Trademark Injunctions Must Be Cabined to Markets of Likely Confusion (No Blanket Ban on a Common Word Mark)

Precedents Cited

1) Likelihood of confusion framework and review standards

• Am. Rice, Inc. v. Producers Rice Mill, Inc. — Stated the two-step infringement test (protectable mark + likelihood of confusion). The court used it to frame the appeal as turning solely on confusion.
• Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., Westchester Media v. PRL USA Holdings, Inc., Elvis Presley Enters., Inc. v. Capece — Supplied the “digits of confusion,” the “probability (not possibility)” standard, and the principle that no single digit is dispositive.
• Elvis Presley Enters., Inc. v. Capece, Anderson v. City of Bessemer — Anchored “clear error” review of confusion findings after a bench trial.
• Guzman v. Hacienda Recs. & Recording Studio, Inc., In re Luhr Bros., Inc. — Reinforced heightened deference when findings rest on credibility determinations.
• Amstar Corp. v. Domino's Pizza, Inc., Falcon Const. Co. v. Econ. Forms Corp. — Addressed concerns about findings copied from a party’s proposals: verbatim adoption does not relax Rule 52 deference; reversal still requires clear error.

2) Mark strength, third-party use, and registrations

• Future Proof Brands, L.L.C. v. Molson Coors Beverage Co., Amazing Spaces, Inc. v. Metro Mini Storage — Provided definitions distinguishing “suggestive” from “arbitrary” marks.
• Two Pesos, Inc. v. Taco Cabana, Inc. — Cited (via McCarthy) for the proposition that suggestive/arbitrary/fanciful marks are inherently distinctive and need no secondary meaning to be protectable.
• Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass'n, Turner v. HMH Publ'g Co., Amstar Corp. v. Domino's Pizza, Inc. — Guided the court’s treatment of third-party uses/registrations: the key question is whether third-party use diminishes the public’s association of the mark with the plaintiff; mere registrations do not establish consumer awareness or continuing use.
• Pebble Beach Co. v. Tour 18 I Ltd. — Cited for secondary meaning definition (via Smack Apparel Co.).

3) Similarity, relatedness, and complementary goods

• Xtreme Lashes, LLC v. Xtended Beauty, Inc. — Supplied the “dominant features” approach and the “common origin or association” test even when marks are distinguishable.
• Exxon Corp. v. Tex. Motor Exch. of Hous., Inc. — Stated the basic rule: greater product similarity increases confusion.
• Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha — Supported treating complementary products as particularly susceptible to confusion; also rejected “total disregard” of actual confusion evidence based solely on who was confused.
• Elvis Presley Enters., Inc. v. Capece — Used for sponsorship/affiliation confusion and “natural expansion” concepts.

4) Intent and willfulness

• Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., Smack Apparel Co., Am. Rice, Inc. v. Producers Rice Mill, Inc. — Supported inferring intent where defendant knew of the mark and sought to capitalize on plaintiff popularity; clarified “mere awareness” is insufficient.
• Conan Props., Inc. v. Conans Pizza, Inc. — Cited for the “mere awareness” limitation and later for tailoring injunctive breadth to the likelihood of retained goodwill.
• Viacom International v. IJR Capital Investments, L.L.C., United States v. Robinson — Mentioned in forfeiture context; the court declined to address a new oral-argument theory not briefed.
• Lee v. Miller Cnty. — Reinforced appellate restraint in second-guessing district court factfinding.

5) Actual confusion evidentiary weight

• Scott Fetzer Co. v. House of Vacuums Inc. — Recognized both anecdotal and survey evidence methods.
• Xtreme Lashes, LLC v. Xtended Beauty, Inc., Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc. — Required more than “fleeting mix-ups.”
• Rex Real Est. I, L.P. v. Rex Real Est. Exch., Inc. — Differentiated between confusion that can sway purchases and confusion that cannot.
• Amstar Corp. v. Domino's Pizza, Inc., Armstrong Cork Co. v. World Carpets, Inc., Scott Paper Co. v. Scott's Liquid Gold, Inc. — Drove the court’s key correction: isolated instances of confusion are insufficient when both parties have extensive, high-volume sales.

6) Disgorgement of profits (equity, burdens, attribution)

• Pebble Beach Co. v. Tour 18 I Ltd. — Provided the equitable factors (intent, diverted sales, adequacy of other remedies, delay, public interest, palming off) and the limitation that only profits attributable to infringement should be awarded (subject to burdens).
• Ill. Tool Works, Inc. v. Rust Oleum Corp. — Noted as abrogating Pebble Beach Co. on other grounds (not undermining the disgorgement-factor discussion relied on here).
• Am. Rice, Inc. v. Producers Rice Mill, Inc., Maltina Corp. v. Cawy Bottling Co., Inc. — Confirmed profits may be awarded to compensate, remedy unjust enrichment, or deter, and that diverted sales evidence is not strictly required.
• Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co. — Central authority endorsing Lanham Act burden shifting: plaintiff proves sales; infringer proves costs/deductions and profits not attributable to infringement.
• Tex. Pig Stands, Inc. v. Hard Rock Café Int'l, Inc. (“Texas Pig Stands I”), Tex. Pig Stands, Inc. v. Hard Rock Café Int'l, Inc. — Used to reject defendants’ attempt to reallocate the attribution burden; Texas Pig Stands I was fact-specific (no goodwill to appropriate) and, per the later Tex. Pig Stands decision, consistent with Mishawaka.
• Bear Ranch, L.L.C. v. Heartbrand Beef, Inc., Retractable Techs., Inc. v. Becton Dickinson & Co. — Explained abuse-of-discretion review and district court latitude in fashioning relief.

