No. 13-14-00511-CV

In the Court of Appeals

For the Thirteenth Judicial District

Corpus Christi-Edinburg, Texas

TESORO CORPORATION

Appellant

V.

TESORO CORPORATION D/B/A TESORO PETROLEUM CORP.

Appellee

On Appeal from the 206TH District Court, Hidalgo County, 

Texas, Trial Court Cause No. C-2971-09-D

APPELLANT’S BRIEF

Mark A. Weitz Reynaldo Ortiz

Weitz Morgan PLLC Law Office of Rey Ortiz

100 Congress Avenue 1305 E. Nolana, 

Suite 2000 Suite F

Austin, Texas 78701 McAllen, Texas 78504

512-394-8950 956-687-4567

512-657-1849 (mobile) 956-631-1384 (facsimile)

512-852-4446 (facsimile)

ORAL ARGUMENT REQUESTED

ACCEPTED

13-14-00511-cv

THIRTEENTH COURT OF APPEAL

CORPUS CHRISTI, TEXAS

2/3/2015 11:05:49 AM

DORIAN RAMIREZ

CLERK

 FILED IN 13th COURT OF APPEALS CORPUS CHRISTI/EDINBURG, TEXAS 2/3/2015 11:05:49 AM DORIAN E. RAMIREZ Clerk
IDENTITY OF PARTIES AND COUNSEL

Appellant certifies that the following is a 

complete list of the parties, attorneys, and other 

persons who have an interest, financial or otherwise, 

in the outcome of this proceeding:

Appellant: 

TESORO CORPORATION

Appellant’s: Counsel:

Mark A. Weitz Reynaldo Ortiz

Weitz Morgan PLLC Law Office of Rey Ortiz

100 Congress Avenue 1305 E. Nolana, 

Suite 2000 Suite F

Austin, Texas 78701 McAllen, Texas 78504

512-394-8950 956-687-4567

512-657-1849 (mobile) 956-631-1384 (facsimile)

512-852-4446 (facsimile)

Appellee:

TESORO CORPORATION D/B/A TESORO PETROLEUM CORPORATION

Appellee’s Counsel:

Frank Weathered Sarah Pierce Cowen

Dunn, Weathered, Coffey, Cowen & Garza, L.L.P.

Rivera & Kasperitis, P.C. 820 Hackberry Avenue, 

611 S. Upper Broadway Suite 101

Corpus Christi, Texas 78401 McAllen, Texas 78501

361-883-1594 956-994-9170

361-883-1599 (facsimile)
Gerald T. Drought, Esq. Gilbert Hinojosa

Martin & Drought, P.C. Gilbert Hinojosa & 

Bank of America Plaza, Associates, PC

25th Floor 622 East St. Charles St.

300 Convent Street Brownsville, Texas 78520

San Antonio, Texas 78205 956-544-4218

210-227-7591 956-544-4218 (facsimile)

210-227-7924 (facsimile)
i

TABLE OF CONTENTS

Page

Table of Contents i

Table of Authorities v

Statement of the Case 1

Statement Regarding Oral Argument 3

Issues Presented: 4

Issue #1: Did the District Court err 

in Granting the Appellee’s Motion to 

Set Aside the Jury Verdict based upon 

failure to Establish Irreparable harm 

and Lack of Adequate Remedy at Law?

Issue #2: Did the District Court err 

in Granting the Appellee’s Motion to 

Set Aside the Jury Verdict based on 

Improper Jury Instructions.

Issue #3: Even if the Court Rejected the 

Appellee’s Motion to Set Aside Jury Verdict 

Did the District Court err in Denying 

Appellant’s Request for Permanent Injunction 

after the Full Hearing.

Issue#4: Did the District Court err 

in denying Appellant’s Injunctive Relief 

based on Balancing the Equities and/or

Unclean Hands.

Issue #5: Did the District Court err in 

vacating the Jury’s Attorney Fee award.
ii

Page

Statement of Facts 5

Summary of Argument 10

Argument 10

Issue #1: Did the District Court err 

in Granting the Appellee’s Motion to 

Set Aside the Jury Verdict based upon 

failure to Establish Irreparable harm 

and Lack of Adequate Remedy at Law? 11

A. The Issue of Irreparable Harm is 

for the Court: 11

B. There Was Irreparable Harm: 15

C. There is no Adequate Remedy at Law: 17

Issue #2: Did the District Court err 

in Granting the Appellee’s Motion to 

Set Aside the Jury Verdict based on 

Improper Jury Instructions. 19

Issue #3: Even if the Court Rejected the 

Appellee’s Motion to Set Aside Jury Verdict 

Did the District Court err in Denying 

Appellant’s Request for Permanent Injunction 

after the Full Hearing. 28

A. Standard of Review: 29

B. Imminent Harm: 29

C. Irreparable Injury and Adequate 

Remedy at Law: 32
iii

Page

1. Irreparable Injury: 33

2. Adequate Remedy at Law: 34

D. The Record Shows a Complete Absence 

of any Guiding Principles or Rules 

Upon Which the Court Relied in 

Denying Injunctive Relief. 38

1. Requested Scope: 38

(i) State Wide Prohibition of 

Use: 38

(ii) Presumption of State-Wide 

Rights: 39

(iii)Actual Use and 

Business Transactions: 41

(iv) All Speech Mediums: 43

(v) Publicly Traded Stock 

Designation: 46

(vi)Use of Appellant’s Trade 

Name on the Internet: 46

2. In Light of the Appellant’s 

Evidence and the Virtual 

Absence of Appellee’s Evidence 

to the Contrary the Court 

Denied Appellant’s Injunctive 

Relief without Any Basis in 

Guiding Principles or Rules: 49
iv

Page

Issue#4: Did the District Court err in 

denying Appellant’s Injunctive Relief 

based on Balancing the Equities and/or

Unclean Hands. 51

A. Balancing the Equities: 51

B. Overly Broad: 56

C. Unclean Hands: 59

Issue #5: Did the District Court err in 

vacating the Jury’s Attorney Fee award. 62

Conclusion 63

Prayer 65

Certificate of Service 66

Certificate of Brief 67 

Appendices

Appendix 1: Copy of the Trial Court’s Judgment

Appendix 2: Copy of Jury Charge

 Appendix 3: Record Excerpts of Court’s Directed Verdict 
v

TABLE OF AUTHORITIES

 Page

Cases:

2300, Inc. v. City of Arlington, 888 S.W.2d 

123 (Tex. App.--Fort Worth 1994, no writ) 25,29 

Abercrombie and Fitch Co. v. Hunting World, 

Inc., 537 F.2d 4 (2nd Cir. 1976) 12

All Am. Builders, Inc. v. All Am. Siding of

Dallas, Inc., 991 S.W.2d 484, (Tex. App.-Fort 

Worth 1999, no pet.) 24

Bd. of Trustees v. Fox, 492 U.S. 469, 

109 S.Ct. 3028, 106 L.Ed.2d 388 (1989) 44

Black Hills Jewelry Mfg. Co. v. Gold Rush, 

Inc., 633 F.2d 746 (8th Cir.1980) 17,26,33

Brennan's, Inc. v. Brennan's Rest., L.L.C.,

360 F.3d 125 (2d Cir.2004) 17,26,33

Camarena v. Texas Employment Comm’n, 

754 S.W. 2d 149, 151 (Tex. 1988) 30

Cameron County v. Velasquez, 668 S.W.2d 

776 (Tex.App.--Corpus Christi 1984, writ 

ref'd n.r.e.) 23

Cano v. Macarena, 606 S.W.2d 718 (Tex. App.-

Corpus Christi, 1980) 40

Central Hudson Gas & Electric Corp. v. Public 

Service Commission of New York, 447 U.S. 557, 

100 S. Ct. 2343, 65 L.Ed.2d 341 (1980) 44-45
vi

Page

Chemlawn Servs. Corp. v. GNC Pumps, Inc.,

690 F. Supp. 1560 (S.D.Tex.1988) 30,34

Circuit City Stores, Inc. v. CarMax, Inc.,

165 F.3d 1047 (6th Cir.1999) 17,26,34

Craddock v. Sunshine Bus Lines, 134 Tex. 388, 

133 S.W.2d 124, 126 (Tex.Comm.App.--1939, 

opinion adopted) 49

Davis v. Huey, 571 S.W.2d 859 (Tex. 1978) 29,49

Douglas v. Walker, 707 S.W.2d 733, 734

(Tex. App.--Beaumont 1986, no writ) 14

Downer v. Aquamarine Operators, Inc., 701 

S.W.2d 238 (Tex.1985), cert. denied, 476 

U.S. 1159, 106 S. Ct. 2279, 90 L.Ed.2d 721 

(1986) 25,29

Dunnagan v. Watson, 204 S.W.3d 30 

(Tex. App.—Fort Worth 2006, pet. denied) 59

Enter. Int'l, Inc. v. Corporacion Estatal 

Petrolera Ecuatoriana, 762 F.2d 464 

(5th Cir.1985) 32

Flores v. Flores, 116 S.W.3d 870 (Tex. App.—

Corpus Christi 2003, no pet.) 59

Florida Bar v. Went For It, 515 U.S. 618, 

115 S. Ct. 2371, 132 L.Ed.2d 541 (1995) 45

Fuji Photo Film Co. v. Shinohara Shoji 

Kabushiki Kaisha, 754 F.2d 591 (5th Cir.1985) 16

Gonzalez v. Zamora, 791 S.W.2d 258 (Tex. App.

-Corpus Christi, 1990) 58
vii

Page

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 

1199 (9th Cir. 2000) 17,26,34

Hellenic Inv. v. Kroger Co., 766 S.W.2d 861

(Tex. App.-Houston [1st Dist.] 1989, no writ) 57

Hitt v. Mabry, 687 S.W.2d 791, 795 (Tex. App.-

San Antonio 1985, no writ) 56

Hudgens v. Goen 673 S.W. 2d 420 (Tex. AppWaco, 1979) 22

Isunai v. Manske-Sheffield Radiology Group, 

805 S.W. 2d 602 (Tex. App—Beaumont, 1991) 58

Jeter v. Associated Rack Corp., 607 S.W.2d 272 

(Tex. App.—Texarkana 1980, ref. n.r.e.) 18,35

Jim Rutherford Investments Inc. v. Terramar 

Beach Community Ass'n., 25 S.W.3d 845(Tex. App.

—Houston [14 Dist.] 2000, pet. den’d) 28

Joy Mfg. Co. v. CGM Valve & Gauge Co., 730 F. 

Supp. 1387 (S.D.Tex.1989)

Landry v. Travelers Insurance Co., 458 S.W. 2d

649 (Tex. 1970) 49

Lazy M Ranch, Ltd. v. TXI Operations, LP,

978 S.W.2d 678 (Tex. App.-Austin 1998, 

pet. denied) 59-60

Light v. Centel Cellular Co, 883 S.W.2d 642 

(Tex. 1994) 58

Lower Nueces River Water Supply Dist. v. 

Live Oak County, 312 S.W.2d 696, 701 (Tex.

