     Case: 17-50148      Document: 00514561328         Page: 1    Date Filed: 07/18/2018




           IN THE UNITED STATES COURT OF APPEALS
                    FOR THE FIFTH CIRCUIT
                                                                         United States Court of Appeals
                                                                                  Fifth Circuit


                                      No. 17-50148
                                                                                FILED
                                                                            July 18, 2018
                                                                           Lyle W. Cayce
ALLIED LOMAR, INCORPORATED,                                                     Clerk

              Plaintiff - Appellant Cross-Appellee

v.

LONE STAR DISTILLERY, L.L.C., doing business as Garrison Brothers
Distillery,

              Defendant - Appellee Cross-Appellant

DOES 1 THROUGH 10, INCLUSIVE,

              Defendant – Appellee


                  Appeals from the United States District Court
                        for the Western District of Texas
                             USDC No. 1:14-CV-1078


Before HIGGINBOTHAM, SMITH, and CLEMENT Circuit Judges.
PER CURIAM:*
       Plaintiff Allied Lomar, Inc., a California liquor distributor, sued
Defendant Lone Star Distillery, L.L.C., d/b/a Garrison Brothers Distillery, a
Texas liquor distributor, alleging that Allied owned the mark “COWBOY
LITTLE BARREL” for its bourbon whiskey and that Garrison Brothers’ mark



       * 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 R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH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.
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                                        No. 17-50148

“COWBOY BOURBON” infringed on that trademark. Accordingly, Allied
asserted, among other things, trademark infringement, and Garrison Brothers
counterclaimed for declaratory judgment findings of non-infringement and
cancellation of Allied’s registration due to abandonment or fraud on the United
States Patent and Trademark Office. A jury returned a verdict finding, among
other things, that Allied abandoned its mark “COWBOY LITTLE BARREL.” 1
Allied timely filed a renewed motion for judgment as a matter of law, which
the district court denied. Allied appeals.
       We review de novo the district court’s denial of a motion for judgment as
a matter of law. 2 “When a case is tried to a jury, a motion for judgment as a
matter of law ‘is a challenge to the legal sufficiency of the evidence supporting
the jury’s verdict.’” 3 “‘In resolving such challenges, we draw all reasonable
inferences and resolve all credibility determinations in the light most favorable
to the nonmoving party,’ and will uphold the verdict ‘unless there is no legally
sufficient evidentiary basis for a reasonable jury to find as the jury did.’” 4
       Under the Lanham Act, a mark shall be deemed abandoned when the
following occurs:
       [The mark’s] use has been discontinued with intent not to resume
       such use. Intent not to resume may be inferred from
       circumstances. Nonuse for 3 consecutive years shall be prima facie
       evidence of abandonment. “Use” of a mark means the bona fide use
       of such mark made in the ordinary course of trade, and not made
       merely to reserve a right in a mark. 5


       1 The parties’ first trial ended in a mistral when Allied failed to comply with a pretrial
ruling requiring it to “approach the bench, advise of its intention regarding any product
released subsequent to the filing of this lawsuit to obtain a ruling on admissibility prior to
any exposure of the same to the jury.”
       2 Omnitech Int’l, Inc. v. Clorox Co., 11 F.3d 1316, 1322–23 (5th Cir. 1994).
       3 Cowart v. Erwin, 837 F.3d 444, 450 (5th Cir. 2016) (quoting Heck v. Triche, 775 F.3d

265, 272 (5th Cir. 2014)).
       4 Id. (quoting Heck, 775 F.3d at 273).
       5 15 U.S.C. § 1127.

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                                    No. 17-50148

“The party asserting abandonment must establish that the owner of the mark
both (1) discontinued use of the mark and (2) intended not to resume its use.” 6
When the party claiming abandonment provides evidence that the mark has
not been used for three consecutive years, the burden then shifts to the mark
owner to establish that “circumstances do not justify the inference of intent not
to resume use.” 7 To rebut the presumption of intent not to resume use, a mark
owner may produce evidence of either actual use or plans to resume use. 8
      We conclude that a reasonable jury could determine that Allied failed to
rebut the presumption of intent not to resume use. As the district court
observed, the jury fairly rejected the testimony of Allied’s founder, Marci
Palatella, and Allied’s price lists as evidence of intent to resume use. Allied
now claims that a jury could not reasonably disbelieve Palatella’s testimony
because “the facts to which Palatella testified are uncontroverted.” The record
proves otherwise. That is, Garrison Brothers presented evidence undermining
Palatella’s contention that Allied specializes in old, rare, and expensive
whiskeys; disputing Palatella’s reliance on a bourbon shortage as a reason for
Allied’s failure to sell “COWBOY LITTLE BARREL” bourbon after 2009; and
highlighting Palatella’s inconsistent testimony concerning Allied’s price lists.
      We therefore decline to overturn the jury’s verdict when Allied’s evidence
amounts to “a vague, subjective intent to resume use of a mark at some
unspecified future date.” 9 Because such evidence cannot defeat abandonment,
the jury’s verdict is sound. 10
      AFFIRMED.


      6 Vais Arms, Inc. v. Vais, 383 F.3d 287, 293 (5th Cir. 2004).
      7 Exxon Corp. v. Humble Explor. Co., 695 F.2d 96, 99 (5th Cir. 1983).
      8 Id. at 102–03.
      9 Vais Arms, 383 F.3d at 295 (internal quotation marks omitted).
      10 To the extent that the briefing raises additional arguments, we have considered

them and find them without merit.
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