Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92057839
`
`Defendant
`Kris Kaszuba
`
`KRIS KASZUBA
`2683 VIA DE LA VALLE, SUITE G—Z46
`DEL MAR, CA 92014-1961
`UNITED STATES
`
`kris@vip9.com
`Motion to Dismiss 2.132
`
`Kris Kaszuba
`
`kris002@vip9.com
`/kk/
`
`01/1 9/201 4
`
`Motion To Dismiss for Coyote Cancellation Number 92057839.pdf.pdf(385275
`bytes)
`Bruce Griffin USCOURTS-txnd-3_11-cv—01046-0.pdf(251909 bytes )
`Griffin Judgment March 2013.pdf(147705 bytes )
`POS #3.pdf(244926 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA582638
`ESTTA Tracking number:
`01/19/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057839
`Defendant
`Kris Kaszuba
`KRIS KASZUBA
`2683 VIA DE LA VALLE, SUITE G-Z46
`DEL MAR, CA 92014-1961
`UNITED STATES
`kris@vip9.com
`Motion to Dismiss 2.132
`Kris Kaszuba
`kris002@vip9.com
`/kk/
`01/19/2014
`Motion To Dismiss for Coyote Cancellation Number 92057839.pdf.pdf(385275
`bytes )
`Bruce Griffin USCOURTS-txnd-3_11-cv-01046-0.pdf(251909 bytes )
`Griffin Judgment March 2013.pdf(147705 bytes )
`POS #3.pdf(244926 bytes )
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Before THE TRADEMARK TRIAL & APPEAL BOARD
`
`
`
`Bruce Griffin, Plaintiff )
`
`v. ) Cancellation Proceeding
`
`Kris Kaszuba, Defendant / Respondent ) No. 92057839
`
`MOTION TO DISMISS THE CANCELLATION PETITION
`
`
`
`
`
`
`
`Re: COYOTE Trademark, Serial No. 78566406, Registration No. 3379325
`
`
`
`BACKGROUND:
`
`Kris Kaszuba, Respondent applied for the trademark, COYOTE on Feb. 14, 2005 with Serial
`
`No. 78566406. On Feb. 05, 2008, COYOTE was registered by the USPTO being Registration
`
`No. 3379325.
`
`On Aug. 20, 2012, Bruce Griffin submitted a trademark application # 85708240 for “Coyote
`
`Engines” with a First Use Anywhere Date of “at least as early as 11/00/1990 and First Use In
`
`Commerce Date of “at least as early as 11/00/1990. Please note the precise and actual date is
`
`“00” thereby indicating an unknown date.
`
`On Dec 13, 2012, an Office Action was issued refusing Mr. Griffin’s proposed mark. The main
`
`point was “Likelihood of Confusion” and the Office Action specifically stated:
`
`“The applicant seeks to register the mark COYOTE ENGINE for automobile engines; diesel
`engines for land vehicles. The registrant’s mark is COYOTE for motor vehicles, namely,
`automobiles. The marks are highly alike and the goods are highly related.”
`
`The applicant, Mr. Griffin subsequently and questionably revived his application and proceeded
`
`an action to cancel the Respondent’s registered Trademark COYOTE.
`
`
` 1 MOTION TO DISMISS THE CANCELLATION PETITION 1/19/2014
`
`
`
`

`
`MEMORANDUM OF POINTS & AUTHORITIES
`
`
`
`Kris Kaszuba, Respondent is the registrant of COYOTE trademark registered on Feb. 05, 2008
`
`Registration No. 3379325 subject to this Cancellation proceeding.
`
`
`
`Bruce Griffin, plaintiff is the owner of the proposed mark Coyote Engines, Serial # 85708240.
`Bruce Griffin is represented by Mr. Luke Brean, Attorney.
`
`Kris Kaszuba submits this Motion To Dismiss the Cancellation Petition for the reasons
`
`of lack of standing, fraud and the fraudulent application submitted by Bruce Griffin to the
`
`USPTO for his proposed mark, Coyote Engines.
`
`
`
`FIRST POINT AND EVIDENCE:
`
`The Respondent has substantial evidence that Bruce Griffin, plaintiff and owner of Coyote
`
`Engines has submitted and signed false and fraudulent dates of First Use(s) of 11/00/1990 in
`
`his application with the USPTO. And this was made under penalty of perjury.