7) Permanent injunction scope

• Westchester Media v. PRL USA Holdings, Inc. — Established that injunctions in trademark cases should be “no broader than necessary.”
• All. for Good Gov't v. Coal. for Better Gov't — Supported modifying/limiting an injunction where confusion does not extend across all uses.
• Conan Props., Inc. v. Conans Pizza, Inc. — Supported rejecting overly broad injunctions where the defendant is unlikely to retain misappropriated goodwill.
• Kentucky Fried Chicken Corp. v. Diversified Packaging Corp. — Distinguished: broad injunctions may be justified by a demonstrated history of improper behavior.

8) Texas-law umbrella “unfair competition” and briefing forfeiture

• Motion Med. Techs., L.L.C. v. Thermotek, Inc. — Clarified “unfair competition” as an umbrella label under Texas law.
• Rollins v. Home Depot USA — Applied to forfeiture: inadequately briefed appellate arguments are forfeited.

Legal Reasoning

A) Likelihood of confusion: affirming liability while correcting “actual confusion”

The court walked digit-by-digit and largely accepted the district court’s findings on strength, similarity, relatedness, overlapping customers/outlets, and overlapping advertising. It also deferred to credibility-based intent findings, emphasizing Guzman v. Hacienda Recs. & Recording Studio, Inc. and In re Luhr Bros., Inc..

The doctrinal refinement came on actual confusion. Although the district court treated five instances (dealer testimony plus emails) as “compelling,” the Fifth Circuit held that—given multi-million-dollar sales—this level of anecdotal confusion was akin to the “isolated instances” rejected in Amstar Corp. v. Domino's Pizza, Inc.. The court also distinguished Elvis Presley Enters., Inc. v. Capece by noting the record lacked evidence of “initial-interest confusion” that actually drew consumers to defendants (i.e., no showing that Trojan Battery’s mark “brought consumers to Trojan EV’s door”).

Critically, the court did not require actual confusion to affirm liability. Relying on Smack Apparel Co., it held the remaining digits supported likely confusion even after removing actual confusion from the plaintiff’s column.

B) Disgorgement: reaffirming equity discretion and the statutory burden-shifting model

Applying 15 U.S.C. § 1117(a), the Fifth Circuit upheld disgorgement as an equitable remedy supported by: (1) willful infringement (intent to trade on goodwill), (2) risk of diverted sales, (3) inadequacy of other remedies, and (4) deterrence/public-interest concerns—consistent with Pebble Beach Co. v. Tour 18 I Ltd. and Maltina Corp. v. Cawy Bottling Co., Inc..

On calculation, the court emphasized the classic structure from § 1117(a) and Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.: the plaintiff proves sales; the defendant must prove costs/deductions and show which profits are not attributable to the infringement. The court rejected defendants’ reliance on Texas Pig Stands I as a burden-reallocation case, treating it as a fact-bound decision turning on the absence of goodwill to appropriate, and pointing to the later Tex. Pig Stands, Inc. v. Hard Rock Café Int'l, Inc. as recognizing consistency with Mishawaka.

C) Injunctions: the key holding—overbreadth requires market-limited tailoring

The Fifth Circuit’s most concrete remedial rule is that injunctive relief must track the proven scope of likely confusion. The injunction barred defendants from using “TROJAN” in connection with any goods or services. The panel held that was too broad: confusion was proven in the golf-industry context (golf carts and golf-cart batteries, shared channels, shared customer base), not across all possible markets. Citing Westchester Media v. PRL USA Holdings, Inc. and All. for Good Gov't v. Coal. for Better Gov't, the court required narrowing to the relevant markets.

The court also limited the reach of the “safe distance rule” (discussed through McCarthy): willfulness alone did not justify a universal ban, particularly where the willfulness finding largely rested on credibility determinations rather than a demonstrated “history of improper behavior” of the kind present in Kentucky Fried Chicken Corp. v. Diversified Packaging Corp..

Impact

• Injunction drafting in the Fifth Circuit: Prevailing trademark plaintiffs should expect injunctions to be market- and product-bounded. A blanket prohibition on using a shared word element (“TROJAN”) across all industries is vulnerable on appeal absent evidence of cross-market confusion.
• Actual confusion evidence calibration: Plaintiffs relying on a handful of anecdotes in high-volume markets should anticipate Amstar-style skepticism. Defendants can use this decision to argue that sparse instances should not be deemed “compelling,” especially where confusion did not demonstrably affect purchasing decisions.
• Initial-interest confusion requires proof of “door-opening” effect: The panel signaled that invoking Elvis Presley Enters., Inc. v. Capece requires evidence that the mark actually attracted consumers (not merely that confusion occurred after contact).
• Profits remain a potent remedy for willful infringement: The decision reinforces the deterrence and unjust-enrichment rationales for disgorgement under § 1117(a) even without concrete proof of diverted sales, echoing Maltina Corp..
• Attribution and deductions are defendant-intensive proof problems: Once sales are shown, defendants must marshal admissible, credible proof of costs/deductions and non-attributable profits; failure to do so risks near-total profits awards consistent with Mishawaka.