Case 4:14-cv-01211 Document 15 Filed in TXSD on 05/28/14 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
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`WAYNE ANDERSON; dba VISIONWORLD
`ENTERTAINMENT, et al,
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` Plaintiffs,
`VS.
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`HARVEY BAKER, et al,
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` Defendants.
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`§
`§
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`§
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`§
`§
` CIVIL ACTION NO. 4:14-CV-1211
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` §
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` §
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`§
`§
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`OPINION AND ORDER
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`Pending before the Court is Original Complaint and Application for Injunctive Relief
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`(Doc. 1) filed by Plaintiffs Wayne Anderson and Roxell Richards, individually and d/b/a
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`Visionworld Entertainment (“Plaintiffs” or “Visionworld”) against Defendants Harvey and
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`Shannon Baker (“Defendants” or the “Bakers”). The complaint sets forth fourteen claims for
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`relief, principally for fraudulent trademark registration, trademark infringement, trademark
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`dilution, trade-dress infringement, copyright infringement, breach of contract, and tortious
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`interference with contractual relations. (Id. ¶¶ 53–93). Plaintiffs seek permanent injunctive
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`relief, declaratory relief, and damages. (Id. ¶ 105). Upon review and consideration of the
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`application, response, and reply; the testimony and evidence presented at the three-day
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`evidentiary hearing, and the applicable law, the Court grants, in part, Visionworld’s application
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`for preliminary injunction.
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`I.
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`Background
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`Visionworld is a Texas-based entertainment consulting and management company that is
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`owned and operated by Anderson and Richards. Harvey Baker and Shannon Baker are the
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`parents and legal representatives of their fifteen-year-old daughter, Kaylah Baker. Kaylah
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`aspires to become a professional singer and entertainer. She began performing in local pageants
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`and competitions when she was six years old under the name “Kaylah Baker.” (Doc 2 ¶ 10). In
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`May 2013, Kaylah and Shannon met Anderson after Kaylah performed at an NBA All-Star event
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`in Houston. The parties were introduced by Anderson’s client, “Miss Mykie,” the host of a
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`popular show on the B.E.T. Network. After the meeting, Shannon contacted Anderson and
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`solicited his services to “take Kaylah’s career to another level.” (Id. ¶ 9).
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`On May 25, 2013, the parties entered into an “exclusive management agreement” (“the
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`Agreement”). (Exclusive Management Agreement, Pl.’s Ex. 2). The purpose of the agreement
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`was “to promot[e] and enhance[] [Kaylah]’s career and to assist in all business transactions with
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`associates and affiliates in regards to all aspects of entertainment such as music, television, and
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`film.” (Id. ¶ 1.01). Under the Agreement, Anderson was obligated to “oversee and manage
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`[Kaylah’s] business affairs in its entirety and to control the promotion and production of such
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`said projects in music, television and film.” (Id. ¶ 3.01). For her part, Kaylah agreed to perform
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`at all bookings that Visionworld arranged, to perform music selected by Visionworld, and to
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`attend all scheduled meetings and rehearsals. (Id. ¶ 3.02). In addition, Kaylah and her parents
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`agreed to forward to Visionworld all inquiries and information regarding prospective bookings.
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`(Id. ¶ 3.01). Her parents also agreed to provide an initial deposit of $2,000 for services to be
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`rendered. (Id. ¶ 3.02). The Agreement gave Visionworld the right to “have full, exclusive and
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`complete authority and discretion in the management and control of the business of the exclusive
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`Agreement for the purposes herein stated and [to] make all decisions affecting the business of the
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`Agreement in regards to [Kaylah] and will also consult with [Kaylah’s] guardian.” (Id. ¶ 5.01).
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`The Agreement allocated 75% of all profits, losses, and expenses to Kaylah and 25% to
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`Anderson. (Id. ¶¶ 4.01, 7). The term of the agreement was one year with an option to renew for
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`a second one-year term. (Id. ¶¶ 1.02 –1.03).