`
`Attached as Exhibit A is the Order of Judge Barbara Lynn, U.S. District Court, Northern District
`
`of Texas dated March 13, 2013, Case No. 3:11-CV-1046M wherein Bruce Griffin was a
`
`Defendant against The Tranman, Inc et al.
`
`The pertinent point of the date of use of Coyote Engines is found in the Judge’s Order on
`
`Pages 1 and 2 as follows:
`
` “
`
` Defendant Bruce Griffin (“Griffin”) worked for Plaintiffs as a salesman from 2008 until his
`termination on or about April 29, 2011. During his employment, Griffin’s job responsibilities
`included soliciting other automotive repair companies for the purpose of entering into
`referral contracts with Tranman and OLM. Plaintiffs provided Griffin with a truck to
`use in the course of fulfilling his job responsibilities.
`
`Plaintiffs contend that, shortly before his termination, Griffin and Defendant
`Craig Fenderson (“Fenderson”) began their own automotive repair business called
`Coyote Engines and Transmissions (“Coyote Engines”) and created the website
`www.coyoteengines.com for the purpose of promoting their new business. Griffin also
`allegedly began promoting Coyote Engines to Plaintiffs’ clients and business partners
`while using Plaintiffs’ truck. ”
`
`The above Court Record proves that Bruce Griffin and Fenderson began their own automotive
`
` 2 MOTION TO DISMISS THE CANCELLATION PETITION 1/19/2014
`
`
`
`

`
`
`repair business called Coyote Engines and Transmissions (“Coyote Engines”) around April 29,
`
`2011. These are Judge Barbara Lynn’s findings and Order.
`
`Bruce Griffin did not start Coyote Engines in 1990. The first use date(s) of 1990 is a false and
`
`fraudulent statement in Bruce Griffin’s Coyote Engines trademark application.
`
`Also related and attached is Exhibit B, the Judgment in the case before Judge Barbara Lynn,
`
`U.S. District Court Northern District of Texas.
`
` A
`
` copy of the the above Judge’s Order was emailed to Bruce Griffin’s attorney, Luke Brean on
`
`
`December 18, 2013. Mr. Luke Brean did not refute or deny that this was the same Bruce Griffin
`
`in this proceeding. See attached email Exhibit “C1”.
`
`On December 19, 2013, the Respondent and Mr. Luke Brean, Attorney for Bruce Griffin held
`
`the required Discovery Telephone Conference for 4 ½ minutes. Again, I, Respondent informed
`
`Mr. Brean that this appeared to be fraud on the part of his client on the USPTO. Mr. Brean
`
`did not express a response. Mr. Brean should be cognizant of the
`
`implications of aiding and abetting such a client given the compelling evidence herein.
`
`
`
`SECOND POINT AND EVIDENCE:
`
`
`
`Mr. Luke Brean in his email to Respondent dated December 18, 2013 as Exhibit C
`
`has admitted that:
`
`“the only reason it (Cancellation) was filed was because your earlier registered mark is blocking
`my client’s current trademark application for Coyote Engines”.
`
`This “reason” is not a bona fide reason or good faith reason for submitting a Cancellation
`
`Petition.
`
`Furthermore, this may be viewed as an attempt to blackmail the owner of a registered mark
`
`with the USPTO.
`
`This is unprofessional and unethical conduct before the TTAB.
`
` 3 MOTION TO DISMISS THE CANCELLATION PETITION 1/19/2014
`
`
`
`

`
`I will be seeking further legal advice to determine if a Disciplinary Complaint should be pursued.
`
`THIRD POINT AND EVIDENCE:
`
`Attached are Exhibit D and E which are the Linked In Pages of Bruce Griffin which indicates
`that Bruce Griffin started Coyote Engines in August, 2011. These images were copied from the
`Linked In website on December 17, 2013.
`
`This date of August 2011 is comparable to Judge Barbara Lynn, U.S. District Court findings
`
`of “before April, 2011” as the start date of Bruce Griffin’s, purported Coyote Engines.
`
`Once again, the start date of Coyote Engines was not 1990 as falsely stated to the USPTO.