Civ. App.-San Antonio 1958, writ ref'd n.r.e.) 56
viii

Page

McAfee MX v. Foster, No. 02-07-080-CV, 2008 WL 

344575, at *2, 2008 Tex.App. LEXIS 968, at *8 

(Tex.App.-Fort Worth Feb. 7, 2008, pet. denied), 

petition for cert. filed, No. 08-639 

(U.S. Nov. 12, 2008) 52

McAx Sign Co., Inc. v. Royal Coach, Inc., 

547 S.W.2d 368, 369 (Tex.Civ.App.--Dallas 

1977, no writ) 1

McDonald's Corp. v. Robertson, 147 F.3d 1301, 

(11th Cir.1998) 17,26,34

Miller v. Lone Star Tavern, Inc. 593 S.W.2d 341

(Tex. Civ. App.--Waco 1979, no writ) 22

Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447, 

98 S.Ct. 1912, 56 L.Ed.2d 444 (1978) 44

Pappan Enters., Inc. v. Hardee's Food Sys., 

Inc., 143 F.3d 800, 805 (3d Cir.1998) 17,26,34

Parkem Indus. Servs., Inc. v. Garton 619 S.W. 

2d 428 (Tex. Civ. App.—Amarillo 1981, no writ) 29

Pebble Beach Co v.Tour 18 I Ltd., 

942 F. Supp. 1513 (S.D. Tex., 1996) 12

Pebble Beach Co. v. Tour 18 I, Ltd., 

155 F.3d 526 (5th Cir. 1998) 13

Physicians and Surgeons Gen. Hosp. v.

Koblizek 752 S.W. 2d 657 (Tex. App.—Corpus 

Christ, 1988) 23-24
ix

Page

Pittsburgh Press Co. v. Pittsburgh Comm'n 

on Human Relations, 413 U.S. 376, 385, 

93 S. Ct. 2553, 37 L.Ed.2d 669 (1973) 44

Pro Hardware, Inc. v. Home Ctrs. of America, 

Inc., 607 F.Supp. 146, 154 (S.D.Tex.1984) 30,34

Quantum Fitness Corp. v. Quantum Lifestyle 

Ctrs., L.L.C., 83 F.Supp.2d 810, 831 

(S.D.Tex.1999) 27,33

Recon Exploration, Inc. v. Hodges, 798 S.W.2d 

848 (Tex. App.--Dallas 1990, no writ) 29,49

Rescuecom Corp. v. Google, Inc. 562 F.3d 123 

(2d Cir. 2009) 48

S. Monorail Co. v. Robbins & Myers, Inc., 666 

F.2d 185, 188 (5th Cir. Unit B 1982) 27,33

Smithson v. Cessna Aircraft Co., 665 S.W.2d 439

(Tex.1984) 49

Societe Des Produits Nestle, S.A. v. Casa 

Helvetia, Inc., 982 F.2d 633, 640 (1st Cir.1992) 17

Soweco v. Shell Oil Co., 617 F.2d 1178,

(5th Cir.1980), cert. denied, 450 U.S. 981, 

101 S. Ct. 1516, 67 L.Ed.2d 816 19

Storey v. Cent. Hide & Rendering Co., 

148 Tex. 509 226 S.W.2d 615, 618-19 (1950) 51-52

Texas Soc. v. Ft. Bend Chapter, 590 S.W.2d 156

(Civ. App.—Texarkana 1980, ref. n.r.e.) 18,35

Thompson v. W. States Med. Ctr., 535 U.S. 357, 

122 S. Ct. 1497, 152 L.Ed.2d 563 (2002) 45
x

Page

Thompson v. Thompson Air Conditioning & Heating, 

Inc., 884 S.W.2d 555, (Tex. App.-Texarkana 1994, 

no pet.) 24

Ty, Inc. v. Jones Group, Inc., 237 F.3d 891

(7th Cir.2001) 17,26,33

Union Gas Corp. V. Gisler, 129 S.W. 3d 245 

(Tex. App.-Corpus Christi, 2003) 60-61

Union Nat’l Bank v. Union Nat’l Bank, 909 F. 2d 

839 (5th Cir. 1990) 12

Webb v. Glenbrook Owners Association, Inc., 

98 S.W.3d 374, 384 (Tex. App.—Dallas, 2009) 57

Zapata v. Zapata 841 S.W. 2d 45 (Tex. App.—

Houston [14th Dist], 1992) 1-12,16,

19,31

Statutes:

Tex. Bus. & Comm. Code § 16.15(c) (1968) 40

Tex. Bus. & Comm. Code s 16.27(a) (1968) 40
1

STATEMENT OF THE CASE

This is an appeal of an adverse ruling by the 

District Judge following a favorable jury verdict on 

the issue of common law trade name infringement. 

[Appendix 1]. Because the Order/Judgment is vague as 

to the basis of the Court’s ruling, Appellant must 

address all conceivable basis for the District Court’s 

decision McAx Sign Co., Inc. v. Royal Coach, Inc., 547 

S.W.2d 368, 369 (Tex.Civ.App.--Dallas 1977, no writ).

It is the Appellant’s contention that to the extent 

the Court’s decision was based upon the Appellee’s 

Motion to Set Aside the Jury Verdict [Clerk’s Record, 

pp.143-156]1 the Court erred in so doing. The Court had 

directed a verdict that Appellant was the senior user

[Reporter’s Record: Volume V: 150-151] 2 and the jury 

found that Tesoro Corporation was both the Appellant’s 

trade name and that the Appellee had created likelihood 

of confusion [RR:XI:75]. To the Extent the Court’s 

decision was based upon the Appellee’s Motion to set 

 1

 There is only one volume of the Clerk’s record. Hereinafter CR: page.

2

 Hereinafter, RR:Vol: Page.
2

aside based on improper jury issues [CR:143-156] the 

Court again erred because the only two issues 

presented, violation of the common law trade 

infringement and declaratory relief were in fact one in 

the same, in other words they necessarily related, and 

the Appellee was on full notice as to what was being 

pled and requested. To the extent the Court left the 

jury verdict intact, but based its ruling on a lack of 

irreparable injury or the presence of discernable 

damages at law the Court again erred. Appellant put on 

more than sufficient evidence both at trial and in the 

Permanent Injunction hearing to show non-speculative, 

unquantifiable injury that cannot be adequately 

compensated at law. To the extent the Court denied 

Appellant’s injunctive relief based upon the 

application of unclean hands or a balancing of the 

equities Appellant contends the Appellee was the only 

party which appeared in court with unclean hands and 

that over the course of the trial it gave the Trial 

Court no equities on its behalf in which to balance 

against Appellant’s needs. Finally, to the degree that 
3

the Court did base its ruling on Appellant’s failure to 

demonstrate its right to injunctive relief, the denial 

of attorney’s fees stipulated to by both parties was 

based upon the successful jury finding and should not 

have been disturbed

STATEMENT REGARDING ORAL ARGUMENT

While the law on the issue of trade name and 

trademark infringement is well developed, the facts of 

this case present many issues the Court found novel, or 

difficult to resolve. One of the specific aspects of 

the case factually was the admission by the Appellee 

that it knew the Appellant owned the name and after 

being refused the use or the purchase of the name, it 

proceeded to use the name anyway under the “assumed 

name” provisions of Texas law. Furthermore, evidence at 

trial revealed the Appellee knew there was the risk of 

a trade name infringement claim [RR:V:41-44, 61-71;

IX:87]. At one point in the proceeding the court even 

confronted the Appellee with the fact that Appellee’s 

usurpation of the name may have been fraudulent
4

[RR:XI:61]. Appellant therefore contends that oral 

argument is not only appropriate but necessary.

ISSUES PRESENTED

Issue #1

Did the District Court err in Granting the 

Appellee’s Motion to Set Aside the Jury Verdict based 

upon failure to Establish Irreparable Harm and Lack of 

Adequate Remedy at Law?

Issue #2

Did the District Court err in Granting the 

Appellee’s Motion to Set Aside the Jury Verdict based 

on Improper Jury Instructions.

Issue #3

Even if the Court Rejected the Appellee’s Motion to

Set Aside Jury Verdict Did the District Court err in 

Denying Appellant’s Request for Permanent Injunction

after the Full Hearing.

Issue#4

Did the District Court err in denying Appellant’s 

Injunctive Relief based on Balancing the Equities and 

Unclean Hands.

Issue #5

Did the District Court err in vacating the Jury’s 

Attorney Fee award.
5

STATEMENT OF FACTS

Appellant Tesoro Corporation is a Donna, Texas

sign leasing and sales business that has been in 

existence since 1975. The owner of Tesoro Corporation, 

Mr. Paul Sullivan secured the name Tesoro Corporation 

in 1975 and has held it continuously every since that 

time [RR:IV:43-45]. According to Appellee’s general 

counsel, Charles Parrish, Appellee was formed as a 

Delaware corporation in 1968 under the name Tesoro 

Petroleum Corporation and in 1969 applied to do 

business in Texas as Tesoro Petroleum Corporation

[RR:V:38]. Appellee has no business operations in Texas 

aside from its corporate headquarters in San Antonio 

where it has been since the inception of Appellee’s 

existence [RR:IX:93]. Although Appellant does do 

business as Triple A signs, its clients remit payment 

and know his business as Tesoro Corporation, his 

business operations and banking relationships are 

conducted as Tesoro Corporation, and his tax returns 

all reflect Tesoro Corporation [RR:IV:58-126]. 

Evidence at trial indicated Appellant did business 
6

across Texas including Amarillo, Dallas, Houston, and 

San Antonio, where Appellee is headquartered [RR:IV:48-

49,78; RR: VIII: 103-123, 214].

The evidence presented at trial shows that in 2004

Appellee approached Mr. Sullivan and one of his 

employees and asked to either pay to use the name or to 

purchase the name. Appellant’s agents clearly refused 

both requests [RR:IV:192-200; RR:V:6-16] and the 

evidence showed that Appellee nevertheless made a 

corporate decision to proceed to use the Appellant’s 

trade name [RR:V:61-71], enlisted the assistance of 

Fulbright & Jaworski, and filed an assumed name 

certificate with the Texas Secretary of State [RR:V:41-

44]. 

The attorney for Fulbright & Jaworski that 

effectuated the name change and use of the name was 

Carrie Platt/Ryan[RR:V:41-44]. Appellee actually 

checked the availability of the name and found that 

Appellant was the registered owner and the name was 

therefore not available. The Texas statute in effect 

in 2004 was the same as the statute today and 
7

prohibited the use of identical or deceptively similar 

names. That statute applied to the use of “Tesoro 

Corporation” as an assumed name in Texas if it was 

already taken, which in this case, it was, thus 

prohibiting Appellee from using the name even as an 

“assumed name” in Texas. [RR:V:61-71].

Appellee approached Appellant, through Carrie 

Platt’s secretary, Darcy Angel and was unable to secure 

the use or ownership of the name. Appellee was advised 

by legal counsel of the legal ramifications of using 

Tesoro Corporation as an assumed name and nevertheless 

took the assumed name Tesoro Corporation knowing it 

could be sued for trade name infringement and that 

Appellant was the owner of that name [RR:V:61-71; 

RR:IV:192-200; RR:V:6-16].

