                       REVISED April 11, 2017

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

                                                                      FILED
                                   No. 16-20046                 March 16, 2017
                                                                 Lyle W. Cayce
STREAMLINE PRODUCTION SYSTEMS, INC.,                                  Clerk


            Plaintiff - Appellee

v.

STREAMLINE MANUFACTURING, INC.,

            Defendant - Appellant




                Appeal from the United States District Court
                     for the Southern District of Texas


Before STEWART, Chief Judge, and KING and DENNIS, Circuit Judges.
KING, Circuit Judge:
      Streamline Production Systems, Inc. filed this trademark infringement
suit against Streamline Manufacturing, Inc. seeking damages under the
Lanham Act and Texas common law. After stipulating to an injunction, the
parties proceeded to a jury trial on the issues of infringement and damages.
The jury returned a verdict finding that Streamline Manufacturing, Inc.
infringed on Streamline Production Systems, Inc.’s valid trademark in its
name and awarded damages for lost royalties, unjust enrichment, and
exemplary damages, each in the sum of $230,000, for a total award of $690,000.
                                 No. 16-20046
The district court denied Streamline Manufacturing Inc.’s motion for judgment
as a matter of law, as well as its renewed motion for judgment as a matter of
law, or in the alternative, for a new trial. Finding insufficient evidence to
support the damages awards, we AFFIRM the jury’s finding of trademark
infringement but VACATE the damages awards.
           I. FACTUAL AND PROCEDURAL BACKGROUND
A. Facts
      Plaintiff–Appellee Streamline Production Systems, Inc. (SPSI) was
established in 1993 by Michael Renick in Beaumont, Texas. SPSI initially
began as an oilfield services company. In 1997, SPSI began custom fabricating
pressure vessels, and today, it produces a range of custom fabricated natural
gas processing equipment, such as gas separators, heat exchangers, re-boilers,
and pressure vessels, and sells that equipment to customers nationwide, in
addition to continuing to provide oilfield services and repair. Later on, Renick
founded three other companies that all use “Streamline” in their names and
share staff with and operate in the same region as SPSI but do not
manufacture custom fabricated natural gas processing equipment.          SPSI’s
2013 sales exceeded $27 million. According to Renick, his company has been
successful over the years because it is “well-known in the oil field.”
      SPSI’s logo consists of the word “Streamline” written on a ring encircling
the image of a piece of natural gas production equipment. SPSI includes this
logo, along with its phone number, on a metal placard that it attaches to each
piece of equipment it produces. SPSI also uses this logo for its advertising,
which includes printed brochures, branded merchandise, branded racecars,
and a website. SPSI’s current website is streamlinetexas.com. The website’s
color scheme is blue and white. The banner at the top of the website depicts
“Streamline Production Systems” written in white lettering and integrated
with a piece of natural gas production equipment against a blue background.
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Prior to operating its website at this URL, SPSI operated a website at the URL
streamlinetx.com, which, according to SPSI’s business manager, was “very
generic” and was not relied upon for business.
      Defendant–Appellant Streamline Manufacturing, Inc. (SMI) was
founded in 2009 in Houston by Luis Morales and Bob Tulio.               SMI also
fabricates natural gas processing equipment, including pressure vessels,
boilers, heat exchangers, skids, and separators, and sells them to customers
nationwide. But unlike SPSI, it does not do any oil field servicing or repair
work. SMI also attaches a placard to each piece of equipment it produces
identifying SMI as the manufacturer, but unlike SPSI’s placard, it does not
include SMI’s phone number. Both Morales and Tulio worked at another oil
and gas equipment manufacturing company, RCH Industries, before they
founded SMI. Initially, all of SMI’s business came from customers with whom
Morales and Tulio had preexisting relationships through their prior work at
RCH Industries, and those customers have continued to comprise the majority
of SMI’s business. Some of these customers are equipment resellers who sell
SMI’s equipment to end-market users. Relying on this customer base, SMI
reached over $1 million in sales in its first full year of business, and between
2009 and 2014, it had over $20 million in total sales.
      According to Morales and Tulio, they selected the name “Streamline
Manufacturing, Inc.” for their new company after conferring with family
members and “bouncing names around,” with the goal of “trying to find
something short” and “not[] confusing.” They sought a name with a three letter
acronym because that was how their previous company (RCH) was referred to
and because they thought such a concise name “denote[d] efficiency.” They
brainstormed several possible names that they “pull[ed] . . . out of the air,” one
of which was “Streamline Manufacturing, Inc.” They provided these possible
names to their lawyer so he could check the availability of the names with the
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Texas Secretary of State, and SMI showed as available, so it was chosen. In
choosing this name, Morales and Tulio professed to be entirely unaware of
SPSI’s name, location, degree of success, customers, and even its mere
existence; nor did they know Renick. After choosing SMI as a name, Morales
sought to establish a website.        He used a commercial website to search
available domain names, and the search indicated that his first choice for a
domain name, SMI.com, was not available.             Morales then searched for
“Streamline,” and streamline.com was also not available, but the search
provided a drop down box indicating several other available variations.
Morales picked the shortest available variation shown in the drop down box,
streamlinetx.com, as SMI’s website domain name. This was the same domain
name previously used by SPSI. SMI’s website was predominantly blue and
white in color scheme, and its homepage displayed SMI’s logo: “SMI” in blue
font against a background of a photo of natural gas equipment overlaid against
an outline of the state of Texas. Besides this website, SMI did not engage in
any advertising or marketing efforts and did not even have a sign outside its
office.
          Around 2011, SPSI began to learn of SMI’s existence. First, it attempted
to update its website but learned that its registration had lapsed and that SMI
had taken over the domain. It also began to encounter customers and vendors
who confused SPSI and SMI. In 2012, Renick learned that one of SPSI’s oil
field services customers, Century Exploration, had a piece of equipment
manufactured by SMI that it mistakenly believed it had purchased from SPSI.
Another customer, Union Services, mistakenly sent a $130 check intended for
SPSI to SMI instead. Renick also received a call from a purchasing agent at
Pioneer Resources, a natural gas company, who said he had a pressure vessel
with a “Streamline” placard on it but no phone number and he was interested
in purchasing more. It became clear that the purchasing agent was an SMI
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customer, had an SMI-manufactured vessel, and had erroneously called SPSI.
According to Renick, SPSI’s vendors also occasionally erroneously shipped
equipment to SMI’s offices. And two vendors refused to sell equipment and
materials to SPSI because they confused it with SMI, who had unpaid bills.
Despite these instances of confusion, SPSI did not contact SMI.
      At the same time SPSI was learning of SMI’s existence, SMI was also
learning of SPSI. In 2011, a representative from the Texas Secretary of State
called SMI seeking to collect franchise taxes owed by SPSI. In addition, a
third-party insurance inspector mentioned to Morales that he knew of another
company called “Streamline.”     SMI also received at least one phone call
intended for SPSI. And in 2013, an employee at one of SMI’s customers,
Mustang, told Morales that there was another business called “Streamline” in
Texas but it is not clear that he mentioned what type of work it did. SMI did
not investigate SPSI after any of these instances of confusion. Tulio explained
that at first he thought SPSI was a movie production business due to the
presence of “production” in its name. He also justified his lack of concern over
the confusion based on the fact that SMI did not “run into” SPSI.
      In February 2013, Renick submitted an application to the United States
Patent and Trademark Office (PTO) for trademark registration of the mark
“Streamline Production Systems,” and the PTO issued the trademark for this
phrase on October 29, 2013. On November 26, 2013, SPSI sent a cease and
desist letter to SMI, demanding that SMI “immediately cease and desist the
use, display, and distribution of any materials bearing the phrase
STREAMLINE MANUFACTURING.” The letter stated that SPSI was the
holder of the common law, state, and federal trademark in Streamline
Production Systems and that SMI’s use of “Streamline Manufacturing”
infringed on SPSI’s trademark because it was “highly similar in look, sound,
and connotation” and used in conjunction with similar goods and services.
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SMI’s counsel responded in a letter on January 14, 2014, disclaiming any
infringement of SPSI’s trademark.                 In March 2014, Renick signed an
agreement with SPSI assigning his “entire right, title and interest in and to”
his trademark in “Streamline Production Systems” to SPSI.
B. Proceedings
       On May 9, 2014, SPSI filed suit against SMI, alleging, in relevant part,
infringement of its trademark under the Lanham Act and Texas common law
and seeking damages as well as injunctive relief. In its answer, SMI denied
all claims. 1     Nevertheless, SMI ultimately stipulated to a preliminary
injunction on August 28, 2014. Pursuant to the injunction, SMI agreed to,
within 120 days, change its name and discontinue all use of “Streamline
Manufacturing” on its marketing and communications materials, and within
30 days, discontinue its use of the domain name “streamlinetx.com.” SMI
eventually changed its name to Strongfab Solutions, Inc. SPSI’s suit proceeded
to a five-day jury trial on the issues of trademark infringement and damages,
commencing on November 16, 2015. The jury heard testimony from SMI’s and
SPSI’s principals, SPSI’s damages expert, and two representatives of
companies that were customers of SMI. At the conclusion of SPSI’s case, SMI
moved for a directed verdict on SPSI’s common law trademark infringement
claim, arguing that SPSI had not demonstrated any actual damages, which the
district court denied.       At the conclusion of all testimony, SMI moved for
judgment as a matter of law (JMOL) on all of SPSI’s claims, which the district
court also denied. The jury was given a lengthy jury charge outlining the
burden of proof on each verdict question and the elements of each claim. 2




