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Buc-ee’s and Choke Canyon settle

Our long animal mascot-based intellectual property litigation nightmare is finally over.

Popular Texas convenience store chain Buc-ee’s and Choke Canyon, a competing store that was found by a federal jury to infringe Buc-ee’s beaver logo, agreed Thursday to dismiss the lawsuit, meaning the damages portion of the trial won’t take place.

The damages portion of the trial was slated to begin in May 2019, but according to court records the parties attended mediation on Oct. 9 and entered a settlement agreement resolving all outstanding claims. On May 22, jurors found in favor of Buc-ee’s on all claims after hearing four days of testimony, agreeing Choke Canyon’s logo of a cartoon alligator wearing a cowboy hat was too similar to Buc-ee’s logo of a cartoon beaver wearing a baseball cap.

Charles Hanor, who represents Choke Canyon, told Law360 on Thursday the terms of the settlement are confidential and declined to comment further. Buc-ee’s general counsel, Jeff Nadalo, issued a statement to Law360 that the settlement meant Choke Canyon “surrendered its federal trademark registration of the offending logo, removed all offending logos and products and has paid substantial damages to Buc-ee’s.”

In the joint stipulated dismissal filed by the parties in federal court in Houston on Thursday, the stores told the court they had agreed to dismiss with prejudice all remaining claims.

“The permanent injunction the court entered on Aug. 3, 2018 will remain in full effect,” the brief filing reads. “Buc-ee’s and Choke Canyon each shall bear their own costs, expenses and attorneys’ fees.”

That injunction, issued by U.S. District Judge Keith P. Ellison, bars Choke Canyon from using its cartoon alligator logo on store-branded products, in advertising, or in any other capacity — including color and black-and-white versions of the logo, and versions of the logo with and without Choke Canyon text surrounding the mascot.

Hanor had told Law360 at the time it would cost Choke Canyon more than $100,000 to comply with the judge’s order. Choke Canyon has already put to use a new logo, this one featuring a cartoon cowboy who is winking and wearing a cowboy hat.

See here, here, and here for some background. For you law nerds, the case is Buc-ee’s Ltd. v. Panjwani et al., case number 4:15-cv-03704, in the U.S. District Court for the Southern District of Texas. Choke Canyon had been planning to appeal, based on some evidence the judge didn’t allow and other factors, but in the end decided this was the better way to go. I wish them the best of luck in their non-animal-logo future.

Buc-ee’s wins in court

That was quick.

After about six hours of deliberation, a jury in Houston found Tuesday that Choke Canyon company’s alligator logo violated state and federal trademark law, infringing on the pre-established Buc-ee’s beaver mark established by the popular Texas road stop chain.

“It’s absolutely not about a beaver versus an alligator,” said Jeff Nadalo, general counsel for Buc-ee’s Ltd. “There are more than 10 similarities between the two marks that we presented to the jury in this case.”

[…]

The judge asked the lawyers to meet and try to hammer out an injunction on how to deal of trademarked materials that violate the jury’s finding.

The damages phase of the trial remains pending.

See here for the background, and here for a later version of the story. Six hours of deliberation for a week-long trial is pretty darned quick. I may have been skeptical based on my view of the two logos, but I wasn’t there in court and neither were you. We’ll see what the damages look like.

Beaver v alligator

It’s a roadside rest stop animal logo legal smackdown, and it’s off to the jury.

Buc-ee’s, a popular chain of Texas pit stops, fought hard to build its reputation and wants a San Antonio-based competitor to stop “riding its coattails” by using a logo that confuses highway travelers into pulling off at a rival business, the company’s lawyer told jurors in his closing statement Monday in Houston.

“We don’t want to put Choke Canyon out of business,” said Buc-ee’s lawyer, Tracy Richardson, poised between poster boards displaying similarly colored T-shirts, beer koozies and plastic grocery bags with the animal logos from the two rival chains. Buc-ee’s just wants Choke Canyon’s owner to curtail what it views as an unfair ad campaign: “We just want him to stop using the logo.”