In 2004, shortly after Tesoro Petroleum changed its 

name, Appellant began to get complaints that its 

railroad cars were damaging property, that its trucks 

were causing damage, and/or its employees were cutting 

fence locks. Appellant had no railroad cars, tanker 

trucks or the need to cut fences. The conduct, 
8

railroad cars, trucks, and employees belonged to 

Appellee, Tesoro Petroleum, which had now changed its 

name to take Appellant’s name [RR:IV:127-129]. Then in 

2009 Union Pacific Railroad, a potential customer of 

both Appellant and Appellee, albeit for different 

services, began making demands for money on Appellant. 

What followed and continued through to the present were 

demands for damages from other railroads, threats of 

sanctions from Texas governmental agencies like the 

insurance department and attorney general’s office, law 

firms from as far away as Washington and Alaska sending 

demand letters to Appellant for conduct and actions of 

the Appellee and a continuous barrage of contact that 

made it clear that Tesoro Petroleum’s name changed was 

causing actual confusion within Texas and nationwide. 

In addition, it became clear that potential lenders 

were confusing Appellant’s credit with that of Appellee 

and the good standing of Appellant with that of 

Appellee. [RR:IV:129-192,204-207]. In 2010 a 

consumer/client of Appellant counter sued Appellant in 

Hidalgo County for conduct attributable to Appellee.
9

Richard Schell, the attorney who filed the complaint 

for the Defendant, had done research on Tesoro 

Corporation and due to the confusion created by 

Appellee’s usurpation of Appellant’s name, had come to 

believe that the Appellant was misrepresenting itself

and its identity [RR:IV:259-271].

During trial Appellant’s representatives testified 

as to the irreparable harm caused by Appellee’s conduct 

[RR:IV:127-128,129-192] although from the outset the 

trial was bifurcated and the Court agreed to hear the 

issues relevant to the permanent injunction only after 

a jury verdict established liability and that any 

judgment would be based upon the jury verdict and the 

evidence adduced in the permanent injunction hearing

[RR: VIII: 59-62]. At the Permanent Injunction hearing 

the Appellant’s President, Paul Sullivan, testified to 

the on-going imminent harm caused by the confusion that 

the jury in fact found existed [RR:VIII:70-103, 204-

207] and the fact that he could not calculate or 

predict the extent and degree of the potential harm

[RR:VIII:91-93, 204-207]. Ironically, the Appellee’s 
10

sole witness on the issue, Gene Trevino, admitted the

same thing both at trial and during the injunction 

hearing [RR:VIII:235-236.RR:XI:26-30].

SUMMARY OF ARGUMENT

The District Court erred in granting the Appellee’s 

Motion to Set Aside Jury Verdict. Having already 

granted Plaintiff’s directed verdict on the issue of 

senior user, the Jury properly found that Tesoro 

Corporation was in fact Appellant’s trade name and that 

the Appellee’s use of Appellant’s name created a 

likelihood of confusion among consumers. The jury was 

not required to find irreparable harm or adequate 

remedy at law, as that was an issue for the court to 

determine in the injunction phase of the case. The jury 

issues as to trademark infringement and declaratory 

relief were proper and more than adequately put 

Appellee on notice as to the Appellant’s claims. With 

only equitable relief requested the Appellant clearly 

demonstrated both irreparable harm and the lack of any 

relief at law. Thus there was no basis for the Court 
11

to have nullified the award of attorney’s fees to the 

Appellant.

ARGUMENT

Issue #1

Did the District Court err in Granting the 

Appellee’s Motion to Set Aside the Jury Verdict based

upon failure to Establish Irreparable harm and Adequate 

Remedy at Law?

A. The Issue of Irreparable Harm is for the Court:

The first basis of Appellee’s Motion for Judgment 

and to Disregard is the assertion that the jury failed 

to find irreparable harm and therefore its verdict 

should be disregarded [CR; 143-157]. In light of the 

law and how the case was tried, that assertion is 

invalid. The Appellee cited to Zapata v. Zapata 841 

S.W. 2d 45 (Tex. App.—Houston [14th Dist], 1992) for the 

proposition that a jury must find irreparable harm. 

First of all, Zapata was decided on a directed verdict, 

the case never reached the jury nor was there a jury 

charge in that case. In other words the Court decided 

the issue, not the jury. In this case, the only issues 

required to be submitted to a jury were submitted based 
12

on the elements of common law trade infringement in 

Texas. To prevail in its common-law action for trade 

name infringement, Plaintiff has the burden to 

establish the following elements: (1) that the name it 

seeks to protect is eligible for protection, (2) that 

it is a senior user of the name, and (3) that there is 

a likelihood of confusion between its name and that of 

the other user, Zapata Trading Corp v. Zapata Trading, 

Int’l, Inc. 841 S.W. 2d 45, 47 (Tex. App.--Houston 

[14th Dist.] 1992, no writ) (citing Union Nat'l Bank v. 

Union Nat'l Bank, 909 F.2d 839 (5th Cir.1990)).

There was never an issue that the name was capable 

of protection. To determine the distinguishing 

capability of a mark or a trade name, and thus its 

eligibility for protection, courts employ the classic 

trademark continuum articulated in Abercrombie & Fitch 

Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir. 

1976); Pebble Beach Co v. Tour 18 I Ltd., 942 F. Supp. 

1513, 1537 (S.D. Tex., 1996). A mark or name may be (1) 

fanciful, (2) arbitrary, (3) suggestive, (4) 

descriptive, or (5) generic. Id. Fanciful, arbitrary, 
13

and suggestive marks are inherently distinctive and 

therefore protectable without an additional showing of 

consumer identification. Id. At the other end of the 

continuum are generic marks, which are never 

protectable because they represent the name of the good 

or service itself and therefore cannot identify or 

distinguish a particular source. Id. Descriptive marks 

fall somewhere in between. These marks describe a 

characteristic of the good or service itself and may 

not be protected absent a showing that the mark has 

become associated in the minds of consumers with the 

particular, albeit unknown, source. Pebble Beach Co.. 

v. Tour 18 I, Ltd., 155 F.3d 526 (5th Cir. 1998). This 

association is called secondary meaning. Id.

Appellant’s trade name “Tesoro Corporation,” 

derives from the Spanish name for “treasure” and in 

addition to being at the far end of the spectrum where 

names are protectable without any showing of consumer 

identification, the evidence adduced at trial shows 

that after 37 years of business Tesoro Corporation has 

also acquired consumer identification. Evidence 
14

showing long and extensive use has been held sufficient 

to prove a trade name has acquired secondary meaning. 

Douglas v. Walker, 707 S.W.2d 733, 734 (Tex. App.--

Beaumont 1986, no writ).

In this case, Appellant was willing to allow 

Defendant to call itself Tesoro Petroleum, it simply 

would not allow Appellee to use Tesoro Corporation. If 

the Appellant’s trade name had no importance the 

Appellee would have not begun to use it without 

permission, nor would it be so resistant in 

relinquishing the name. The Texas Secretary of State’s 

office clearly recognized the combination of Tesoro and 

Corporation into one name as being worthy of 

registration and the evidence at trial demonstrated 

that the Defendant thought it was protectable enough to 

seek to use or buy it before simply trying to usurp the 

name [RR:V:9-15, RR:V:41-4; RR: V:60-72; RR:V:84-87]. 

Appellee tried to argue that it, not the Appellant,

was the senior user. The Court granted a directed 

verdict in Appellant’s favor on the issue of senior 

user before the jury phase of the trial began [RR:V: 
15

150-151; RR:XI:35] The Appellee is simply wrong about 

the issue. It has never been about who was the senior 

user of “Tesoro” or “Tesoro Petroleum” but rather who 

was the senior user of “Tesoro Corporation.” The jury 

found that “Tesoro Corporation” was Plaintiff’s trade 

name and by using that exact name, Defendant caused 

actual confusion [RR:XI:75]. In this case the evidence 

showed that the senior user of “Tesoro Corporation” was 

not disputed, every Defendant witness, whether offered 

by the Defendant or the Plaintiff had testified that 

Plaintiff was the senior user of the name at issue 

“Tesoro Corporation” [RR:V:84-85; RR:V:61-72]. Having 

rejected the Defendant’s argument that the fight was 

over the name “Tesoro” and not “Tesoro Corporation,” it 

was entirely appropriate to grant directed verdict for 

the Plaintiff as to the senior user of “Tesoro 

Corporation” when even the Defendant admitted that to 

be the case.

B. There Was Irreparable Harm:

Thus Appellee was left with the argument that there 

was no irreparable harm. However, a finding of 
16

likelihood of confusion brings with it a presumption of 

irreparable harm. So the analysis, much like that in 

Zapata v. Zapata also cited herein above, is whether 

there was “evidence” to support a particular finding. 

In this case, just as in Zapata v. Zapata 841 S.W. 2d 

45, 48-49, the Plaintiff demonstrated actual confusion 

[RR:IV: 129-192; RR:IV: 259-270] and proof of actual 

confusion is probative evidence that likelihood of 

confusion exists, Zapata Trading Corp v. Zapata 

Trading, Int’l, Inc. 841 S.W. 2d 45, 48 (Tex. App.—

Houston [14th Dist] 1992 no writ). In fact, once actual 

confusion is proved, an almost overwhelming amount of 

proof is necessary to refute the existence of a 

likelihood of confusion. Id.; see also Fuji Photo Film 

Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 

597 (5th Cir.1985). In this case not only was there 

proof of actual confusion as cited herein above, but 

the record reflects no real effort by the Defendant to 

refute the actual confusion. Once the jury found 

likelihood of confusion the irreparable nature of the 

harm was established and the Court was free to presume 
17

irreparable injury, See Brennan's, Inc. v. Brennan's 

Rest., L.L.C., 360 F.3d 125, 129 (2d Cir.2004); Ty, 

Inc. v. Jones Group, Inc., 237 F.3d 891, 902 (7th 

Cir.2001); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 

1199, 1209 (9th Cir. 2000); Circuit City Stores, Inc. 

v. CarMax, Inc., 165 F.3d 1047, 1056 (6th Cir.1999); 

McDonald's Corp. v. Robertson, 147 F.3d 1301, 1310 

(11th Cir.1998); Pappan Enters., Inc. v. Hardee's Food 

Sys., Inc., 143 F.3d 800, 805 (3d Cir.1998); Societe 

Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 

F.2d 633, 640 (1st Cir.1992); Black Hills Jewelry Mfg. 

