IP Law Daily, TRADEMARK—N.D. Tex.: Mexican music promoter’s false association and unfair competition lawsuit over disputed mark dismissed, (Oct 9, 2025)

By Ravindra Kumar Singh, B.L.

A Mexican promoter failed to establish ownership of U.S. common law rights to the LOS YAGUARU DE ANGEL VENEGAS mark.

The federal district court in Dallas, Texas, dismissed a Mexican music promoter's trademark infringement, false association, and unfair competition lawsuit against the heirs and associates of the late co-founder of the band “Los Yaguaru de Angel Venegas.” The court found that the plaintiff failed to prove ownership of any U.S. common law rights in the disputed mark, a prerequisite to his Lanham Act and Texas unfair competition claims. Having dismissed those substantive claims with prejudice, the court also ruled that it lacked subject-matter jurisdiction to consider the remaining cancellation claim under 15 U.S.C. §1119, which is remedial rather than jurisdictional (Fitz v. Nuñez, No. 3:23-cv-02298-B (N.D. Tex. Oct. 8, 2025)).

Background. The dispute arises from a long-running feud over the rights to use the name of the Mexican cumbia band “Los Yaguaru de Angel Venegas.” The band was originally formed in the 1990s by brothers Angel and David Venegas Frias, who both performed in the group. Plaintiff Fitz, a music promoter based in Mexico, was connected to the band through his father, who in the 1990s entered into an exclusive representation agreement with Angel to promote the band. The agreement identified Angel as the band’s sole director and owner and granted Fitz’s father authority to promote the group’s performances in the United States. Fitz later assumed his father’s role, managing the band’s tours and online presence.

The defendants include Elizabeth Venegas Nuñez, daughter and executor of David Venegas’s estate, along with several musicians—Alejandro Aguilera Roman, Alexis Venegas, Edgar Melendez, Ascension Quiroz, and Peter Angel—who currently perform under the Los Yaguaru name in the United States. Nuñez holds U.S. Trademark Registration No. 6,150,283, covering the “Los Yaguaru de Angel Venegas” mark, originally obtained by David Venegas and later transferred to her as his heir.

The contested mark, “Los Yaguaru de Angel Venegas," has been used by musical groups in Mexico and the United States for decades. Fitz claimed ownership through a chain of title beginning with Angel Venegas, who allegedly assigned his rights to his stepdaughter, Viridiana Venegas Fabián, in 2009. Fabián, in turn, purportedly assigned those rights to Fitz in 2014. Fitz contended that both assignments transferred "all rights in Mexico and throughout the world," granting him exclusive use of the Los Yaguaru mark in the United States.

The defendants disputed this interpretation, arguing that the 2009 and 2014 assignments were limited to Mexican intellectual property registrations and did not transfer U.S. rights. They further contended that David’s 2012 U.S. trademark application, which later matured into Registration No. 6,150,283, was validly obtained and that the band’s ongoing performances in the U.S. under Nuñez’s authorization were lawful.

Fitz filed the present action in October 2023, asserting (1) false association under the Lanham Act, (2) Texas common law unfair competition, and (3) cancellation of the U.S. trademark registration, alleging that David's registration had been procured by fraud. Both parties moved for summary judgment. Fitz sought a declaration confirming his ownership and invalidating the registration. At the same time, the defendants argued that Fitz lacked ownership, that his claims were time-barred, and that no genuine factual dispute existed.

Ownership. The court’s analysis centered on whether the 2009 and 2014 assignments validly transferred U.S. common law trademark rights. Citing Rex Real Estate I, L.P. v. Rex Real Estate Exchange, Inc., 80 F.4th 607 (5th Cir. 2023), the court explained that a valid trademark transfer requires an assignment accompanied by goodwill, and that “strong evidence” of intent is necessary to establish ownership under common law. It further reiterated the territoriality principle, drawing from Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591 (5th Cir. 1985) and Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990), which holds that foreign and domestic trademark rights are distinct and non-transferable without specific reference.

The court found the 2009 assignment “plainly limited” to the Mexican trademark and copyright registrations. The agreement’s language referenced the marks “as granted in registrations” before Mexican authorities, and nothing in its text mentioned U.S. rights. The court rejected Fabián’s later declaration asserting a global transfer as inadmissible parol evidence inconsistent with the written document. The 2014 assignment from Fabián to Fitz similarly referenced only Mexican registrations and an alleged “application” before the USPTO that did not exist. Without an effective transfer of goodwill or express inclusion of U.S. rights, Fitz’s claim of ownership failed as a matter of law.

False association. Turning to Fitz’s Lanham Act claim, the court outlined that to succeed under Section 43(a), a plaintiff must demonstrate (1) ownership of a legally protectible mark and (2) a likelihood of consumer confusion. Quoting Streamline Production Systems, Inc. v. Streamline Manufacturing, Inc., 851 F.3d 440 (5th Cir. 2017), the court reiterated that ownership is an essential element.

Because Fitz could not prove ownership of any U.S. rights, he failed to establish the first element. The court further distinguished his case from Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), where a foreign mark owner succeeded under §1125(a) without U.S. sales by showing cross-border consumer deception. Fitz, by contrast, explicitly disclaimed reliance on his Mexican rights and alleged harm only to his U.S. business. Accordingly, he could not invoke Belmora’s theory of extraterritorial injury.

The court thus held that “no reasonable jury could conclude” that Fitz possessed any rights supporting his false association or unfair competition claims. These counts were dismissed with prejudice.

Unfair competition. The court applied the same reasoning to dismiss the Texas common law claim, noting that such claims “present essentially no difference in issues” from Lanham Act actions. Citing Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010), the court concluded that the absence of trademark ownership defeated both claims simultaneously.

Cancellation and jurisdiction. The court next addressed Fitz’s request to cancel Nuñez’s registration under 15 U.S.C. §1119. It clarified that the statute is remedial, not jurisdictional, and may only provide relief ancillary to a properly supported infringement claim. Relying on San Diego County Credit Union v. Citizens Equity First Credit Union, 65 F.4th 1012 (9th Cir. 2023) and Airs Aromatics, LLC v. Victoria’s Secret Stores Brand Mgmt., Inc., 744 F.3d 595 (9th Cir. 2014), the court held that once Fitz’s substantive claims were dismissed, no case or controversy remained.

Declining to follow Gerlach, Inc. v. Gerlach Maschinenbau GmbH, 619 F. Supp. 3d 811 (N.D. Ohio 2022), which had allowed jurisdiction to persist post-dismissal, the court cited Chafin v. Chafin, 568 U.S. 165 (2013) and Nike, Inc. v. Already, LLC, 663 F.3d 89 (2d Cir. 2011) for the principle that jurisdiction must subsist throughout litigation. As a result, the court dismissed the cancellation claim due to a lack of subject-matter jurisdiction.

The Case is No. 3:23-cv-02298-B.

Judge: Boyle, J.

Attorneys: David G. Gamble (Law Offices of David G. Gamble PLLC) for Zeferino Ocampo Fitz. Darin M. Klemchuk (Klemchuk PLLC) for Elizabeth Venegas Nunez.

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