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`Once the Agreement was signed, Visionworld began developing and promoting a brand
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`and image for Kaylah. As an initial step, Visionworld contracted with stylist Ebony Tezeno to
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`create a signature look and persona for Kaylah. Anderson requested that Shannon send him an
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`email with Kaylah’s full name and birthdate so that he could draft the management agreement.
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`Shannon sent Anderson an email wherein she wrote Kaylah’s full name as: Kaylah Sharvey
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`Baker. (E-mail Correspondence Between Shannon and Anderson, Pl.’s Ex. 17). Anderson
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`testified that after he received Shannon’s email, he began researching variations of Kaylah’s
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`name to see if there were any potential conflicts with other performers in the entertainment
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`industry. His research revealed that an artist was already performing under the name “Kaylah
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`B,” thereby creating a conflict with Kaylah’s name. Tezeno testified that she suggested to
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`Visionworld and the Bakers that Kaylah use the stage name Sharvé, excluding the “y” and
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`adding an accent to her middle name, Sharvey.
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`Working in consultation with Visionworld, Tezeno created a distinctive and unique
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`“flashback” look for Sharvé, a hybrid of 1980s and 1990s teen fashion. (E-mail Correspondence
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`Between Tezeno and Visionworld, Pl.’s Ex. 3; Examples of the Sharvé Trademark and Trade
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`Dress, Pl.’s Ex. 5; Photograph Depicting Sharvé Trade Dress, Pl.’s Ex. 6). Sharvé’s “signature
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`look” included a side-ponytail or hat and a heart-sign hand gesture. (Doc. 1 ¶ 29; Pl.’s Ex. 5).
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`All parties testified that great care was taken to ensure that Sharvé’s look was wholesome and
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`age appropriate. Visionworld created a fan club for Sharvé, the “Sweetheartz,” and set up a
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`charitable foundation in her name, the “Sweetheart Foundation.” (Pl.’s Ex. 3; Examples of the
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`Sharvé Trademark and Trade Dress).
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`Visionworld also contracted with a graphic designer who created various designs and
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`logos incorporating the name Sharvé to be used for promotional goods and merchandise. (Pl.’s
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`Ex. 3; Doc. 1 ¶ 19). In July 2013, Visionworld hired a web designer to create Sharvé’s
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`promotional website. Shannon Baker purchased the domain name iamsharve.com for $25.
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`(Domain Registration, Def.’s Ex. 5). In August 2013, Shannon gave Visionworld the passwords
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`for the promotional social-media accounts that she had previously created for Kaylah, including
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`Facebook, Instagram, Twitter, and Gmail, so that Visionworld could convert the accounts and
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`manage them under the names Sharvé or iamSharvé. (E-mail Correspondence Between Shannon
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`Baker and Wayne Anderson, Def.’s Ex. 2; Facebook Screenshot, Def.’s Ex. 4).
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`Over the next several months, Visionworld invested significant amounts of time and
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`money in developing the Sharvé brand and mark. Kaylah received “vocal lessons, one-on-one
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`and stage-performance coaching, make-up, and styling.” (Doc. 1 ¶ 24). Visionworld also
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`funded and coordinated photoshoots, videoshoots, marketing campaigns, concert appearances,
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`and personal appearances for Sharvé. (Id. ¶ 24). Visionworld also contracted with some of its
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`affiliates, including songwriters, producers, choreographers, and videographers, to record a
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`single and music video of Sharvé entitled “What You Think I’m On?” (“What You Think I’m
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`On?” Copyright Catalog Entry, Pl.’s Ex. 7; “What You Think I’m On?” Music Video; Pl.’s Ex.
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`21). Overall, Visionworld estimates that it invested approximately $100,000 in developing the
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`Sharvé brand and mark. (Doc. 1 ¶ 32; Expense Reports, Pl.’s Ex. 15). The Bakers also invested
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`approximately $20,000. (Doc. 1 ¶ 32; Receipts, Def.’s Ex. 3).
