Board of Regents, The University of Texas System v. Tower Car Wash, Inc., et al., Case No. 1:11-cv-00125-LY in the U.S. District Court for the Western District of Texas — Represented Board of Regents, The University of Texas (“UT”) in this case challenging Tower Car Wash’s construction of a 60-foot replica of the iconic UT Tower, as well as Tower Car Wash’s logo, which prominently features the UT Tower in an orange color scheme. Because the case involves a local landmark and unique areas of trademark law, it has received attention from a number of media outlets. On January 8, 2014, the court granted final judgment to UT, finding that UT operates one of the most successful collegiate trademark licensing programs in the world and that Tower Car Wash used the marks to take advantage of the university’s goodwill. The court enjoined the car wash and awarded UT $68,285.59 as a reasonable royalty for Tower Car Wash’s infringement. The case is pending appeal.
Umami Burger Licensing USA, LLC v. Umami Mia Pizzeria, et al., Case No. A-13-CA-511-SS in the U.S. District Court for the Western District of Texas — Represented Defendants in this case challenging Defendants’ right to use the word umami in connection with a pizzeria. Because the case involved a local restaurant owned by several successful restaurateurs, as well as a fast-growing restaurant (Umami Burger) and an increasingly popular concept (umami), it received attention from a number of media outlets. On August 13, 2013, Pirkey Barber successfully represented Defendants at a hearing on Plaintiff’s preliminary injunction motion, after which the district court issued an order denying the injunction and finding that the word umami is a descriptive term available to third parties, including Defendants, rather than a name invented by Plaintiff. The parties have since amicably resolved the dispute.
SXSW, Inc. v. Joseph Gingerella d/b/a Black Ice Booking & Entertainment, Shyan Selah d/b/a Brave New World Media Group, and BNW Global, Inc. — Defendants promoted and organized a series of battle-of-the-bands throughout the United States using the SXSW trademarks and promising that the winners would play at the SXSW Music Festival. Defendants, however, were not affiliated with SXSW. SXSW brought suit against Defendants in November 2011 for counterfeiting, trademark infringement and dilution, false advertising, unfair competition, and unjust enrichment. On March 5, 2012, SXSW sought, and the district court granted, a preliminary injunction against Defendant Gingerella enjoining his use of the SXSW trademarks and ordering that he advise the affected bands and venues, as well as the public, that he is not affiliated with the 2012 SXSW Music Festival