Co. v. Gold Rush, Inc., 633 F.2d 746, 753 n. 7 (8th 

Cir.1980).3

C. There is no Adequate Remedy at Law:

The corollary to lack of irreparable harm is the 

argument that there is an adequate remedy at law. The 

determination of whether an adequate remedy at law 

exists is not a mechanical task. The mere existence of 

a remedy at law is not a ground for a denial of 

 3

 At trial and during hearings the Appellee tried to argue that because these cases were 

temporary and not permanent injunction cases, the presumption should not apply. There is no 

valid reason to limit the presumption to temporary status quo relief versus permanent injunctive 

relief.
18

injunctive relieve unless the legal remedy is as 

practical and efficient to the ends of justice as the 

equitable remedy, Jeter v. Associated Rack Corp., 607 

S.W.2d 272, 278 (Civ. App.—Texarkana 1980, ref. 

n.r.e.). Thus, while a plaintiff may have a right to 

bring an action for damages, that remedy is inadequate 

if damages cannot be calculated. Texas Soc. v. Ft. Bend 

Chapter, 590 S.W.2d 156, 159 (Civ. App.—Texarkana 1980, 

ref. n.r.e.).

As set out in the testimony of Paul Sullivan it is 

impossible to calculate monetary damages [RR:IV:129-

192: RR: VIII: 70-103]. The instances of confusion are 

continuous and haphazard. The effects on credit and 

goodwill are impossible to gauge and may be immediate, 

or may create long-term problems that do not 

immediately manifest themselves. Since it is impossible 

to know when the confusion will again re-surface, it is 

equally impossible to prepare for the problems or to 

take prospective action to mitigate harm. The 

impossibility of calculating damage in part contributed 

to the Plaintiff’s decision to drop his monetary claims 
19

prior to the commencement of the jury trial. Appellant

simply could not calculate the harm in a monetary 

sense.

Issue #2

Did the District Court err in Granting the 

Appellee’s Motion to Set Aside the Jury Verdict based 

on Improper Jury Charge and Instructions.

The Appellee would have the Court believe that the 

failure to present “irreparable injury” to the jury is 

defective and precludes granting a summary judgment. 

It cites a long list of cases including Zapata v. 

Zapata 841 S.W. 2d 45 (Tex. App.—Ho [14th Dist], 1992) 

for the proposition that a jury must find irreparable 

harm. That statement is blatantly incorrect. In a 

trademark infringement case the question of “likelihood 

of confusion” is a question for the trier of fact. 

Zapata v. Zapata 841 S.W. 2d 45, 49. See also Soweco v. 

Shell Oil Co., 617 F.2d 1178, 1186 (5th Cir.1980), 

cert. denied, 450 U.S. 981, 101 S. Ct. 1516, 67 L.Ed.2d 

816 The only matters submitted to a jury in Texas are 

the elements of a cause of action that a jury is 
20

required to answer. There is no jury charge in Texas 

for a permanent injunction because a permanent 

injunction and the elements require of it are to be 

determined by the Court in its sound discretion.

The Jury charge in this case was as follows:

Question one. Do you find from a preponderance 

of the evidence that Tesoro Corporation is the 

trade name of the Plaintiff? A trade name is 

any designation which is adopted and used by a 

person to denominate goods which the markets or 

services which he renders or a business which 

he conducts or has come to be so used by 

others.

Answer yes or no.

If you answered yes to question number one,

then answer question number two. Otherwise, do 

not answer question number two.

Question number two. Do you find from a

preponderance of the evidence that there exists 

a likelihood of confusion between the 

Plaintiff's corporation and the Defendant's 

corporation by any consumer? 

Answer yes or no. [RR:VI:6-7]. 

The Appellee’s only objections to the Court’ charge and 

instructions[RR: V: 164-170; RR: XII: Exhibit 1] wholly 

failed to raise any issue as to the submission of 

irreparable harm and/or adequate remedy at law, an 
21

objection it raised for the first time in its Motion to 

Disregard two months later.

In the hearing on May 21, 2013 the Appellee 

attempted to argue that because there was a claim for 

common law trademark infringement and a claim for a 

declaratory action, that some how these claims were 

“separate’ and their elements were not “necessarily 

referable” to one another, and that by failing to 

present the issue of irreparable harm to the jury the 

Appellee had not know what it need to respond to

[RR:VII:31-38]. The key to the Appellee’s argument 

lies in the declaratory judgment action not being 

necessarily referable to the common law trademark

infringement case. The facts of each were identical. 

There were no “two unrelated claims” such that the 

Appellee would have been confused as to which claim was 

being asserted. In this case there was only one claim, 

common law trademark infringement, the declaratory 

action was simply a mode of relief, it did not have one 

single different fact or element and the Appellee’s 

failure to object was fatal to its claim [CR:34-35]. To 
22

give any credence to the Appellee’s contention would be 

to say “we were confused by the claim for relief under 

the common law trademark infringement cause of action 

and by the request that the Court declare Defendants 

actions a violation of Texas Common law trade 

infringement law.” It is simply not a tenable argument.

The Defendants cite to Hudgens v. Goen 673 S.W. 2d 

420 (Tex. App-Waco, 1979) for the same proposition and 

that case is equally flawed. In Hudgens the cause of 

action was not common law trade infringement, but 

unfair competition. Based on Miller v. Lone Star 

Tavern, Inc. 593 S.W.2d 341 (Tex. Civ. App.--Waco 1979, 

no writ) irreparable harm was a necessary third element 

of the main cause of action, not the injunctive relief. 

More important, the Court then went on to say that the 

third element found in Miller, of irreparable harm, was 

not required for a plaintiff to be entitled to 

injunctive relief when the cause of action is based on 

unfair competition Hudgens v. Goen 673 S.W. 2d 420, 

423. In this case, irreparable harm has never been an 

element of a trade infringement case. Rather it is an 
23

element of a permanent inunction and that issue is left 

to the Court which must look to the underlying 

evidence, not the jury charge.

In an amendment to its Motion to Set Aside [CR: 

143-156] appellee cited to Physicians and Surgeons Gen. 

Hosp. v. Koblizek 752 S.W. 2d 657, 660 (Tex. App.—

Corpus Christ, 1988) that seems to stand for the 

proposition that having refused to submit a jury 

question, this Court could not have previously made the 

determination that there was no question of fact to 

submit to the jury and therefore could not have granted 

a directed verdict. That is not what Physicians and 

Surgeons Gen. Hosp. v. Koblizek stands for. Rather, 

that case stands for the following proposition:

The trial court was not authorized to find on its 

own that the answers found by the jury created an 

unreasonable risk of harm. That was a disputed and 

essential factual issue which was never requested 

by appellees or presented to the jury. The trial 

court was prevented from making a finding on the 

omitted issue and such circumstances require that 

judgment be rendered for appellant. Cameron County 

v. Velasquez, 668 S.W.2d 776, 781 (Tex.App.--Corpus 

Christi 1984, writ ref'd n.r.e.).
24

In Physicians and Surgeons Gen. Hosp. v. Koblizek the 

trial judge had refused an issue on whether the 

hospital “knew” that the conditions of its floor had 

created an unreasonable risk of harm. That was an 

essential element of the cause of action (Emphasis 

Added) and it remained disputed after the presentation 

of evidence. Irreparable harm/adequate remedy at law is 

simply not an essential element of a common law trade 

infringement case, both become relevant only in the 

event of a request for injunctive relief which falls 

squarely into the realm of the trial judge’s authority.

More important, in a common law trade infringement 

case the entire case can be tried to the Court and it 

determines both facts and law. Thompson v. Thompson Air 

Conditioning & Heating, Inc., 884 S.W.2d 555, (Tex. 

App.-Texarkana 1994, no pet.); All Am. Builders, Inc. 

v. All Am. Siding of Dallas, Inc., 991 S.W.2d 484, 

(Tex. App.-Fort Worth 1999, no pet.). In this case 

only the injunction phase has been bifurcated and just 

as in Thompson, the Court’s findings of factual issues 
25

relating to the injunctive relief are every bit as 

proper and binding as a jury’s. 

In granting a permanent injunction the standard of 

review is clear abuse of discretion by a trial court, 

not a jury. See 2300, Inc. v. City of Arlington, 888 

S.W.2d 123, 126 (Tex. App.--Fort Worth 1994, no writ). 

A trial court’s ruling is however reversible on appeal 

if it acts without reference to any guiding rules and 

principles. See Downer v. Aquamarine Operators, Inc.,

701 S.W.2d 238, 241-42 (Tex.1985), cert. denied, 476 

U.S. 1159, 106 S. Ct. 2279, 90 L.Ed.2d 721 (1986). 

Thus, the jury does not find “irreparable harm,” it 

finds likelihood of confusion in an infringement case 

and the Court must look to the record to see if the 

Plaintiff has “evidence to support irreparable harm.” 

In this case evidence clearly exists and there was no 

requirement to submit the issue to the jury. If a jury 

finding was necessary there would be no case law 

allowing the Court to grant or deny an injunction based 

on “conflicting evidence.” A jury finding would take 
26

that discretion from the Court and that is not the law 

in Texas.

Finally, the Appellee’s argument completely 

overlooks the legal effect of the likelihood of 

confusion element that is submitted to a jury in a 

common law trade infringement case. In virtually every 

circuit in the United States the appeals courts have 

expressly adopted the holding that a court may presume 

irreparable injury upon finding a likelihood of 

confusion in a trademark case. See Brennan's, Inc. v. 

Brennan's Rest., L.L.C., 360 F.3d 125, 129 (2d 

Cir.2004); Ty, Inc. v. Jones Group, Inc., 237 F.3d 891, 

902 (7th Cir.2001); GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199, 1209 (9th Cir. 2000); Circuit City 

Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1056 (6th 

Cir.1999); McDonald's Corp. v. Robertson, 147 F.3d 

1301, 1310 (11th Cir.1998); Pappan Enters., Inc. v. 

Hardee's Food Sys., Inc., 143 F.3d 800, 805 (3d 

Cir.1998); Societe Des Produits Nestle, S.A. v. Casa 

Helvetia, Inc., 982 F.2d 633, 640 (1st Cir.1992); Black 

Hills Jewelry Mfg. Co. v. Gold Rush, Inc., 633 F.2d 
27

746, 753 n. 7 (8th Cir.1980). Although the 5th Circuit 

has not expressly adopted the holding it has done so 

implicitly in S. Monorail Co. v. Robbins & Myers, Inc.,

666 F.2d 185, 188 (5th Cir. Unit B 1982) and districts 

throughout the Fifth Circuit recognize that a finding 

of likelihood of confusion is a finding of irreparable 

harm/injury. Quantum Fitness Corp. v. Quantum Lifestyle 

Ctrs., L.L.C., 83 F.Supp.2d 810, 831 (S.D.Tex.1999). 

In short, Appellee’s argument as to the charge fails at 

every level and because of the unique nature of an 

infringement case, the likelihood of confusion finding 

establishes irreparable harm.

In addition, the argument is disingenuous given the 

fact that the Appellee knew that the case would be 

tried in a bifurcated manner, with the entire 

injunction issue left to the Court. The Appellee even 

filed and had granted, a motion for continuance seeking 

time to develop more evidence for the injunction phase

and in fact have took the Appellant’s deposition for a 

third time in this case. The argument of a defective 

jury charge has no merit. 
28

Issue #3

Even if the Court Rejected the Appellee’s Motion ot 

Set Aside Jury Verdict Did the District Court err in 

Denying Appellant’s Request for Permanent Injunction 

after the Full Hearing.