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`In late 2013, the relationship between Plaintiffs and the Bakers started to break down
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`when the Bakers began questioning the allocation of the funds they invested and demanded an
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`accounting. The parties, represented by counsel, held a meeting in February 2014 to discuss the
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`accounting issues. (Doc. 1 ¶ 33–34). The parties also disagreed over the social-media accounts.
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`Visionworld managed these accounts very closely and promptly deleted any photos posted by
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`Kaylah or Shannon Baker that it found incongruous with the Sharvé mark and brand. (Doc. 1 ¶
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`28). To prevent Visionworld from accessing the accounts, Shannon Baker changed all the
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`passwords in February 2014. (Id. ¶ 33). Sometime in late 2013 or early 2014, Anderson
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`informed Shannon Baker that after the termination of the contractual relationship, Kaylah would
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`have no rights to the Sharvé name, mark, or any of the associated trade dress. The relationship
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`continued to sour, and on March 3, 2014 Shannon Baker sent Anderson an email terminating the
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`relationship. (E-mail Correspondence Between Shannon Baker and Wayne Anderson, Pl.’s Ex.
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`9). Thereafter, Shannon Baker contacted many of Plaintiffs’ affiliates, including dancers and
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`songwriters, in an effort to continue Kaylah’s relationship with the affiliates. (Doc. 1 ¶ 45).
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`Shannon Baker continues to manage and promote Kaylah under the name Sharvé.
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`Plaintiffs complain that the images appearing on Sharvé’s social-media accounts in recent
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`months are more sexualized and are inconsistent with the wholesome image of Sharvé that
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`Visionworld created and marketed. (Recent Images of Sharvé, Pl.’s Ex. 19 & Pl.’s Ex. 24).
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`Plaintiffs claim that they regularly receive calls and complaints from affiliates who believe that
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`Visionworld is Sharvé’s manager and are troubled by the new image that they believe
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`Visionworld is creating for Sharvé. On March 4, 2014, Shannon Baker filed an application with
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`the United States Patent and Trademark Office (“USPTO”) to secure rights to the Sharvé mark.
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`(Trademark Application, Pl.’s Ex. 11). On the application, Shannon Baker wrote that the owner
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`of the mark is “Baker, Kaylah Sharvé aka Sharvé.” (Id.). Shannon further stated that the first
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`use of the mark was “at least as early as February 15, 2010” and the first use of the mark in
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`commerce was “at least as early as March 1, 2012.” (Id.). In support of the application,
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`Shannon attached a flyer incorporating the Sharvé mark as a demonstrative example of the
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`mark’s use in commerce. (Id.). The flyer was for “Teen Healthfest,” an event sponsored by
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`Visionworld where Sharvé was scheduled to perform, but which was canceled for inclement
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`weather. Shannon has also changed the name on YouTube videos of early performances of
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`Kaylah from “Kaylah Baker” to “Kaylah Sharvé Baker.” (Doc. 1 ¶ 41; YouTube Screenshot,
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`Pl.’s Ex. 12). Visionworld filed a letter of protest with the USPTO against Defendants’
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`trademark application. (Doc. 1 ¶ 42).
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`This dispute is over the rights to the Sharvé name, mark, and image. Much of what has
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`transpired could have been prevented or resolved through clear contractual language. See e.g.,
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`Hart v. World Wrestling Entm’t, Civ. A. No. 3:10-cv-0975(SRU), 2012 WL 1233022, (D. Conn.
