                                                                           ACCEPTED
                                                                       13-14-00511-cv
                                                        THIRTEENTH COURT OF APPEALS
                                                              CORPUS CHRISTI, TEXAS
                                                                 2/3/2015 11:05:49 AM
                                                                     DORIAN RAMIREZ
                                                                               CLERK

                   No. 13-14-00511-CV

                In the Court of Appeals       FILED IN
                                      13th COURT OF APPEALS
         For the Thirteenth Judicial  District
                                   CORPUS  CHRISTI/EDINBURG, TEXAS
            Corpus Christi-Edinburg, Texas
                                       2/3/2015 11:05:49 AM
                   TESORO CORPORATION DORIAN E. RAMIREZ
                        Appellant              Clerk


                             V.

    TESORO CORPORATION D/B/A TESORO PETROLEUM CORP.
                        Appellee


On Appeal from the 206TH District Court, Hidalgo County,
        Texas, Trial Court Cause No. C-2971-09-D


                    APPELLANT’S BRIEF



Mark A. Weitz                     Reynaldo Ortiz
Weitz Morgan PLLC                 Law Office of Rey Ortiz
100 Congress Avenue               1305 E. Nolana,
Suite 2000                        Suite F
Austin, Texas 78701               McAllen, Texas 78504
512-394-8950                      956-687-4567
512-657-1849 (mobile)             956-631-1384 (facsimile)
512-852-4446 (facsimile)


                ORAL ARGUMENT REQUESTED
              IDENTITY OF PARTIES AND COUNSEL

    Appellant      certifies    that       the   following     is   a

complete    list   of   the   parties,      attorneys,   and   other

persons who have an interest, financial or otherwise,

in the outcome of this proceeding:

                                 	  
Appellant:

TESORO CORPORATION

Appellant’s: Counsel:

Mark A. Weitz                           Reynaldo Ortiz
Weitz Morgan PLLC                       Law Office of Rey Ortiz
100 Congress Avenue                     1305 E. Nolana,
Suite 2000                              Suite F
Austin, Texas 78701                     McAllen, Texas 78504
512-394-8950                            956-687-4567
512-657-1849 (mobile)                   956-631-1384 (facsimile)
512-852-4446 (facsimile)

Appellee:

TESORO CORPORATION D/B/A TESORO PETROLEUM CORPORATION

Appellee’s Counsel:

Frank Weathered                         Sarah Pierce Cowen
Dunn, Weathered, Coffey,                Cowen & Garza, L.L.P.
Rivera & Kasperitis, P.C.               820 Hackberry Avenue,
611 S. Upper Broadway                   Suite 101
Corpus Christi, Texas 78401             McAllen, Texas 78501
361-883-1594                            956-994-9170
361-883-1599 (facsimile)
Gerald T. Drought, Esq.    Gilbert Hinojosa
Martin & Drought, P.C.     Gilbert Hinojosa &
Bank of America Plaza,     Associates, PC
25th Floor                 622 East St. Charles St.
300 Convent Street         Brownsville, Texas 78520
San Antonio, Texas 78205   956-544-4218
210-227-7591               956-544-4218 (facsimile)
210-227-7924 (facsimile)
                        TABLE OF CONTENTS

                                                   Page

Table of Contents                                  i

Table of Authorities                               v

Statement of the Case                              1

Statement Regarding Oral Argument                  3

Issues Presented:                                  4

    Issue #1: Did the District Court err
    in Granting the Appellee’s Motion to
    Set Aside the Jury Verdict based upon
    failure to Establish Irreparable harm
    and Lack of Adequate Remedy at Law?

    Issue #2: Did the District Court err
    in Granting the Appellee’s Motion to
    Set Aside the Jury Verdict based on
    Improper Jury Instructions.

    Issue #3: Even if the Court Rejected the
    Appellee’s Motion to Set Aside Jury Verdict
    Did the District Court err in Denying
    Appellant’s Request for Permanent Injunction
    after the Full Hearing.