In light of the facts that the Appellant won a jury 

verdict as to Tesoro Corporation being its trade name 

and the Appellee’s use of that name creating the 

likelihood of consumer confusion, was given a directed 

verdict as to being the senior user, and presented in 

evidence at trial and the permanent injunction hearing

of irreparable harm and no adequate remedy at law, the 

Trial Court erred in denying injunctive relief. 

To obtain a permanent injunction, a plaintiff must 

prove (1) the existence of a wrongful act, (2) the 

existence of imminent harm, (3) the existence of 

irreparable injury, and (4) the absence of an adequate 

remedy at law. Jim Rutherford Investments Inc. v. 

Terramar Beach Community Ass'n., 25 S.W.3d 845, 849 

(Tex. App.—Hous. [14 Dist.] 2000, pet. den’d). In the 

present case the Plaintiff has established its common 

law trade infringement claim and has therefore 
29

established the existence of a wrongful act which in 

addition to be wrongful, is on-going. Therefore, what 

the Court must determine is the existence of the 

remaining three elements. 

A. Standard of Review:

In granting a permanent injunction the standard of 

review is clear abuse of discretion. See 2300, Inc. v. 

City of Arlington, 888 S.W.2d 123, 126 (Tex. App.--Fort 

Worth 1994, no writ). A trial court’s ruling must be 

based upon some reference guiding rules and principles. 

See Downer v. Aquamarine Operators, Inc., 701 S.W.2d 

238, 241-42 (Tex.1985), cert. denied, 476 U.S. 1159, 

106 S. Ct. 2279, 90 L.Ed.2d 721 (1986). An abuse of 

discretion exists where the trial court lacks evidence 

in the record which reasonably supports that trial 

court's decision. Davis v. Huey, 571 S.W.2d 859, 862 

(Tex.1978); Recon Exploration, Inc. v. Hodges, 798 

S.W.2d 848, 852 (Tex.App.--Dallas 1990, no writ). 

B. Imminent Harm:

In order to justify a permanent injunction the 

underlying injury must be real and substantial Parkem 
30

Indus. Servs., Inc. v. Garton 619 S.W. 2d 428, 430 

(Tex. Civ. App.—Amarillo 1981, no writ). An injunction 

will not issue to prevent merely speculative harm, 

Camarena v. Texas Employment Comm’n, 754 S.W. 2d 149, 

151 (Tex. 1988). In this case the harm was and is both 

real and on-going. The evidence adduced at trial shows 

a clear confusion created by the Defendant’s use of 

Texas Tesoro’s name. Appellant demonstrated actual 

confusion [RR:IV:129-192; RR:IV:259-270] and based in 

part on that evidence, the jury found likelihood of 

confusion. Where likelihood of confusion exists in a 

trademark or trade name case, the case law in Texas is 

clear that the plaintiff's lack of control over the 

nature and quality of the defendant's goods or services 

constitutes an immediate (and in fact irreparable 

injury), regardless of the actual quality of those 

goods or services. See Joy Mfg. Co. v. CGM Valve & 

Gauge Co., 730 F. Supp. 1387, 1394 (S.D.Tex.1989); 

Chemlawn Servs. Corp. v. GNC Pumps, Inc., 690 F.Supp. 

1560, 1569 (S.D.Tex.1988); Pro Hardware, Inc. v. Home 
31

Ctrs of America, Inc., 607 F. Supp. 146,154 

(S.D.Tex.1984).

As set out above, evidence of the imminence of the 

harm to the Plaintiff was adduced in the testimony from 

Richard Shell and from Paul Sullivan that showed based 

on the actual confusion there was a real and on-going 

damage to the Appellant’s business in Texas. In 

addition, since the trial, additional events testified 

to by Mr. Sullivan show that the Defendant’s actions 

now had Appellant identified in the public forum as a 

“Donna based” oil and gas company [RR:VIII:70-103,

RR:XIV: Exhibit 2, pp.11]. Appellant clearly had and 

has no control over the actions and business practices 

of Appellee and the Appellee’s perceived presence in 

Texas completely overshadows the business enterprise of 

Appellant even though the two companies are in 

different businesses. Again, it bears repeating that 

Plaintiff’s evidence of actual confusion was never 

refuted by any Defense witness and proof of actual 

confusion is probative evidence that likelihood of 

confusion exists, Zapata Trading Corp v. Zapata 
32

Trading, Int’l, Inc. 841 S.W. 2d 45, 48 (Tex. App.—

Houston [14th Dist] 1992 no writ), a fact that did not 

escape the jury. 

C. Irreparable Injury and Adequate Remedy at Law:

Irreparable injury and adequate remedy at law 

although distinct elements of a permanent injunction 

often become intertwined because proof of an 

irreparable injury in many cases is done by showing 

that there is no adequate remedy at law. Appellee has 

red to focus on the magnitude of harm and somehow 

downplay the actual damage to Appellant. However, 

federal courts have long recognized that it is not so 

much the magnitude but the irreparability that counts 

for purposes of an injunction and ....[A]n injury is 

irreparable only if it cannot be undone through 

monetary remedies .... The absence of an available 

remedy by which the movant can later recover monetary 

damages ... may ... be sufficient to show irreparable 

injury. Enter. Int'l, Inc. v. Corporacion Estatal 

Petrolera Ecuatoriana, 762 F.2d 464, 472–73 (5th 

Cir.1985). 
33

1. Irreparable Injury:

At least one district court in the Fifth Circuit 

has held that in a trademark case, “[w]hen a likelihood 

of confusion exists, the plaintiff's lack of control 

over the quality of the defendant's goods or services 

not only shows imminent harm, but constitutes an 

irreparable injury, regardless of the actual quality of 

those goods or services.” Quantum Fitness Corp. v. 

Quantum Lifestyle Ctrs., L.L.C., 83 F.Supp.2d 810, 831 

(S.D.Tex.1999). The Fifth Circuit has neither expressly 

adopted or a rejected the notion of a presumption of 

irreparable injury where likelihood of confusion has 

been shown to exist, S. Monorail Co. v. Robbins & 

Myers, Inc., 666 F.2d 185, 188 (5th Cir. Unit B 1982). 

But, as set out previously herein, several other 

federal circuits have addressed this issue and 

expressly held that a court may presume irreparable 

injury upon finding a likelihood of confusion in a 

trademark case. See Brennan's, Inc. v. Brennan's Rest., 

L.L.C., 360 F.3d 125, 129 (2d Cir.2004); Ty, Inc. v. 

Jones Group, Inc., 237 F.3d 891, 902 (7th Cir.2001); 
34

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1209 

(9th Cir. 2000); Circuit City Stores, Inc. v. CarMax, 

Inc., 165 F.3d 1047, 1056 (6th Cir.1999); McDonald's 

Corp. v. Robertson, 147 F.3d 1301, 1310 (11th 

Cir.1998); Pappan Enters., Inc. v. Hardee's Food Sys., 

Inc., 143 F.3d 800, 805 (3d Cir.1998); Societe Des 

Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 

633, 640 (1st Cir.1992); Black Hills Jewelry Mfg. Co. 

v. Gold Rush, Inc., 633 F.2d 746, 753 n. 7 (8th 

Cir.1980).

Even absent a presumption based on likelihood of 

confusion the courts have held that factually an injury 

is also irreparable when compensatory damages are 

extremely difficult to calculate. See Chemlawn Servs.,

690 F. Supp. at 1569; Pro Hardware, 607 F. Supp. at 

154. Mr. Sullivan has provided more than adequate 

evidence of irreparable harm/inadequate remedy at law 

at this hearing and in the trial [RR:IV: 127-192; RR: 

VIII: 70-103].

2. Adequate Remedy at Law:
35

The determination of whether an adequate remedy at 

law exists is not a mechanical task. The mere existence 

of a remedy at law is not a ground for a denial of 

injunctive relief unless the legal remedy is as 

practical and efficient to the ends of justice as the 

equitable remedy, Jeter v. Associated Rack Corp., 607 

S.W.2d 272, 278 (Civ. App.—Texarkana 1980, ref. 

n.r.e.)]. Thus, while a plaintiff may have a right to 

bring an action for damages, that remedy is inadequate 

if damages cannot be calculated. Texas Soc. v. Ft. Bend 

Chapter, 590 S.W.2d 156, 159 (Civ. App.—Texarkana 1980, 

ref. n.r.e.).

As set out in the testimony of Paul Sullivan during 

the permanent injunction portion of this proceeding, it 

is impossible to calculate damages. The instances of 

confusion are continuous and haphazard. The effects on 

credit and goodwill are impossible to gauge may be 

immediate, or may create long-term problems that do not 

immediately manifest themselves. Since it is impossible 

to know when the confusion will again surface, it is 

equally impossible to prepare for the problems or to 
36

take prospective action to mitigate harm. He simply 

could not calculate the harm in a monetary sense

[RR:VIII:208-210.

Appellee’s sole effort to establish an adequate 

remedy at law was the testimony of its expert, Gene 

Trevino. Trevino’s entire testimony as to damages was 

restricted to the cost of hiring someone to handle 

telephone calls relating to the on-going confusion 

generated by the Appellee’s wrongful usurpation of 

Appellant’s name [RR:VIII:225-227]. However, Trevino 

and the Appellee completely ignored all of the other 

harm and the inability to calculate that harm, in great 

part because Mr. Trevino’s client simply told him not 

to look into that area of damage.

It as clear from Trevino’s trial testimony and his 

deposition testimony that he only addressed “some of 

the elements” of economic damages [RR:VIII:228]. When 

pressed, Trevino admitted he was not even asked to try 

and calculate economic damage. He claims there is no 

economic loss, yet never did a calculation to make that 

determination nor did he ever look at documents that 
37

would have enabled him to even address the issue 

[RR:VIII:229-232]. In his own words, “I didn’t do 

anything.” [RR:VIII:232]. However, the lack of a 

clearly discernable economic loss is the very essence 

of irreparable harm that lacks a clear remedy at law. 

Therefore, with no other evidence, other than Paul 

Sullivan, Richard Schell, and the voluminous documents 

provided as exhibits showing the inability to calculate 

past economic harm, how can the Appellee even argue as 

to either the extent of the harm or its irreparable 

nature? It cannot. 

When asked directly to confront the issue of future 

harm, Trevino fell back on his telephone answering cost 

analysis and then admitted, he was not asked to do a 

calculation of future economic harm [RR:VIII:232-233]. 

Then after admitting he had no basis for any of his 

numbers, he admitted he had no way of know the degree, 

the frequency, or the intensity of any future confusion 

and harm and that no one could ascertain that

[RR:VIII:234-236]. More important he was not asked, 

and therefore did not perform, any calculation on loss 
38

of good will, loss of reputation, loss of credit, 

future attorney’s fees or any other factor. The only 

quantifiable damage he calculated was phone calls, 

because in the end he was not asked to do anything else

and so he did not [RR:VIII:236-239, 243-246]. The 

problem is the Appellee should have done so because Mr. 