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`Apr. 10, 2012).1 Here, the Agreement did not contemplate this highly foreseeable dispute and
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`was completely silent as to the ownership of any intellectual property rights which might be
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`created during the course of the parties’ relationship. Plaintiffs now move for a preliminary
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`injunction that enjoins Defendants from:
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`(1) Copying, duplicating, using, or marketing the Sharvé mark in any manner,
`including but not limited to using the mark on any new or existing website
`including iamsharve.com, any new or existing accounts on any and all social
`media platforms including Facebook, Twitter, Instagram, Gmail, MySpace and
`YouTube, and using the mark on any pictures, artwork, posters, graphics, or other
`tangibles.
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`(2) Posting, displaying, or performing Plaintiffs’ copyrighted music or recordings
`in any manner;
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`1 Booking agreement between professional wrestler and entertainment company which clearly distinguished
`between “original intellectual property” which was owned by a professional wrestler upon entry into the contract
`(i.e., legal name, stage name, likeness, personality, character, caricatures, voice, signature, costumes, props,
`gimmicks gestures, etc.) and “new intellectual property” which was created during the course of the parties’
`relationship (i.e., “service marks, trademarks, and/or other distinctive and identifying indicia…”) and declared that
`original intellectual property rights would be assigned to the company during the course of the relationship and
`revert back to the wrestler upon termination and new intellectual property rights would be assigned to the company
`in perpetuity, governed subsequent claims for violations of the Lanham Act.
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`(3) Using the registration of the trademark application identified as serial number
`86210494; and
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`(4) Using any and all of Plaintiffs’ property and/or proprietary information
`including but not limited to any and all photographs taken by Visionworld and/or
`its affiliates, any graphic designs created by Visionworld and/or its affiliates, any
`props, clothing, flyers, programs, and merchandise created or provided by
`Visionworld, and any and all names and likenesses of fan clubs regarding Sharvé
`identified by the word “Sweetheartz” or “Sweethearts.”
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`Proposed Order Granting Prelim. Inj. (Doc. 2-1).
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`
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`Defendants argue that an injunction is inappropriate. They contend that Plaintiffs are not
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`likely to succeed on the merits because the mark is invalid under section 1052(c) of the Lanham
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`Act, which prohibits registering the name of a living person without that person’s consent.
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`(Def.’s Resp. at 3). Defendants further contend that the mark is invalid under section 1125(a) of
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`the Lanham Act because Visionworld is not the originator of the goods or services. (Id.). With
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`regard to the song “What You Think I’m On?,” Defendants argue that the copyright granted to
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`Plaintiffs is invalid because it was based on Plaintiffs’ false representation that the song was
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`made as a “work for hire.” (Id. at 3–4).
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`II.
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`Legal Standard
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`“A preliminary injunction is an ‘extraordinary remedy’ which should only be granted if
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`the party seeking the injunction has ‘clearly carried the burden of persuasion’ on all four
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`requirements.” Nicols v. Alcatel USA, Inc., 532 F.3d 364, 372 (5th Cir. 2008). To obtain a
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`preliminary injunction, Visionworld must show: (1) a substantial likelihood of success on the
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`merits; (2) a substantial threat that it will suffer irreparable harm if the injunction is not granted;
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`(3) that the threatened injury outweighs any damage that the injunction might cause the
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`defendant; and (4) that the injunction will not disserve the public interest. Tex. Med. Providers
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`Performing Abortion Servs. v. Lakey, 667 F.3d 570, 574 (5th Cir. 2012). Each of these factors
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`presents a mixed question of fact and law. Opulent Life Church v. City of Holly Springs, Miss.,
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`697 F.3d 279 (5th Cir. 2012). An injunction is an appropriate remedy to cure trademark
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`infringement under the Lanham Act. 15 U.S.C. §§ 1116, 1125(c); Pebble Beach Co. v. Tour 18
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`I, Ltd., 942 F. Supp. 1513, 1572 (S.D. Tex. 1996).
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`III. Discussion
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`A.
