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Bucee's Sues Super Fuels For Logo Trademark Infringement


TwiceHorn

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https://www.wfaa.com/article/news/local/buc-ees-suing-north-texas-gas-station-trademark-infringement/287-7c94f57c-d1f5-4157-a3bc-b324a3e0ebf0

I post this because it's kind of amusing and we seem to care about most things bucees and also as a PSA for potential trademark applicants.

People seem to always think of trademarks as logos, that is, graphics apart from words.  But they're wrong:  trademarks are words, first, and logos only if they become basically famous.

In the law, when comparing allegedly infringing marks, words are the first basis of comparison and if the words are dissimilar, the logo becomes irrelevant.  "Words dominate" to use the legal phrase.

If you file a trademark application for a logo without words, it's going to initially be rejected as "mere ornamentation" and you're going to have to prove that it has "acquired distinctiveness" or "secondary meaning," that is, become associated in the minds of consumers with your product(s) or service(s).  The best way to do that is by showing many years of exclusive use and by advertising that features and preferably "points up" the logo (look for the Bucee's beaver) and a large advertising budget.

If you are attempting a trademark application, I advise going words only if you can only afford one, or words only and words + logo if you have a deluxe budget,  and logo only if you have money to burn and at least five years of use. 

The reason for this is that research shows that people remember words, Kodak, Coke, not logos, particularly when associated with a brand.

The other thing I have observed over the years is that, for small-medium businesses, logos change.  Trademark registrations have to be renewed at five years and then every ten years.  I can't tell you how many times at the five-year renewal the original logo is no longer in use or being phased out.  If you are really in love with your logo, it's probably a minor work of art and you can register a copyright in it.

As to this lawsuit, like most TM litigation, it will probably settle and favorably to Bucee's because they will likely wallet-whip Super Fuels.  But this might actually be one that could be resolved on summary judgment, which is rare in trademark cases.  The logos have some similarities that result from the use of cartoon animals, but they're different animals and look pretty different other than the cartoonish eyes and brown fur.  That Super Fuels uses nothing resembling "Bucee's" is likely dispositive, or should be.

The one thing that could tilt this severely in Bucee's favor is if evidence develops that Super Fuels intended to mimic their logo.  The law says something like "if it is proven that a second-user intended to free-ride on the trademark owner by imitating its mark, we will assume that the defendant succeeded."  Whether that is legitimate in the sense of brand recognition, or just a cover for what seems to be innate dislike of copying is another matter.

 

 

Edited by TwiceHorn
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This all dovetails with my earlier rant that trademark law has become unmoored from its foundations.  Bucee's will probably "win" this via settlement, meaning Super Fuels will drop the logo.

I rather severely doubt that anyone goes to Super Fuels thinking they're at Buc-ee's, "stolen logo" or not.  Buc-ee's has never lost a sale to Super Fuels, due to confusion or any other reason, because Super Fuels is dozens of miles from the closest Buc-ee's.

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Just now, JohnnyRage said:

I'm pretty sure Buccee's already won against a 'Gata.

 

 

 

 

 

 

There are several past lawsuits noted in the record.  Don't know their circumstances.  But, like UT, Buc-ee's is likely positioned to steamroll most, regardless of the actual merits of the case.

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3 minutes ago, JohnnyRage said:

Low IQ jury decision.

Doubt very much any of these go to trial.  That's a multi-hundred thousand, if not a million-dollar-plus deal.  I can't find the complaint, but it appears that Buc-ee's counsel is Norton Rose Fulbright, and I am quite sure that they are ready, willing, and able to raise the costs of this thing to the unsustainable for all but the Buc-ee's of the world, and probably even to make Buc-ee's flinch a little.

 

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41 minutes ago, JohnnyRage said:

I'm pretty sure Buccee's already won against a 'Gata.

