Savage Tavern, Inc. v. Signature Stag, LLC
| Decision Date | 10 May 2022 |
| Docket Number | 5:21-CV-078-H |
| Parties | SAVAGE TAVERN, INC., Plaintiff, v. SIGNATURE STAG, LLC, Defendant. |
| Court | U.S. District Court — Northern District of Texas |
In a prior opinion granting the defendant a preliminary injunction in this trademark action, the Court detailed the facts and law that govern this case. To make a long story short, the plaintiff registered the defendant's trademark, then sued the defendant for trademark infringement. The Court concluded that the defendant, who is also the counterplaintiff, was almost certain to succeed on the merits because it owns the trademark at issue.
The defendant now moves for summary judgment, renewing many of the arguments it made when seeking its preliminary injunction. The plaintiff failed to respond and has not filed a motion or evidence of its own; it has raised no dispute of material fact. Having reviewed the unopposed motion, the record, and the law, the Court grants the defendant's motion in part. The plaintiff's trademark registration will be canceled, a permanent injunction issued, and the plaintiff shall recover its damages, costs, and fees-this qualifies as an “exceptional case” under the law. But because the Court cannot say that the defendant is entitled to judgment as a matter of law on its fraudulent-registration claim, the Court denies the motion as to that claim.
The Court's opinion and order granting a preliminary injunction (Dkt. No. 21) details the factual history of this case, so only a brief synopsis follows.
Signature Stag is a clothing store with locations in Lubbock and Midland. Dkt. No. 11 at 1-4. To promote its apparel in West Texas-where Texas Tech fans predominate-it designed a logo (“the Mark”) to affix to some of its products including hats and shirts. Id. at 3-4. The first item bearing the Mark was sold in 2016. Id.
Savage Tavern is a sports bar near Texas Tech's campus in Lubbock that opened in 2018. Dkt. No. 10 at 1-2. Throughout its existence, it used the same Mark as Signature Stag. See Dkt. No. 21 at 2-5.
In 2020, Savage Tavern registered the Mark as a trademark (No 6, 140, 413) with the Patent and Trademark Office. Dkt. No. 1 at 12. In doing so, it represented that it had the right to use the Mark and that it knew of no others who did. It also said that it first used the Mark in July 2017 (Dkt. No. 14 at 4), despite not opening until 2018. Dkt. No. 11 at 29.
Savage Tavern then sued Signature Stag for trademark infringement. Dkt. No. 1. Signature Stag answered, counterclaimed, and moved for a preliminary injunction. Dkt. Nos. 4; 5; 9. The Court granted the motion for a preliminary injunction and barred Savage Tavern from any and all uses of the Mark until the Court could resolve the merits. Dkt. No. 21. In doing so, the Court noted that trademarks are owned by the first person to use them in commerce, not the first person to register them with the PTO. Id. at 21-23. Since Savage Tavern offered no evidence of its use of the Mark before Signature Stag's first sale, Signature Stag was almost certain to prevail in showing that it is the Mark's true owner. Id.
Signature Stag then moved for summary judgment, seeking judgment in its favor, a permanent injunction, cancellation of Savage Tavern's registration, and attorney's fees. Dkt. No. 22. No response was filed. The motion is ripe nevertheless.
Summary judgment shall be granted when the record shows 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); Ragas v. Tenn. Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1998).
The substantive law determines which facts are material. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Here, that law is the Lanham Act and Texas's law of unfair competition. Fortunately, the two are identical in all relevant respects. Viacom Int'l v. IJR Cap. Invs., LLC, 891 F.3d 178, 184 (5th Cir. 2018). 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, 477 U.S. at 248. “Only disputes over facts that might affect the outcome of the suit under the governing laws will properly preclude the entry of summary judgment.” Id. Accordingly, disputed fact issues that are “irrelevant and unnecessary” cannot preclude entry of summary judgment. Id. When ruling on a motion for summary judgment, the Court is required to view all facts and inferences in the light most favorable to the nonmoving party and resolve all disputed facts in favor of the nonmoving party. Boudreaux v. Swift Transp. Co., Inc., 402 F.3d 536, 540 (5th Cir. 2005). Further, a court “may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000); Anderson, 477 U.S. at 254-55.