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`Substantial Likelihood of Success on the Merits
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`The purpose of the Lanham Act is to “make[] actionable the deceptive and misleading
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`use of marks in [commerce within the control of Congress]…[and] to prevent fraud and
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`deception in such commerce by the use of reproductions, copies, counterfeits, or colorable
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`imitations of registered marks.” 15 U.S.C. § 1127. Despite the use of the word “registered” in
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`the Act, courts have held that “[a] mark need not be registered in order to obtain protection
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`because ownership of trademarks is established by use, not by registration.” Bd. Of Supervisors
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`for La. State Univ. Agric. And Mech. Coll. V. Smack Apparel Co., 550 F.3d 465, 475 (5th Cir.
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`2008) (internal alterations, quotations, and citations omitted). “There are two elements to a
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`successful claim of infringement under the Lanham Act. The plaintiff must first establish
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`ownership in a legally protectable mark, and second, show infringement by demonstrating a
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`likelihood of confusion.” Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237 (5th
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`Cir. 2010) (internal quotation marks and citations omitted).
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`1.
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`Ownership of the Sharvé Mark
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` “Ownership of a mark requires a combination of both appropriation and use in trade.”
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`Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1264 (5th Cir. 1975). Thus, the mere
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`conception of the mark, without its subsequent use in commerce, is insufficient to confer
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`ownership rights on the conceiver. Id. at 1264–65. Nonetheless, the origin of a mark may have
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`some bearing on the issue of who first used the mark in commerce. Accordingly, the Court
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`considers both issues.
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`The testimony adduced at the hearing was inconsistent as to the origin of the name
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`Sharvé. Shannon Baker testified that Kaylah’s father, Harvey Baker, created Kaylah’s middle
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`name, Sharvey, by combining their names, “Shannon” and “Harvey.” She stated that the “y” in
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`Sharvey is silent, and that the name has always been spelled with an accent above the “e.”
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`Shannon Baker also testified that her husband was the one who first decided to use the name
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`Sharvé as Kaylah’s stage name during a discussion between the parents at their home, while she
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`was on the phone with Anderson. Defendants did not offer an official or certified copy of
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`Kaylah’s birth certificate, or any other official or unofficial documentation showing that Sharvey
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`was ever spelled with an accent or without a “y.” In support of their argument that Kaylah’s
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`middle name is not spelled with an accent, Plaintiffs offered the email Shannon sent to Anderson
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`wherein she responded to his request for Kaylah’s full name and birthday by writing Kaylah’s
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`full name as “Kaylah Sharvey Baker.” (Pl.’s Ex. 17). Tezeno testified that she conceived the
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`name Sharvé during a meeting with Visionworld and that she was the one who decided to use the
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`name as Kaylah’s stage name.
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`The evidence on the issue of use is clear that prior to entering the contract with
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`Visionworld, Kaylah performed under the name “Kaylah Baker.” (See Resume and Photographs
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`of Kaylah Baker, Pl.’s Ex. 1). It was not until Visionworld began managing her that she
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`performed under the name Sharvé. (See Pl.’s Ex. 3 (Instagram image of Sharvé signature with
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`caption “My first signature as Sharvé.”)). Visionworld offered evidence of dozens of examples
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`of its commercial use of the mark over the last year, and Defendants offered no evidence of their
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`use of the mark prior to the relationship with Visionworld.
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`Viewing all the testimony and evidence on this issue, the Court concludes that
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`Visionworld both created the Sharvé mark and first used the mark in commerce.
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`Defendants contend that Plaintiffs cannot legally register the mark because it is Kaylah
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`Baker’s middle name and she never gave consent for Visionworld to trademark her birth name,
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`as required by 15 U.S.C. § 1052(c). (Doc. 7 at 3). Section 1052(c) of the Lanham Act provides
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`that no trademark shall be refused registration unless it “[c]onsists of or comprises a name,
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`portrait, or signature identifying a particular living individual except by his written consent.”