 

 

 

 

 

 

Jury ruled for Bucee's in that one.  What a joke.

ratio3x2_960.webp

 

Snappy's is on the clock

AF1QipMMN0Z6saC0ZxBmpf_CeHVgiEWhcgwupoGx

Smiling, hat, animal, yellow...that's 4 points of similarity right there.

 

So what is Bucee's motivation here?  I agree that they can't be losing significant sales.  Do they just enjoy paying lawyers?

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16 minutes ago, WBT said:

Jury ruled for Bucee's in that one.  What a joke.

ratio3x2_960.webp

 

Snappy's is on the clock

AF1QipMMN0Z6saC0ZxBmpf_CeHVgiEWhcgwupoGx

Smiling, hat, animal, yellow...that's 4 points of similarity right there.

 

So what is Bucee's motivation here?  I agree that they can't be losing significant sales.  Do they just enjoy paying lawyers?

Good question.  They're "protecting their brand."

From what exactly I'm not sure.

As I said above, there's no confusion here leading to lost sales.  Maybe some "tarnishment" or "dilution" of the brand, but these, particularly above, are so dissimilar as to be wtf.

I'm shocked that that presumably small outfit took that to trial.

As alluded to earlier, there is some innate resistance people have, including federal judges, to evidence of copying or imitation.  But a free market, even a rational one, is premised on imitation.

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5 minutes ago, WBT said:

So what is Bucee's motivation here?  I agree that they can't be losing significant sales.  Do they just enjoy paying lawyers?

@TwiceHorn obviously knows the details, but I do believe there is some requirement to defend one's IP.

I recall a college/HS kerfluffle where the college ended up licensing their mark for $1/year or some such.  I guess that legally dotted the i's and crossed the t's.

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15 minutes ago, jimmyjazz said:

@TwiceHorn obviously knows the details, but I do believe there is some requirement to defend one's IP.

I recall a college/HS kerfluffle where the college ended up licensing their mark for $1/year or some such.  I guess that legally dotted the i's and crossed the t's.

Well, if you let truly confusing uses proliferate, likelihood of confusion (the standard) becomes increasingly unlikely.  So, yes, you have a duty to "police" confusingly similar uses.

Similarly, you can license a trademark to someone, but you're supposed to exercise "quality control" so that the goods are similar or of similar quality to yours.

But when there's no likelihood of confusion  . . . .

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18 minutes ago, WBT said:

Jury ruled for Bucee's in that one.  What a joke.

ratio3x2_960.webp

 

Snappy's is on the clock

AF1QipMMN0Z6saC0ZxBmpf_CeHVgiEWhcgwupoGx

Smiling, hat, animal, yellow...that's 4 points of similarity right there.

 

So what is Bucee's motivation here?  I agree that they can't be losing significant sales.  Do they just enjoy paying lawyers?

 

They have lawyers on staff just sitting around - Might as well put in some work or begin worrying about being laid off.

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18 minutes ago, Bevo said:

 

They have lawyers on staff just sitting around - Might as well put in some work or begin worrying about being laid off.

Well, the in-house people, to the extent they exist, don't usually handle litigation on the ground.  They very well may find potential infringements and prevail on management to file suit in order to justify their existence.

Plus, doling out litigation to big firms is a nice way to feather your nest when you decide you want to leave the in-house world.

Edited by TwiceHorn
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I did a quick look-up and came across 6.

 

Jeff Nadalo (UT Law)
General Counsel at Buc-ee's, Ltd.
Although initially I studied and worked as an accountant, I graduated from UT Law School in 2003 and immediately started working at Fulbright in the energy litigation section of their Houston office. Since my tenure at Fulbright I have focused primarily on real estate and corporate law.


H. Tracy Richardson, III
Deputy General Counsel at Buc-ee's, Ltd.


Leena Ninan
Assistant General Counsel, Buc-ee’s, Ltd.


Jason Fulton (UT Law)
Assistant General Counsel at Buc-ee's Ltd.


Kevin Cazalas
Senior Counsel at Buc-ee's, Ltd.


Trent Menning
Senior Counsel at Buc-ee's, Ltd.