When a summary judgment movant will not have the burden of proof on a claim at trial, she can obtain summary judgment by pointing the Court to the absence of evidence on any essential element of the nonmovant's claim. See Celotex, 477 U.S. at 324-25. Once she does so, the nonmovant must go beyond his pleadings and designate specific facts demonstrating that there is a genuine issue for trial. See id. at 324; Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc). The nonmovant's failure to produce proof as to any essential element renders all other facts immaterial. See TruGreen Landcare, L.L.C. v. Scott, 512 F.Supp.2d 613, 623 (N.D. Tex. 2007) (Fitzwater, J.). Summary judgment is mandatory where the nonmovant fails to meet this burden. Little, 37 F.3d at 1076.
On the other hand, “if the movant bears the burden of proof on an issue, either because he is the plaintiff or as a defendant he is asserting an affirmative defense, he must establish beyond peradventure all of the essential elements of the claim or defense to warrant judgment in his favor.” Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir. 1986) (emphasis in original). “The court has noted that the ‘beyond peradventure' standard is ‘heavy.'” Carolina Cas. Ins. Co. v. Sowell, 603 F.Supp.2d 914, 923-24 (N.D. Tex. 2009) (Fitzwater, C.J.) (quoting Cont'l Cas. Co. v. St. Paul Fire & Marine Ins. Co., No. 3:14-CV-1866-D, 2007 WL 2403656, at *10 (N.D. Tex. Aug. 23, 2007) (Fitzwater, J.)).
Once the movant has made an initial showing that there is no evidence to support the nonmovant's case, the nonmovant must come forward with competent summary judgment evidence of the existence of a genuine dispute of material fact. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Mere conclusory allegations are not competent summary judgment evidence and thus are insufficient to defeat a motion for summary judgment. Eason v. Thaler, 73 F.3d 1322, 1325 (5th Cir. 1996). Neither are unsubstantiated assertions, improbable inferences, and unsupported speculation. See Forsyth v. Barr, 19 F.3d 1527, 1533 (5th Cir. 1994). And a party may not rely on inadmissible hearsay in opposing a motion for summary judgment. See Bellard v. Gautreaux, 675 F.3d 454, 460-61 (5th Cir. 2012).
“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 or her claim.” Ragas, 136 F.3d at 458. “A failure on the part of the nonmoving party to offer proof concerning an essential element of its case necessarily renders all other facts immaterial and mandates a finding that no genuine issue of fact exists.” Adams v. Travelers Indem. Co. of Conn., 465 F.3d 156, 164 (5th Cir. 2006) (internal quotation marks omitted). If the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to its case and on which it will bear the burden of proof at trial, summary judgment must be granted. Celotex, 477 U.S. at 322-23. And “[w]hen the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Matsushita Elec. Indus., 475 U.S. at 586 (cleaned up).
Local Rule 7.1(e) states that “[a] response and brief to an opposed motion must be filed within 21 days from the date the motion is filed.” Signature Stag filed its motion on April 4. That means that Savage Tavern had until April 25 to file its response. It failed to do so, making Signature Stag's motion unopposed. Eversley v. MBank Dallas, 843 F.2d 172, 174 (5th Cir. 1988). When the nonmoving party fails to respond, the Court treats the moving party's facts as “undisputed for the purposes of the motion.” Fed.R.Civ.P. 56(e)(2); Eversley, 843 F.2d at 174. Nevertheless, the Court must conduct the Rule 56 analysis described above. Hibernia Nat'l Bank v. Administracion Central S.A., 776 F.2d 1277, 1279 (5th Cir. 1985). Because Savage Tavern filed no response, all of Signature Stag's facts are undisputed.
Whether Signature Stag is entitled to summary judgment is not a difficult question. Savage Tavern dragged Signature Stag into Court believing that it owned the Mark. Well-established trademark law and Signature Stag's unrebutted evidence should have disabused it of that notion in the earliest days of this case. But even without the facts or the law on its side, Savage Tavern persisted in its quixotic efforts through hyperbole and misapprehension. It should have thrown in the towel long ago.
To prove unfair competition under the Lanham Act, Signature Stag must prove that the Mark...
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