IP Law Daily, TRADEMARK—S.D. Tex.: Texas restaurant barred from using TEXAS TAMALE mark, (Jun 6, 2024)

By Kevin M. Finson

The court previously held on summary judgment that the asserted marks were valid and infringed.

A seller of tamales was entitled to a permanent injunction against a competitor who infringed its marks, the U.S. District Court in Houston has held. The court previously found on summary judgment that the asserted marks were valid and infringed and all of the injunction factors supported issuance of a permanent injunction. Issues regarding damages and a request for attorney fees would be determined after a bench trial (Texas Tamale Co., Inc. v. CPUSA2, LLC, No. 4:21-cv-3341 (S.D. Tex. June 4, 2024)).

Texas Tamale Company, Inc. (Texas Tamale) brought suit for trademark infringement against CPUSA2, LLC, d/b/a Texas Long Star Tamales (Lone Star Tamales) for infringement of its registered marks TEXAS TAMALE and TEXAS TAMALE COMPANY. The court previously entered summary judgment finding that Texas Tamale was the owner of the marks and that they were infringed by Lone Star Tamales, but deferring ruling on the scope of injunctive relief, damages, and attorney fees. Texas Tamale moved for entry of final judgment under Rule 58, but the court held that there were still remaining issues to be resolved and accordingly treated the motion as one for summary judgment.

Permanent injunction. The court found that an injunction was the appropriate remedy to trademark infringement in this case. A defense of “fair use” raised by Lone Star Tamales arguing that it used the marks as a description of the variety of tamales it sold did not preclude an injunction and the court declined to revisit it after already rejecting that argument in its previous summary judgment order.

The court granted the injunction but narrowed Texas Tamale’s requested language by stripping out a prohibition on using the marks as keywords in targeting advertising, because the consensus of the Fifth Circuit district courts was that such use was not trademark infringement. It also rejected a prohibition on use of “any confusingly similar term” as vague and overbroad.

Damages. Texas Tamale sought a disgorgement of profits. Noting that the elements of this equitable remedy required showing an intent to confuse or deceive, among other things, the court held that the record was not sufficient to make such a determination on summary judgment. A bench trial with live testimony would be necessary.

Attorney fees. The court noted that it had yet to make any rulings on whether the infringement was willful, and that it believed allegations of unreasonable manner of litigation were the fault of Lone Star Tamales’ former counsel rather than of Lone Star Tamales itself. These fact questions required a trial, so summary judgment on whether the case was “exceptional” for attorney fee purposes was denied.

The Case is No. 4:21-cv-3341.

Judge: Bryan, C.

Attorneys: Steven G. Spears (Munck Wilson Mandala, LLP) for Texas Tamale Co., Inc. Darin Michael Klemchuk (Klemchuk LLP) for CPUSA2, LLC d/b/a Texas Lone Star Tamales.

Companies: Texas Tamale Co., Inc.; CPUSA2, LLC d/b/a Texas Lone Star Tamales

Cases: Trademark TexasNews