`
`
`
`CONCLUSION:
`
`Kris Kaszuba has submitted this Motion To Dismiss the Cancellation Petition for the reasons
`
`of no standing, fraud and the fraudulent application submitted by Bruce Griffin to the USPTO.
`
`Bruce Griffin’s application stated under penalty of perjury that his First Use Date(s) were
`
`11/00/1990.
`
`As the above evidence and Exhibits show, this is conclusive proof that Bruce Griffin did NOT
`
`start Coyote Engines in 1990. Rather the evidence shows that Bruce Griffin started Coyote
`
`Engines in 2011, a time period difference of 21 years.
`
`The dates by Bruce Griffin appear to be no mistake.
`The dates by Bruce Griffin appear to be no error.
`This appears to be calculated and fraudulent.
`The Petitioner has no standing to submit a Cancellation Petition on the Registrant.
`
`WHEREFORE, Registrant prays that the Cancellation be dismissed with prejudice.
`
`
`
`Dated this 19th day of January, 2014 at Del Mar, California
`
`/kk/ Signed by electronic signature
`
`Kris Kaszuba
`2683 VIA DE LA VALLE, # G-246
`DEL MAR, CA 92014
`USA
`
`email: kris@CoyoteCar.com
`
`
` 4 MOTION TO DISMISS THE CANCELLATION PETITION 1/19/2014
`
`
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 1 of 21 PageID 228
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`No. 3:11-cv-1046-M
`
`§§
`
`§§
`
`§
`§
`
`§§
`
`§
`
`THE TRANMAN, INC., ET AL.,
`
`Plaintiffs,
`
`v.
`
`BRUCE E. GRIFFIN, ET AL.,
`
`Defendants.
`
`MEMORANDUM OPINION AND ORDER
`
`Plaintiffs The Tranman, Inc. (“Tranman”) and OLM, Inc. (“OLM”) have filed a
`
`joint Motion for Summary Judgment with respect to all of their claims and causes of
`
`action as well as all of Defendants’ affirmative defenses and counterclaims. For the
`
`reasons stated herein, Plaintiffs’ Motion for Summary Judgment [Dkt. No. 25] is
`
`GRANTED in part and DENIED in part.
`
`Background
`
`Plaintiffs own and operate several transmission repair stores in and around
`
`Dallas County, Texas under the assumed name “The Transmission Shop.” Plaintiffs
`
`also jointly operated the website www.thetransmissionshop.com. Defendant Bruce
`
`Griffin (“Griffin”) worked for Plaintiffs as a salesman from 2008 until his termination
`
`on or about April 29, 2011. During his employment, Griffin’s job responsibilities
`
`included soliciting other automotive repair companies for the purpose of entering into
`
`referral contracts with Tranman and OLM. Plaintiffs provided Griffin with a truck to
`
`use in the course of fulfilling his job responsibilities.
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 2 of 21 PageID 229
`
`Plaintiffs contend that, shortly before his termination, Griffin and Defendant
`
`Craig Fenderson (“Fenderson”) began their own automotive repair business called
`
`Coyote Engines and Transmissions (“Coyote Engines”) and created the website
`
`www.coyoteengines.com for the purpose of promoting their new business. Griffin also
`
`allegedly began promoting Coyote Engines to Plaintiffs’ clients and business partners
`
`while using Plaintiffs’ truck.
`
`After Griffin’s termination, Plaintiffs discovered the following statements about
`
`them on Yahoo!, which were apparently posted by a user with the screen name
`
`“Bobbo”:
`
`Had them do a rebuild for me, less then a month had to
`bring it back for a leak and loose bolts. One year and a week
`after it was rebuilt and 5k miles it came apart and they
`would not touch it. Will never let them touch any of my cars.
`They are Awful.
`
`* * *
`
`I have the 2001 Dodge that broke down in Jackson
`Tennessee you would not pay for the tow and I could not get
`a trailer big enough for my truck to get it back to you so I
`had to shell out 3k for a rebuild to get out of Tennessee and
`they wanted 500 for the core. You where Zero help
`remember me now?
`
`* * *
`
`I called you personaly and you did nothing you mealy
`mouth. I shelled out 3k already for a rebuilt trans and the
`tranny you rebuilt went back as a core. I dont need your
`help now I needed it when I was stuck in Tennessee. No
`campaign, just the facts.