    Issue#4: Did the District Court err
    in denying Appellant’s Injunctive Relief
    based on Balancing the Equities and/or
    Unclean Hands.

    Issue #5: Did the District Court err in
    vacating the Jury’s Attorney Fee award.




                                i
                                                      Page

Statement of Facts                                    5

Summary of Argument                                   10

Argument                                              10

    Issue #1: Did the District Court err
    in Granting the Appellee’s Motion to
    Set Aside the Jury Verdict based upon
    failure to Establish Irreparable harm
    and Lack of Adequate Remedy at Law?               11

           A.   The Issue of Irreparable Harm is
                for the Court:                        11

           B.   There Was Irreparable Harm:           15

           C.   There is no Adequate Remedy at Law:   17

    Issue #2: Did the District Court err
    in Granting the Appellee’s Motion to
    Set Aside the Jury Verdict based on
    Improper Jury Instructions.                       19

    Issue #3: Even if the Court Rejected the
    Appellee’s Motion to Set Aside Jury Verdict
    Did the District Court err in Denying
    Appellant’s Request for Permanent Injunction
    after the Full Hearing.                           28


           A.   Standard of Review:                   29

           B.   Imminent Harm:                        29

           C.   Irreparable Injury and Adequate
                Remedy at Law:                        32


                                 ii
                                           Page

     1. Irreparable Injury:                33

2.   Adequate Remedy at Law:               34

D.   The Record Shows a Complete Absence
     of any Guiding Principles or Rules
     Upon Which the Court Relied in
     Denying Injunctive Relief.            38

     1.   Requested Scope:                 38

          (i) State Wide Prohibition of
              Use:                         38

          (ii) Presumption of State-Wide
               Rights:                     39

          (iii)Actual Use and
               Business Transactions:      41

          (iv) All Speech Mediums:         43

          (v) Publicly Traded Stock
              Designation:                 46

          (vi)Use of Appellant’s Trade
              Name on the Internet:        46

     2.   In Light of the Appellant’s
          Evidence and the Virtual
          Absence of Appellee’s Evidence
          to the Contrary the Court
          Denied Appellant’s Injunctive
          Relief without Any Basis in
          Guiding Principles or Rules:     49




                      iii
                                                     Page

    Issue#4: Did the District Court err in
    denying Appellant’s Injunctive Relief
    based on Balancing the Equities and/or
    Unclean Hands.                                   51

         A.   Balancing the Equities:                51

         B.   Overly Broad:                          56

         C.   Unclean Hands:                         59

    Issue #5: Did the District Court err in
    vacating the Jury’s Attorney Fee award.          62


Conclusion                                           63

Prayer                                               65

Certificate of Service                               66

Certificate of Brief                                 67

Appendices

    Appendix 1: Copy of the Trial Court’s Judgment


    Appendix 2: Copy of Jury Charge


    Appendix 3: Record Excerpts of Court’s Directed Verdict




                               iv
                    TABLE OF AUTHORITIES

                                                Page

Cases:

2300, Inc. v. City of Arlington, 888 S.W.2d
123 (Tex. App.--Fort Worth 1994, no writ)        25,29

Abercrombie and Fitch Co. v. Hunting World,
Inc., 537 F.2d 4 (2nd Cir. 1976)                 12

All Am. Builders, Inc. v. All Am. Siding of
Dallas, Inc., 991 S.W.2d 484, (Tex. App.-Fort
Worth 1999, no pet.)                             24

Bd. of Trustees v. Fox, 492 U.S. 469,
109 S.Ct. 3028, 106 L.Ed.2d 388 (1989)           44

Black Hills Jewelry Mfg. Co. v. Gold Rush,
Inc., 633 F.2d 746 (8th Cir.1980)                17,26,33

Brennan's, Inc. v. Brennan's Rest., L.L.C.,
360 F.3d 125 (2d Cir.2004)                       17,26,33

Camarena v. Texas Employment Comm’n,
754 S.W. 2d 149, 151 (Tex. 1988)                 30

Cameron County v. Velasquez, 668 S.W.2d
776 (Tex.App.--Corpus Christi 1984, writ
ref'd n.r.e.)                                    23