Trevino was the only witness offered to refute the 

Appellant’s case on irreparable harm and lack of 

adequate remedy at law and by his own admission he 

looked at only one narrow area.

D. The Record Shows a Complete Absence of any Guiding 

Principles or Rules Upon Which the Court Relied in 

Denying Injunctive Relief. 

1. Requested Scope:

(i) State Wide Prohibition of Use:

The Appellant requested an injunction preventing 

the Appellee from using the Plaintiff’s trade name 

anywhere in the state of Texas [RR:IV:175-176;RR:XI:36-

36;CR:297-303]. The harm that has befallen the 

Appellant has flowed directly from the Appellee’s 

assumed name filing. In effect consumers and business 

entities are searching the Texas Secretary of State 
39

data basis and finding Tesoro Corporation listed as a 

San Antonio based oil & gas company. To allow the 

Appellee to continue to use the Appellant’s name 

anywhere in Texas will only continue the confusion. 

Having prevailed on its trade name infringement claim, 

Appellant was entitled to deny the Appellee the use of 

its trade name throughout the state. Even Appellee’s 

alleged expert, Mr. Trevino admitted that a business 

is entitled to do operate and solicit business statewide and that he in fact has his own business name and 

can do business state-wide [RR:XI:26-30]. Both 

Appellant’s request and Appellee’s admissions of statewide rights find support in Texas law.

(ii) Presumption of State-Wide Rights:

A certificate of registration issued by the 

Secretary of State under the provisions of the Texas 

Trademark Act is admissible in evidence as prima facie 

proof of: 1) the validity of the registration; 2) the 

registrant's ownership of the mark; and 3) the 

registrant's exclusive right to use the mark throughout the state of Texas in connection with the goods or 
40

services specified in the certificate, subject to any 

conditions or limitations stated therein. Tex. Bus. & 

Comm. Code § 16.15(c) (1968). The Act specifically 

provides that no registration of a trademark shall 

adversely affect common law rights acquired in a 

trademark prior to its registration. While a mark 

remains effectively registered, no common law right may 

be acquired against the owner unless he abandons such 

mark. Tex. Bus. & Comm. Code s 16.27(a) (1968). Cano v. 

Macarena, 606 S.W.2d 718, 722 (Tex. Civ. App. 1980). It 

is undisputed that Mr. Sullivan had properly registered 

the mark and that it was in place continuously since 

1975 [RR:IV:43; RR: XII: Exhibits 24-25].

The registration of Tesoro Corporation created 

certain protections as to its exclusive right to use 

that name. The jury verdict in this case has confirmed 

the principle established in Cano v. Macarena, 606 

S.W.2d 718, 722 that Appellee acquired no rights in the 

name Tesoro Corporation and in fact has violated the 

Appellant’s rights. To give the Appellant less than 

exclusive state-wide use is to reward Appellee’s 
41

efforts by providing Appellant less than what the plain 

reading of the law provides. In addition, the problem 

is more complex because even if Appellee was restricted 

to some small corner of one county in Texas, the fact 

that it continues to be allowed to list “Tesoro 

Corporation” as its assumed name lies at the center of 

the confusion. Appellant receives calls from out-ofstate state regulator’s, taxing authorities, creditors, 

consumers, and other persons [RR:IV:127-192; 

RR:VIII:70-103], based on what is on file with the 

Texas Secretary of State. Therefore, not only should

Appellee not be allowed to use the name in Texas, but 

its assumed name registration should be withdrawn or 

the harm to the Appellant continues unabated.

(iii) Actual Use and Business Transactions:

In addition to the nature of the harm occasioned by 

the Appellee’s continued use of Tesoro Corporation, 

evidence presented in this case demonstrates the statewide presence of the Appellant, including a significant 

and long-established presence in Bexar County that 

continues today that even Appellee’s expert had to 
42

acknowledge [RR:XI:17-24]. Appellant is in every region 

of the state including Bexar, Dallas, Harris, Tarrant 

and El Paso counties. In addition to Texas’ major 

cities, the counties virtually encircle every large 

metropolitan area in the state. In West Texas where 

Plaintiff presence is not as pronounced, he 

nevertheless does business in every county with any 

significant population center that would seek out and 

utilize sign-based advertising. In addition, in those 

areas of the state, the metropolitan areas are also the 

places where business in the outlying counties would be 

acquired. For example, the county seat of Tom Green 

County is San Angelo and San Angelo is the closest city 

where business is conducted for at least a 10-12 county 

surrounding area.4

It is also important to note that the counties 

where the Appellant actively does business are also the 

areas where the Appellee and its business is very 

likely to operate and create the same type of confusion 

 4 By way of illustration Plaintiff in west Texas where Plaintiff is not in every county it does business in Potter 

County (Amarillo), Lubbock County (Lubbock), Taylor County (Abilene), Midland County (Midland), Ector 

County (Odessa), El Paso County, (El Paso), and Val Verde County (Del Rio).
43

that has been testified to in this case. Tom Green, 

Ector, Midland and the contiguous and near-by counties 

are now at the very center of a re-vitalized Texas oil 

and gas industry. Allowing the Appellee to use the

Appellant’s trade name anywhere in these areas invites 

the same confusion and harm that gave rise to the 

lawsuit.

(iv) All Speech Mediums:

The evidence adduced at trial and at the permanent 

injunction hearing shows that beginning in 2009 when 

Appellee began using Tesoro Corporation as its assumed 

name, the confusion became disseminated through a 

variety of mediums, all of which contribute to the 

underlying problem and must be stopped. At issue here 

is the ability of a Court to regulate speech and its 

natural corollary, the printed word. However it is not 

any speech, but commercial speech that the Plaintiff 

seeks to enjoin. 

Commercial speech in any form occupies one of the 

lowest rungs on the First Amendment hierarchy, enjoying 

only a "limited measure of protection, commensurate 
44

with its subordinate position in the scale of First 

Amendment values, and is subject to modes of regulation 

that might be impermissible in the realm of 

noncommercial expression." Bd. of Trustees v. Fox, 492 

U.S. 469, 477, 109 S.Ct. 3028, 106 L.Ed.2d 388 (1989) 

(quoting Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447, 

456, 98 S.Ct. 1912, 56 L.Ed.2d 444 (1978)). Commercial 

speech does "no more than propose a commercial 

transaction" and may be freely regulated. Pittsburgh 

Press Co. v. Pittsburgh Comm'n on Human Relations, 413 

U.S. 376, 385, 93 S.Ct. 2553, 37 L.Ed.2d 669 (1973).

In Central Hudson Gas & Electric Corp. v. Public 

Service Commission of New York, 447 U.S. 557, 566, 100 

S. Ct. 2343, 65 L.Ed.2d 341 (1980), the Supreme Court 

outlined its method of analyzing the lawfulness of 

restrictions on commercial speech:

In commercial speech cases, then, a four-part 

analysis has developed. At the outset, we must 

determine whether the expression is protected 

by the First Amendment. For commercial speech 

to come within that provision, it at least must 

concern lawful activity and not be misleading. 

Next, we ask whether the asserted governmental 

interest is substantial. If both inquiries yield 

positive answers, we must determine whether the 
45

regulation directly advances the governmental

interest asserted, and whether it is not more 

extensive than is necessary to serve that interest. 

Misleading commercial speech, is not protected by 

the First Amendment. Thompson v. W. States Med. 

Ctr., 535 U.S. 357, 367, 122 S. Ct. 1497, 152 

L.Ed.2d 563 (2002). 

As the Central Hudson Court noted, "there can be no 

constitutional objection to the suppression of 

commercial messages that do not accurately inform the 

public about lawful activity. The government may ban 

forms of [235 S.W.3d 670] communication more likely to 

deceive the public than to inform it...." Central 

Hudson, 447 U.S. at 563, 100 S. Ct. 2343 (emphasis 

added). Thus, "the government may freely regulate 

commercial speech that ... is misleading," Florida Bar 

v. Went For It, 515 U.S. 618, 623-24, 115 S. Ct. 2371, 

132 L.Ed.2d 541 (1995) (citations omitted), and the 

remaining Central Hudson factors apply only if the 

speech is not misleading.

In this case it has already been established that 

the speech Appellant seeks to enjoin is the improper 

and impermissible use of Appellant’s own trade name. 
46

The use by Appellee of that trade name has been found 

by a jury to mislead and confuse the public and has 

caused harm to the Appellant. The assertion that a

Texas court cannot enjoin the Appellee from using the

Appellant’s trade name is without legal or factual 

foundation.

(v) Publicly Traded Stock Designation:

Appellee trades its publicly issued and held stock 

on the New York Stock Exchange and its symbol, “TSO,”

is identified as “Tesoro Corporation and was founded in 

1939 and is headquartered in San Antonio, Texas. While 

the Appellee has the right to use the name as a 

“Delaware Corporation” it use as being headquartered in 

“San Antonio, Texas coupled with its assumed name 

filing contributes to the confusion. Appellant 

requested that as part of the permanent injunction that 

Appellee be prohibited from referencing “Tesoro 

Corporation” as a San Antonio, Texas Company.

(vi) Use of Appellant’s Trade Name on the Internet:

The Appellant is well aware of the maxim that 

“equity will not do a vain thing.” The idea that this 
47

Court or any regulatory body can take back or remove 

four years of material that the Appellee has improperly 

placed on the internet is absurd. However, A court can 

prospectively prevent the Appellee, its agents, 

employees, and personnel from using Appellant’s trade 

name in the future. The starting point for this relief 

is the Appellee’s web-site. The web-site is easily 

accessed by simply typing in the Appellant’s trade

name, “Tesoro Corporation.” In addition the web-site 

can be accessed by typing in “Tesoro Corp.” Appellee 

has so completely co-opted the Appellant’s trade name 

that when Tesoro Corporation is entered on the web, 

Plaintiff’s business never appears. In order to reach 

Tesoro Corporation one must enter “Tesoro Corporation, 

Donna, Texas” [RR: VIII: 80-92]. Appellee’s 

misapplication and misappropriation of Appellant’s 

trade name has not only served as an improper use of 

the name, but has allowed Defendant to virtually co-opt 

the Appellant’s name.

An examination of the Appellee’s web-site not only 

reveals that it purports to be Tesoro Corporation of 
48

Texas, but Appellee also uses the site to disseminate 

other material such as press releases, news 

conferences, copies of its annual reports and social 

responsibility reports to name just some of what is 

published on the site, all of which use Appellant’s 

trade name and perpetuate the confusion and harm that 

already exists [RR: XII: Defendant’s Exhibit 7; RR: 

XIV, Exhibit 3]. In Rescuecom Corp. v. Google, Inc.

562 F.3d 123 (2d Cir. 2009), the Court found that even 

persons and entities several steps removed from the 

actual infringer could be compelled to stop using a 

trade name. In Rescuecom Corp. v. Google, Inc. the 

federal court found that Google was infringing on a 

mark through “keyword use” and that such a practice 

qualified as “use” in commerce under the Lanham Act. 