Richardson and the lead attorney for Choke Canyon offered closing pitches to jurors before they began deliberations Monday afternoon, following a week of testimony about the dueling roadside travel centers in a federal trademark case before U.S. District Judge Keith P. Ellison. The jury of three women and nine men will resume deliberations Tuesday.

The lawsuit brought by mega-chain Buc-ee’s claims that Choke Canyon’s alligator logo, posed against a circular yellow backdrop, is too similar to the buck-toothed beaver that is synonymous with its 33 gas stops. The Buc-ee’s chain, headquartered in Lake Jackson, also contends that Choke Canyon illegally mimicked its in store offerings, including friendly service, ample stock and plentiful, clean bathrooms.

[…]

[Defense attorney Charles] Hanor said the two trademarks are quite different, as are the offerings. The alligator is advertising a chain that specializes in barbecue, he told jurors, noting that Buc-ee’s only complained in court about its road stop competitor when Choke Canyon sought to open a chain in New Braunfels, where Buc-ee’s also had operations.

Trademark law doesn’t give either company a hold on any one attribute of their logo. Instead, the jury will consider the strength of Buc-ee’s logo, the similarity between the two logos and the stores’ product lines and whether Choke Canyon set out to or actually did confuse customers with the overlap.

It’s a balancing act, the judge explained in his directions to the jury. The goals of trademark law are to protect the public from being misled, to protect the rights of businesses to identify themselves in public and to protect the public interest in fair competition, Ellison said.

See here for some background. Earlier stories from the trial are here, here, and here. As I said when news of the lawsuit first appeared, I think Buc-ee’s is stretching it here. Maybe it’s because I’ve never seen a Choke Canyon, but I don’t see how a reasonable person could confuse the two. That’s up to twelve jurors here in Houston to decide. I wish them luck.

Back to court for Buc-ee’s

They seem to do this a lot.

Buc-ee’s, the local convenience store chain known for clean restrooms, cheap gasoline and its cartoon beaver mascot, is trying to stop a Nebraska company from muscling in on the Texas market with plans to build stores called “Bucky’s,” the latest development in a decade-long dispute between the dueling convenience store chains with names that sound the same.

Eleven years ago, both companies filed for trademarks months apart to protect their growing companies. After a legal battle, the two reached a truce: Bucky’s in Nebraska agreed that the Texas firm could continue to use “Buc-ee’s” because the names, logos and market area of the two operators were different enough that consumers were not likely to be confused, according to the 2009 consent agreement.

The agreement allowed the two chains to co-exist because of their geographic distance, said Steve Levine, a trademark lawyer in Dallas. The peace lasted eight years until Bucky’s owner, Buck’s Inc. of Omaha, broke the truce with its Texas expansions plans.

“Bucky’s in Nebraska has really, really upped the ante by moving into Texas,” said Levine.

Buck’s has teamed up with developers to begin building at least six “Bucky’s” convenience stores within the next year, including locations in Houston and Nassau Bay, according to the lawsuit Buc-ee’s filed Tuesday in U.S. district court in Houston. Buc-ee’s alleges that Buck’s – which does business as Bucky’s in the Midwest -is trying to confuse the public by using a similar sounding name and is seeking a court order to stop the plans from moving ahead. Bucky’s has already bought property, applied for zoning permits and obtained liquor licenses for an unspecified number of stores, according to the lawsuit.

[…]

Buc-ee’s accuses its rival of trademark infringement and unfair competition. Shawn Bates, a commercial trial lawyer who handles trademark cases in Houston, said the case will likely revolve around the issue of consumer confusion. The question is where people who see a sign for “Bucky’s” will get off the highway believing they’re heading for a “Buc-ees” with its wide selection Texans’ favorite foods and Lone Star tchotchkes.

“In my mind when people say Buc-ee’s, they’re talking about the beaver” not how its spelled, said Bates a Buc-ee’s fan who stops at every opportunity for the honey pepper flavored jerky.