`
`* * *
`
`-2-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 3 of 21 PageID 230
`
`You have no intention of helping me with my bill you had
`your chance to do that and all I got was hot air. So stop
`dismissing me as a way to justify your problems.
`
`* * *
`
`You run your business with as much ignorance as your
`comments. You are clueless and looking at your other
`comments you gave your shop a five star and two other local
`Transmission shops one star each. Explains everything you
`use other shops to do rebuilds for you, your word is worth
`nothing. I would recommend a rebuild from a company with
`a nation wide warranty not a shade tree outfit like this one.
`
`* * *
`
`I see you deleted your other reviews, I guess you did not
`want people seeing you as the liar you are. Your word is not
`worth the time of day. Enough said
`
`* * *
`
`You think your slick playing games, deleteing all your posts.
`Talk about bogus, I talked to you personaly and you did
`nothing to help me. People can see through your sharade.
`
`Plaintiffs also discovered the following statements on Google posted by users
`
`with screen names “the-transmission-shop.com” and “the transmission shop sucks”:
`
`Coyote Engines and Transmissions would like to extend our
`thanks to The Transmission Shop owner Mike Adams for
`giving us the inspiration for starting our new website
`domain http://www.the-transmission-shop.com . After Mike
`fired and refused to pay his No. 1 Salesman in the United
`States we were extremely happy to pick him up as we know
`he will continue to make us ungodly amounts of money.
`Because Mike has harassed us over the phone and made
`threats it just gives us more fuel to sell more transmissions
`in the Dallas - Fort Worth metroplex. Hats off to you Mike
`for all you’ve done.
`
`* * *
`
`-3-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 4 of 21 PageID 231
`
`The transmission shop has the worst service I have seen.
`Stay away from this company. I have heard nothing good
`about them at all. Mike Adams (the owner) has the worst
`reputation in all of Dallas. BEWARE – STAY AWAY FROM
`THIS COMPANY.
`
`* * *
`
`I noticed that this business has 8 complaints with the BBB
`that have the same generic “The consumer failed to
`acknowledge acceptance to BBB.”. This seems to be very
`fishy. I find the A+ rating very unreliable
`
`Plaintiffs filed suit against Defendants on May 19, 2011 asserting claims for
`
`defamation, business disparagement, breach of fiduciary duty, conversion, and
`
`violations of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C.
`
`§ 1125(d). Defendants, through counsel, answered, raising various affirmative defenses
`
`and asserting counterclaims for tortious interference with prospective business
`
`relations, breach of contract, quantum meruit, theft of services, and an accounting.
`
`Thereafter, the Court granted Defendants’ attorneys permission to withdraw as
`
`counsel for Defendants. Order [Dkt. No. 24], 9/22/11. On December 30, 2011, Plaintiffs’
`
`counsel mailed Plaintiffs’ First Set of Requests for Admission to Defendants by
`
`certified mail and first class mail. The certified letters were returned “Unclaimed.” The
`
`first class letters were not returned. Defendants did not respond. Therefore, each
`
`matter for which an admission was sought was deemed admitted by operation of law.
`
`See Order [Dkt. No. 28], 7/3/2012.
`
`Plaintiffs filed their Motion for Summary Judgment on June 29, 2012.
`
`Defendants were ordered to file a response to the Motion by August 3, 2012 but failed
`
`-4-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 5 of 21 PageID 232
`
`to do so. The Court therefore considers Plaintiffs’ Motion for Summary Judgment
`
`without the benefit of a response. See Order [Dkt. No. 30], 10/29/12.
`
`Legal standards
`
`Under Federal Rule of Civil Procedure 56, summary judgment is proper “if the
`
`movant shows that there is no genuine dispute as to any material fact and the movant
`
`is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a). A factual “issue is
`
`material if its resolution could affect the outcome of the action.” Weeks Marine, Inc. v.
`
`Fireman’s Fund Ins. Co., 340 F.3d 233, 235 (5th Cir. 2003). “A factual dispute is
`
`‘genuine,’ if the evidence is such that a reasonable [trier of fact] could return a verdict
`
`for the nonmoving party.” Crowe v. Henry, 115 F.3d 294, 296 (5th Cir. 1997).