       1 SMI also asserted the affirmative defenses of waiver and laches.
       2 SMI objected to many aspects of this jury charge, but these objections were overruled
for the most part and are not at issue in this appeal.
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      The jury returned its verdict on November 23, 2015. The jury found that
SPSI proved by a preponderance of the evidence that SPSI had a valid
trademark under the Lanham Act and Texas common law in “Streamline
Production Systems” and that SMI had infringed on this trademark. 3 The jury
further found that this infringement was the proximate cause of damages to
SPSI. However, the jury found that SPSI failed to prove it was entitled to any
profit that SMI had earned that was “directly attributable” to its infringing use
of the trademarks and that SMI had earned “zero” profit through its infringing
use of the trademarks. Nevertheless, the jury awarded SPSI $230,000 as a
“reasonable royalty” for SMI’s use of the trademark, another $230,000 for
unjust enrichment to SMI through its infringing use, and a final $230,000 as
exemplary damages, for a total damages award of $690,000.
      The district court entered a final judgment in the case on November 24,
2015. SMI then filed a renewed JMOL motion, or in the alternative, a motion
for new trial. SMI argued it was entitled to JMOL, in relevant part, on (1) the
trademark infringement claims, (2) the claim for unjust enrichment, and (3)
the jury’s finding that SMI’s infringement was done with “malice, gross
negligence, willfulness, or willful blindness” and its corresponding finding that
SPSI was thus entitled to exemplary damages. The district court denied this
motion without explanation. SMI timely appealed.
                      II. TRADEMARK INFRINGEMENT
       SMI appeals the district court’s denial of its renewed motion for JMOL,
or in the alternative, a new trial on the issue of trademark infringement. We
review the denial of a renewed JMOL motion de novo, applying the same




      3 The jury also found that SMI had failed to prove its affirmative defenses of laches
and waiver.
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standard in reviewing the motion as the district court. 4 Cowart v. Erwin, 837
F.3d 444, 450 (5th Cir. 2016). “When a case is tried to a jury, a [JMOL]
motion . . . ‘is a challenge to the legal sufficiency of the evidence supporting the
jury’s verdict.’” Id. (quoting Heck v. Triche, 775 F.3d 265, 272 (5th Cir. 2014)).
In reviewing a challenge to a jury verdict, “we draw all reasonable inferences
and resolve all credibility determinations in the light most favorable to the
[verdict].” Id. (quoting Heck, 775 F.3d at 273). The motion should be denied
“unless there is no legally sufficient evidentiary basis for a reasonable jury to
find as the jury did.” Id. (quoting Heck, 775 F.3d at 273).
      We review the district court’s denial of a motion for a new trial for abuse
of discretion. Id. “The district court abuses its discretion by denying a new
trial only when there is an ‘absolute absence of evidence to support the jury’s
verdict.’” Cobb v. Rowan Cos., 919 F.2d 1089, 1090 (5th Cir. 1991) (quoting
Irvan v. Frozen Food Express, Inc., 809 F.2d 1165, 1166 (5th Cir. 1987)). When
the district court has denied, rather than granted, such a motion, “[o]ur review
is particularly limited” and we affirm the denial “unless the evidence—viewed
in the light most favorable to the jury’s verdict—points so strongly and
overwhelmingly in favor of one party that the court believes that reasonable
men could not arrive at a contrary [conclusion].” Cowart, 837 F.3d at 450
(alterations in original) (quoting Alaniz v. Zamora–Quezada, 591 F.3d 761, 770
(5th Cir. 2009)).
      SPSI brought its trademark infringement claim under both the Lanham
Act, 15 U.S.C. § 1114, and Texas common law, 5 and the parties agreed in their



      4  We apply the same standard when reviewing a renewed JMOL motion as we do in
reviewing a JMOL motion. See Foradori v. Harris, 523 F.3d 477, 485 n.8 (5th Cir. 2008).
       5 The jury was instructed on two “Streamline Production Systems” marks, one under

