Reservoir, Inc. V. Truesdell

The person first using the trademark was granted ownership despite the fact that the other party had filed the trademark.

Opinion (Atlas): Reservoir, Inc (“Reservoir”) opened an establishment called Rebels Honky Tonk in Houston, TX in August, 2009. In November, 2009 Justin Truesdell (“Truesdell”) opened a similar establishment, called Rebels Honky Tonk, in Austin, TX. Reservoir sued Truesdell for trademark infringement. The two were formerly partners and Truesdell claimed that he had come up with the mark during the partnership and that because Truesdell had registered the name and logo first that Reservoir was the one infringing on a trademark. The court followed the Lanham Act in their analysis of the claims. The Court recognized two elements from the Lanham Act: that when a trademark infringement is alleged there must be (1) ownership in a legally prosecutable mark, and (2) a likelihood of confusion in the minds of potential customers caused by the infringer’s use of the mark. The Lanham Act also covers both registered and non-registered trademarks and ownership of a mark is established by use in the market and not by registration. Because Reservoir opened its establishment first, the Court ruled that Reservoir had used the mark in the marketplace first and was the first owner of the mark, by the priority of use doctrine. In analyzing the second prong the court found that both parties agreed that the marks were identical and that would lead to confusion. After finding that both elements were met, the Court GRANTED Reservoir’s Motion for Judgment on the Pleadings.