Cano v. Macarena, 606 S.W.2d 718 (Tex. App.-
Corpus Christi, 1980)                            40

Central Hudson Gas & Electric Corp. v. Public
Service Commission of New York, 447 U.S. 557,
100 S. Ct. 2343, 65 L.Ed.2d 341 (1980)           44-45




                             v
                                                Page
Chemlawn Servs. Corp. v. GNC Pumps, Inc.,
690 F. Supp. 1560 (S.D.Tex.1988)                30,34

Circuit City Stores, Inc. v. CarMax, Inc.,
165 F.3d 1047 (6th Cir.1999)                    17,26,34

Craddock v. Sunshine Bus Lines, 134 Tex. 388,
133 S.W.2d 124, 126 (Tex.Comm.App.--1939,
opinion adopted)                                49

Davis v. Huey, 571 S.W.2d 859 (Tex. 1978)       29,49

Douglas v. Walker, 707 S.W.2d 733, 734
(Tex. App.--Beaumont 1986, no writ)             14

Downer v. Aquamarine Operators, Inc., 701
S.W.2d 238 (Tex.1985), cert. denied, 476
U.S. 1159, 106 S. Ct. 2279, 90 L.Ed.2d 721
(1986)                                          25,29

Dunnagan v. Watson, 204 S.W.3d 30
(Tex. App.—Fort Worth 2006, pet. denied)        59

Enter. Int'l, Inc. v. Corporacion Estatal
Petrolera Ecuatoriana, 762 F.2d 464
(5th Cir.1985)                                  32

Flores v. Flores, 116 S.W.3d 870 (Tex. App.—
Corpus Christi 2003, no pet.)                   59

Florida Bar v. Went For It, 515 U.S. 618,
115 S. Ct. 2371, 132 L.Ed.2d 541 (1995)         45

Fuji Photo Film Co. v. Shinohara Shoji
Kabushiki Kaisha, 754 F.2d 591 (5th Cir.1985)   16

Gonzalez v. Zamora, 791 S.W.2d 258 (Tex. App.
-Corpus Christi, 1990)                          58




                             vi
                                                  Page

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d
1199 (9th Cir. 2000)                              17,26,34

Hellenic Inv. v. Kroger Co., 766 S.W.2d 861
(Tex. App.-Houston [1st Dist.] 1989, no writ)     57

Hitt v. Mabry, 687 S.W.2d 791, 795 (Tex. App.-
San Antonio 1985, no writ)                        56

Hudgens v. Goen 673 S.W. 2d 420 (Tex. App-
Waco, 1979)                                       22

Isunai v. Manske-Sheffield Radiology Group,
805 S.W. 2d 602 (Tex. App—Beaumont, 1991)         58

Jeter v. Associated Rack Corp., 607 S.W.2d 272
(Tex. App.—Texarkana 1980, ref. n.r.e.)           18,35

Jim Rutherford Investments Inc. v. Terramar
Beach Community Ass'n., 25 S.W.3d 845(Tex. App.
—Houston [14 Dist.] 2000, pet. den’d)             28

Joy Mfg. Co. v. CGM Valve & Gauge Co., 730 F.
Supp. 1387 (S.D.Tex.1989)

Landry v. Travelers Insurance Co., 458 S.W. 2d
649 (Tex. 1970)                                   49

Lazy M Ranch, Ltd. v. TXI Operations, LP,
978 S.W.2d 678 (Tex. App.-Austin 1998,
pet. denied)                                      59-60

Light v. Centel Cellular Co, 883 S.W.2d 642
(Tex. 1994)                                       58

Lower Nueces River Water Supply Dist. v.
Live Oak County, 312 S.W.2d 696, 701 (Tex.
Civ. App.-San Antonio 1958, writ ref'd n.r.e.)    56