common law and the other under federal law as a federally registered trademark. Because
these two marks are identical and the standard for infringement is the same for each, we
consider them as one single mark.
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joint pretrial order that both governed the trademark infringement claim. To
prevail on its claim of trademark infringement under the Lanham Act, SPSI
must show two elements: (1) it possesses a legally protectable trademark and
(2) SMI’s use of this trademark “creates a likelihood of confusion as to source,
affiliation, or sponsorship.” Nola Spice Designs, L.L.C. v. Haydel Enters., Inc.,
783 F.3d 527, 536 (5th Cir. 2015). The elements of common law trademark
infringement under Texas law are the same as those under the Lanham Act.
Hot-Hed, Inc. v. Safehouse Habitats (Scotland), Ltd., 333 S.W.3d 719, 730 (Tex.
App.—Houston [1st Dist.] 2010, pet. denied). We consider the evidence on both
of these elements in turn.
A. Possession of a legally protectable trademark
      SMI argues that no reasonable juror could have found that “Streamline
Production Systems” was a legally protectable trademark. The Lanham Act
defines a trademark as “any word, name, symbol, or device, or combination
thereof” that is used “to identify and distinguish . . . goods . . . from those
manufactured or sold by others and to indicate the source of the goods.” 15
U.S.C. § 1127. “To be legally protectable, a mark must be ‘distinctive’ in one of
two ways”: (1) inherent distinctiveness or (2) acquired distinctiveness through
secondary meaning. Nola Spice Designs, 783 F.3d at 537 (citing Am. Rice, Inc.
v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)). Registration of
a mark with the PTO is “prima facie evidence that the mark[] [is] inherently
distinctive.” Id. But this evidence can be rebutted “by demonstrating that the
mark[] [is] not inherently distinctive,” id., and if so, we cancel the trademark
registration, Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 232
(5th Cir. 2009).
      To assess the distinctiveness of a word mark, as opposed to a design
mark, we “rel[y] on the spectrum set forth by Judge Friendly in Abercrombie
& Fitch Co. v. Hunting World Inc., 537 F.2d 4, 9 (2d Cir. 1976).” Nola Spice
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Designs, 783 F.3d at 537. This spectrum divides the distinctiveness of marks
into five categories: “(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary,
and (5) fanciful.” 6 Id. The latter three categories are inherently distinctive,
whereas generic marks cannot be distinctive and “descriptive marks are
distinctive only if they have acquired ‘secondary meaning.’” Id. In categorizing
a mark, we “examine the context in which it is used,” including “‘how [the term]
is used with other words,’ ‘the products or services to which it is applied,’ and
‘the audience to which the relevant product or service is directed.’”                   Id.
(alteration in original) (emphasis omitted) (quoting Union Nat’l Bank of Tex.,
Laredo v. Union Nat’l Bank of Tex., Austin, 909 F.2d 839, 847 (5th Cir. 1990)).
We ask: What do the buyers understand by the term? Id. at 537–38. When
evaluating a multi-word mark, such as “Streamline Production Systems,” we
consider the mark “as a unitary whole in its given arrangement, and do not
parse apart the constituent terms.” Xtreme Lashes, 576 F.3d at 232.
       The jury found that SPSI’s mark, “Streamline Production Systems” is
“suggestive, arbitrary, or fanciful.” Because it made this finding, it did not
reach the question of whether the mark had achieved secondary meaning. SMI
argues that the mark is merely descriptive and has not acquired secondary
meaning, and thus is not sufficiently distinctive to warrant trademark
protection. SPSI counters that its mark is, at minimum, suggestive and, even
if it is merely descriptive, it has acquired secondary meaning and is thus
sufficiently distinctive to warrant trademark protection. Since the question of
whether SPSI’s mark is legally protectable depends on whether it is descriptive
(receiving no trademark protection unless it has secondary meaning) or


       As noted in Nola Spice Designs, the Third Circuit has provided the following helpful
       6

examples of each mark, “(1) arbitrary or fanciful (such as ‘KODAK’); (2) suggestive (such as
‘COPPERTONE’); (3) descriptive (such as ‘SECURITY CENTER’); and (4) generic (such as
‘DIET CHOCOLATE FUDGE SODA’).” 783 F.3d at 537 n.2 (quoting Freedom Card, Inc. v.
JPMorgan Chase & Co., 432 F.2d 463, 472 (3d Cir. 2005)).
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suggestive (receiving trademark protection), Nola Spice Designs, 783 F.3d at
537, our analysis will focus on these two categories of distinctiveness.
      “A descriptive term identifies a characteristic or quality of an article or
service, such as its color, odor, function, dimensions, or ingredients.” Id. at 539
(quoting Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 241 (5th
Cir. 2010)). “Thus, in many cases, a descriptive term will be an adjective such
as ‘speedy,’ ‘friendly,’ ‘green,’ ‘menthol,’ or ‘reliable.’” Union Nat’l Bank, 909
F.2d at 845. “Examples of descriptive marks would include Alo with reference
to products containing gel of the aloe vera plant and Vision Center in reference
to a business offering optical goods and services.” Nola Spice Designs, 783 F.3d
at 539 (quoting Amazing Spaces, 608 F.3d at 241).           We have previously
recognized that “[d]escriptiveness is construed broadly.” Xtreme Lashes, 576
F.3d at 232.
      In contrast, a suggestive term “‘suggests, rather than describes,’ some
characteristic of the goods to which it . . . applie[s] and requires the consumer
to exercise his imagination to reach a conclusion as to the nature of those
goods.” Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir. 1980)
(quoting Vision Center v. Opticks, Inc., 596 F.2d 111, 115–16 (5th Cir. 1979)).
Examples of suggestive terms include “Penguin” for a refrigerator brand, id.,
and “Coppertone” for sun tanning products, Zatarains, Inc. v. Oak Grove
Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir. 1983), abrogated on other
grounds by KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111 (2004).
      One test that we employ to distinguish between descriptive and
suggestive terms is the “‘imagination test,’ which ‘seeks to measure the
relationship between the actual words of the mark and the product to which
they are applied.” Nola Spice Designs, 783 F.3d at 539 (quoting Zatarains, 698
F.2d at 792). “If a word requires imagination to apply it to the product or
                                        11
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service in question, it tends to show that the term as used is suggestive. On
the other hand, if the word conveys information about the product, it is
descriptive.” Id. (quoting Union Nat’l Bank, 909 F.2d at 848). We applied the
imagination test in Xtreme Lashes and concluded that the district court erred
in holding the mark “EXTEND YOUR BEAUTY” descriptive as a matter of
law. 576 F.3d at 225, 233. In reaching this conclusion we noted that “nothing
in the dictionary definition of ‘extend,’ ‘your,’ or ‘beauty’ relates to eyelash
enhancements.” Id. at 233. Rather, the mark merely referred to “beauty” in
general, which was “an abstract concept.” Id. The mark was at a sufficiently
high level of generality that it required customers to “use ‘imagination, thought
and perception’ to conclude that an exhortation to ‘extend your beauty’ markets
eyelash extensions, as opposed to another cosmetically enhanced feature.” Id.
(quoting Zatarains, 698 F.3d at 792). We recognized that “EXTEND YOUR
BEAUTY” always appeared with the company’s other mark, “XTREME
LASHES,” and this “weigh[ed] towards descriptiveness.”           Id.     But we
ultimately concluded that this question of the categorization of the mark was
“best weighed by a jury after a full presentment of the evidence.” Id.
      Similarly, “Streamline Production Systems” describes SPSI’s products at
a sufficiently high level of generality that it requires imagination on the part
of customers to deduce the nature of its products. Just as with “EXTEND
YOUR BEAUTY,” nothing in the dictionary definitions of the words comprising
SPSI’s mark denotes a connection to natural gas processing equipment or even
the natural gas industry in general. Although SPSI’s logo, which depicts a
piece of natural gas processing equipment, might make this connection more
explicit, Xtreme Lashes recognized that the effect of the context a mark
appeared in had on its categorization was best left to a jury. The jury in this
case heard testimony and viewed exhibits about SPSI’s logo and ultimately
found as a matter of fact that the mark was, at minimum, suggestive.
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      SMI cites several cases from other jurisdictions and administrative
agency decisions analyzing “Streamline” and similar terms (EZ FLO, Slim
Line, etc.) in support of its argument that the mark is merely descriptive. Yet
we are not writing on a blank slate. Instead, the factual question, Xtreme
Lashes, 576 F.3d at 232, of the categorization of SPSI’s mark was decided by
the jury after a trial.   Our review is therefore limited to assessing the
sufficiency of the evidence and we must affirm the jury’s verdict on this issue
“unless there is no legally sufficient evidentiary basis for a reasonable jury to
find as the jury did.” Cowart, 837 F.3d at 450 (quoting Heck, 775 F.3d at 273).
Despite the evidence to the contrary that SMI cites, it cannot be said that the
jury lacked any legally sufficient evidentiary basis for concluding that SPSI’s
mark was, at minimum, suggestive. The jury was instructed that descriptive
marks “describe an attribute or quality of a particular product,” and heard
testimony that SPSI does not sell any product called a “streamline,” nor does
“streamline” describe any of the products SPSI sells. Given the preference we
have previously expressed for having a jury decide the issue of the
categorization of a mark, Xtreme Lashes, 576 F.3d at 225, 233, the jury’s
finding on this issue is supported by sufficient evidence.
B. Likelihood of confusion
      SMI next argues that, even if SPSI has a valid trademark in “Streamline
Production Systems,” no reasonable juror could find that SMI’s use of the mark
created a likelihood of confusion.      The second prong of the trademark
infringement test requires the claimant to show that the purported infringer’s
use of the mark “creates a likelihood of confusion as to source, affiliation, or
sponsorship.”   Nola Spice Designs, 783 F.3d at 536.         We have described
likelihood of confusion as “the paramount question” in a trademark
infringement action. Xtreme Lashes, 576 F.3d at 226. “‘Likelihood of confusion’
means more than a mere possibility” of confusion; rather, “the plaintiff must
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demonstrate a probability of confusion.” Id. (quoting Bd. of Supervisors v.
Smack Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008)).            We assess the
likelihood of confusion using “a nonexhaustive list of so-called ‘digits of
confusion,’” which include:
      ‘(1) the type of mark 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.