 

Plus, they are currently hiring attorneys: Buc-ee's is looking to hire an Associate Counsel to join their team in Pearland, TX. The Associate Counsel will handle a wide range of commercial, corporate, and transactional legal matters for the company.

 

 

 

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3 minutes ago, Bevo said:

I did a quick look-up and came across 6.

 

Jeff Nadalo (UT Law)
General Counsel at Buc-ee's, Ltd.
Although initially I studied and worked as an accountant, I graduated from UT Law School in 2003 and immediately started working at Fulbright in the energy litigation section of their Houston office. Since my tenure at Fulbright I have focused primarily on real estate and corporate law.


H. Tracy Richardson, III
Deputy General Counsel at Buc-ee's, Ltd.


Leena Ninan
Assistant General Counsel, Buc-ee’s, Ltd.


Jason Fulton (UT Law)
Assistant General Counsel at Buc-ee's Ltd.


Kevin Cazalas
Senior Counsel at Buc-ee's, Ltd.


Trent Menning
Senior Counsel at Buc-ee's, Ltd.

 

Plus, they are currently hiring attorneys: Buc-ee's is looking to hire an Associate Counsel to join their team in Pearland, TX. The Associate Counsel will handle a wide range of commercial, corporate, and transactional legal matters for the company.

 

 

 

Well now we know why they use Fulbright.  And, I'm guessing you'll see Nadalo back there sooner than later.  Sometimes, when you're high up and get growth-related comp, in-house can be as good or better deal than big law, but if that growth slows down, per partner profit >$1M looks pretty good again, even at 3000 hours/year.

Edited by TwiceHorn
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1 hour ago, DalTxHornFan said:

Lanham Act damages will be challenging to prove or disprove.  Minnow vs. whale.  Buc-ee's just needs to avoid from having their trademark diluted, much like a certain University did with a certain message board full of assholes.

Yeah, damages are mostly off the table here.

When I started in the IP business, the grail remedy for patent and trademark infringement was the injunction, getting the competitor to just stop.

Big damages were icing on the cake and the plaintiff, if their mind was right, was willing to spend the fees and collect no damages.

That has changed some, but I still think the injunction is the most important thing and big-time clients understand that.

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1 hour ago, WBT said:

Jury ruled for Bucee's in that one.  What a joke.

ratio3x2_960.webp

 

Snappy's is on the clock

AF1QipMMN0Z6saC0ZxBmpf_CeHVgiEWhcgwupoGx

Smiling, hat, animal, yellow...that's 4 points of similarity right there.

 

So what is Bucee's motivation here?  I agree that they can't be losing significant sales.  Do they just enjoy paying lawyers?


that’s ridiculous 

what’s not ridiculous is Bucee’s sausage egg and cheese biscuit

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11 minutes ago, RDCanecutter said:

There's a new Buc-ees down the road. Useful for taking a shit. Not sure I ever spent a dime there.

Same. The kids and now the grandkids love it. It’s a whole thing for them, but unless you want to gain 10lbs by eating their junk food, there ain’t much there that’s special. 

agree that any animal in a circle is off limits is super lame.

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1 hour ago, ztejas said:

Crushing competitors before they have a chance to actually impact their sales.

Thing is, though, they can't stop them from being a convenience store.  If the defendant drains their budget fighting dumb trademark litigation. I suppose their viability as a convenience store is limited to some degree.

But they can't eliminate competition.

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speaking of trademarks... every time we've driven through Early, Texas to/from CO, i've wondered whether the city/ school district had to pay UT to use the Longhorn symbol, whether UT just lets it slide as a gesture of good will (lol), or whether nobody has ever cared enough to bring it to UT's attention...🤔 they actually even use 'Hook'em!' on the school site. 

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23 minutes ago, mchookem said:

speaking of trademarks... every time we've driven through Early, Texas to/from CO, i've wondered whether the city/ school district had to pay UT to use the Longhorn symbol, whether UT just lets it slide as a gesture of good will (lol), or whether nobody has ever cared enough to bring it to UT's attention...🤔 they actually even use 'Hook'em!' on the school site. 