`
`If the moving party seeks summary judgment as to his opponent’s claims or
`
`defenses, “[t]he moving party bears the initial burden of identifying those portions of
`
`the pleadings and discovery in the record that it believes demonstrate the absence of
`
`a genuine issue of material fact, but is not required to negate elements of the
`
`nonmoving party’s case.” Lynch Props., Inc. v. Potomac Ins. Co., 140 F.3d 622, 625 (5th
`
`Cir. 1998). “Once the moving party meets this burden, the nonmoving party must set
`
`forth” – and submit evidence of – “specific facts showing a genuine issue for trial and
`
`not rest upon the allegations or denials contained in its pleadings.” Id.; Little v. Liquid
`
`Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc).
`
`The Court is required to view all facts and draw all reasonable inferences in the
`
`light most favorable to the nonmoving party and resolve all disputed factual
`
`-5-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 6 of 21 PageID 233
`
`controversies in favor of the nonmoving party – but only if both parties have introduced
`
`evidence showing that an actual controversy exists. Anderson v. Liberty Lobby, Inc.,
`
`477 U.S. 242, 255 (1986); Boudreaux v. Swift Transp. Co., Inc., 402 F.3d 536, 540 (5th
`
`Cir. 2005); Lynch Props., 140 F.3d at 625. “Unsubstantiated assertions, improbable
`
`inferences, and unsupported speculation are not sufficient to defeat a motion for
`
`summary judgment,” Brown v. City of Houston, 337 F.3d 539, 541 (5th Cir. 2003), and
`
`neither will “only a scintilla of evidence” meet the nonmovant’s burden, Little, 37 F.3d
`
`at 1075. Rather, the non-moving party must “set forth specific facts showing the
`
`existence of a ‘genuine’ issue concerning every essential component of its case.” Morris
`
`v. Covan World Wide Moving, Inc., 144 F.3d 377, 380 (5th Cir. 1998). If, “after the
`
`nonmovant has been given an opportunity to raise a genuine factual issue,” “the record,
`
`taken as a whole, could not lead a rational trier of fact to find for the non-moving party,
`
`then there is no genuine issue for trial.” DIRECTV, Inc. v. Minor, 420 F.3d 546, 549
`
`(5th Cir. 2005); Steadman v. Texas Rangers, 179 F.3d 360, 366 (5th Cir. 1999).
`
`The Court will not assume “in the absence of any proof ... that the nonmoving
`
`party could or would prove the necessary facts” and will grant summary judgment “in
`
`any case where critical evidence is so weak or tenuous on an essential fact that it could
`
`not support a judgment in favor of the nonmovant.” Little, 37 F.3d at 1075. “Rule 56
`
`does not impose upon the district court a duty to sift through the record in search of
`
`evidence to support a party’s opposition to summary judgment,” and “[a] failure on the
`
`part of the nonmoving party to offer proof concerning an essential element of its case
`
`-6-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 7 of 21 PageID 234
`
`necessarily renders all other facts immaterial and mandates a finding that no genuine
`
`issue of fact exists.” Adams v. Travelers Indem. Co. of Conn., 465 F.3d 156, 164 (5th
`
`Cir. 2006) (internal quotation marks omitted).
`
`If, on the other hand, “the movant bears the burden of proof on an issue, either
`
`because he is the plaintiff or as a defendant he is asserting an affirmative defense, he
`
`must establish beyond peradventure all of the essential elements of the claim or
`
`defense to warrant judgment in his favor.” Fontenot v. Upjohn Co.,780 F.2d 1190, 1194
`
`(5th Cir. 1986). The “beyond peradventure” standard imposes a “heavy” burden. Cont’l
`
`Cas. Co. v. St. Paul Fire & Marine Ins. Co., No. 3:04-cv-1866-D, 2007 WL 2403656, at
`
`*10 (N.D. Tex. Aug. 23, 2007). The moving party must demonstrate that there are no
`
`genuine and material fact disputes and that the party is entitled to summary judgment
`
`as a matter of law. See, e.g., Martin v. Alamo Cmty. Coll. Dist., 353 F.3d 409, 412 (5th
`
`Cir. 2003). On such a motion, the Court will, again, “draw all reasonable inferences in
`
`favor of the non-moving party.” Chaplin v. NationsCredit Corp., 307 F.3d 368, 372 (5th
`
`Cir. 2002).
