Wilson v. Tessmer Law Firm, PLLC
| Decision Date | 05 August 2020 |
| Docket Number | NO. 5:18-CV-1056-DAE,5:18-CV-1056-DAE |
| Citation | 483 F.Supp.3d 416 |
| Parties | Melissa A. WILSON, Plaintiff, v. TESSMER LAW FIRM, PLLC, and Heather C. Tessmer, Defendants. |
| Court | U.S. District Court — Western District of Texas |
Brandon Taylor Cook, John C. Cave, Gunn Lee & Cave, P.C., San Antonio, TX, for Plaintiff.
Jack Daniel Harkins, Ryan D. Borelo, Dykema Gossett PLLC, San Antonio, TX, Sherri A. Wilson, Denko & Bustamante LLP, Austin, TX, for Defendants.
ORDER GRANTING PLAINTIFF'S MOTIONS FOR SUMMARY JUDGMENT IN PART, DENYING PLAINTIFF'S MOTIONS FOR SUMMARY JUDGMENT IN PART, AND DENYING DEFENDANTS’ CROSS MOTIONS FOR SUMMARY JUDGMENT
The matters before this Court are Melissa A. Wilson's ("Plaintiff") multiple Motions for Summary Judgment as well as Tessmer Law Firm and Heather Tessmer's (collectively "Defendants") cross motions for summary judgment. (Dkts. # 38, 39, 40, 42, 43, 52.) The Court held a hearing on this matter on July 7, 2020. At the hearing, Brandon Taylor Cook, Esq. represented Plaintiff and Jack Daniel Harkins, Esq. represented Defendants. After careful consideration of the memoranda in support of and in opposition to the motions, the Court—for the reasons that follow—GRANTS IN PART AND DENIES IN PART Plaintiff's and Defendants’ various motions for summary judgment.
This case concerns the use of two almost identical sayings that two different law firms use to advertise legal services.1 Plaintiff is an attorney and founder of Advocate Law Firm, P.A., based in Bartow, Florida. (Dkt. # 1 at 2.) She alleges that she has continuously used the federal trademark EVER ARGUED WITH A WOMAN? ("Mark") in conjunction with providing and advertising legal services since at least as early as September 12, 2007. (Dkt. # 39 at 1.)
Plaintiff's application serial no. 85/496797 was initially rejected by the United States Patent and Trademark Office on the basis EVER ARGUED WITH A WOMAN? was confusingly similar to an existing trademark registration no. 3,567,019 for EVER ARGUE WITH A WOMAN? (the " ‘019 Registration"), then owned by Schroder Joseph & Associates ("SJA") and in use since January 2008. (Id. at 2.) On or around April 17, 2013, Plaintiff reached an agreement with SJA wherein SJA assigned the ‘019 Registration and all corresponding goodwill and rights it had in the Mark to Plaintiff. (Id. ) Plaintiff, in return, licensed SJA to use the Mark in New York. (Id. ) On April 17, 2013, Plaintiff filed a notice of the assignment with the USPTO indicating the ‘019 Registration had been assigned to Plaintiff. (Id. ) Additionally, Plaintiff's application Serial No. 85/496797 registered on the USPTO Principal Register as U.S. Trademark Registration No. 4,570,573 on July 22, 2014 ("the ‘573 Registration"). (Id. ) The ‘573 Registration is currently live on the USPTO principal register. (Id. ) The ‘019 Registration inadvertently cancelled on August 28, 2015, due to failure to submit necessary paperwork and fees to maintain the registration. (Id. )
Plaintiff uses the Mark on her website, social media accounts, in billboard advertisements, business cards, and various promotional items such as water bottles, koozies, key chains, pens, and tote bags. (Id. ) Plaintiff also licensees the Mark to licensees in various other states, including SJA, who use the Mark in conjunction with the offering of legal services. (Id. )
Heather Tessmer started the Tessmer Law Firm in San Antonio, Texas in 2005 and is its sole owner. (Dkt. # 42 at 1.) In or around the middle of November 2011, Defendants selected the Mark to be posted on a billboard. (Id. at 3.) When Defendants first adopted and started using the Mark, Defendants claim they were not aware of anybody else using that tagline or slogan or a similar tagline or slogan in connection with legal services in Texas or anywhere else in the United States. (Id. ) On December 5, 2011, the first billboards with the Mark were posted by Clear Channel Outdoor in and around San Antonio, Texas. (Id. ) Defendants state that the Mark has been used to advertise and provide Defendants’ legal services throughout the State of Texas. (Id. at 4.) They state they have continuously used the mark on billboards and other online advertising platforms and in connection with their commercial activities since its initial use in 2011. (Id. ) On or around April 2, 2018, the Defendants filed for and obtained a Certificate of Registration for the Mark for legal services with the Texas Secretary of State on May 23, 2018, Texas Registration No. 802981081. (Id. )
Plaintiff alleges she sent Defendants an email on or around July 8, 2014, notifying Defendants of Plaintiff's trademark rights in the Mark and objecting to Defendants’ use of the Mark. (Dkt. # 1 at 4.) Plaintiff filed a Complaint with this Court on October 9, 2018, alleging trademark infringement and unfair competition. (Dkt. # 1.) Plaintiff then filed several motions for summary judgment on December 20, 2019. (Dkts. ## 38, 39, 40.) Defendants responded and cross moved for summary judgment on January 3, 2020. (Dkts. ## 42, 43, 44.) Plaintiff also filed an additional motion for summary judgment on January 17, 2020. (Dkt. # 52.) There are also two motions to strike summary judgment evidence before the Court. (Dkts. ## 41, 56.)