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`“This section is intended to protect rights of privacy and proprietorship, not of all persons who
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`bear a particular name, but of those who will be associated with the mark as used on the goods,
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`either because that person is so well known that the public would reasonably assume the
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`connection or because the individual is publically connected with the business in which the mark
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`is used.” Gilbert/Robinson, Inc. v. Carrie Beverage-Missouri, Inc., 989 F.2d 956, 989 (8th Cir.
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`1993) (quoting Martin v. Carter Hawley Hale Stores, Inc., 206 U.S.P.Q. 931, 933 (Trademark
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`Tr. & App. Bd. 1979)).
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`Plaintiffs argue that the Sharvé mark does not require Plaintiffs’ written consent because
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`Kaylah’s middle name is Sharvey, not Sharvé, and Sharvé does not contain Kaylah Baker’s birth
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`name in any fashion. (Doc. 9 at 9–10). This Court, after hearing testimony and viewing the
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`exhibits, concurs with Plaintiffs’ position and finds that the name Sharvé is not Kaylah Sharvey
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`Baker’s name and does not identify a living individual. Therefore, 15 U.S.C. § 1052(c) does not
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`apply and Plaintiff was not obligated to obtain written consent from Kaylah or her parents in
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`order to make use of the Sharvé mark in commerce. Moreover,
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`to the extent that the law of trademarks accords special treatment to a trade or
`service mark that is based on the name of a particular individual, the law
`presumes that the name has been used in connection with a particular trade or
`product so as to have acquired some secondary meaning in the marketplace.
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`Thus, the right that attaches to one’s personal name for trademark purposes is the
`right to use that name in connection with a particular business. Even then, the
`right to use one’s name is not absolute.
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`Rick v. Buchansky, 609 F. Supp. 1522, 1533–34 (S.D.N.Y. 1985) (emphasis in original); see also
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`John R. Thompson Co. v. Holloway, 366 F.2d 108, 113 (5th Cir. 1966) (“[A] man has no
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`absolute right to use his own name, even honestly, as the name of his merchandise or business.
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`As such it becomes a trade name or service mark subject to the rule of priority in order to prevent
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`deception of the public.”).
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`The evidence is clear that as between Plaintiffs and Defendants, only Plaintiffs have ever
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`made commercial use of the name Sharvé. Prior to signing the management agreement,
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`Defendants never made independent commercial use of the Sharvé mark. As such, Defendants
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`did not acquire any trademark rights to any portion of the name Sharvé.
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`Next, Defendants contend, without citing any authority, that Visionworld has no right to
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`register the mark because it is not the “originator” of the goods or services. (Doc. 7 at 3). A
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`similar argument was raised and rejected by the court in Rick v. Buchansky, 609 F. Supp. at
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`1534–36. In Rick, the manager of a 1960’s “doo-wop” group known as “Vito and the
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`Salutations” obtained a registered trademark of the group’s name and sought to enjoin the
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`defendants, the original members of the group who were performing under new management,
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`from using the name. The group sought to invalidate Rick’s registration by claiming that the
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`manager “cannot claim ownership of the mark ‘Vito and the Salutations’ because the public
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`identifies that mark with the performers themselves, and chiefly with Vito Balsamo,” the group’s
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`original lead singer. Id. at 1534–35. The court disagreed and found that the defendants had “not
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`demonstrated that Balsamo developed any particular notoriety during his tenure in that role,”
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`such as through “evidence that Balsamo or any other members of the group received particular
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`media attention, either through exposure on radio or television, through publications in the
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`popular music field, or in teen fan magazines.” Id. at 1535. The court concluded that Balsamo
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`had not developed a “following” either while performing with Vito and the Salutations, or after
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`his departure from the group.
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`The same could certainly be said for Sharvé. Although the record contains a great deal of
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`evidence that Visionworld has worked to build the reputation and recognizability of Sharvé over
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`the last year, there is no evidence that Sharvé has any measure of fame today. Sharvé has not
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`received any radio or television exposure. Each exhibit in the record that is an example of media
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`use of the Sharvé mark is a promotional use of the mark by Visionworld. There are no instances
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`of outside media attention or interest in Sharvé. As such, the Court finds that there is no basis
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`for Defendants to argue that the Sharvé mark is identified by the public with the reputation or
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`skill of Kaylah Baker.