`
`Deemed Admissions
`
`Analysis
`
`Plaintiffs contend that Defendants have admitted “each and every one” of their
`
`Requests for Admission and, therefore, they are entitled to summary judgment on all
`
`of their claims and all of Defendants’ affirmative defenses and counterclaims. Plf. MSJ
`
`Br. [Dkt. No. 25] at 1.
`
`-7-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 8 of 21 PageID 235
`
`Federal Rule of Civil Procedure 36 allows a party to request from any other
`
`party admissions to a broad range of factual matters, including the application of law
`
`to fact. FED. R. CIV. P. 36(a)(1); In re Carney, 258 F.3d 415, 419 (5th Cir. 2001). Under
`
`the rule, a party served with a request for admission has 30 days to answer or object
`
`to the request. FED. R. CIV. P. 36(a)(3). If a party fails to timely respond, the matter is
`
`deemed admitted and is “conclusively established unless the court, on motion, permits
`
`the admission to be withdrawn or amended.” FED. R. CIV. P. 36(b). If the request for
`
`admission concerns an essential issue, the failure to respond to the request can result
`
`in a grant of summary judgment against the non-responding party. See Carney, 258
`
`F.3d at 420 n.6 (collecting cases that grant summary judgment on basis of deemed
`
`admissions).
`
`On December 30, 2011, Plaintiffs served Griffin and Fenderson with separate
`
`requests for admissions by certified mail and first class mail. Plf. MSJ App. [Dkt. No.
`1
`
`26] at 2, ¶¶ 3, 9; see also id. at 6, 39, 41, 75. Neither Defendant filed an answer or any
`
`objections to the requests, nor did they make any effort to avoid the consequences of
`
`their failure to timely respond by moving to amend or withdraw the admissions. The
`
`matters to which the requests are directed are thus deemed admitted as a matter of
`
`1
`
` Pursuant to Federal Rule of Civil Procedure 5(b)(2)(C), service by mail is complete
`on mailing. The pro se Defendants’ failure or refusal to claim the packages served by
`certified mail does not change the fact that service was duly made. See Hall v. ADVO,
`Inc., No. 3:04-CV-2644-L, 2007 WL 210357, at *2 (N.D. Tex. Jan. 26, 2007) (requests
`for admission deemed admitted when requests were sent to pro se party by certified
`mail, notwithstanding fact that documents were returned to sender as “unclaimed”).
`-8-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 9 of 21 PageID 236
`
`law. See Carney, 258 F.3d at 420; see also Hill v. Breazeale, 197 F. App’x 331, 336 (5th
`
`Cir. 2006) (applying Rule 36 against pro se litigant).
`
`Defamation and Business Disparagement
`
`To prevail on their defamation claim, Plaintiffs must establish “beyond
`
`peradventure” that Defendants published a statement about Plaintiffs that was
`
`defamatory, while acting with at least negligence regarding the truth of the statement.
`
`WFAA-TV, Inc. v. McLemore, 978 S.W.2d 568, 571 (Tex. 1998). A statement is
`
`defamatory if it tends to damage the reputation of another by subjecting that person
`
`to public hatred, contempt, or ridicule. Hansen v. Our Redeemer Lutheran Church, 938
`
`S.W.2d 85, 92 (Tex. App. – Dallas 1995, writ denied).
`
`To prevail on their similar, but distinct, claim for business disparagement,
`
`Plaintiffs must prove that Defendants published a false, defamatory statement of fact
`
`about Plaintiffs, with malice, without privilege, that resulted in special damages to
`
`Plaintiffs. Forbes Inc. v. Granada Biosciences, Inc., 124 S.W.3d 167, 170 (Tex. 2003).
`
`Defendants may be held liable for business disparagement only if the evidence
`
`establishes that they “knew of the falsity [of the statement] or acted with reckless
`
`disregard concerning it, or if [they] acted with ill will or intended to interfere in the
`
`economic interest of [Plaintiffs] in an unprivileged fashion.” Hurlbut v. Gulf Atlantic
`
`Life Ins. Co., 749 S.W.2d 762, 767 (Tex. 1987). Proof of special damages is also an
`
`essential part of Plaintiffs’ cause of action for business disparagement. See id. Plaintiffs
`
`must show that the disparaging communication played a substantial part in inducing
`
`-9-
`
`

`
`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 10 of 21 PageID 237
`
`third parties not to deal with Plaintiffs, resulting in a direct pecuniary loss that has
`
`been realized or liquidated, such as specific lost sales, loss of trade, or loss of other
`
`dealings. See id.
