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 206 TH District Court, Hidalgo County, Texas , T rial Court Cause No. C

- 2971
- 09
- D

APPELLANT’S BRIEF

Mark A. Weitz Reynaldo Ortiz Weit z Morga n PLLC Law Office of Rey Or t i z 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 APPEALS CORPUS CHRISTI, TEXAS 2/3/2015 11:05:49 AM DORIAN RAMIREZ

CLERKIDENTITY OF PARTIES AND COUNSEL Appellant certifies t hat the following is a complete list of t he 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 PET ROLEUM 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 7 8501 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 25 th 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
Stateme nt 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 Ve rdict 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 Asid e 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 Ful l Hearing. 28

A. Standard of Review: 29 B. Imminent Harm: 29 C. Irreparable Injury and Adequate Remedy at Law: 32iii 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 o f 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: 49iv 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 Directe d Verdictv TABLE OF AUTHORITIES
Pa ge
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
- 45vi 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 C hristi 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) 58vii 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. App

Waco, 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.

— Hous ton [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 Insu r ance 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.) 56viii 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.T our 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 Ci r. 1998) 13 Physicians and Surgeons Gen. Hosp. v. Koblizek 752 S.W. 2d 657 (Tex. App.

— Corpus Christ, 1988) 23
- 24ix 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) 45x 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 (5 th 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.

— Ho uston [14 th 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 ) 401 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 t he 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).

I t 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 [R eporter’s R ecord : 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 t w o issues presented, violation of the common law trade infringement and declaratory relief were in fact one in
the same , in other words they n ecessarily related, and the Appellee was on full notice as to what was being pled and request ed . 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 equ ities on its behalf in which to balance against Appellant’s needs. Finally, to the degree that3 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 w as 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
proce eded 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 cou rt even confronted the Appellee with the fact that Appellee’s

us urpation of the name may have been fraudulent4 [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 H arm 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 I nstruction s. Issue #3 Even if the Court Rejected the Appellee’s Motion t o Set Aside Jury Verdict Did the District Court e rr 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 si g n leasing and sales business that has been in existence since 197 5. 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, i t s clients remit payment
and know his business as Tesoro Corporation , his business operations and banking relationships are conducted as Tesoro Corporation , and his ta x returns all reflect Tesoro Corporation [ RR:IV :58 - 126 ] . Evidence at trial indicated Appellant did business6 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 t he evid e n ce showed that Appellee neve r thel e ss 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 tha t 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 20 0 4 was the same as the statute today and7 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 w as, thus prohibiting Appellee f r o m 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 ne vertheless
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 emp loyees were cutting fence locks. Appellant had no railroad cars, tanker trucks or the need to cut fences. The conduct,8 rai lroad 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 U nion Pacific Railroad, a potential customer of both Appellant and Appellee, albeit for differen t 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 t he insurance department and attorne y general’s office, law firms f r o m as far away as Washington and Alaska sending demand letters to Appellant for conduct and actions o f
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 nati o nwide . 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 C ounty for conduct attributable to Appellee.9 Richard Schell , the attorney who file d the complaint for the Defendant, had done research on Tesoro Corporation and due to the confusion created by Appellee’s usur pation of Appellant’s name, had come to believe that th e 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 bifu r cated and the Court agreed to hear the issues relevant to the permanent injunction only after a jury verdict established liability and that a n y judgment would be based upon the jury verdict and the evid ence adduced in the permanent injunction hearing [RR: VIII: 59 - 62 ]. At the Permanent Injunction hearing the Appellant’s President, Paul Sullivan, testified to
th e on - going immin ent harm caused by the confusion that

t he jury in fact fo u nd 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’s10 sole witness on the i ssue, Gene Trevino, admitted the same thing both at trial a nd 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 t hat the Appellee’s use of Appellant’s name created a likelihood of confusion among consumers. The jury was not required t o find irre parable harm or adequate remedy at law , as that was an issue for t he court to determine in the injunction phase of the case. The jury issues as to trademark infringement and declarato ry relief were proper and more than adequate ly put Appellee on notice as to the Appellant’s claims. With only equitable relief requested the Appellant clearly
demonstrated both irrepa rable harm an d the lack of any relief at law. Thus there was no basis for the Court11 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.

