United States District Court, W.D. Texas, Austin Division
SPARKS SENIOR UNITED STATES DISTRICT JUDGE
REMEMBERED on this day the Court reviewed the file in the
above-styled cause, and specifically, Defendant
Bankrate's Motion for Partial Summary Judgment [#267],
Neutron Depot's Response [#269] in opposition, and
Bankrate's Reply [#270] in support. Having reviewed
the documents, the relevant law, and the file as a whole, the
Court now enters the following opinion and order.
a trademark infringement action. In 1993, CSi Agency
Services, Inc. (CSi) began using the phrase "Insurance
Depot" (the Mark) to advertise its insurance services,
and in 1994, the U.S. Patent and Trademark Office (USTPO)
issued a certificate of registration) issued CSi a
certificate of registration for use of the term
"Insurance Depot" as a service mark in promoting
insurance agency services. Mot. Sanctions [#218] Ex. A
(Maxwell Decl.) at 31-32.; id. [#218] Ex. A-4
(Certificate of Registration) at 42-44.
president and sole owner of CSi is Jim Maxwell. Id.
at 30. Maxwell also happens to be the manager and part owner
of another company, Neutron Depot. Id. In August
2013, in his capacity as president of CSi, Maxwell licensed
the Mark to Neutron Depot. Resp. Mot. Sanctions [#218] Ex. B-3
(License Agreement) at 73-78.
Bankrate is a consumer financial services company. One of
Bankrate's divisions-the insurance lead division-helps
insurance companies find prospective customers. Mot. Summ. J.
[#267-2] (Kent Report) at 7-15. To locate these prospective
customers, Bankrate uses millions of keywords in ads and web
pages to drive traffic to websites through which Bankrate
collects the contact information of prospective customers.
Id. Bankrate then sells this contact information-the
"lead"-to insurance companies. Id.
the millions of keywords used by Bankrate are generated by
algorithm, and at some point in 2010, Bankrate began using
the Mark as one of its keywords. Notice Filing [#266-1]
Rihtar Dep. Tr. at 70; Kent Report at 22-24 (explaining
process of keyword generation). Between 2010 and 2014,
Bankrate's use of keywords in ads and web pages generated
nearly 7.6 million leads. Rihtar Dep. Tr. at 70.
Bankrate's use of the Mark as a keyword was responsible
for generating, at most, seventy-three of these
2014-less than a year after licensing the Mark from
CSi-Neutron Depot filed this suit against Bankrate for
trademark infringement. Compl. [#1]. After Bankrate learned
of the lawsuit, it immediately removed all ads and webpages
containing the Mark, and, in December 2015, Bankrate sold off
its insurance lead division altogether. Rihtar Dep. Tr. at
119-22; Mot. Transfer [#149-1] Ex. A at 2. Though Neutron
Depot alleges it suffered "financial loss and loss of
goodwill" as a result of Bankrate's infringement,
Neutron Depot has not presented any evidence of lost sales or
other financial harm. Resp. Mot. Summ. J. [#269] at 12. In
fact, Neutron Depot does not seek actual damages in this
action at all-it seeks only to disgorge the profits Bankrate
earned by infringing on the Mark during the term of Neutron
Depot's license. Id.
prior orders, this Court dismissed Neutron Depot's claims
under §§32(1) and 43(c) of the Lanham Act as well
as its counterfeiting and state dilution claims. Order of
Nov. 30, 2017 [#246]; Order of March 12, 2018 [#265]. As a
result, Neutron Depot has only a single remaining claim,
brought under § 43(a)(1)(A) of the Lanham Act. Bankrate
now files a motion for partial summary judgment which is ripe
for review. Mot. Summ. J. [#267].
judgment shall be rendered when the pleadings, the discovery
and disclosure materials on file, and any affidavits show
that there is no genuine dispute as to any material fact and
that the moving party is entitled to judgment as a matter of
law. Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett,
477 U.S. 317, 323-25 (1986); Washburn v. Harvey, 504
F.3d 505, 508 (5th Cir. 2007). A dispute regarding a material
fact is "genuine" if the evidence is such that a
reasonable jury could return a verdict in favor of the
nonmoving party. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). When ruling on a motion for summary
judgment, the court is required to view all inferences drawn
from the factual record in the light most favorable to the
nonmoving party. Matsushita Elec. Indus. Co. v. Zenith
Radio, 475 U.S. 574, 587 (1986); Washburn, 504
F.3d at 508. Further, a court "may not make credibility
determinations or weigh the evidence" in ruling on a
motion for summary judgment. Reeves v. Sanderson Plumbing
Prods., Inc., 530 U.S. 133, 150 (2000);
Anderson, 477 U.S. at 254-55.
the moving party has made an initial showing that there is no
evidence to support the nonmoving party's case, the party
opposing the motion must come forward with competent summary
judgment evidence of the existence of a genuine fact issue.
Matsushita, 475 U.S. at 586. Mere conclusory
allegations are not competent summary judgment evidence, and
thus are insufficient to defeat a motion for summary
judgment. Turner v. Baylor Richardson Med. Ctr., 476
F.3d 337, 343 (5th Cir. 2007). Unsubstantiated assertions,
improbable inferences, and unsupported speculation are not
competent summary judgment evidence. Id. The party
opposing summary judgment is required to identify specific
evidence in the record and to articulate the precise manner
in which that evidence supports his claim. Adams v.
Travelers Indem. Co. of Conn., 465 F.3d 156, 164 (5th
Cir. 2006). Rule 56 does not impose a duty on the court to
"sift through the record in search of evidence" to
support the nonmovant's opposition to the motion for
summary judgment. Id.
disputes over facts that might affect the outcome of the suit
under the governing laws will properly preclude the entry of
summary judgment." Anderson, 477 U.S. at 248.
Disputed fact issues that are "irrelevant and
unnecessary" will not be considered by a court in ruling
on a summary judgment motion. Id. If the nonmoving
party fails to make a showing sufficient to establish the
existence of an element essential to its case and on which ...