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`Defendants have admitted to posting the false review about Plaintiffs on Yahoo!
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`using the screen name “Bobbo” and to making the three additional false statements
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`about Plaintiffs on Google using the screen names “the-transmission-shop.com” and/or
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`“the transmission shop sucks.” Plf. MSJ App. at 12-20, Griffin Adm. Nos. 1, 9, 17, & 25;
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`id. at 47-55, Fenderson Adm. Nos. 1, 9, 17, & 25. With respect to each statement,
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`Defendants also have specifically admitted (1) they wrote and published the statement;
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`(2) the statement was made about Plaintiffs; (3) the statement is entirely false; (4) they
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`knew the statement was false when they wrote it; (5) the statement contains assertions
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`of fact; (6) the statement defamed and disparaged Plaintiffs; and (7) the statement
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`injured Plaintiffs and Plaintiffs’ reputation. Id. at 12-22, Griffin Adm. Nos. 1-7, 9-15,
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`17-23, & 25-31; id. at 47-57, Fenderson Adm. Nos. 1-7, 9-15, 17-23, & 25-31.
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`Considering these admissions and Defendants’ failure to respond to Plaintiffs’ Motion
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`for Summary Judgment, the Court finds no genuine issue of material fact as to
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`whether Defendants are liable for defamation. Plaintiffs are thus entitled to summary
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`judgment on their defamation claim.
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`The Court comes to the opposite conclusion, however, with respect to Plaintiffs’
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`claim for business disparagement. Plaintiffs have not established beyond peradventure
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`that they suffered special damages as a result of any of Defendants’ statements. In
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`particular, there are no deemed admissions or any other evidence that any disparaging
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`

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`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 11 of 21 PageID 238
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`communication by Defendants played a substantial part in inducing third parties not
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`to deal with Plaintiffs, resulting in a direct pecuniary loss that has been realized or
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`liquidated. See Hurlbut, 749 S.W.2d at 767. There is no evidence that Plaintiffs lost
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`any specific sale, trade, or other dealing. Plaintiffs thus have not met their heavy
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`burden to establish beyond peradventure all of the essential elements of their claim
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`and are not entitled to summary judgment on their business disparagement claim.
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`Violation of the Anitcybersquatting Consumer Protection Act
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`In order to prevail on their ACPA claim, Plaintiffs must prove that: (1) their
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`marks, “The Transmission Shop” and “www.transmissionshop.com,” are distinctive or
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`famous and entitled to protection; (2) Defendants’ domain name is identical or
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`confusingly similar to Plaintiffs’ marks; and (3) Defendants registered the domain
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`name with the bad faith intent to profit from it. 15 U.S.C. § 1125(d)(1)(A) ; Southern
`2
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` The relevant portion of the ACPA provides:
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`2
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`A person shall be liable in a civil action by the owner of a mark, including
`a personal name which is protected as a mark under this section, if,
`without regard to the goods or services of the parties, that person--
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`(i) has a bad faith intent to profit from that mark, including a
`personal name which is protected as a mark under this section;
`and
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`(ii) registers, traffics in, or uses a domain name that--
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`(I) in the case of a mark that is distinctive at the time of
`registration of the domain name, is identical or confusingly
`similar to that mark;
`
`(II) in the case of a famous mark that is famous at the time
`of registration of the domain name, is identical or
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`

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`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 12 of 21 PageID 239
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`Co. v. Dauben Inc., 324 F. App’x 309, 314 (5th Cir. 2009) (citing Shields v. Zuccarini,
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`254 F.3d 476, 482 (3d Cir. 2001)). In this case, although Defendants have admitted to
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`registering a domain name – “www.the-transmission-shop.com” – that is confusingly
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`similar to Plaintiffs’ marks with a bad faith intent to profit from those marks (Plf. MSJ
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`App. at 22-23, Griffin Adm. Nos. 33-38; id. at 57-58, Fenderson Adm. Nos. 33-38), the
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`record contains insufficient evidence to establish that Plaintiffs’ marks are distinctive
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`or famous as a matter of law.
