Anyone who has driven around Lake Jackson, Texas has probably seen the legendary Buc-ee’s convenient stores with the enormous Beaver logo. These are Texas-sized convenience stores, with immaculate restrooms, seemingly thousands of gas pumps and isles full of everything. I used to stop at one in particular traveling from Houston on the way to surf the waves at Surfside, Texas, so I might be a bit biased towards the plaintiff. They have amazing stores, and usually whatever it was that I forgot to bring with me.

Consequently, as a trademark litigator and customer, I found interesting the recent trademark battle, where Buc-ee’s Ltc. won its lawsuit against Choke Canyon, which also operates a chain of convenient stores and barbecue restaurants in Texas. Buc-ee’s Ltd. v. Panjwani, Cause No. 1:15-CV-03704, in the U.S. District Court for the Southern District of Texas (Hon.Keith Ellison presiding). The Buc-ee’s beaver apparently trumped the Choke Canyon alligator. Choke Canyon had a cartoon logo too–albeit an Alligator wearing a cowboy hat instead of a beaver in a ball cap. The jury decided in about a half-day that Choke Canyon was a trademark infringer. They also found the defendant engaged in related conduct of unfair competition and “trademark dilution.”

The Houston Chronicle posted a good image/logo comparison here:

Somehow, the jury had to find a “likelihood of confusion” existed between the two marks to declare an infringement. The trademark infringement test normally factors in the similarity of the goods and services, as well as the marks. Both businesses were in the convenient store business, so that factor was probably in favor of infringement. They were also both operating in similar geography, so there was definitely a turf battle in progress. If customers testified to being confused, that would be strong evidence of infringement. But, the jury would also have to compare the logos. I looked at them. They’re both cartoons with big eyes. Both characters have hats. They’re both staring off in space in the same direction, and look pretty happy. They both have teeth and an open mouth, and maybe look excited and/or possibly hungry. They both have some yellow background. But do alligators and beavers really look that similar? Is a cowboy hat a ball cap? One is brown; the other is green. I guess you had to be there with that Houston jury. Was there a little home town favoritism in play with this venue? We’ll see if it settles post-trial or if goes up on appeal.

Practical take away for businesses selecting trademarks: do your best to pick a truly unique logo or brand. If you do an internet search and find something that looks or sounds similar, and it is in the same industry, go back to the drawing board. Pick another logo. This is especially true if you find another similar logo belonging to a business with deep pockets, that is famous, or that may be litigious. Don’t start off your business by getting sued if you can help it! Also, it’s a good idea to do a professional trademark search and get an opinion from a trademark attorney before committing to a major product or business launch. A trademark search can really help and an opinion is much cheaper than recalls or lawsuits.

Article by John Buche, J.D.

Patent Attorney in San Diego