— Ho uston [14 th 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 th e jury. In this case, the only issues required to be submitted to a jury were submitted based12 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 tra de 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, 1 537 (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 identificatio n. 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 prote ctable 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. Evidence14 showing long and extensive use has been held sufficient to pr ove 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
off ice 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 usur p 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 tria l 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 Defendan t 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 “Tes oro” 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 of16 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 “e vidence” 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 p roof 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 [14 th Dist] 1992 no writ). In fact , once actual confusion is proved, an almost ove rwhelming 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 wa s free to presume17 irreparable inj ury, 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. CarM ax, 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., 9 82 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 vers us permanent injunctive relief.18 injunctive relieve unless the legal remedy is as practical and efficien t to the ends of justice as the equitable remedy, Jeter v. Associated Rack Corp ., 607 S.W.2d 272, 278 (Civ. Ap p. — 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 can not 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 o f 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 claims19 prior to the com men cement 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 [14 th Dist], 1 992) 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. Se e 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 element s of a cause of action that a jury is20 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 t he 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 answe r 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, an21 objection it raised fo r the first time in its Motion to Disregard two months later. In the hearing on M ay 21, 2013 the Appellee
attem p ted to argue that because th e re was a claim for
common law trademark infringement and a claim for a
de c lar a tory action, that some how these claims were “separate’ and their elements were not “ necessarily

r efer able ” to one an o th er , 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 o f each were identical. There were no “two unrelated claims” such that the Appellee would have been confu sed as to which claim was being asserted. In this case t here 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 obje ct was fatal to its claim [CR:34 - 35 ] . To22 give any credence to the A ppellee’s contention would be to say “we w ere confused by the claim for relief under the common law trademark infringement c a use of action and by the request that the Court declare Defendan ts actions a violation of Texas Common law trade infringement law.” It i s simply not a tenable argument.
The De fendants 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 Hudgen s 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 a n element of a trade infringement case. Rather it is an23 element of a permanent inunction and that issue is left
to the Court which must look to the underlying evidence, not the jury charge.

I n 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. Rat her, 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. Irr eparable 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 inju n ctive relief which falls squarely int o 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 bo th 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 issues25 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 cl ear 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 a nd 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 infring ement 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 wo uld be no case law allowing the Court to grant or deny an injunction based on “conflicting evidence.” A jury finding would take26 that discretion from the Court and that is not the law in Texas. Finally, the Appellee ’s argument completely overlooks the lega l 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.3 d 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.199 8); 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.2d27 746, 753 n. 7 (8th Cir.1980). Although the 5 th Circuit has not expressly adopted the holding it has do ne 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 i rreparable 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 fo r continuance seeking time to develop more evidence for the injunction phase and in fact h ave took the Appellant ’s deposition for a third time in this case. T he argument of a defective jury charge has no merit.28 Issue #3 Even if the Court Rejected the App ellee’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 C ourt 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 therefore29 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 230 0, 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), cer t. denied, 476 U.S. 1159, 106 S. Ct. 2279, 90 L.Ed.2d 721 (1986). An abuse of discretion exist s 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 E xploration, 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 Parkem30 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 a t trial shows a clear confusion created by the Defendant’s use of

Texas Tesoro’s name. Appellant demonstrated actual confusion [RR:IV:129 - 19 2 ; 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 defen dant'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. Home31 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 wa s 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 action s 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 p roof of actual confusion is probative evidence that likelihood of confusion exists, Zapata Trading Corp v. Zapata32 Trading, Int’l, Inc. 841 S.W. 2d 45, 48 (Tex. App.

— Houston [14 th 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 adequat e remedy at law. Appellee has red to focus on the magnitude of harm and somehow downplay the actual damage to Appellant. However,
f ederal courts have long recognized that it is not so much the magnitude but the irreparability that counts for purposes of a n 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 plai ntiff'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 cas e. 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 c ourts 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 a nd in the trial [RR:IV: 127 - 192; RR:
VIII: 70 - 103] . 2. Adequate Remedy at L aw: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. A pp. — 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

cre dit 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 probl ems or to36 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 comp letely 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 determinatio n nor did he ever look at documents that37 would h ave 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 c an the Appellee e ven argue as to either the extent of the harm or its irreparable
nature? It cannot. When asked directly to confront th e issue of future harm, Trevino fell back on his telephone answering cost analysis and then admitted, he was not asked to do a
calculat ion 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 loss38 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.