This is the third trademark lawsuit that Buc-ee’s has filed in recent years, in addition to their previous wrangling with Bucky’s. Who knew the interstate rest stop business was so contentious? This one I understand more than the earlier ones, as the potential for confusion between “Bucky’s” and “Buc-ee’s” seems clear to me. But as always, we’ll see what a jury makes of it.

Buc-ee’s files another logo lawsuit

That’s one litigious beaver.

Buc-ee’s has sued the San Antonio-based operator of Choke Canyon Travel Center for promoting its barbecue and other travel essentials with its grinning, lip-licking, hat-wearing, finger-pointing alligator. The alligator sits in a circle -much like Buc-ee’s beaver — and adorns a wide range of products, from sweet and salty snacks to bags of ice to tee shirts.

The alligator, however, doesn’t have a name.

[…]

The case, which was filed late last year, alleged that the Choke Canyon convenience store, along with Choke Canyon Bar-B-Q and Choke Canyon Exxon, infringed on Buc-ee’s trademark by copying the look and feel of the roadside retailer, which has grown to 27 locations across Texas. Choke Canyon has three locations in and around San Antonio. Neither the owner of Choke Canyon or his lawyer returned calls seeking comment.

Besides the logos, Buc-ee’s alleges that Choke Canyon copied several other features, including oversized bathrooms, numerous fuel pumps, ample parking and a similar looking soda station. Buc-ee’s first learned of its competitor in December when it began receiving inquiries from vendors and customers about the Choke Canyon Travel Center, according to the lawsuit.

U.S. District Judge Keith Ellison set the trial for early next year.

Buc-ee’s won its previous logo lawsuit, against a company that also used a beaver in its branding. I get the zeal to protect these images, but I gotta say, this one seems like a stretch to me. We’ll see what happens in court. Whatever does happen in that case, I’d prefer Buc-ee’s stick to suing competitors and suppliers, and not former employees who will be impoverished by the experience. Don’t make me feel dirty about using your clean bathrooms, Buc-ee’s.

“Space City” fight escalates

It’s getting real.

The Greater Houston Convention and Visitors Bureau is asking a federal judge to stop a rival comic convention from using the phrase “Space City” for its three-day festival scheduled for NRG Center over Memorial Day weekend.

The convention bureau filed a request Friday for a temporary restraining order to prevent Space City Comic Con from continuing to use the phrase the bureau trademarked 12 years ago to promote the city.

The bureau owns 50 percent of another comic convention, Comicpalooza. That show is scheduled for the George R. Brown Convention Center in mid-June.

U.S. District Judge Nancy F. Atlas heard the request at 3 p.m. Monday, but did not issue a ruling. The dispute has been brewing for months but reached the courthouse earlier this year when the bureau sued Space City Comic Con along with its owner George Comits over alleged trademark infringement. The bureau is seeking profits from previous shows in which Comits used “Space City” as part of its name.

That was the early story. The judge has since declined to issue the TRO to the Visitors Bureau.

Instead of a court order, she suggested a much simpler solution: adding a disclaimer on tickets and brochures that Space City Comic Con event is not affiliated with the Greater Houston Convention and Visitors Bureau.

“I’m not prepared to shut the conference down,” Atlas said.

[…]

The convention bureau calls Comicpalooza, which drew about 45,000 visitors last year, “Houston’s Official Comic Con.” In its request for a temporary restraining order, the bureau said the use of “Space City,” is causing irreparable harm to its business of promoting tourism, trade and conventions in the Houston area.

Not only will it likely cause public confusion, it will also destroy the bureau’s goodwill and reputation with its current and prospective customers, the convention bureau said in court documents.

During the hearing Monday, Atlas pointed out that the bureau’s arguments gave her pause, since many businesses already use “Space City,” a nod to Houston’s long-time connection to the space industry through NASA’s Johnson Space Center. She also questioned why the bureau waited so long to seek a restraining order after filing suit in February.

[Space City Comic Con owner George] Comits testified that the bureau won’t even put Space City Comic Con on its calendar of events because of its investment in Comicpalooza. Atlas was surprised to learn that the convention and visitors bureau had a financial interest in Comicpalooza. “Really?” she asked.