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`In sum, the Court finds that neither of Defendants’ arguments regarding the alleged
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`illegality of Plaintiffs obtaining a trademark of the name Sharvé has any merit. Plaintiffs have
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`met their burden to show that they own the mark by proving that they appropriated the mark and
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`first used the mark in commerce. Therefore, the only remaining inquiry is whether the allegedly
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`infringing mark creates a likelihood of confusion.
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`2.
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`Likelihood of Confusion
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`“Likelihood of confusion is synonymous with probability of confusion, which is more
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`than a mere possibility of confusion.” Elvis Presley Enter., Inc. v. Capece, 141 F.3d 188, 193
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`(5th Cir. 1998). The Fifth Circuit considers the following factors in determining whether a
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`likelihood of confusion exists: “(1) strength of the plaintiff’s mark; (2) similarity of design
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`between the marks; (3) similarity of the products; (4) identity of retail outlets and purchasers; (5)
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`similarity of advertising media use; (6) the defendant’s intent; (7) actual confusion; and (8)
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`degree of care exercised by potential purchasers.” American Rice, Inc., 518 F.3d at 329 (citing
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`Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986)). “The absence or
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`presence of any one factor ordinarily is not dispositive; indeed, a finding of likelihood of
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`confusion need not be supported even by a majority of the…factors.” Id. (citing Conan
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`Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985)). The court is free to
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`consider other factors it deems relevant to determining whether a likelihood of confusion exists.
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`Elvis Presley Enter., Inc., 141 F.3d at 194. Likelihood of confusion is a factual question
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`reviewed for clear error. Id. at 197.
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`In evaluating the strength of a mark, courts focus on the senior user’s mark. Elvis Presley
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`Enter., Inc., 141 F.3d at 200. Stronger marks deserve greater protection because there is an
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`increased likelihood that consumers will confuse the junior user’s mark with that of the senior
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`user. Id. “Marks are normally assigned to categories of generally increasing distinctiveness: (1)
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`generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.” Xtreme Lashes, LLC v.
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`Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009) (citing Two Pesos, Inc. v. Cabana, Inc.,
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`505 U.S. 763, 768 (1992)).
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`A generic term refers to the class of which a good is a member. A descriptive
`term provides an attribute or quality of a good. Generic terms receive no
`trademark protection, while descriptive terms merit protection only if they have
`secondary meaning. A suggestive term suggests, but does not describe, an
`attribute of a good; it requires the consumer to exercise his imagination to apply
`the trademark to the good.
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`Id. (internal quotation marks and citations omitted). “’Arbitrary’ or ‘fanciful’ terms…bear no
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`relationship to the product or service with which they are associated.” Soweco, Inc. v. Shell Oil
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`Co., 617 F.2d 1178, 1184 (5th Cir. 1980). “An arbitrary mark has a common meaning unrelated
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`to the product for which it has been assigned, such as APPLE when applied to computers.”
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`Case 4:14-cv-01211 Document 15 Filed in TXSD on 05/28/14 Page 14 of 21
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`Union Nat’l Bank of Texas., Laredo, Tex. v. Union Nat’l Bank of Texas, Austin, Tex., 909 F.2d
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`839, 845 (5th Cir. 1990). “Fanciful” marks are typically “coined words, such as ‘Xerox’ or
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`‘Kodak.” Id. ‘“The latter three categories of marks, because their intrinsic nature serves to
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`identify a particular source of a product, are deemed inherently distinctive and are entitled to
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`protection.” Xtreme Lashes, LLC, 576 F.3d at 227. Any given term’s correct classification is a
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`factual issue. Id.