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`In determining if a mark is distinctive under the ACPA, a court may consider
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`(1) the degree of inherent or acquired distinctiveness of the mark; (2) the duration and
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`extent of use of the mark; (3) the duration and extent of advertising and publicity of
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`the mark; (4) the geographical extent of the area in which the mark is used; (5) the
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`channels of trade for which the goods or services with which the mark is used; (6) the
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`degree of recognition of the mark in the trading areas and channels of trade used by
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`the mark’s owner and the person against whom the injunction is sought; (7) the nature
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`and extent of use of the same or similar marks by third parties; and (8) whether the
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`mark is registered. See Registral.com, LLC v. Fisher Controls Intern., Inc., No. H-01-
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`1423, 2001 WL 34109376, *8 (S.D. Tex. Jun. 28, 2001) (citing Shields, 254 F.3d at 482);
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`Sporty’s Farm L.L.C. v. Sportman’s Market, Inc., 202 F.3d 489, 497 n. 10 (2d Cir.
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`confusingly similar to or dilutive of that mark; or
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`(III) is a trademark, word, or name protected by reason of
`section 706 of Title 18 or section 220506 of Title 36.
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`15 U.S.C. § 1125(d)(1)(A).
`
`-12-
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`

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`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 13 of 21 PageID 240
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`2000)); see also 15 U.S.C. § 1125(c)(2) (“In determining whether a mark possesses the
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`requisite degree of recognition, the court may consider all relevant factors, including
`
`... (i) [t]he duration, extent, and geographic reach of advertising and publicity of the
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`mark, whether advertised or publicized by the owner or third parties; (ii) [t]he amount,
`
`volume, and geographic extent of sales of goods or services offered under the mark; (iii)
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`[t]he extent of actual recognition of the mark; (iv) [w]hether the mark was registered
`
`under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal
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`register.”).
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`The only evidence in the summary judgment record that informs the Court’s
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`analysis of Plaintiffs’ marks’ distinctiveness are Defendants’ admissions that Plaintiffs
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`use their marks “in commerce throughout the State of Texas,” Plf. MSJ App. at 22,
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`Griffin Adm. No. 33; id. at 57, Fenderson Adm. No. 33, and that Plaintiffs “have a valid
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`registration for the assumed name ‘The Transmission Shop’ in the State of Texas,” id.
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`at 22, Griffin Adm. No. 34; id. at 57, Fenderson Adm. No. 34. Although this evidence
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`touches on the extent of Plaintiffs’ use of their marks, it falls short of establishing that
`
`the marks are distinctive. Therefore, Plaintiffs have failed to establish “beyond
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`peradventure” an essential element of their claim for violations of the ACPA, and their
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`motion for summary judgment will be denied as to this claim.
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`Breach of Fiduciary Duties and Aiding and Abetting Breach of Fiduciary Duties
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`The elements of the breach of fiduciary duty claim against Griffin are: (1) a
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`fiduciary relationship between Plaintiffs and Griffin; (2) breach of the fiduciary duty
`
`by Griffin; and (3) injury to Plaintiffs or benefit to Griffin resulting from the breach.
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`

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`Case 3:11-cv-01046-M Document 33 Filed 03/12/13 Page 14 of 21 PageID 241
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`See Anderton v. Cawley, 378 S.W.3d 38, 51 (Tex. App. – Dallas 2012, no pet.). Under
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`Texas law, an employee may owe fiduciary duties to his employer when the employee
`
`has been placed in a position of peculiar confidence or trust toward the employer. See
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`Hewlett-Packard Co. v. Byd:Sign, Inc., No. 6:05-cv-456, 2007 WL 275476, at *7 (E.D.
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`Tex. Jan. 25, 2007) (collecting representative decisions). In particular, an employee
`
`may owe fiduciary duties to his employer when he acts as the employer’s agent in the
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`pursuit of business opportunities on the employer’s behalf. Id. (citing Kinzbach Tool
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`Co. v. Corbett-Wallace Corp., 160 S.W.2d 509, 513 (1942); Johnson v. Brewer &
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`Pritchard, P.C., 73 S.W.3d 193, 200-01 (Tex. 2002)). In such cases, the employee has
`
`a duty to act primarily for the benefit of his employer in matters connected with hi