The keyword in this instance is “Tesoro Corporation,” 

and as set out herein above and testified to in this 

hearing, Defendant has completely co-opted that term on 

the internet. Plaintiff does not even appear when it 

inputs its own trade name.
49

2. In Light of the Appellant’s Evidence and the 

Virtual Absence of Appellee’s Evidence to the Contrary 

the Court Denied Appellant’s Injunctive Relief without 

Any Basis in Guiding Principles or Rules:

An abuse of discretion exists where a Court lacks 

evidence in the record which reasonably supports that 

trial court's decision. Davis v. Huey, 571 S.W.2d 859, 

862 (Tex.1978); Recon Exploration, Inc. v. Hodges, 798 

S.W.2d 848, 852 (Tex. App.--Dallas 1990, no writ). The 

test for abuse of discretion is whether the court acted 

without reference to any guiding rules and it is a 

question of whether the court acted without reference 

to any guiding rules and principles. Craddock v. 

Sunshine Bus Lines, 134 Tex. 388, 133 S.W.2d 124, 126 

(Tex.Comm.App.--1939, opinion adopted). Another way of 

stating the test is whether the act was arbitrary or 

unreasonable. Smithson v. Cessna Aircraft Co., 665 

S.W.2d 439, 443 (Tex.1984); Landry v. Travelers 

Insurance Co., 458 S.W.2d 649, 651 (Tex.1970). As set 

out herein above, all of the evidenced adduced at trial 

supports the following:

-The Appellee knowingly usurped Appellant’s trade name;
50

-The Appellee’s usurpation of the Appellant’s trade

name caused clear, actual confusion which creates an 

almost irrebuttable presumption of likelihood of 

consumer confusion;

-The Appellee made no effort to rebut the presumption;

-The Appellant presented abundant evidence of actual 

harm for which no adequate remedy at law existed

-The only evidence of any quantification of damage, ie 

of an adequate remedy at law, was the very limited 

testimony of Gene Trevino that he admits covered only 

his assertion of the cost of answering phones. He 

admits to not looking at any other element of harm or 

damage.

On what basis and upon what evidence did the Court 

deny injunctive relief? The Court’s order is 

completely silent on any basis for the judgment, 

including whether the Court actually reached the issue 

of injunctive relief at all. That factor alone should 

be fatal to the Court’s denial of Appellant’s Request 

for Permanent Injunction.
51

Issue#4

The District Court erred in denying Appellant’s 

Injunctive Relief based on Failure to Balance the 

Equities and/or Unclean Hands.

In addition to the factors required for trademark 

and/or name infringement and the four elements of a 

permanent injunction in Texas, the Texas courts have 

articulated several sub-factors that must be 

considered. Because the Trial Court’s judgment in this 

case is virtually silent as to the underlying basis of 

the decision, the Appellant must address these factors 

as well because they were raised by Appellee during the 

course of the trial.

A. Balancing the Equities:

There is a line of cases that suggests that a trial 

court must balance the equities before issuing an 

injunction and consider injury to (1) the defendant and 

the public were the injunction granted and (2) the 

complainant were the injunction denied. See Storey v. 

Cent. Hide & Rendering Co., 148 Tex. 509 226 S.W.2d 

615, 618-19 (1950). An injunction will ordinarily be 
52

denied if the "injury to the complainant is slight in 

comparison to the injury caused the defendant and the 

public." Id. at 619. Conversely, an injunction may 

issue if the injury to the defendant and the public is 

slight when compared to injury suffered by the 

complainant. See id. "Public convenience or necessity, 

economic burden to the defendant, and the adequacy of a 

legal remedy may affect this balance." McAfee MX v. 

Foster, No. 02-07-080-CV, 2008 WL 344575, at *2, 2008 

Tex.App. LEXIS 968, at *8 (Tex.App.-Fort Worth Feb. 7, 

2008, pet. denied), petition for cert. filed, No. 08-

639 (U.S. Nov. 12, 2008). 

However, the case cited most frequently in Texas is 

Storey v. Central Hide & Rendering Co.,148 Tex. 509, 

226 S.W.2d 615 and that case is a nuisance case. 

Strictly speaking the doctrine of balancing the 

equities does not even apply to a non-nuisance setting.

If this Trial Court applied the doctrine Appellant 

would point out that the public suffers no injury 

whatsoever by forcing Appellee to cease using the

Appellant’s trade name. Based on the nature of the 
53

confusion demonstrated in this case, by clearly 

delineating itself as Tesoro Petroleum, the confusion 

caused to the public or the government seeking to reach 

Appellee would virtually cease. The two “Tesoros”

would again be distinct as they were prior to 2004. The 

evidence adduced at trial makes it clear that the 

steady confusion Appellant suffers from did not begin 

until after Tesoro Petroleum began using the

Appellant’s trade name. 

The larger problem with this Trial Court having 

applied an equity balancing test to deny the 

Appellant’s injunctive relief is that the Appellee 

presented no concrete evidence of harm that would have 

been occasioned by a name change. In other words, it 

gave the Court nothing to “balance.” Aside from some 

conjecture from Appellee’s witness, Kelly Curll, at the 

end of the Permanent Injunction hearing suggesting that 

changing the name back to Tesoro Petroleum would result 

in the demise of Tesoro Petroleum as a San Antonio 

based company and with it the jobs, tax base and 

possibly other unforeseen consequences [RR: IX: 62-75], 
54

Appellee offered no equity to balance. It presented no 

evidence of any real harm or cost to change the name. 

Even Ms. Curll had no idea when asked what would really 

happen if the Appellee had to change its name. When 

asked if she could articulate the harm to Appellee, she 

simply said “no.” [RR: IX: 68]. The one witness that 

could have provided insight into the question, 

Elizabeth Ising, offered nothing. Ms. Ising was a 

Washington D.C. based attorney who handles matters of 

corporate governance and Security Exchange Commission 

issues for her clients. Since 2007 she has performed 

those functions for Appellee [RR: IX: 6-8]. Over the 

course of her direct testimony Ms. Ising testified as 

to the requirements of a name change and what would 

have to be done in order for Appellee to relinquish the 

use of Appellant’s trade name in Texas. She indicated 

three areas where Appellee would be affected, but 

offered no testimony as to cost of such a name change 

[RR: IX: 9-31]. On cross-examination Ms. Ising was 

asked directly, what would she charge to change 

Appellee’s name and she testified she “had no idea” and 
55

could not quantify any financial harm to Appellee that 

would be occasioned by a name change [RR: IX: 40, 42].

Any harm to the Appellee should have been totally 

discounted because the uncontroverted evidence adduced 

at trial indicates that Appellee knew the name it 

wanted to use had been taken and that after being 

refused the right to use the name, Appellee chose to 

move ahead anyway with full knowledge that it might be 

successfully sued for common law trademark/name 

infringement. Both Mr. Parrish and Ms. Ryan testified 

Appellee made the change because it suited it’s 

business interest to do so. Ms. Ryan even testified 

that the issue of Plaintiff’s ownership of “Tesoro 

Corporation” was actually raised and that no one at 

Appellee was concerned even though the very real 

possibility existed that the Appellee could be sued for 

trade name infringement. Therefore, any harm to the 

Appellee is self-induced and the product of extreme

corporate arrogance. 
56

B. Overly Broad:

Because this case will involved denying Appellee 

access or use over a geographic area, Appellant 

anticipated the Appellee raising the notion that the 

injunction on a state-wide basis was “overly broad.” 

Appellee put on testimony and cross-examined Paul 

Sullivan on the issue as to where Appellant did 

business. However, Appellee’s attack on where Appellant 

did business was misplaced in the context of an 

injunction because “overly broad” does not refer to the 

geographical reach of an injunction, but rather to 

something completely unrelated.

An injunction should be broad enough to prevent a 

repetition of the evil sought to be corrected. Hitt v. 

Mabry, 687 S.W.2d 791, 795 (Tex. App.-San Antonio 1985, 

no writ) (citing Lower Nueces River Water Supply Dist. 

v. Live Oak County, 312 S.W.2d 696, 701 (Tex.Civ.App.-

San Antonio 1958, writ ref'd n.r.e.)) An injunction 

must not be so broad, however, as to enjoin a defendant 

from activities that are a lawful and proper exercise 

of his rights. Id. Where a party's acts are divisible, 
57

and some acts are permissible and some are not, an 

injunction should not issue to restrain actions that 

are legal or about which there is no asserted 

complaint. Hellenic Inv. v. Kroger Co., 766 S.W.2d 

861, 866 (Tex. App.-Houston [1st Dist.] 1989, no writ).

Thus, the entry of an injunction that enjoins lawful as 

well as unlawful acts may constitute an abuse of 

discretion. Webb v. Glenbrook Owners Association, Inc., 

98 S.W.3d 374, 384 (Tex. App.—Dallas, 2009).

In this case “legality” did not pose an issue to 

the entry of an injunction. Appellant’s right to the 

name “Tesoro Corporation” has been sustained by a jury 

verdict and that right extends to the state-wide use of 

the name. There is no valid argument that Appellee 

cannot legally use the name Tesoro Corporation in 

Hidalgo County, but may do so in Bexar County. An 

injunction that prohibits the use of the Plaintiff’s 

trade name on a state-wide basis is completely 

consistent with Plaintiff’s rights as conveyed by Texas 

statute and as evidenced by his registration with the 

Texas Secretary of State.
58

It is also important to note that this case does 

not involve the enforcement of a non-compete clause. 

There is significant case law in Texas that limits the 

geographical reach of a non-compete to a “reasonable” 

geographic area and time span. Light v. Centel Cellular 

Co, 883 S.W.2d 642 (Tex. 1994). Isunai v. ManskeSheffield Radiology Group, 805 S.W. 2d 602 (Tex. App—

Beaumont, 1991); Gonzalez v. Zamora, 791 S.W.2d 258 

(Tex. App.--Corpus Christi, 1990). That is not what is 

at issue in this case. Appellant is not seeking to 

prevent the Appellee from competing in the market place 

in any county in Texas. Confusion among consumers is 

the issue here and it has been established. Therefore, 

in arriving at appropriate injunctive relief the Court 

was not bound by the non-compete parameters established 

in the employment field, but was free to award relief 

consistent with the Appellant’s statutory right that a 

jury had already determined was being infringed upon by 

the Defendant.
59

C. Unclean Hands:

To the extent the Trial Court’s ruling reflects a 

finding that Appellant lacked “unclean hands” that 

ruling is completely in error. The Appellee argued that 

Appellant’s corporate representative, Paul Sullivan, 

used inappropriate language in deposition and put on 

evidence to that effect. It is a timeless doctrine 

that one who seeks equity must do equity and must come 

to court with clean hands. See Dunnagan v. Watson, 204 

S.W.3d 30, 41 (Tex. App.—Fort Worth 2006, pet. denied); 

Flores v. Flores, 116 S.W.3d 870, 876 (Tex. App.—Corpus 

Christi 2003, no pet.). Whether equitable relief should 

be denied based on unclean hands is left to the 

discretion of the trial court. Dunnagan, 204 S.W.3d at 

41; Flores, 116 S.W.3d at 876. The only real 

prohibition against applying the doctrine is the 

requirement that it be confined to misconduct in regard 

to, or at all events connected with, the matter in 

litigation, so that it has in some measure affected the 

equitable relations subsisting between the two 

parties, and arising out of the transaction. Lazy M 
60

Ranch, Ltd. v. TXI Operations, LP, 978 S.W.2d 678, 683 

(Tex. App.-Austin 1998, pet. denied). 