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`
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`Personal names are generally not protectable unless they have acquired a secondary
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`meaning. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 786 (1992); see also Nolen v.
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`Lufkin Indus., Inc., Civ. A. No. MO-10-CA-48-H, 2011 WL 10581991, at *2 (W.D. Tex. Feb. 3,
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`2011) (Where plaintiff offered no evidence of secondary meaning, he did not have trademark
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`rights in his first name, Sam.). Here, however, the Court has already concluded that Sharvé is
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`not Kaylah Baker’s name. Accordingly, the Court will consider only whether the Sharvé mark is
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`inherently distinctive and not whether it has a secondary meaning.
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`Plaintiffs contend that the Sharvé mark is “inherently distinctive and is entitled to
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`protection without proof of secondary meaning because the word in and of itself has not attached
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`any meaning and is not of a suggestive or arbitrary nature that one would know what the mark
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`would suggest and or mean.” (Doc. 9 at 4). The Court agrees that “Sharvé” is an inherently
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`distinctive name that bears no relationship to a young female or entertainer. As such, the mark is
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`strong.
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`The best evidence of likelihood of confusion is evidence of actual confusion. Exxon
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`Corp., 628 F.2d at 506 (citing Roto-Rooter Corp. v. O’Neal, 513 F.2d 44 (5th Cir. 1975)).
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`“[W]hile very little proof of actual confusion would be necessary to prove the likelihood of
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`confusion, an almost overwhelming amount of proof would be necessary to refute such proof.”
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`Case 4:14-cv-01211 Document 15 Filed in TXSD on 05/28/14 Page 15 of 21
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`Pebble Beach Co., 942 F. Supp. at 1547 (citing Fuji Photo Film v. Shinohara Shoji Kabushiki
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`Kaisha, 754 F.2d 591, 597 (5th Cir. 1985)). See La. World Expo., Inc. v. Logue, 746 F.2d 1033,
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`1041 (5th Cir. 1984) (holding one instance of actual confusion sufficient to satisfy actual
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`confusion factor). Plaintiff Roxell Richards testified that she has received calls from numerous
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`Visionworld affiliates and clients who wrongly believed that Sharvé was still under
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`Visionworld’s management and expressed concern regarding the new image that she is now
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`presenting. “To show actual confusion, a plaintiff may rely on anecdotal instances of consumer
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`confusion.” Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 447, 486 (5th Cir. 2004).
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`Roxell’s anecdotal evidence of confusion, while not dispositive, pushes this factor heavily in
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`favor of Plaintiffs. See, e.g., Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 1159–60
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`(5th Cir. 1982) (upholding district court’s finding of trademark infringement based in part on
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`plaintiff’s evidence of actual confusion).
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`With regard to the remaining six factors, the Court concludes that Plaintiffs have shown
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`that Defendants fully intend to capitalize on the goodwill and reputation generated by
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`Visionworld by using the Sharvé mark to promote Kaylah Baker, now under their management,
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`to young, impressionable, and unsavvy consumers. As such, the Court concludes that Plaintiffs
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`have met their burden to show infringement of their mark by demonstrating that a likelihood of
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`confusion exists with regard to the image of Sharvé created by Visionworld and the image of
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`Sharvé now being promoted by Plaintiffs.
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`B.
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`Substantial Threat That Visionworld Will Suffer Irreparable Harm
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`“[W]hen a likelihood of confusion exists, the plaintiff’s lack of control over the quality of
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`defendant’s goods or services constitutes an immediate and irreparable injury….” See, e.g.,
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`Quantum Fitness Corp. v. Quantum LifeStyle Ctrs., L.L.C., 83 F. Supp. 2d 810, 831 (S.D. Tex.
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`Case 4:14-cv-01211 Document 15 Filed in TXSD on 05/28/14 Page 16 of 21
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`1999); Hawkins Pro-Cuts v. DJT Hair, No. 3-96-