United States District Court, S.D. Texas, Houston Division
STOCKDALE INVESTMENT GROUP INC. D/B/A STOCKDALE, Plaintiff,
STOCKDALE CAPITAL PARTNERS, LLC, et al, Defendants.
MEMORANDUM AND ORDER
KEITH P. ELLISON UNITED STATES DISTRICT JUDGE
a trademark infringement and unfair competition dispute
between Plaintiff Stockdale Investment Group d/b/a Stockdale
(“Plaintiff”) and Defendants, Stockdale Capital
Partners, LLC and its affiliated companies (collectively
“Defendants”), over the use of
“Stockdale.” Before the Court is Defendants'
Motion for Summary Judgment. (Doc. No. 34). After considering
the parties' filings, all responses and replies thereto,
oral argument, and the applicable law, the Court finds that
Defendants' Motion for Summary Judgment must be
is a real estate services company operating in Texas,
California, and North Carolina. (Doc. No. 53 at ¶15). It
focuses on the “real estate design, construction, and
property management space.” Id. It markets
itself as “Stockdale, ” and has operated
continuously under that name since its inception in 1989.
See (Doc. No. 41-4 at 117), (Doc. No. 53 at
¶15). “Stockdale” was chosen as a reference
to Stockdale, California, where the company was founded.
(Doc. No. 53 at ¶18). Plaintiff relocated its
headquarters to Texas in 2012. It registered the name
“Stockdale, LLC” and “Stockdale
Capital” with the Texas Secretary of State in 2014 and
2017, respectively. (Doc. No. 53 at ¶16). Plaintiff also
attempted to register “Stockdale” as a trademark
with the U.S. Patent and Trademark Office (the
“USPTO”), but was denied the registration in 2018
on the basis that “Stockdale” is primarily a
surname. (Doc. No. 34-8 at 2).
“are a family of real estate investment, development,
and management companies headquartered in Los Angeles.”
(Doc. No. 34-2 ¶4). Defendants have used the name
“Stockdale” continuously since their collective
inception in 2013. Id. at ¶6. Defendants
“are primarily focused on the acquisition and
development of real estate for commercial uses” and
seek investments from “ultra-high net worth
individuals.” Id. at ¶¶7, 9.
Defendants are also “involved in leasing and property
management operations, but only as it relates to themselves
for their own or their affiliates' properties.”
Id. Defendants “typically target investments,
acquisitions, and developments that are in the $50 [million]
to $200 [million] range, but up to $400 [million].”
Id. at ¶8. Defendants claim they were not aware
of Plaintiff prior to this claim and they maintain that
Plaintiff is not a competitor in the same marketplace.
Id. at ¶10.
learned of Defendants in 2017 after a broker from a real
estate investment firm contacted Plaintiff to inquire whether
they were involved in marketing a pending deal. (Doc. No.
41-1 at 112). The name “Stockdale” was on a list
of potential buyers. Id. Plaintiff was not in fact
involved with that deal.
August 2018, Plaintiff filed suit, alleging claims for relief
including trademark infringement under 15 U.S.C. §
1225(a), unfair competition under 15 U.S.C. § 1225(a),
and unfair competition under Texas common law. Plaintiff also
sought a permanent injunction, which the Court denied in
January 2019. Defendants now move for summary judgment.
Defendants contend that Plaintiff's mark,
“Stockdale, ” is not protectable because it is
merely descriptive as a surname or a geographical descriptor
and has not acquired secondary meaning. It further contends
that there is no likelihood of confusion between Plaintiff
and Defendants' marks.
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. Springboards to Educ.,
Inc. v. Hous. Indep. Sch. Dist., 912 F.3d 805, 811 (5th
Cir. 2019). 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 evidence and inferences must be viewed in the
light most favorable to the nonmoving party. Springboards
to Educ., 912 F.3d at 811.
moving party bears the burden of demonstrating the absence of
a genuine issue of material fact. Celotex, 477 U.S.
at 322-25. Once a movant meets this burden, the burden shifts
to the nonmovant to show the existence of a genuine fact
issue for trial. Id. at 321-25. In a trademark case,
“[a]lthough the secondary meaning of a mark and the
likelihood of confusion are ordinarily questions of fact,
summary judgment may be upheld if the summary judgment record
compels the conclusion that the movant is entitled to
judgment as a matter of law.” Bd. of Supervisors
for La State Univ. Agric. & Mech. Coll. v. Smack Apparel
Co., 550 F.3d 465, 474 (5th Cir. 2008) (internal
prevail on a trademark infringement claim under the Lanham
Act, 15 U.S.C. § 1051 et seq., a plaintiff must
show, first, ownership of a legally protectable mark and,
second, a likelihood of confusion created by an infringing
mark. All. for Good Gov't v. Coal. for Better
Gov't, 901 F.3d 498, 505 (5th Cir. 2018);
Paulsson Geophysical Servs, Inc. v. Sigmar, 529 F.3d
303, 309 (5th Cir. 2008). The Court addresses each in turn.
LEGALLY PROTECTABLE MARK
is protectable if it is distinctive, meaning it must be
“capable of distinguishing the applicant's goods
from those of others.” Amazing Spaces, Inc. v.
Metro Mini Storage, 608 F.3d 225, 237 (5th Cir. 2010)
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768 (1992)). An identifying mark can be distinctive
in one of two ways: it can be inherently
distinctive, or it can acquire distinctiveness
through “secondary meaning.” Id. at 237;
see also Wal-Mart Stores, Inc. v. Samara Bros, Inc.,
529 U.S. 205, 210-11 (2000).
determine whether a mark is distinctive, marks are often
classified into categories of generally increasing
distinctiveness: they may be (1) generic, (2) descriptive,
(3) suggestive, (4) arbitrary, or (5) fanciful. Two
Pesos, Inc., 505 U.S. at 768 (citing Abercrombie
& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9
(2d Cir. 1976)). The latter three categories of marks are
deemed inherently distinctive and are entitled to protection
because their intrinsic nature serves to identify a
particular source of a product. Id. By contrast,
generic marks “refer to the genus of which the
particular product is a species, ” and thus are never
registrable as trademarks. Id.
marks are not inherently distinctive because they merely
“identif[y] a characteristic or quality of an article
or service, such as its color, odor, function, dimensions, or
ingredients.” Pebble Beach Co. v. Tour 18 1
Ltd., 155 F.3d 526, 540 (5th Cir. 1998). A descriptive
mark can only be protectible when it has acquired secondary
meaning. Two Pesos, 505 U.S. at 769. As relevant
here, terms that are “primarily merely surnames”
or “primarily geographically descriptive” are
deemed to be descriptive and thus unprotectable absent a
showing of ...