Smack Apparel, 550 F.3d at 478 (quoting Westchester Media v. PRL USA
Holdings, Inc., 214 F.3d 658, 663–64 (5th Cir. 2000)). “No single factor is
dispositive, and a finding of a likelihood of confusion need not be supported by
a majority of the factors.” Id. “[T]he digits may weigh differently from case to
case, ‘depending on the particular facts and circumstances involved.’” Xtreme
Lashes, 576 F.3d at 227 (quoting Marathon Mfg., Co. v. Enerlite Prods. Corp.,
767 F.2d 214, 218 (5th Cir. 1985) (per curiam)). We address the evidence
presented on each of the eight digits of confusion in turn.
      1. Type of mark
      This digit of confusion refers to the strength of the mark along the
generic to arbitrary distinctiveness continuum discussed above. Id. The more
distinctive the mark, the more likely that consumers will be confused by
competing uses of the mark. Smack Apparel, 550 F.3d at 479. Given that the
jury found SPSI’s mark to be, at minimum, suggestive, this digit weighs in
favor of finding a likelihood of confusion.       SMI attempts to avoid this
conclusion, arguing that because “Streamline” is used by Renick’s other three
companies and is also a registered design mark of Schlumberger—another
company in the oil and gas industry—the mark is weakened. Third-party use
of a mark is relevant to the strength of the mark, “[b]ut the key is whether the

