F.2d 1125, 1131 (5th Cir.
1992). The Court views the summary judgment evidence in the
light most favorable to the non-movant. Rosado v.
Deters, 5 F.3d 119, 123 (5th Cir. 1993). “After
the non-movant has been given the opportunity to raise a
genuine factual issue, if no reasonable juror could find for
the non-movant, summary judgment will be granted.”
Westphal, 230 F.3d at 174.
cross-motions for summary judgment, the court examines each
party's motion independently, viewing the evidence and
inferences in the light most favorable to the nonmoving
party. White Buffalo Ventures, LLC v. Univ. of Tex. at
Austin, 420 F.3d 366, 370 (5th Cir. 2005).
“Cross-motions for summary judgment will not, in and of
themselves, warrant the granting of summary judgment unless
one of the parties is entitled to judgment as a matter of law
. . . .” Joplin v. Bias, 631 F.2d 1235, 1237
(5th Cir. 1980). Each party may move for summary judgment
using different legal theories that rely on different sets of
material facts. Bricklayers, Masons & Plasterers
Int'l Union of Am. v. Stuart Plastering Co., 512
F.2d 1017, 1023 (5th Cir. 1975). Nonetheless, cross-motions
for summary judgment may be probative of the absence of a
factual dispute when they reveal a basic agreement concerning
what legal theories and material facts are dispositive.
prevail on its claim of trademark infringement under the
Lanham Act, Plaintiff must establish: (1) it possesses a
legally protectable trademark and (2) Defendant's use of
this trademark “‘creates a likelihood of
confusion as to source, affiliation, or
sponsorship.'” Nola Spice Designs, L.L.C. v.
Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015).
The elements of common law trademark infringement under Texas
law are the same as those under the Lanham Act. Id.
(citing Hot-Hed, Inc. v. Safehouse Habitats (Scotland),
Ltd., 333 S.W.3d 719, 730 (Tex. App.-Houston [1st Dist.]
2010, pet. denied)). Additionally, with respect to
infringement, Defendant argues that it is an intermediate
junior mark user, which the Court addresses at the end of
Possession of a Legally Protectable Trademark
argues that (1) it has a Texas trademark registration for HEY
GORGEOUS; (2) it has used the Mark in commerce since early
2012; and (3) its Mark is entitled to protection from
infringement by junior users because its degree of
distinctiveness is fanciful or arbitrary and at the very
least suggestive. (Pl.'s Mot. Summ. J., Dkt. 25, at 5-7).
Defendant counters that the Mark is generic and therefore not
protected. (Def.'s Mot. Summ. J., Dkt. 28, at 4-9).
Presumption of Validity
like a federal trademark, a Texas trademark registration
creates a statutory presumption of validity, which courts
have recognized. For example, in Igloo Products
Corporation v. Brantex, Inc., the Fifth Circuit
explained that there was a “‘presumption of
validity' in any trademark for which ‘a certificate
of registration is issued by the secretary of state under
this chapter.'” 202 F.3d 814, 818 (5th Cir. 2000)
(citing Tex. Bus. & Com. Code Ann. § 16.15)
(internal brackets omitted). Since Igloo was
decided, the Texas Legislature revised the trademark statute.
The new provision that addresses validity states, in relevant
§ 16.060. Record and Proof of Registration
* * *
(c) A certificate of registration issued by the secretary of
state under this chapter, or a copy of it certified by the
secretary of state, is admissible in evidence as prima facie
(1) the validity of the registration;
(2) the registrant's ownership of the mark; and
(3) the registrant's exclusive right to use the mark in
commerce in this state in connection with the goods or
services specified in the certificate, subject to any
conditions and limitations stated in the certificate.
Tex. Bus. & Com. Code Ann. § 16.060.
former provision, ...