United States District Court, E.D. Texas, Sherman Division
OGD EQUIPMENT CO. d/b/a OVERHEAD GARAGE DOOR, LLC, Plaintiff,
OVERHEAD DOOR CORPORATION, et al., Defendants.
MEMORANDUM ADOPTING REPORT AND RECOMMENDATION OF
UNITED STATES MAGISTRATE JUDGE
L. MAZZANT, UNITED STATES DISTRICT JUDGE
for consideration the report of the United States Magistrate
Judge in this action, this matter having been heretofore
referred to the Magistrate Judge pursuant to 28 U.S.C. §
636. On July 15, 2019, the report of the Magistrate Judge
(the “Report”) (Dkt. #80) was entered, containing
proposed findings of fact and recommendations that the
following motions be granted in part and denied in part:
1) Defendant Overhead Door Corporation's
(“Overhead”) Rule 12(b)(1) and 12(b)(6) Motion to
Dismiss Counts I-IV, and the Trademark-Related Claims in
Counts V-VI and VIII, of Plaintiff's First Amended
Complaint (“Overhead's Motion to Dismiss”)
(Dkt. #51); and
2) Defendant Overhead Door Company of Lubbock's
(“Overhead-Lubbock”) Motion to Dismiss
Plaintiff's First Amended Complaint for Lack of Subject
Matter Jurisdiction 12(b)(1), Failure to State a Claim Upon
Which Relief Can be Granted 12(b)(6), and for Judgment on the
Pleadings 12(c) (“Overhead-Lubbock's Motion to
Dismiss”) (Dkt. 55).
Overhead and Overhead-Lubbock shall be referred to
collectively as “Defendants, ” and the
above-referenced motions will be referred to collectively as
the “Motions to Dismiss.” Defendants filed
objections to the Report (the “Objections”)
(Dkts. 85, 87). The Court has made a de novo
review of the Objections and is of the opinion that the
findings and conclusions of the Magistrate Judge are correct
and the Objections are without merit as to the ultimate
findings of the Magistrate Judge. The Court hereby adopts the
findings and conclusions of the Magistrate Judge as the
findings and conclusions of the Court.
OGD Equipment Company d/b/a Overhead Garage Door, LLC
(“OGD”) is a Texas company, in the business of
residential and commercial door repair and installation.
See Dkt. #43 at 3. Defendant Overhead is a national
manufacturer, marketer, and distributor of residential and
commercial overhead doors. See id. at 4. Defendant
Overhead-Lubbock is a regional distributor for Overhead,
based in Lubbock, Texas. See id.
brings claims for: (Count I) violation of the Sherman Act, 15
U.S.C. § 2; (Count II) unfair competition under the
Lanham Act, 15 U.S.C § 1125(a); (Count III) unfair
competition under Texas common law. See Dkt. #43 at
25-29. OGD also seeks declaratory relief stating the
following: (Count IV) OGD does not infringe under 15 U.S.C.
§ 1114; (Count V) OGD does not unfairly compete under 15
U.S.C. § 1125(a); (Count VI) Overhead's trademark
and trade name is invalid and/or unenforceable as used by
Overhead; (Count VII) Overhead-Lubbock has no trademark
and/or trade name rights; and (Count VIII) OGD has not violated
state trademark and unfair competition laws. See id.
Report recommended OGD's Sherman Act claim against
Overhead and Overhead-Lubbock be dismissed. See Dkt.
#80 at 27. The Report further recommended dismissal of
OGD's Count VII, which seeks declaratory relief regarding
Overhead-Lubbock's trademark and/or trade name rights.