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third-party use diminishes in the public’s mind the association of the mark
with [SPSI].” Smack Apparel, 550 F.3d at 479. Here, Renick’s other three
companies’ use of “Streamline” does not diminish this association because the
evidence showed that all three companies were owned by Renick, started after
SPSI, operated out of the same office as SPSI, and shared SPSI’s staff. If
anything, these other companies bolster the public association between the
mark and SPSI. Cf. Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188, 203
(5th Cir. 1998) (“The pervasiveness of [plaintiff’s] marks across the spectrum
of products and [various establishments] . . . support a likelihood of
confusion.”). And no evidence was introduced at trial on the nature and extent
of Schlumberger’s use of its design mark in “Streamline.” Accordingly, given
the jury’s finding that the mark was at least suggestive, this digit weighs in
favor of finding a likelihood of confusion.
      2. Mark similarity
      Assessing the similarity of the competing marks “requires consideration
of the marks’ appearance, sound, and meaning.” Smack Apparel, 550 F.3d at
479. The more similar the marks, the greater the likelihood of confusion.
Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1344 (Fed.
Cir. 2004). “Even if two marks are distinguishable, we ask whether, under the
circumstances of use, the marks are similar enough that a reasonable person
could believe the two products have a common origin or association.” Xtreme
Lashes, 576 F.3d at 228. In assessing mark similarity, we “give more attention
to the dominant features of a mark.” Id. Here, giving more attention to the
dominant features of the mark requires our analysis to focus on the use of
“Streamline” in both marks because the additional words in each mark are
more generic. In this sense, the two marks are identical. See id. (finding
similarity where, even though the two marks did not share any common words,
they had a “minor aural similarity when . . . spoken aloud”). And considering
                                       15
                                 No. 16-20046
the similarity of the context in which the two marks often appear—each
company’s logo—further weighs in favor of mark similarity.          See Smack
Apparel, 550 F.3d at 480 (considering the similarities in “design elements” such
as “color schemes . . . and images” in assessing mark similarity). Both logos
include the image of a piece of natural gas equipment and are blue in color
scheme. This digit thus weighs in favor of finding a likelihood of confusion.
      3. Product similarity
      “The greater the similarity between the products and services, the
greater the likelihood of confusion.” Xtreme Lashes, 576 F.3d at 229 (quoting
Exxon Corp. v. Texas Motor Exch. of Hous. Inc., 628 F.2d 500, 505 (5th Cir.
1980)). Here, there is great similarity between the products, which SMI
essentially concedes by not addressing this digit of confusion on appeal. Both
SPSI and SMI manufacture custom fabricated natural gas processing
equipment, including gas separators, heat exchangers, and re-boilers. Both
also attach a metal placard that includes the word “Streamline” on each piece
of equipment sold. This weighs in favor of finding a likelihood of confusion.
      4. Outlet and purchaser similarity
      The smaller the overlap between the retail outlets for and the
predominant consumers of SPSI’s and SMI’s goods, the smaller the possibility
of confusion. Exxon Corp., 628 F.2d at 505. The jury heard testimony that
SMI’s customers were comprised mostly of companies with preexisting
relationships with SMI’s principals. SPSI’s and SMI’s customer lists were also
introduced into evidence, and they showed, with few exceptions, no overlap
between customers. However, the jury also heard testimony that some of SMI’s
customers are equipment resellers who sell SMI equipment to end-market
users who do not appear on SMI’s customer list and thus may overlap with
SPSI’s customers. This possibility was further underscored by testimony that
two companies, Pioneer Resources and Century Exploration, were not SMI
                                      16
                                  No. 16-20046
customers yet owned SMI-manufactured equipment. In Xtreme Lashes, we
explained that if a company sells to resellers, that “may increase the likelihood
of confusion” because “[b]uyers cannot ‘compare the products side by side.’” 576
F.3d at 229 (quoting Sun-Fun Prods., Inc. v. Suntan Research & Dev. Inc., 656
F.2d 186, 192 (5th Cir. Unit B 1981)). Due to this competing evidence (no
overlap in direct customer base yet some overlap in indirect customer base),
this digit of confusion is neutral on the likelihood of confusion.
      5. Advertising media identity
      “The greater the similarity in the [advertising] campaigns, the greater
the likelihood of confusion.” Exxon Corp., 628 F.2d at 506. The jury was
presented with evidence that SPSI engages in extensive marketing efforts and
uses its logo for advertising on printed brochures, branded merchandise, and
branded racecars. In contrast, the evidence showed that SMI does not engage
in any advertising or marketing efforts other than hosting its website and does
not even have a sign outside its office. However, the jury also received evidence
that SPSI’s and SMI’s websites had a similar color scheme and their logos had
overlapping features. In addition, SMI’s website was hosted at the same URL
previously held by SPSI. While it is true, as SMI argues, that SPSI could have
copied its website color scheme from SMI, this digit of confusion focuses on the
similarity of the advertising without regard for which advertising came first.
However, because the evidence demonstrates that SMI engaged in minimal
advertising, this digit is “minimally probative” of likelihood of confusion. See
Smack Apparel, 550 F.3d at 481 (concluding this digit was “minimally
probative” where evidence showed that one of the companies did not advertise
beyond “limited sales” from its website).
      6. SMI’s intent
      “Although not necessary to a finding of likelihood of confusion, a
defendant’s intent to confuse may alone be sufficient to justify an inference
                                        17
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that there is a likelihood of confusion.” Id. Our intent inquiry focuses on
whether the defendant intended to derive benefits from the reputation of the
plaintiff. Sicilia Di. R. Biebow & Co. v. Cox, 732 F.2d 417, 431 (5th Cir. 1984),
abrogated on other grounds by TrafFix Devices v. Mktg. Displays, Inc., 532 U.S.
23 (2001).    In some situations, the defendant’s use of the mark with
“knowledge” of the senior user’s mark “may give rise to a presumption that the
defendant intended to cause public confusion.” Scott Fetzer Co. v. House of
Vacuums Inc., 381 F.3d 477, 486 (5th Cir. 2004) (quoting Conan Props., Inc. v.
Conans Pizza, Inc., 752 F.2d 145, 151 n.2 (5th Cir. 1985)).          But “mere
awareness” of the senior user’s mark does not “establish[] . . . bad intent.”
Conan Props., 752 F.2d at 150. We have looked for evidence that the defendant
made efforts “to ‘pass off’ its product as that of [the plaintiff]” through
“imitation of packaging material” or “adopting . . . similar distribution
methods.” Amstar Corp v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir.
1980). We have found an intent to confuse when the evidence indicates that
the defendant, in choosing its mark, knew about the plaintiff’s mark and
intended to capitalize on the plaintiff’s popularity. See Smack Apparel, 550
F.3d at 481–83; Am. Rice, 518 F.3d at 332–33. We have also found intent to
confuse when the defendant did not choose the mark with intent to confuse but
subsequently used the mark in a way that “evidenced an intent to trade on [the
senior user’s] reputation.” Westchester Media, 214 F.3d at 666.
      Here, the only evidence of intent to confuse identified by SPSI is SMI’s
conduct after learning about SPSI’s existence and SMI’s failure to change its
name until SPSI filed suit. SPSI does not allege that SMI had bad faith in
choosing its name, and indeed, the evidence was that, when choosing the name,
SMI’s principals were entirely unaware of SPSI’s name, length of time in
business, degree of success, customers, and even its mere existence; nor did
they know Renick. Further, SPSI’s trademark was not registered at the time
                                       18
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SMI chose its name in 2009. Rather than hearing evidence of bad faith, the
jury heard extensive testimony on the innocuous reasoning behind SMI’s name
and the relative degree of care that Morales and Tulio exercised in selecting
the name. The evidence indicated that SMI did not learn of SPSI’s existence
until 2011, and even then it did not know any details about SPSI’s business,
its location, its customers, or its degree of success; indeed, Tulio testified that,
upon initially hearing SPSI’s name, he thought it was the name of a movie
production company. The only testimony on intent at trial was from SPSI’s
principals who merely stated that they had a “feeling” and a “belief” that SMI’s
use of the mark was intentional but admitted they could not point to any
objective evidence of this intent.
      Intent to confuse cannot be inferred from SMI’s failure to investigate
SPSI or otherwise take any action because SPSI offered no evidence that, after
learning about SPSI, SMI did anything differently in an attempt to “pass off”
its products as SPSI’s. Cf. Westchester Media, 214 F.3d at 666 (concluding that
while not initially chosen in bad faith, junior user’s subsequent use of its mark
“evidenced an intent to trade on [the senior user’s] reputation”); Amstar, 615
F.2d at 263 (analyzing the junior user’s attempt to “pass off” its products as
the senior user’s). We have recognized that a company may have a non-
nefarious intent in using a mark with awareness of the senior user’s mark. See
Scott Fetzer Co., 381 F.3d at 486 (“Intent to compete, however, is not
tantamount to intent to confuse.”).           And the majority rule amongst
jurisdictions is that a defendant’s continued use of a mark even after it receives
a cease and desist letter cannot be construed as evidence of intent to confuse.
4   J THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 23:120 (4th ed.).          This is because “[a] party may have
considered that plaintiff’s contention was without a legally supportable basis
and made a rational business decision to continue use until a court stated
                                         19
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otherwise.” Id. Indeed, Tulio testified that SMI engaged in a cost-benefit
analysis in deciding to continue using its name after receiving the letter. Thus
this digit weighs against finding a likelihood of confusion.
       7. Actual confusion
       “Evidence that consumers have been actually confused in identifying the
defendant’s use of a mark as that of the plaintiff may be the best evidence of a
likelihood of confusion.” Smack Apparel, 550 F.3d at 483 (citing Elvis Presley
Enters., 141 F.3d at 203).       A plaintiff may show actual confusion using
anecdotal instances of consumer confusion, systematic consumer surveys, or
both. Scott Fetzer Co., 381 F.3d at 486. We have set a low bar for this showing,
stating that a plaintiff need provide “very little proof of actual confusion . . . to
prove likelihood of confusion.” Xtreme Lashes, 576 F.3d at 229. Even if the
anecdotes are minor and isolated, “courts may not ignore competent evidence
of actual confusion.” Id. at 230. Testimony of a single known incident of actual
confusion by a consumer has been found to be sufficient evidence to support
the district court’s finding of actual confusion. La. World Exposition v. Logue,
746 F.2d 1033, 1041 (5th Cir. 1984). And, if the plaintiff provides proof of
actual confusion, the defendant must provide “an almost overwhelming
amount of proof . . . to refute such proof.” Xtreme Lashes, 576 F.3d at 230
(quoting World Carpets, Inc. v. Dick Littrell’s New World Carpets, 438 F.2d 482,
489 (5th Cir. 1971)). However, not all confusion counts: evidence of actual
confusion must show “more than a fleeting mix-up of names”; rather it must
show that “[t]he confusion was caused by the trademarks employed and it
swayed consumer purchases.” Xtreme Lashes, 576 F.3d at 230. We have
rejected anecdotal evidence of actual confusion when the proponent did not
show that “a misleading representation by [the defendant], as opposed to some
other source, caused a likelihood of confusion.” Scott Fetzer Co., 381 F.3d at
487.
                                         20
                                      No. 16-20046
       SPSI relies on anecdotal evidence to show actual confusion. SMI argues
that the “innocuous and isolated” events that SPSI offers as proof of actual
confusion are insufficient to establish that a significant number of people were
likely to be confused. Yet this argument confuses the standard for likelihood
of confusion 7 with that for actual confusion, which requires “very little
proof . . . to prove the likelihood of confusion,” Xtreme Lashes, 576 F.3d at 229
(quoting World Carpets, 438 F.2d at 489), and can be supported by testimony
of a single known incident of actual confusion, La. World Exposition, 746 F.2d
at 1041 (finding testimony from an individual who bought one of the
defendant’s t-shirts thinking it was made by the plaintiff to be sufficient to
support a showing of actual confusion). This digit can therefore weigh in favor
of finding a likelihood that a significant number of people were confused even
if it does not show that a significant number of people were actually confused.
Furthermore, SPSI’s examples of actual confusion satisfy the requirement that
the confusion result from the mark, rather than a “fleeting mix-up of names”
or some other source. Xtreme Lashes, 576 F.3d at 230; see also Scott Fetzer Co.,
381 F.3d at 487. Two of the instances of confusion were directly attributable
to SMI’s use of a plate on its equipment that included the word “Streamline,”
thus demonstrating that the mark, rather than some other source, caused the
confusion.
       SMI counters that there was no evidence that SPSI lost any profit from
this confusion. But this fact is inapposite because we have never required a
showing of lost profit to accompany instances of actual confusion; rather we
merely require that the confusion “sway[] consumer purchases.”                     Xtreme
Lashes, 576 F.3d at 230; see also Elvis Presley Enters., 141 F.3d at 204