                             vii
                                                   Page

McAfee MX v. Foster, No. 02-07-080-CV, 2008 WL
344575, at *2, 2008 Tex.App. LEXIS 968, at *8
(Tex.App.-Fort Worth Feb. 7, 2008, pet. denied),
petition for cert. filed, No. 08-639
(U.S. Nov. 12, 2008)                               52

McAx Sign Co., Inc. v. Royal Coach, Inc.,
547 S.W.2d 368, 369 (Tex.Civ.App.--Dallas
1977, no writ)                                     1

McDonald's Corp. v. Robertson, 147 F.3d 1301,
(11th Cir.1998)                                    17,26,34

Miller v. Lone Star Tavern, Inc. 593 S.W.2d 341
(Tex. Civ. App.--Waco 1979, no writ)               22

Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447,
98 S.Ct. 1912, 56 L.Ed.2d 444 (1978)               44

Pappan Enters., Inc. v. Hardee's Food Sys.,
Inc., 143 F.3d 800, 805 (3d Cir.1998)              17,26,34

Parkem Indus. Servs., Inc. v. Garton 619 S.W.
2d 428 (Tex. Civ. App.—Amarillo 1981, no writ)     29

Pebble Beach Co v.Tour 18 I Ltd.,
942 F. Supp. 1513 (S.D. Tex., 1996)                12

Pebble Beach Co. v. Tour 18 I, Ltd.,
155 F.3d 526 (5th Cir. 1998)                       13

Physicians and Surgeons Gen. Hosp. v.
Koblizek 752 S.W. 2d 657 (Tex. App.—Corpus
Christ, 1988)                                      23-24




                             viii
                                                   Page

Pittsburgh Press Co. v. Pittsburgh Comm'n
on Human Relations, 413 U.S. 376, 385,
93 S. Ct. 2553, 37 L.Ed.2d 669 (1973)              44

Pro Hardware, Inc. v. Home Ctrs. of America,
Inc., 607 F.Supp. 146, 154 (S.D.Tex.1984)          30,34

Quantum Fitness Corp. v. Quantum Lifestyle
Ctrs., L.L.C., 83 F.Supp.2d 810, 831
(S.D.Tex.1999)                                     27,33

Recon Exploration, Inc. v. Hodges, 798 S.W.2d
848 (Tex. App.--Dallas 1990, no writ)              29,49

Rescuecom Corp. v. Google, Inc. 562 F.3d 123
(2d Cir. 2009)                                     48

S. Monorail Co. v. Robbins & Myers, Inc., 666
F.2d 185, 188 (5th Cir. Unit B 1982)               27,33

Smithson v. Cessna Aircraft Co., 665 S.W.2d 439
(Tex.1984)                                         49

Societe Des Produits Nestle, S.A. v. Casa
Helvetia, Inc., 982 F.2d 633, 640 (1st Cir.1992)   17

Soweco v. Shell Oil Co., 617 F.2d 1178,
(5th Cir.1980), cert. denied, 450 U.S. 981,
101 S. Ct. 1516, 67 L.Ed.2d 816                    19

Storey v. Cent. Hide & Rendering Co.,
148 Tex. 509 226 S.W.2d 615, 618-19 (1950)         51-52

Texas Soc. v. Ft. Bend Chapter, 590 S.W.2d 156
(Civ. App.—Texarkana 1980, ref. n.r.e.)            18,35

Thompson v. W. States Med. Ctr., 535 U.S. 357,
122 S. Ct. 1497, 152 L.Ed.2d 563 (2002)            45



                             ix
                                                   Page

Thompson v. Thompson Air Conditioning & Heating,
Inc., 884 S.W.2d 555, (Tex. App.-Texarkana 1994,
no pet.)                                           24


Ty, Inc. v. Jones Group, Inc., 237 F.3d 891
(7th Cir.2001)                                     17,26,33

Union Gas Corp. V. Gisler, 129 S.W. 3d 245
(Tex. App.-Corpus Christi, 2003)                   60-61

Union Nat’l Bank v. Union Nat’l Bank, 909 F. 2d
839 (5th Cir. 1990)                                12

Webb v. Glenbrook Owners Association, Inc.,
98 S.W.3d 374, 384 (Tex. App.—Dallas, 2009)        57

Zapata v. Zapata 841 S.W. 2d 45 (Tex. App.—
Houston [14th Dist], 1992)                         1-12,16,
                                                   19,31

Statutes:

Tex. Bus. & Comm. Code § 16.15(c) (1968)           40

Tex. Bus. & Comm. Code s 16.27(a) (1968)           40




                             x
                                 STATEMENT OF THE CASE

        This      is    an       appeal     of       an   adverse          ruling   by   the

District Judge following a favorable jury verdict on

the       issue        of    common        law        trade     name        infringement.