"Summary judgment is appropriate only if ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.’ " Vann v. City of Southaven, 884 F.3d 307, 309 (5th Cir. 2018) (citations omitted); see also Fed. R. Civ. P. 56(a). "A genuine dispute of material fact exists when the ‘evidence is such that a reasonable jury could return a verdict for the nonmoving party.’ " Bennett v. Hartford Ins. Co. of Midwest, 890 F.3d 597, 604 (5th Cir. 2018) (quoting Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). "The moving party ‘bears the initial responsibility 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.’ " Nola Spice Designs, L.L.C. v. Haydel Enter., Inc., 783 F.3d 527, 536 (5th Cir. 2015) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).
"Where the non-movant bears the burden of proof at trial, ‘the movant may merely point to the absence of evidence and thereby shift to the non-movant the burden of demonstrating ... that there is an issue of material fact warranting trial.’ " Kim v. Hospira, Inc., 709 F. App'x 287, 288 (5th Cir. 2018) (quoting Nola Spice Designs, 783 F.3d at 536 ). While the movant must demonstrate the absence of a genuine issue of material fact, it does not need to negate the elements of the nonmovant's case. Austin v. Kroger Tex., L.P., 864 F.3d 326, 335 (5th Cir. 2017) (quoting Little v. Liquid Air Corp., 37 F.3d 1069, 1076 n.16 (5th Cir. 1994) ). A fact is material if it "might affect the outcome of the suit." Thomas v. Tregre, 913 F.3d 458, 462 (5th Cir. 2019) (citing Anderson, 477 U.S. at 248, 106 S.Ct. 2505 ).
"When the moving party has met its Rule 56(c) burden, the nonmoving party cannot survive a summary judgment motion by resting on the mere allegations of its pleadings." Jones v. Anderson, 721 F. App'x 333, 335 (5th Cir. 2018) (quoting Duffie v. United States, 600 F.3d 362, 371 (5th Cir. 2010) ). The nonmovant must identify specific evidence in the record and articulate how that evidence supports that party's claim. Infante v. Law Office of Joseph Onwuteaka, P.C., 735 F. App'x 839, 843 (5th Cir. 2018) (quoting Willis v. Cleco Corp., 749 F.3d 314, 317 (5th Cir. 2014) ). "This burden will not be satisfied by ‘some metaphysical doubt as to the material facts, by conclusory allegations, by unsubstantiated assertions, or by only a scintilla of evidence.’ " McCarty v. Hillstone Rest. Grp., Inc., 864 F.3d 354, 357 (5th Cir. 2017) (quoting Boudreaux v. Swift Transp. Co., 402 F.3d 536, 540 (5th Cir. 2005) ). In deciding a summary judgment motion, the court draws all reasonable inferences in the light most favorable to the nonmoving party. Wease v. Ocwen Loan Servicing, L.L.C., 915 F.3d 987, 992 (5th Cir. 2019).
On 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. See id.
Additionally, at the summary judgment stage, evidence need not be authenticated or otherwise presented in an admissible form. See Fed. R. Civ. P. 56(c) ; Lee v. Offshore Logistical & Transp., L.L.C., 859 F.3d 353, 355 (5th Cir. 2017). However, "[u]nsubstantiated assertions, improbable inferences, and unsupported speculation are not sufficient to defeat a motion for summary judgment." United States v. Renda Marine, Inc., 667 F.3d 651, 655 (5th Cir. 2012) (quoting Brown v. City of Hous., 337 F.3d 539, 541 (5th Cir. 2003) ).
Plaintiff moves for summary judgment on Defendants’ laches, estoppel, acquiescence, and waiver affirmative defenses (Dkt. # 38); on her trademark infringement claim (Dkt. # 39); on Defendants’ junior user defenses (Dkt. # 40); and...
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