See here for the background. Judge Atlas has scheduled a hearing on the request for the TRO today at 8 AM, so we could have an answer to that part of the fight shortly. I personally remain lukewarm to the idea that “Space City” is a term that requires traademarking or that people will be confused by two different events at two different locations in two different months, but then considering how little information people have about other things, I can see an argument. I like the disclaimer suggestion and hope the two sides can work this out peacefully.

“Space City” trademark lawsuit

Fascinating.

Houston’s convention bureau is suing the operators of a popular local convention over the use of “Space City” in its name, claiming it infringes on a 12-year-old trademark.

The convention in question, Space City Comic Con, also happens to compete with a similar event that is half-owned by the Greater Houston Convention and Visitors Bureau itself. The bureau acquired a 50 percent stake in the more established Comicpalooza last September, spokesman A.J. Mistretta said.

Both events bring in television and film stars for appearances that attract thousands of autograph buyers. Fans come dressed as their favorite characters from science fiction, anime and super-hero fantasies to browse exhibits, purchase items from vendors and play video and table-top games. The fests charge comparable admission fees.

The convention bureau, which declined to discuss the case for this article, may believe it’s losing money if people are confused over which show is sponsored by the economic development arm of Houston, said Betsy Gelb, professor of marketing and entrepreneurship at the Bauer College of Business at the University of Houston. She agreed that if it managed to trademark “Space City,” it has every reason to defend it in court.

But, she added, “Does it help your image to do this?”

[…]

The convention bureau claims in its lawsuit in federal court in Houston that through its promotional efforts, “Space City” has become widely known in the United States and that Space City Comic Con is causing “irreparable harm” by using the trademarked name.

The bureau is seeking a court order to force the show to stop using “Space City.” The lawsuit also would require the company to give up any profits earned from using the trademark and stop competing unfairly against the bureau.

Gotta admit, in almost 30 years of living in Houston, I don’t think I’ve ever thought of it as “Space City”. Speaking as a longtime Rockets fan, on those occasions when I feel the need to attach a nickname to Houston, “Clutch City” is by far the most likely moniker to come to mind, however outdated that may be by now. “Bayou City” is a distant second. I get “Space City”, of course, and if the GHCVB thinks that has value and specific meaning, I won’t argue. It’s just not something that naturally occurs to me. My guess is that in the end the Space City Comic Con will rebrand itself and that will be the end of this. I don’t know that that will happen in time for this year’s Con, which as always happens over the Memorial Day weekend and for which marketing is underway. The Space City folks say on their Facebook page that they have not been contacted for comment about this, despite what the Chron story says, and they encourage their fans to contact the GHCVB to tell them what they think about this. So it could get quite contentious, but in the end I do think some kind of settlement will be reached. Taking this to a courthouse won’t be good for anyone but the lawyers.

Buc-ee’s wins logo legal challenge

Don’t mess with the beaver.

A lawsuit between two beaver-loving Texas-based businesses was dismissed before it even reached the courtroom, with the bigger company coming out victorious and the other left logo-less.

Back in early July the lawyers for popular Texas roadside chain Buc-ee’s filed a lawsuit against Frio River Grocery. Lawyers for Buc-ee’s argued in the initial suit that the signage and imagery used by the small store near the Frio River in Concan was a bit too close to what Buc-ee’s had been using for years, namely the cheerful beaver character and the color scheme.

Buc-ee’s is the brainchild of owners Beaver Aplin III and Don Wasek, based in Lake Jackson. They opened up a mega-store earlier this year between Houston and Galveston and have designs on opening many more in the coming few years.

The Frio River store complied with the Buc-ee’s camp and soon took down all of their suspect signage and promotional materials, according to Lake Jackson-based attorneys for Buc-ee’s, H. Tracy Richardson III and Jeff Nadalo.

“We got everything we asked for and they complied. The Frio Beaver is no more,” Richardson said Wednesday.

“We notified the court that we resolved it between ourselves and the other side never filed an answer to our suit,” Richardson says. Planned meetings in October and November never occurred and the judge in the case soon dismissed the case.