[Appendix 1].                Because the Order/Judgment is vague as

to     the     basis        of    the     Court’s         ruling,      Appellant         must

address all conceivable basis for the District Court’s

decision McAx Sign Co., Inc. v. Royal Coach, Inc., 547

S.W.2d 368, 369 (Tex.Civ.App.--Dallas 1977, no writ).

        It is the Appellant’s contention that to the extent

the      Court’s        decision          was        based    upon     the     Appellee’s

Motion to Set Aside the Jury Verdict [Clerk’s Record,

pp.143-156] 1 the Court erred in so doing. The Court had

directed a verdict that Appellant was the senior user
                                                                       2
[Reporter’s Record: Volume V: 150-151]                                      and the jury

found that Tesoro Corporation was both the Appellant’s

trade name and that the Appellee had created likelihood

of confusion [RR:XI:75].                             To the Extent the Court’s

decision was based upon the Appellee’s Motion to set


1
    There is only one volume of the Clerk’s record. Hereinafter CR: page.
2
    Hereinafter, RR:Vol: Page.



                                                 1
aside based on improper jury issues [CR:143-156] the

Court   again        erred    because        the       only     two     issues

presented,      violation         of       the     common       law      trade

infringement and declaratory relief were in fact one in

the same, in other words they necessarily related,                          and

the Appellee was on full notice as to what was being

pled and requested.          To the extent the Court left the

jury verdict intact, but based its ruling on a lack of

irreparable     injury       or   the      presence       of    discernable

damages at law the Court again erred.                    Appellant put on

more than sufficient evidence both at trial and in the

Permanent Injunction hearing to show non-speculative,

unquantifiable        injury      that       cannot       be     adequately

compensated     at    law.   To   the      extent       the    Court    denied

Appellant’s      injunctive            relief          based     upon       the

application     of    unclean     hands      or    a    balancing      of   the

equities Appellant contends the Appellee was the only

party which appeared in court with unclean hands and

that over the course of the trial it gave the Trial

Court no equities on its behalf in which to balance

against Appellant’s needs. Finally, to the degree that


                                       2
the Court did base its ruling on Appellant’s failure to

demonstrate its right to injunctive relief, the denial

of attorney’s fees stipulated to by both parties was

based upon the successful jury finding and should not

have been disturbed


              STATEMENT REGARDING ORAL ARGUMENT

     While    the   law    on   the    issue   of   trade    name   and

trademark infringement is well developed, the facts of

this case present many issues the Court found novel, or

difficult to resolve. One of the specific aspects of

the case factually was the admission by the Appellee

that it knew the Appellant owned the name and after

being refused the use or the purchase of the name, it

proceeded to use the name anyway under the “assumed

name” provisions of Texas law. Furthermore, evidence at

trial revealed the Appellee knew there was the risk of

a   trade    name   infringement       claim   [RR:V:41-44,    61-71;

IX:87]. At one point in the proceeding the court even

confronted the Appellee with the fact that Appellee’s

usurpation     of    the   name       may   have    been    fraudulent



                                   3
[RR:XI:61].   Appellant   therefore   contends   that   oral

argument is not only appropriate but necessary.


                    ISSUES PRESENTED

                          Issue #1

    Did the District Court err in Granting the
Appellee’s Motion to Set Aside the Jury Verdict based
upon failure to Establish Irreparable Harm and Lack of
Adequate Remedy at Law?