       7This standard was articulated in the jury instructions as existing “if a significant
number of reasonable people are likely to be confused, mistaken, or deceived” and as being
determined using the eight digits of confusion.
                                            21
                                  No. 16-20046
(“Infringement can be based upon confusion that creates initial consumer
interest, even though no actual sale is finally completed as a result of the
confusion.” (quoting 3 J THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 23:6 (4th ed. 1997))). Finally, SMI’s contention that
SPSI should be faulted for failing to present testimony from any customer on
actual confusion (rather than presenting secondhand accounts through
Renick’s testimony) is also inapposite. We have previously rejected hearsay
objections to indirect testimony about actual confusion, explaining that such
evidence is not offered for the truth of the matter asserted but rather to show
effect on consumers, namely, confusion. Armco, Inc. v. Armco Burglar Alarm
Co., 693 F.2d 1155, 1160 & n.10 (5th Cir. 1982). Therefore, SPSI’s evidence of
actual confusion is not entitled to any less weight by virtue of its source. This
digit of confusion thus weighs in favor of finding a likelihood of confusion.
      8. Degree of care exercised by potential purchasers
      We have framed this digit as dependent in part on the price of the item:
“Where items are relatively inexpensive, a buyer may take less care in
selecting the item, thereby increasing the risk of confusion.” Smack Apparel,
550 F.3d at 483. “However, a high price tag alone does not negate other [digits
of confusion], especially if the goods or marks are similar.” Xtreme Lashes, 576
F.3d at 231. Here, the customers were oil and gas companies, and the items
were relatively expensive custom fabricated natural gas processing equipment,
often costing up to $100,000 per piece. This equipment is often purchased
through a fairly lengthy and involved process of communication between the
buyer and seller. As SMI notes, purchasing such equipment “is not like pulling
a box of dish soap off of a shelf at a retail store.” While SPSI argues that even
a $100,000 price tag may be a drop in the bucket for some large oil and gas
companies, the only evidence it cites in support of this assertion is its expert’s
testimony that such a sum was “[n]ot necessarily” a lot of money for some
                                       22
                                    No. 16-20046
companies.      Because SPSI’s and SMI’s customers were large companies
purchasing very expensive, custom made equipment, this digit weighs against
finding a likelihood of confusion. See Oreck Corp. v. U.S. Floor Sys., Inc., 803
F.2d 166, 173 (5th Cir. 1986) (reasoning that because the customers were
“buying for professional and institutional purposes at a cost in the thousands
of dollars, they are virtually certain to be informed, deliberative buyers” and,
thus, not likely to be confused).
         9. Weighing the digits of confusion
         Although the digits of confusion do not point in a uniform direction, at
least some weigh in favor of finding a likelihood of confusion. Because there is
not a complete absence of evidence to support the jury’s finding that there was
a likelihood of confusion—and that the mark was legally protectable—we
conclude there is sufficient evidence to support the jury’s finding of
infringement. See Cowart, 837 F.3d at 450. Accordingly, the district court did
not err in denying either the renewed motion for JMOL or, alternatively, a new
trial.
                                 III. DAMAGES
         SMI also appeals the district court’s denial of its motion for JMOL and
renewed motion for JMOL or for a new trial on the issue of damages. As
previously stated, we review such a motion de novo. Cowart, 837 F.3d at 450.
And we will reverse only in the absence of a legally sufficient evidentiary basis
to support the award. Wellogix, Inc. v. Accenture, L.L.P., 716 F.3d 867, 883
(5th Cir. 2013).
         The Lanham Act provides remedies in the form of both injunctive relief
and monetary damages for a plaintiff who proves trademark infringement. See
15 U.S.C. §§ 1116, 1117(a).       It allows for recovery of monetary damages,
“subject to the principles of equity,” in the form of “(1) defendant’s profits,
(2) any damages sustained by the plaintiff, and (3) the costs of the action.” Id.
                                        23
                                  No. 16-20046
§ 1117(a).   It instructs that such monetary damages “shall constitute
compensation and not a penalty.” Id. We have previously noted that monetary
damages are not warranted in trademark infringement cases if “[a]n injunction
alone . . . fully satisfies the equities of a given case.” Seatrax, Inc. v. Sonbeck,
Int’l, Inc., 200 F.3d 358, 369 (5th Cir. 2000) (citing Bandag, Inc. v. Al Bolser’s
Tire Stores, 750 F.2d 903, 917 (Fed. Cir. 1984)). This is “particularly [true] in
the absence of a showing of wrongful intent,” Bandag, 750 F.2d at 917, or if
there is a “lack of sufficient proof of actual damages,” Seatrax, Inc., 200 F.3d
at 372; see also Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 555 (5th Cir.
1998) (“Considering the lack of actual damages and the lack of an intent to
confuse or deceive, injunctive relief satisfies the equities in this case.”),
abrogated on other grounds by TrafFix Devices, Inc., 532 U.S. 23.
      Here, SPSI obtained both injunctive relief and damages. It obtained
injunctive relief prior to trial, when SMI agreed to change its name,
discontinue all use of “Streamline Manufacturing” on its marketing and
communications materials, and discontinue its use of the domain name
“streamlinetx.com” within 120 days. SPSI also pursued monetary damages
and, after a trial, the question of damages was put to the jury. The jury found
that SMI’s infringement was “a proximate cause of damages” to SPSI. Despite
this, the jury declined to award damages to SPSI in the form of SMI’s profits,
finding that SPSI failed to prove that it was entitled to profit that SMI had
earned that was “directly attributable to” SMI’s infringing use and that the
total profit SMI had earned through its infringing use was “zero.” But SPSI
ultimately obtained three separate damages awards—not based on loss
profit—from the jury: a royalty award, an unjust enrichment award, and an
exemplary damages award, each in the sum of $230,000.              We review the
evidentiary support for each award in turn.


