IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 14-40030

DAVID ESCAMILLA,

Plaintiff-Appellant,

v.

M2 TECHNOLOGY, INC.; DOES 1-20,

Defendants-Appellees.

Appeal from the United States District Court

for the Eastern District of Texas

USDC No. 4:12-CV-634

Before DAVIS, DENNIS, and COSTA, Circuit Judges.

PER CURIAM:*

Plaintiff-Appellant David Escamilla, owner of a trademark for M2 under 

exclusive license to M2 Software, Inc. (“M2 Software”), appeals the district 

court’s denial of his motion for preliminary injunction against DefendantAppellee M2 Technology, Inc. (“M2 Technology”) for trademark infringement

and related claims, including unfair competition and state law claims. For the 

reasons set out below, we AFFIRM.

Escamilla claims that he has used the M2 trademark for more than 20 

years in the information technology industry and that M2 Technology

* Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not 

be published and is not precedent except under the limited circumstances set forth in 5TH 

CIR. R. 47.5.4.

United States Court of Appeals

Fifth Circuit

FILED

September 9, 2014

Lyle W. Cayce

Clerk

 

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wrongfully adopted the M2 mark for some of the same services provided by M2 

Software. Escamilla sought to enjoin M2 Technology from:

(a) advertising, marketing, selling or rendering any 

product or service or otherwise using the M2®

trademark or trade name in any form . . . ;

(b) representing to any person or entity that they have 

authority or license to use the M2® trademark symbol; 

(c) representing to any other person or entity that 

Defendants and/or their products and services are in 

any manner associated with, connected to, or affiliated 

with Plaintiff; and 

(d) using any URL’s incorporating the M2® term.1

The district court referred Escamilla’s motion for preliminary injunction

to the magistrate judge, who issued a report and recommendation which found 

in favor of M2 Technology on every relevant issue and therefore recommending 

that the motion be denied. The district court, following de novo review of the 

objections filed by Escamilla and the response by M2 Technology, concluded 

that the magistrate judge was correct. The district court fully adopted the 

report and recommendation and denied Escamilla’s motion for preliminary 

injunction. Escamilla appealed. We review under the following standards:

A preliminary injunction is an extraordinary equitable 

remedy that may be granted only if the plaintiff 

establishes four elements: (1) a substantial likelihood 

of success on the merits; (2) a substantial threat that 

the movant will suffer irreparable injury if the 

injunction is denied; (3) that the threatened injury 

outweighs any damage that the injunction might 

cause the defendant; and (4) that the injunction will 

not disserve the public interest. These four elements 

are mixed questions of law and fact. Accordingly, we 

review the factual findings of the district court only for 

1 Escamilla’s Proposed Order submitted in connection with his Motion for Preliminary 

Injunction.

2

 

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clear error, but we review its legal conclusions de novo. 

Likewise, although the ultimate decision whether to 

grant or deny a preliminary injunction is reviewed 

only for abuse of discretion, a decision based on 

erroneous legal principles is reviewed de novo.2

The magistrate judge concluded that Escamilla had failed to carry his 

burden in showing a likelihood of success on the merits of the infringement 

claim, which requires Escamilla to show: (1) that he possesses a valid mark, 

and (2) that M2 Technology’s use of the trademark “creates a likelihood of 

confusion as to source, affiliation, or sponsorship.” 3 To determine whether 

such a likelihood of confusion exists, courts look to the following “digits of 

confusion,” though no single factor is dispositive:

(1) the type of trademark allegedly infringed,

(2) the similarity between the two marks,

(3) the similarity of the products or services,

(4) the identity of the retail outlets and purchasers, 

(5) the identity of the advertising media used, 

(6) the defendant’s intent, . . .

(7) any evidence of actual confusion[, and]

(8) the degree of care exercised by potential 

purchasers.4

The magistrate judge found that Escamilla had failed to show any 

likelihood of confusion for a number of reasons. M2 Software is a small 

company that is focused almost exclusively on the media field and has little 

ongoing business, while M2 Technology is a larger company that is focused on 

2 Hoover v. Morales, 164 F.3d 221, 224 (5th Cir. 1998) (quoting Sunbeam Products, Inc. v. 

West Bend Co., 123 F.3d 246, 250 (5th Cir. 1997)).

3 Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012).

4 Id. at 532 (citing Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 194 (5th Cir. 1998)

and quoting Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack 

Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008)) (internal quotation marks omitted).

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national defense projects, primarily supplies to government contractors, and

requires personnel with security access. M2 Technology sells no products 

under the M2 mark but only through third-party manufacturers, and M2 

Technology’s services are typically provided through those third party 

manufacturers or through M2 Technology’s employees with security clearance, 

all in contrast to M2 Software’s business model. M2 Technology, as a 

government supplier, is required to register in certain government databases 

in which M2 Software is not registered.

For these and other reasons, the magistrate judge found that the

businesses occupy very different markets. Just as important, the magistrate 

judge found that Escamilla had showed no evidence that he suffered damages 

as a result of M2 Technology’ existence, that he suffered any other harm (e.g., 

loss of control, loss of goodwill), or that M2 Technology had engaged in any bad 

faith behavior. From these findings of fact, the magistrate judge concluded that 

Escamilla had failed to show a probable likelihood of confusion as to the use of 

the M2 mark; that Escamilla had failed to show any harm (irreparable or 

otherwise) caused by M2 Technology; that the issuance of an injunction would 

damage M2 Technology; and that an injunction would not serve the public 

interest.

In sum, the magistrate judge—and thus the district court, by adopting 

the report and recommendation—found that Escamilla failed to make any of 

his required showings under the law to secure a preliminary injunction. We 

find no clear error in any of the magistrate judge’s findings of facts, nor, under 

de novo review, any legal error. Accordingly, we cannot say that the district 

court abused its discretion in denying the motion for preliminary injunction.

For the reasons set out above, we AFFIRM.

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