Based on a two-page brief that could not even tie 

Appellant’s alleged conduct to any case authority, or 

show how Appellant’s conduct in this case prejudice it 

CR: 294-296], Appellee requested the Court to deny 

Appellant’s injunctive relief based upon testimony 

elicited form Mr. Sullivan as to alleged perjury that 

his company had always been in good standing when in 

fact it had lapsed once and he had to pay a $50 fee to 

reinstate. In addition they alleged Mr. Sullivan had 

violated an agreement to produce some documents during 

the course of the litigation [RR:VIII:180-198].

Appellee also played excerpts from Mr. Sullivan’s three 

depositions where he used in appropriate language. 

However, the Appellee could not show any harm to it, 

serious or otherwise, and the Court correctly stated 

that the doctrine applies to events leading up to the 

litigation [RR:VIII:198]. In addition, the lone case 

cited by Appellee, Union Gas Corp. V. Gisler, 129 S.W. 

3d 245 (Tex. App.-Corpus Christi, 2003), does not even 
61

apply. In that case the interpleader had actually 

caused the dispute giving rise to the need to 

interplead the funds and the Court denied any equitable 

relief to the interpleader. More importantly the Court 

stated:

For a complainant to be entitled to relief in 

equity, it is necessary that he bring himself 

within the full meaning of the maxims that he who 

seeks equity must do equity, and that he who comes 

into equity must come with cleans hands. These 

maxims comprehend not only the previous conduct of 

the complainant toward the defendant, but also the 

attitude of the complainant toward the defendant 

throughout the litigation. The complainant must in 

good conscience offer to do equity and to have the 

court accord to the defendant all of his rights.

Union Gas Corp. V. Gisler, 129 S.W. 3d 245, 153. 

The Court in this case never sanctioned the Appellant 

for any conduct, nor did the Appellee ever file any 

pleading requesting any such relief. As sited to 

above, not only were all of the Appellee’s rights 

afforded it, but Appellee offered no evidence of any 

kind as to how any of its rights were harmed or 

affected, seriously or otherwise.

What makes this argument patently absurd is that 

the Appellee’s conduct leading up to the litigation, 
62

the arena where “unclean hands” traditionally and most 

often applies, was wrought with fraud and a blatant 

disregard of he Appellant’s rights. The Appellee’s own 

conduct brought about the dispute, and it sought to 

limit its damage by having the court reward it for its 

conduct, conduct even the Court questioned as being 

fraudulent [RR:XI:61].

Issue #5

Did the District Court err in vacating the Jury’s 

Attorney Fee award.

The Court’s denial of Appellant’s attorney’s fees 

ignores two salient facts. First, the Appellant 

prevailed in the jury trial. Second, the parties 

stipulated to the amount of attorney’s fees in this 

case to be afforded the prevailing party. That 

stipulation is memorialized in a Rule 11 Agreement on 

the record in this case [RR: V:128-129]. 

The Plaintiff was awarded a jury verdict [RR: VI: 

75]. The jury had answered yes to both questions, that 

“Tesoro Corporation” was the Appellant’s trade name and 

that Appellee’s conduct had created a likelihood of 
63

consumer confusion. Coupled with the Court’s directed 

verdict on the issue of senior user [RR:V:151] the 

result of the jury trial was a complete victory for he 

Appellant. Under the terms of the Rule 11 Agreement 

[RR:V: 128-129] Appellant’s attorney’s fees should have 

been sustained.

CONCLUSION

The Appellant requests that this Court reverse the 

Trial Court’s judgment and render a verdict. The Court 

should grant the Appellant a permanent injunction 

consistent with the Trial Court’s directed verdict on 

the issue of senior user prior to the start of the 

trial, the unanimous jury verdict finding the remaining 

two elements required for common law trade 

infringement, and the evidence presented showing both 

irreparable harm and inadequate remedy at law. The 

Defendant’s Motion to Set Aside Jury Verdict was 

without merit. The jury instruction and charge did not 

require a question as to irreparable harm because the 

Appellant’s claim for common law trade name 

infringement necessarily related to its request for 
64

declaratory relief that was based on that sole claim. 

There was no confusion created by the jury charge nor 

did that charge omit any essential element of the 

Appellant’s trade name infringement claim.

The requested scope of injunction was both 

appropriate and within the scope of what the Trial 

Court could provide. It placed the Appellant and 

Appellee in the exact position they were in prior to 

2004 when the Appellee knowingly and intentionally 

usurped the Appellant’s trade name. To the extent that 

the doctrine of balancing the equities has any 

applicability to this case the Appellee put on no 

evidence of any substance that demonstrated any 

monetary harm to it as the result of having to change 

its name back to Tesoro Petroleum. To the extent the 

equities must be weighed, they all come down in favor 

of the Appellant. The Appellee’s alleged hardship in 

having to change its name is the direct result of its 

own actions, taken with full knowledge that Appellant 

owned the name Tesoro Corporation and that if it tried 

to use that name in Texas it could be successfully sued 
65

for common law trade name infringement. That same 

arrogance brought Appellee, not Appellant, into Court 

with unclean hands. Appellee’s two-page brief and 

alleged evidence of discovery impropriety did not 

deprive Appellee of one single vested right nor did it 

occasion any harm. Throughout the four-year life of 

the case Appellee never once moved for any relief in 

the form of sanctions or otherwise against Appellant 

for any reason. Finally, having prevailed upon both a 

directed verdict and a jury verdict, the Appellant’s 

entitlement to $100,000 in attorney’s fees should be 

restored.

PRAYER

Appellant prays that this Court reverse the Trial 

Court’s ruling and render a judgment in favor of 

Appellant for the declaratory relief as set out herein 

above and in the Trial Record and restore its 

attorney’s fees award.
66

Respectfully Submitted,

/S/ Mark A. Weitz________

Reynaldo Ortiz

SB#15324275

Ortiz & Millin LP

1305 E. Nolana, Suite F

McAllen, Texas 78504

956-687-4567

965-631-1384 facsimile

Mark A. Weitz

SB# 21116500

Weitz Morgan PLLC

100 Congress Avenue

Suite 2000

Austin, Texas 78701

512-394-8950

512-852-4446 (facsimile)

ATTORNEYS FOR APPELLANT

TESORO CORPORATION

CERTIFICATE OF SERVICE

The undersigned does hereby certify that on the 

30th day of January, 2015, I caused to be served a true 

and correct copy of the foregoing Appellant’s Brief on 

Defendant Tesoro Corporation d/b/a Tesoro Petroleum 

Corporation by serving its attorney of Record, Frank 

Weahtered by electronic service and/or facsimile 

transmission and/or by United States First Class Mail, 

Return Receipt Requested. 

/S/ Mark A. Weitz________

Mark A. Weitz
67

APPELLANT’S CERTIFICATE OF BRIEF

I, Mark A. Weitz, certify that Appellant’s Brief 

filed in this case is in 14 point font, and the 

footnote text is in 12 point font. 

I further certify that this brief was prepared with 

Microsoft Word 2011 for Mac, and that, according to 

that program’s word-count function, the sections 

covered by TRAP 9.4(i)(1) that the number of words in 

this brief including footnotes (excluding any caption, 

identity of parties and counsel, statement regarding 

oral argument, table of contents, index of authorities, 

statement of the case, statement of issues presented, 

statement of jurisdiction, statement of procedural 

history, signature, proof of service, certification, 

certificate of compliance, and appendix) is 11,285. 

Respectfully Submitted,

/S/ Mark A. Weitz________

Mark A. Weitz
APPENDIX	1
Electronically Filed

7/2/2014 8:31:37 AM

Hidalgo County District Clerks

Reviewed By: Virginia Granados

Appendix 1
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Hidalgo County District Clerks

Reviewed By: Virginia Granados

xxxxxxxx

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xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx

each party shall bear their own attorneys' fees.
Electronically Filed

7/2/2014 8:31:37 AM

Hidalgo County District Clerks

Reviewed By: Virginia Granados

xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx

xxxxxxxxxxxxxxxxx

7/2/2014

CC:

Hon. Reynaldo Ortiz, Esq -EMAIL rey@leydeortiz.com; gh@leydeortiz.com

Hon. Gerald Drought, ESq.-EMAIL gdrought@mdtlaw.com

Hon. Sarah Cowen, Esq. E-MAIL sarah@cowengarza.com
APPENDIX	2
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MR. DROUGHT: No, Your Honor. 

THE COURT: Okay. In reference to the 

motion for directed verdict, the -- I got a bit 

sidetracked between what the -- the Plaintiff's Motion 

For Directed Verdict was insofar as the Court's Charge. 

Tell me again which issues you're asking for a directed 

verdict on?

MR. ORTIZ: We were asking for a directed 

verdict on -- on the issue of -- to grant the senior -- 

that senior -- that Mr. -- that Tesoro Corporation is 

the senior user of that name in Texas. 

Tesoro Corporation. Plaintiff is the senior user of 

Tesoro Corporation in Texas. 

THE COURT: Okay. 

MR. DROUGHT: Your Honor, I think the Zapata

case sinks the ship for the Plaintiff. I'm sorry, but I 

don't know any other clearer way to say it. Zapata is 

Zapata, Tesoro is Tesoro. 

THE COURT: Tesoro's not a geographic name. 

Zapata, that's what they relied on, the geographic 

perspective. And that's distinguishable from the 

Thompson case that use surnames. And when you start 

looking at the detailed information about what the 

protected name is in a trademark case, there's major 

distinction between surnames, geographic, generic names. 

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I've read quite a few cases before this afternoon, 

counsel, and I'm not getting any new information than 

what I was led to believe and I wanted to give an 

opportunity to be enlightened. I always welcome 

enlightenment, but, with all due respect, I'll agree to 

disagree with you, Mr. Drought, on the Zapata case 

because of the -- the language used within it. 

In reference to that Motion For Directed 

Verdict, the court is going to grant Plaintiff's 

directed verdict that the Plaintiff is the senior user 

of the name Tesoro Corporation. 

MR. DROUGHT: And our -- our objection is 

noted obviously? 

THE COURT: Absolutely. 

Was there any other directed verdict? 

MR. ORTIZ: No, Your Honor. 

THE COURT: Okay. While we were off the 

record and in reviewing the proposed charges again, it 

came to my head that it would be wise to suggest to both 

sides to modify your stipulation breaking it down even 

further as to the different levels; trial, Court of 

Appeals and Supreme Court. Did anyone want to heed that 

advice? And if you don't, that's fine.

MR. ORTIZ: We did, Your Honor. We 

conferred many times but we were unable to reach an