See id. at 28. The Report recommended the Motions to
Dismiss be denied as to all remaining claims. See
id. OGD filed no objections to the Report. No.
objections were filed to the Report's recommendation to
dismiss Count VII, regarding Overhead-Lubbock's trademark
and/or trade name rights. No. objections were filed to the
Report's recommendation to dismiss OGD's Sherman Act
claims as pled; however, Defendants' Objections argue OGD
should not have been granted leave to amend its Sherman Act
claim.See Dkt. #85; Dkt. #87. Defendants
further object to the Report's recommendation to deny the
Motions to Dismiss as to OGD's claims for unfair
competition under the Lanham Act, unfair competition under
Texas state law, and the remaining declaratory judgment
actions regarding Overhead's trademark
rights. See Dkt. #87.
argue: (1) OGD's requests for declaratory judgment should
be dismissed because there is no justiciable issue as to the
status of Overhead Door's trademarks; (2) OGD's
unfair competition claim should be dismissed because OGD
alleged no acts which give rise to a claim for unfair
competition; and (3) OGD should not have been granted leave
to amend its Sherman Act claim. See Dkt. #85; Dkt.
argue OGD's claims for declaratory judgment pursuant to
the trademark rights of the parties should be dismissed.
See Dkt. #87 at 2. Defendants' Objections
challenge the Magistrate Judge's findings and conclusions
that there is a justiciable controversy regarding the
trademark rights belonging to Overhead. See Dkt. #87
at 3. Defendants argue that this is an
“overreading” of the cease-and-desist letters
directed to OGD by Overhead. See id. The Court
disagrees. As the Magistrate Judge found, the
cease-and-desist letters sent by Overhead to OGD clearly
raise the issue of trademark infringement. See Dkt.
#43-9 at 3-5. The Court agrees with the Magistrate
Judge's findings that the letters are not so clear or
narrow as Defendants assert. To the contrary, the
cease-and-desist letters assert the right to use the terms
“overhead” and “overhead door” as
both a trade name and mark, and attach Overhead's
trademark registration; thus, the Court agrees with the
Magistrate Judge's finding that there is a justiciable
controversy between the parties regarding Overhead's
trademark, as well as trade name. See id. at 3-5,
10. Accordingly, the Court finds no error in the Magistrate
Judge's recommendation not to dismiss Counts IV, V, VI,
further argue the Magistrate Judge erred by recommending
Defendants' Motions to Dismiss OGD's claim for unfair
competition be denied because the Amended Complaint uses
“shotgun pleadings” to describe the allegations.
See Dkt. #85 at 4; Dkt. #87 at 4. As the Report
states, “OGD supports its allegations with specific
communications by Defendants in online advertising and
marketing and the creation and posting of a specific blog
entry by Overhead-Lubbock.” See Dkt. #80 at 22
(citing Dkt. #43 at 22). At this stage of proceedings, where
the parties have conducted only limited discovery, the Court
agrees with the Report's findings that OGD's
pleadings are sufficiently definite to state a claim for
relief against each Defendant.
also argue that the Report erred by finding OGD pled facts
which support OGD's unfair competition claim because the
Amended Complaint does not allege acts by Defendants which
would attempt to confuse consumers. See Dkt. #85 at
4; Dkt. #87 at 4. Upon review, the Court agrees with the
Magistrate Judge's conclusion that OGD has sufficiently
alleged its claim for unfair competition to survive the
Motions to Dismiss. See Dkt. #80. The allegations in
the Amended Complaint set forth a variety of conduct to
support OGD's claim for unfair competition, ranging from
Defendants' mischaracterization of OGD's location,
affiliations, and reputation, to Defendants' driving
consumer confusion about the source of the parties'
products, services, or businesses. See, for example,
Dkt. #43 at 28-29. Moreover, the Amended Complaint alleges
that Defendants' communications to consumers represent
that Defendants have the exclusive right to use the terms
“overhead” and “overhead door” in
connection with the distribution and retail sale of overhead
garage doors. See id. at 24. As the Magistrate Judge
concluded, the “parties claim contradictory rights to
use the Trade Names to describe their companies, products,
and services.” See Dkt. #80 at 16. Therefore,
the Court finds no error in the ...