                                        24
                                 No. 16-20046
A. Royalty Award
      While not explicitly provided for in the Lanham Act, we have permitted
trademark infringement damages on the basis of the royalty rate normally
charged for licensing the unauthorized use of the mark, on the logic that the
plaintiff sustained damages equal to the profit they could have made from such
a license. See Boston Prof’l Hockey Ass’n v. Dall. Cap & Emblem Mfg., Inc.,
597 F.2d 71, 75–76 (5th Cir. 1979). “Usually, when the courts have awarded a
royalty for past acts of infringement, it was for continued use of a mark after a
license ended and damages were measured by the royalty rate the parties had
agreed on.” Choice Hotels Int’l, Inc. v. Patel, 940 F. Supp. 2d 532, 546 (S.D.
Tex. 2013) (Costa, J.) (quoting 5 J. THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 30:85 (4th ed. 2013)); see also
Brennan’s Inc. v. Dickie Brennan & Co., 376 F.3d 356, 371 (5th Cir. 2004)
(citing the same section of McCarthy as support for its assertion about when
royalties are a proper measure of damages); A & H Sportswear, Inc. v.
Victoria’s Secret Stores, Inc., 166 F.3d 197, 208–09 (3d Cir. 1999) (“[W]hen the
courts have awarded a royalty for past trademark infringement, it was most
often for continued use of a product beyond authorization, and damages were
measured by the license the parties had or contemplated.”).
      We have infrequently addressed a royalty-based measure of damages for
trademark infringement. The most instructive case on this question is Boston
Professional Hockey Ass’n v. Dallas Cap & Emblem Manufacturing, Inc., in
which we affirmed a royalty rate as a measure of damages based on the price
the defendant had offered to pay for the license (which the plaintiff rejected)
before it commenced its infringing use. 597 F.2d at 75–76. However, we
reduced the royalty award calculated by the district court after carefully
scrutinizing the evidence of the parties’ actual negotiations, reasoning that the
district court had erroneously based its award on the price the defendant had
                                       25
                                 No. 16-20046
offered for an exclusive license, when the infringing use was nonexclusive
because another party actually held the license. Id. at 76.
      The Federal Circuit subsequently analyzed our holding in Boston
Professional and interpreted it as “stand[ing] for the proposition that any
royalty-based measures of damages must exhibit a strictly rational correlation
between the rights appropriated and the measure of damages applied.”
Bandag, 750 F.2d at 920. It then relied on Boston Professional in vacating a
trademark infringement royalty award, reasoning that such a rational
correlation was absent because the defendant’s infringement consisted of the
use of the plaintiff’s logo in a single advertisement. Id. Because the infringing
use did not appropriate the full range of rights that a license bestows upon the
licensee, the Federal Circuit concluded that an award based on a full royalty
was not rationally correlated to the infringement. Bandag, 750 F.2d at 920.
The court also cited the lack of evidence of wrongful intent by the defendant as
well as the plaintiff’s failure to show it had been actually damaged as bases for
vacating the damages award. Id. at 920–21; see also Patel, 940 F. Supp. 2d at
546 (Costa, J.) (citing Bandag); Holiday Inns, Inc. v. Airport Holiday Corp., 493
F. Supp. 1025, 1028 (N.D. Tex. 1980) (reducing the plaintiff’s royalty-based
damages award because 70% of room sales were due to the defendant’s efforts
and only 30% were due to the defendant’s infringing use), aff’d, 683 F.2d 931
(5th Cir. 1982).
      Here, there was no evidence introduced, nor did either party contend,
that SPSI and SMI ever entered into, negotiated, discussed, or even
contemplated a licensing agreement. Nor was there any evidence that SPSI or
SMI ever engaged in such licensing negotiations with any other entity.
Instead, the jury’s royalty award was based on testimony by SPSI’s expert
witness on a “hypothetical negotiation” between the two parties. The expert
testified that he calculated a reasonable royalty rate of 3–5% in this case. The
                                       26
                                       No. 16-20046
jury’s award ultimately adopted a royalty rate equivalent to about 1.5% for a
total award of $230,000.
       SMI challenges the jury’s royalty award, arguing (1) that royalty
damages are not proper in this case because such awards are limited to cases
where the parties had prior licensing negotiations or agreements and here
there was evidence only of a hypothetical negotiation 8; and (2) even if such an
award were appropriate, SPSI failed to offer any evidence to establish a
rational correlation between the rights SMI purportedly appropriated and the
award. Because we conclude there is insufficient evidence to support the
royalty award, we need not address whether a royalty-based award can be
based on a hypothetical negotiation between the parties.
       A royalty-based damages award must be rationally related to the scope
of the defendant’s infringement. Boston Professional, 597 F.2d at 75–76; see
also Bandag, 750 F.2d at 920; Patel, 940 F. Supp. 2d at 546 (Costa, J.); Holiday
Inns, 493 F. Supp. at 1028. Here, the only testimony the jury had on which to
base its royalty award was SPSI’s expert’s testimony. But the expert did not
discuss the portion of SMI’s profits that were attributable to its infringing use,
let alone suggest that all of SMI’s profits were attributable to its infringement.
Quite to the contrary, the jury heard through other testimony that much of
SMI’s business came from customers with whom its principals had preexisting
relationships and who were not customers of SPSI. And the jury expressly
found that SPSI failed to prove that it was entitled to any profit that SMI had


       8  SPSI argues that that this challenge to the royalty-based award is foreclosed by the
parties’ joint pretrial order. The joint pretrial order instructed that an “agreed proposition
of law” was that “[a]ctual damages sustained by [SPSI] . . . can be accounted for by
calculating [SPSI’s] lost profits resulting from the infringement, or alternatively, as a
reasonable royalty for the use of [SPSI’s] marks.” However, because we base our conclusion
on SMI’s alternative argument—that the royalty award is not supported by sufficient
evidence—we do not address SPSI’s foreclosure argument.

                                             27
                                 No. 16-20046
earned that was “directly attributable to” SMI’s infringing use and further
found that the total profit SMI had earned through its infringing use was
“zero.” These findings are in tension with its royalty award to SPSI, which
must be rationally correlated to SMI’s infringement. In addition to a lack of
evidence on the extent to which SMI benefitted from infringement, the expert
also did not discuss the scope of SMI’s infringing use relative to the rights it
would have received via a license. SMI’s infringing use was likely not as
extensive as the rights that a license would have bestowed because, unlike in
Boston Professional, SMI did not use a mark identical to SPSI’s. Its name,
logo, website, and metal plate affixed to the equipment were all similar but not
identical to SPSI’s mark. In comparison, as a licensee, SMI could have been
granted the right to use a mark identical to SPSI’s. Given the limited nature
of the expert testimony on royalty damages and the other evidence presented
at trial on the nature of SMI’s infringement and customers, the royalty award
does not bear a rational relationship to SMI’s infringing use, and thus we
conclude that there is insufficient evidence to support the royalty award.
B. Unjust Enrichment
      The jury also awarded SPSI $230,000 in unjust enrichment after it found
that SMI was unjustly enriched by its infringing use. This award was under
Texas common law, not the Lanham Act. “An action for unjust enrichment is
based upon the equitable principle that a person receiving benefits which were
unjust for him to retain ought to make restitution.” Bransom v. Standard
Hardware, Inc., 874 S.W.2d 919, 927 (Tex. App.—Fort Worth 1994, writ
denied). Here, the jury was instructed that, in order to recover for unjust
enrichment, SPSI had to prove that SMI “used the goodwill and reputation of
[SPSI] to sell its own goods or services.” It was further instructed that unjust
enrichment “is typically found under circumstances in which one person has