See here for the background. As the story notes, this is not Buc-ee’s first trip to the courtroom. They’re two for two so far. Beware the beaver, that’s all I’m saying.

Beaver versus beaver

It’s a trademark infringement lawsuit. What did you think I was referring to?

In the animal world it may be that no two beavers are the same but semi-aquatic rodent diversity does not extend to the world of the convenience store, at least according to Buc-ee’s.

The Texas-based legends of convenience store bathrooms and beef jerky have issued a trademark infringement lawsuit against beaver rivals Frio Beaver, a new store opened in Concan, Texas.

The suit, filed in federal court earlier this month, contends that the new store is attempting to trade off Buc-ee’s success by copying its logo and store concept.

[…]

In the animal world it may be that no two beavers are the same but semi-aquatic rodent diversity does not extend to the world of the convenience store, at least according to Buc-ee’s.

The Texas-based legends of convenience store bathrooms and beef jerky have issued a trademark infringement lawsuit against beaver rivals Frio Beaver, a new store opened in Concan, Texas.

The suit, filed in federal court earlier this month, contends that the new store is attempting to trade off Buc-ee’s success by copying its logo and store concept.

The Southeast Texas Record appears to have had the first report on this. You can judge for yourself how similar the two logos are and how likely a person might be confused by it. It’s not the first time Buc-ee’s has gotten litigious over a potential competitor it thought was too close to its own concept or design. TM Daily Post has more.

Forget the Alamo

At least, forget about using it in a slogan.

Even if it’s possible to get too drunk to remember the Alamo, the state agency that oversees the shrine says that’s nothing to brag about on a T-shirt or frilly undergarment.

A word play on the slogan “Remember the Alamo” has set off a fight between a local businessman and the Texas General Land Office, which assumed custodianship of the shrine nearly a year ago.

Through his company, Qwercky Ltd., Christopher Erck, owner of Swig Martini Bar and The Worm Tequila and Mescal Bar downtown, is seeking a trademark from the U.S. Patent and Trademark Office for the phrase, “I Can’t Remember the Alamo.”

The Land Office, in its first formal action to protect a state trademark on the phrase “The Alamo,” has argued the proposal is disparaging.

In a notice of opposition filed Wednesday, the Land Office argued the slogan dilutes the state’s trademark and denigrates the Alamo and men on both sides who died in the 1836 battle.

The “applicant’s mark disparages the deceased combatants of the Battle of the Alamo by communicating that their sacrifice was not worthy of memory or esteem,” the Land Office said in its opposition notice.

I don’t have a strong opinion on this. If we’re going to trademark “The Alamo”, it’s appropriate to protect that trademark. Seems a bit strange to me to have a trademark on “The Alamo”, but maybe that’s just my not-native-Texan-ness not understanding these things.

Jus’ what?

From the stupid lawyer tricks department:

Heights-area restaurant Jus’ Mac, which boasts a variety of gourmet macaroni-and-cheese dishes mixed with anything from jalapenos to pineapple to Doritos, is in a trademark disagreement with the McDonald’s Corp.

McDonald’s claims the “Mac” in the Houston-based restaurant’s name may be too similar to what it uses in some of its promotions and product names, such as the “Big Mac” sandwich, Jus’ Mac owner Kimberly Alvarez said.

Alvarez tried to trademark Jus’ Mac in October 2010 shortly after she opened its first location at the 2600 block of Yale Street.

[…]

[The Alvarezes] plan to build similar eateries throughout the Texas region.

A second location is slated to open in November in Sugar Land at Lexington Boulevard near First Colony Mall.

Alvarez said her attorneys submitted a proposal to include the phrase “a mac n’ cheese eatery” at the end of the restaurant’s name to resolve the squabble.

She hopes to hear something back from McDonald’s and the trademark division soon.

I guess Mattress Mac better watch himself. This all reminds me of the Star Bock saga, which at last report had turned out all right for the little guy, but only as long as he didn’t try to expand beyond his original location. If the Alvarezes are looking to franchise, that could be a problem for them. We’ll see how it goes.