Tr evino was the only witness offered to refute the Appellant’s case on irreparable harm and lack of adequate reme d y at law and by his own admission he
looked at only one narrow area.
D . The Record Shows a Complete Absence of any Guiding Pri nciples or Rules Upon Which the Court Relied in Denying Injunctive Relief.
1 . Requested Scope: (i) State Wide Prohibition of Use: The Appellant requested an inj unction 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 be fallen the Appellant has flow ed directly from the Appellee ’s assumed name filing. In effect consumers and business entities are searching the Texas Secretary of State39 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 i t s trade name infringement claim, Appellant was entitled to deny the Appellee the use of its trade name through out the state. Even Appellee’s alleged expert, Mr. Trevi no admitted that a business is entitled to do operate and solicit business state wide 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 Appel lee’s admissions of state

wide 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 faci e 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 through

out the state of Texas in connection with the goods or40 services specified in the certificate, subjec t 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. Sul livan had properly registered the mark and that it was in place continuously since 1975 [ RR:IV: 43; RR: XII: Exh i bit s 24 - 25 ]. The registration of Tesoro Corporation cre ated certain protections as to i t s 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 righ ts. To give the Appellant less than exclusive state

- wide use is to reward Appellee ’s41 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 s ome 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

- of

state state regulator’s, taxing authorities, credit ors, 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 withdra wn 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 state

wide presence of the Appellant, including a significant
and long

- established presence in Bexar County that continues today that even Appellee’s expert had to42 acknowledge [RR:XI:17 - 24 ] . Appellant is in every region of the state includ ing 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 W est Texas where Plaintiff presence is not as pronounced, he nevertheless does busi ness 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 acqui red. 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 a nd 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 Amendme nt hierarchy, enjoying only a " limited measure of protection, commensurate44 with its subordinate position in the s cale of First Amendment values, and is subject to modes of regulation that might be impermissible i n the rea lm 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, 3 7 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 co mmercial 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 l east must conc ern 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 the45 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] commun ication 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 impr oper 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 c ourt cannot enjoin t he 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 “Tes oro Corporation and was founded in 1939 and is headq uartered 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 con tributes 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 this47 C ourt or any regulatory body can take back or remove four years of material that the Appellee has improperly placed on the in ternet is absurd. However, A c ourt can
pros pectively 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 or der to reach Tesoro Corporation one must enter “Tesoro Corporation,

D onna, 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 v irtually co

- opt the Appellant ’s name. An examination of the Appellee ’s web

- site not only reveals that it purports to be Tesoro Corporation of48 Texas, but Appellee also uses the site to disseminate other material such as press releases, news conferences, co pies 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, Exh ibit 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 testifie d 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 exist s where a Court lacks evidence in the record which reasonably supports that trial court's decision. Davis v. Huey , 571 S.W.2d 859,
8 62 (Tex.1978); Recon Exploration, Inc. v. Hodges , 798 S.W.2d 848, 852 (Tex. App. -- Dallas 1990, no writ). T he 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). Ano ther 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 ir rebut table p resumption of likelihood of consumer confusion;

- The Appellee made no effor t t o rebut the p resumption;

- 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 pho nes. 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 t he 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

T he District Court err ed in denying Appellant’s Injunctive Relief based on Failure to Balance the E quities 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 j udgment 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.
Ce nt. Hide & Rendering Co ., 148 Tex. 509 226 S.W.2d 615, 618
- 19 (1950). An injunction will ordinarily be52 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 inju ry 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 appl y to a non - nuisance setting. If this Tr ial C ourt 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. B ased on the nature of the53 confusion demonstrated in this case, by clearly delineating itse lf 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
stead y 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 re l i e f is that the Appellee presented no concrete evid e nce of harm that would have been occasioned by a name change . In other words, it gave the Court nothing to “balance.” A side from some conjecture from App ellee’ s wi t n ess, Kelly Curll , at the
end of the Perm anent Injuncti on hearing suggest ing that

c h anging the name back to Tesoro Petroleum would result in the demise of Tesoro P etroleum 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 e q u i ty to balance. It presented no evidence of any real harm or cost to change the name.