                                      28
                                    No. 16-20046
obtained a benefit from another by fraud, duress, or the taking of an undue
advantage.”
      SMI argues that the jury’s $230,000 unjust enrichment award is not
supported by sufficient evidence. “Unjust enrichment occurs when a person
has wrongfully secured a benefit or has passively received one which it would
be unconscionable to retain.” Eun Bok Lee v. Ho Chang Lee, 411 S.W.3d 95,
111 (Tex. App.—Houston [1st Dist.] 2013, no pet.). “A party may recover under
the unjust enrichment theory when one person has obtained a benefit from
another by fraud, duress, or the taking of an undue advantage.” Heldenfels
Bros., Inc. v. City of Corpus Christi, 832 S.W.2d 39, 41 (Tex. 1992). “Unjust
enrichment is not a proper remedy merely because it ‘might appear expedient
or generally fair that some recompense be afforded for an unfortunate loss’ to
the claimant, or because the benefits to the person sought to be charged
amount to a windfall.” Id. at 42 (quoting Austin v. Duval, 735 S.W.2d 647, 649
(Tex. App.—Austin 1987, writ denied)).
      We have few cases analyzing when an unjust enrichment award is
appropriate in the trademark infringement context. In one such case, Texas
Pig Stands, Inc. v. Hard Rock Cafe International, Inc., we affirmed a district
court’s rejection of a jury’s unjust enrichment award where there was no
evidence that the defendant attempted to “palm off” its goods as those of the
plaintiff. 9 951 F.2d 684, 694–95 (5th Cir. 1992). The district court rejected the
jury’s unjust enrichment award because, while it believed that the defendant
knew about the plaintiff’s mark, the defendant’s use of a similar mark was not
“an attempt to profit from the mark but rather in simple disregard of plaintiff’s
rights.” Id. at 695. We agreed, noting the plaintiff acknowledged it had not


      9 “Palming off” occurs “when a producer misrepresents his own goods or services as
someone else’s.” Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 27 n.1
(2003).
                                          29
                                  No. 16-20046
lost a single sale due to the infringement and that the defendant would have
sold just as many of its goods by any other name. Id. at 695–96. We concluded
that, based on this evidence, there was “simply no indication that [the
defendant] attempted to ‘palm off’ its [goods] as those of [the plaintiff], nor did
[the defendant] attempt to associate [its] operation with [that of the plaintiff].”
Id. at 695. And in another trademark infringement case, Maltina Corp. v.
Cawy Bottling Co., we relied on the willfulness of the defendant’s infringement
(as evidenced by the fact that the defendant’s attempt at trademarking the
mark was rejected by the PTO due to plaintiff’s prior registration of the mark)
in finding that an unjust enrichment award (in the form of an accounting of
profits) was proper. 613 F.2d 582, 583, 585 (5th Cir. 1980).
      In support of the unjust enrichment award, SPSI asserts without
elaboration or citation to the record that SMI obtained benefits, such as “low
risk accelerated market entry” and referral business, from its infringement
and obtained these benefits through “fraud, duress, or . . . undue advantage.”
This argument is problematic for two reasons. First, these benefits that SMI
allegedly received are not the types of benefit for which plaintiffs are typically
compensated under a theory of unjust enrichment. In Texas Pig Stands, we
emphasized the need for evidence that the defendant had attempted to “palm
off” its goods for those of the plaintiff, explaining that while such conduct was
not a “prerequisite to finding unjust enrichment, it is an important
circumstance bearing on the determination.” 951 F.2d at 695. Here, SPSI does
not allege that SMI attempted to “palm off” its goods as SPSI’s. Texas Pig
Stands also emphasized the need for evidence of diverted sales and lost profits
in order to justify an unjust enrichment award. Id. But here, the jury found
that SMI had earned “zero” profit through its infringing use of SPSI’s mark.
Texas Pig Stands also found significant the fact that the defendant’s success
seemed independent from its infringing use. Id. at 696. Here too, the evidence
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showed that SMI was independently successful and the majority of its
customers came from its principals’ preexisting relationships. SPSI cites no
support for the proposition that merely by showing the benefits of eased
market entry and referral business, without showing any lost profits, a
plaintiff is entitled to an unjust enrichment award.
      Second, there was no evidence at trial showing that SMI obtained this
benefit through fraud, duress, or undue advantage. Unlike in Maltina, where
the defendant had full knowledge of the plaintiff’s registration of the mark, the
evidence showed that, when SMI chose its mark, it had no knowledge of SPSI’s
existence, nor could it be deemed to have constructive knowledge because the
mark was not registered at that time. Where defendants have no knowledge
of a mark, it can hardly be said that their infringement was willful. See
Seatrax, Inc., 200 F.3d at 372 (relying on lack of jury finding of willfulness to
justify denial of unjust enrichment award). SMI did later learn of SPSI’s
existence, but as discussed in the intent section supra, there is no evidence that
SMI modified its conduct or its goods after learning of SPSI in an attempt to
trade off SPSI’s good will or pass off its products as those of SPSI.                  Cf.
Westchester Media, 214 F.3d at 666 (concluding that while not initially chosen
in bad faith, junior user’s subsequent use of its mark “evidenced an intent to
trade on [the senior user’s] reputation”); Amstar, 615 F.2d at 263 (analyzing
the junior user’s attempt to “pass off” its products as the senior user’s). For
these reasons we conclude that the unjust enrichment award is not supported
by sufficient evidence. 10




      10 Because we vacate the unjust enrichment award based on the insufficiency of the
evidence, we do not address SMI’s alternative argument that the award represents an
impermissible double recovery for the same injury behind the jury’s $230,000 royalty award.
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C. Exemplary Damages
       As its final damages award, the jury awarded SPSI $230,000 in
exemplary damages.           Like the unjust enrichment award, the exemplary
damages award is governed by Texas law. See 15 U.S.C. § 1117(a) (instructing
that the damages under the Lanham Act serve as “compensation and not a
penalty”). Under Texas law, “exemplary damages may be awarded only if
damages other than nominal damages are awarded.” 11 Tex. Civ. Prac. & Rem.
Code § 41.004(a).       Accordingly, because we vacate the royalty and unjust
enrichment awards for insufficient evidence, we must also vacate the
exemplary damages award. 12
       In sum, we conclude that “injunctive relief satisfies the equities” of this
case given the insufficient evidence “of actual damages[]” or of “an intent [by
SMI] to confuse or deceive.” Seatrax, Inc., 200 F.3d at 372 (quoting Pebble
Beach Co., 155 F.3d at 555).




       11  Although equitable relief may sometimes support an exemplary damages award
under Texas law, see, e.g., Bear Ranch, LLC v. HeartBrand Beef, Inc., No. 6:12-CV-00014,
2015 U.S. Dist. LEXIS 118709, at *22, 39-50 (S.D. Tex. Sept. 4, 2015) (Costa, J.) (exemplary
damages available pursuant to “[c]ourt’s equitable remedy,” which included injunctive relief
and a constructive trust), neither party argues, and thus we do not address, whether a
stipulated injunction, such as was agreed to here, is the sort of equitable relief that can
support an exemplary damages award.
        12 SPSI also argues that SMI’s appeal is frivolous “as filed and as argued” and requests

sanctions against SMI. Under Federal Rule of Appellate Procedure 38, if we determine that
an appeal is frivolous, we “may . . . award just damages and single or double costs to the
appellee.” We have articulated a high standard for what constitutes a frivolous appeal,
holding that an appeal is frivolous only “if the result is obvious or the arguments of error are
wholly without merit” and the appeal is taken “in the face of clear, unambiguous, dispositive
holdings of this and other appellate courts.” Coghlan v. Starkey, 852 F.2d 806, 811–12 (5th
Cir. 1988) (per curiam) (quoting Capps v. Eggers, 782 F.2d 1341, 1343 (5th Cir. 1986)). Here,
because we agree with some of SMI’s argument on appeal—namely that the jury’s damages
awards are not supported by sufficient evidence—we reject SPSI’s contention that the appeal
is frivolous.
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                           IV. CONCLUSION
     We VACATE the royalty, unjust enrichment, and exemplary damages
awards. Otherwise, the judgment of the district court is AFFIRMED.




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