Lots of high schools around the state are Longhorns/Steers and use the logo (or some variant thereof) along with Hook'em.

Mine (not Early) did/does.

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29 minutes ago, bolverk said:

Lots of high schools around the state are Longhorns/Steers and use the logo (or some variant thereof) along with Hook'em.

Mine (not Early) did/does.

I think I have heard that WT White in Dallas pays some nominal license fee to UT to be the Longhorns.

Licensing itself is risky because if it is found to be a grant of naked permission to use the mark without restriction or quality control, the licensed mark becomes invalid.

But, I guess it beats suing high schools and school districts for an injunction.

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3 hours ago, TwiceHorn said:

Thing is, though, they can't stop them from being a convenience store.  If the defendant drains their budget fighting dumb trademark litigation. I suppose their viability as a convenience store is limited to some degree.

But they can't eliminate competition.

Yeah crushing was too strong a word, but just being a general nuisance and trying to hurt competitors' branding. 

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7 hours ago, jimmyjazz said:

@TwiceHorn obviously knows the details, but I do believe there is some requirement to defend one's IP.

I recall a college/HS kerfluffle where the college ended up licensing their mark for $1/year or some such.  I guess that legally dotted the i's and crossed the t's.

 

Our local high school got into trouble with Georgia Tech around 20 years ago.   Seems that one of the students working on the school website used one their yellowjacket logo, but they linked the logo back to Georgia Tech's website, so the GT counsel had an easy time of finding out who was using the logo without permission.

The AD and supt received a cease and desist over use of the logo, but GT extended an olive branch:  $1 dollar per year, for a 99 year contract to use the logo on courts, clothing, anything the school wanted.   The school paid immediately.  

 

 

 

 

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Along this line, I represented a Nigerian mechanical engineer 2nd generation immigrant whose family owned a "7-mart" somewhere in the mid cities.

Seven-Eleven, then Southland at the time, sent a cease and desist.  They demanded that he change the signage, which was a non-trivial endeavor, cost wise.  It didn't look anything like the 7-11 logo or colors, but did have the orange roof.

Because Chidi's family leased and then purchased the premises from  . . . . 7-11.

And it was more than seven years prior to the cease and desist.  So, 7-11 had no real excuse for not knowing what signage the Chidis were using as they actually owned the premises during part of their use.

So, Chidi would agree to change it if 7-11 paid, otherwise we'd raise laches and estoppel and have a half-decent chance of prevailing, or at least stopping a preliminary injunction or TRO.

They agreed.  It was like $5000, I think.  A tidy sum that would have hurt Chidi, but was nothing to 7-11 and they likely should have come offering to do that.

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15 minutes ago, TwiceHorn said:

Along this line, I represented a Nigerian mechanical engineer 2nd generation immigrant whose family owned a "7-mart" somewhere in the mid cities.

Seven-Eleven, then Southland at the time, sent a cease and desist.  They demanded that he change the signage, which was a non-trivial endeavor, cost wise.  It didn't look anything like the 7-11 logo or colors, but did have the orange roof.

Because Chidi's family leased and then purchased the premises from  . . . . 7-11.

And it was more than seven years prior to the cease and desist.  So, 7-11 had no real excuse for not knowing what signage the Chidis were using as they actually owned the premises during part of their use.

So, Chidi would agree to change it if 7-11 paid, otherwise we'd raise laches and estoppel and have a half-decent chance of prevailing, or at least stopping a preliminary injunction or TRO.

They agreed.  It was like $5000, I think.  A tidy sum that would have hurt Chidi, but was nothing to 7-11 and they likely should have come offering to do that.

Most boilerplate defendant answers include a laches claim.  The only time that I have seen a court deem it relevant was in a trademark case. 

That explains why folks do need to work to defend their trademarks.  Silly or not, the beaver needs to defend its turf.

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