E ven 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 , s he simply said “no.” [RR: IX: 68] . The one witness that

c o uld 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 Ap pellee 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” and55 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 be en totally discounted b ecause 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

succe ssfully 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 Corpora tion” was actually raised and that no one at Appellee was concerned even though the very real possibility existed that the Appellee could be su ed for trade name infringement . Therefore, any harm to the Appellee is self

- induced and the product of extreme

co rporate arrogance .56 B . Overly Broad: Because this case will involve d 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 th e 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 exe rcise 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.

— Da llas, 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. Manske

Sheffield Radiology Group, 805 S.W. 2d 602 ( Tex. App

— Beaumont, 1991); Gonzalez v. Zamo ra, 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. C onfusion among consumers is the issue here and it has been established. Therefore, in arriving at appropria te injunctive relief the Court

wa s not bound by the non

- compete parameters establishe d in the employment field, but wa s free to award relief consistent with the Appellant ’s stat utory right that a j ury had already determined wa s 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 clea n 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 dis cretion 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 li tigation, so that it has in some measure affected the equitable relations subsisting between the two parties, and arising out of the transaction. Lazy M60 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

e l i ci ted form Mr. Sullivan as to alleged perjury that hi s 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 docu ments 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 even61 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 t he 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. U

nion 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 reli e f. 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 leadin g up to the litigation,62 the are n a where “un clean 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

con duct , conduct even th e Court questioned as being
fra u du lent [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 memorialize d in a Rule 11 Agreement on
the r e cord 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 of63 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 h ave been sustained.
CONCLUSION The Appellant requests that this Court reverse the Trial Cou rt’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 M otion 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 for64 declaratory re lief 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 t he 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 bala ncing 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 weighe d, they all come down in favor of the Appellant. The Appellee’s all e ged 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 sued65 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
de prive 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 up on 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
C ourt’s ruling and render a judgment in favor of Appellant for the decl aratory 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 30 th 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. Weitz67 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 p repared 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 t he 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, s tatement of pro cedural history, signature, proof of service, certification, certificate of c ompliance, and a ppendix) is 11,28 5 . Respectfully Submitted,

/S/ Mark A. Weitz

_______ _ Mark A. Weitz

# APPENDIX	1Electronically Filed 7/2/2014 8:31:37 AM Hidalgo County District Clerks Reviewed By: Virginia Granados

Appendix 1Electronically Filed 7/2/2014 8:31:37 AM Hidalgo County District Clerks Reviewed By: Virginia Granados

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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

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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	2Appendix 2

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MR. DROUGHT: No , Your Honor.
THE COURT: O kay. In refere nce to the motion for di rected verdict, the -- I got a bit sidetracked betw een what the -- th e Plaintiff' s Motion For Directed Verdic t was insofar as t he Court's C harge. Tell me again wh ich issues y ou're asking fo r 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 Te soro Corporation is the senior user of that name in Texas. Tesoro Corporati on. Plainti ff is the senio r user of Tesoro Corporati on in Texas.
THE COURT: Okay. MR. DROUGHT: Your Honor, I think the Zapata case sinks th e ship for t he Plaintiff. I'm sorry, but I don't know any other clearer wa y to say it. Zapata is Zapata, Tesoro is Tesoro.
THE COURT: Teso ro's not a geog raphic name. Zapata , that's what they relied on, the geographic perspective. An d that's distingui shable from the Thompson case that use surnames. And when you start looking at the d etailed information about what the protected name is in a trademark case, there's major distinction betw een surnames, g eographic, 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 wa nted to give an opportunity to be enli ghtened. I alw ays welcome enlightenment, b ut, with all du e respect, I'll agree to disagree with you, Mr. Droug ht, on the Zapata case because of the -- the language use d within it.
In reference to that Motion For Directed Verdict, the court is going to grant Plaintiff's directed verdict that the Pl aintiff is t he senior user
of the name Teso ro Corporation.
MR. DROUGHT: An d our -- our objection is noted obviously?
THE COURT: Absolutely. Was there any other directed verdict?
MR. ORTIZ: N o, Your Honor.
THE COURT: O kay. While we were off the record and in re viewing the proposed charge s again, it came to my he ad that it would be w ise to su ggest to both sides to modify you r stipulation breaking it down even
further as to the differe nt levels; t rial, Court of Appeals and S upreme Court. Did anyone want to heed that advice? A nd if you don't , that's fine. MR. ORTIZ: We did, Your Honor. We conferred many t imes but we were unable to reach an