Spira Footwear, Inc. v. Basic Sports Apparel, Inc.

Citations: 545 F. Supp. 2d 591; 2008 U.S. Dist. LEXIS 19372; 2008 WL 558044Docket: 3:07-cv-129

Court: District Court, W.D. Texas; February 26, 2008; Federal District Court

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Plaintiff Spira Footwear, Inc. initiated a legal action against Defendant Basic Sports Apparel, Inc. in the U.S. District Court for the Western District of Texas, alleging infringement of its federally registered trademark SPIRA. The case stems from Spira's marketing of footwear and apparel under this brand name, while BSA had previously registered its own trademark SPIRAL for clothing and shoes in 1999. The defendant's trademark application was approved after BSA demonstrated continuous use of the trademark. 

Spira began using its brand in 2003 and subsequently filed for trademark registration, which was denied. Spira's lawsuit, filed in state court and later removed to federal court, asserts that it did not infringe upon BSA's trademark and includes a claim under the Texas Anti-Dilution Statute. The plaintiff seeks various forms of relief including declaratory and injunctive relief, damages, and attorney fees.

The court reviewed Spira's motion for summary judgment filed on December 10, 2007, and BSA's opposition filed on December 21, 2007. The judge, David Briones, determined that BSA's motion for summary judgment should be denied, emphasizing that summary judgment is only appropriate when there are no genuine disputes over material facts.

A material fact necessitates resolution by a fact finder, as opposed to being conclusively established, which influences the appropriateness of summary judgment. Summary judgment is not suitable when a material fact is genuine, allowing a reasonable jury to favor the nonmoving party. The Court evaluates all evidence without assessing credibility and considers facts and inferences favorably towards the nonmovant. The moving party must identify evidence demonstrating no genuine issue of material fact, failing which the motion is denied regardless of the nonmovant's response. If the moving party meets its burden, the nonmovant must present specific facts to show a genuine issue for trial, going beyond mere legal conclusions or references to pleadings. The nonmovant must provide affirmative evidence to counter a properly supported motion for summary judgment; a failure to do so will result in a grant of summary judgment to the movant.

In the case at hand, the Plaintiff claims no trademark infringement by BSA, arguing BSA committed fraud in its trademark application for a non-existent shoe product and asserting BSA's slipper does not qualify as a shoe. Additionally, the Plaintiff contends that BSA's lack of labeling with the SPIRAL trademark negates any trademark protection. BSA counters that it did not commit fraud, presenting evidence its slipper qualifies as a shoe and was marketed under the SPIRAL brand. The Court finds the Plaintiff's arguments unpersuasive, affirming that a valid trademark must distinguish products, be used in commerce, and be affixed to goods or their containers. Fraud in trademark registration occurs when a false material representation is knowingly made in the application process. Evidence indicates BSA began selling slippers under the SPIRAL name in 1997, despite lacking written documentation of production or sales, supported by accounts from employees selling the slippers in various retail locations.

David Chowaiki observed and assisted in the delivery of SPIRAL slippers at retail locations and personally placed them on shelves for sale. From 1997 to 2005, several SPIRAL employees recall selling these slippers, which were tagged and marketed as SPIRAL products. The court finds that the Plaintiff did not prove BSA knowingly made a false material misrepresentation regarding its trademark application or use. There is a genuine issue regarding whether BSA manufactured and sold slippers under the SPIRAL trademark, leading to the denial of the Plaintiff's Motion for Summary Judgment. Additionally, the Plaintiff's argument that slippers cannot be classified as shoes lacks legal support, while BSA offers a dictionary definition supporting its classification. The determination of whether a slipper qualifies as a shoe is a factual matter dependent on consumer opinion, preventing the court from making a definitive ruling. Consequently, the motion is denied based on the failure to meet the burden of proof regarding BSA’s actions.