                          Issue #2

    Did the District Court err in Granting the
Appellee’s Motion to Set Aside the Jury Verdict based
on Improper Jury Instructions.

                          Issue #3

    Even if the Court Rejected the Appellee’s Motion to
Set Aside Jury Verdict Did the District Court err in
Denying Appellant’s Request for Permanent Injunction
after the Full Hearing.


                          Issue#4

    Did the District Court err in denying Appellant’s
Injunctive Relief based on Balancing the Equities and
Unclean Hands.

                          Issue #5

    Did the District Court err in vacating the Jury’s
Attorney Fee award.




                             4
                           STATEMENT OF FACTS

       Appellant      Tesoro       Corporation           is    a    Donna,    Texas

sign   leasing       and     sales    business            that      has   been     in

existence since 1975. The owner of Tesoro Corporation,

Mr. Paul Sullivan secured the name Tesoro Corporation

in 1975 and has held it continuously every since that

time   [RR:IV:43-45].         According             to    Appellee’s        general

counsel,      Charles      Parrish,          Appellee       was     formed    as    a

Delaware      corporation      in     1968         under      the    name    Tesoro

Petroleum      Corporation         and        in     1969      applied       to    do

business      in     Texas    as     Tesoro         Petroleum        Corporation

[RR:V:38]. Appellee has no business operations in Texas

aside from its corporate headquarters in San Antonio

where it has been since the inception of Appellee’s

existence      [RR:IX:93].           Although            Appellant        does     do

business as Triple A signs, its clients remit payment

and    know    his     business       as       Tesoro         Corporation,        his

business      operations       and       banking           relationships          are

conducted as Tesoro Corporation, and his tax returns

all     reflect         Tesoro        Corporation               [RR:IV:58-126].

Evidence      at   trial     indicated             Appellant        did   business


                                         5
across Texas including Amarillo, Dallas, Houston, and

San Antonio, where Appellee is headquartered [RR:IV:48-

49,78; RR: VIII: 103-123, 214].

       The evidence presented at trial shows that in 2004

Appellee      approached        Mr.     Sullivan     and     one    of     his

employees and asked to either pay to use the name or to

purchase the name.           Appellant’s agents clearly refused

both     requests       [RR:IV:192-200;           RR:V:6-16]       and     the

evidence      showed     that      Appellee       nevertheless      made     a

corporate decision to proceed to use the Appellant’s

trade    name       [RR:V:61-71],      enlisted     the    assistance      of

Fulbright       &    Jaworski,        and   filed     an    assumed      name

certificate with the Texas Secretary of State [RR:V:41-

44].

       The    attorney       for      Fulbright      &     Jaworski      that

effectuated the name change and use of the name was

Carrie        Platt/Ryan[RR:V:41-44].               Appellee       actually

checked the availability of the name and found that

Appellant was the registered owner and the name was

therefore not available.               The Texas statute in effect

in     2004   was      the   same      as   the     statute    today       and


                                       6
prohibited the use of identical or deceptively similar

names.    That    statute       applied          to    the     use    of    “Tesoro

Corporation” as an assumed name in Texas if it was

already       taken,    which       in        this     case,    it    was,       thus

prohibiting Appellee from using the name even as an

“assumed name” in Texas.              [RR:V:61-71].

       Appellee       approached          Appellant,           through       Carrie

Platt’s secretary, Darcy Angel and was unable to secure

the use or ownership of the name.                       Appellee was advised

by legal counsel of the legal ramifications of using

Tesoro Corporation as an assumed name and nevertheless

took    the    assumed       name   Tesoro           Corporation      knowing      it

could    be    sued    for    trade       name       infringement          and   that

Appellant      was     the    owner       of     that     name       [RR:V:61-71;

RR:IV:192-200; RR:V:6-16].

       In 2004, shortly after Tesoro Petroleum changed its

name,     Appellant      began       to        get     complaints      that       its

railroad cars were damaging property, that its trucks

were causing damage, and/or its employees were cutting

fence locks.           Appellant had no railroad cars, tanker

trucks    or     the    need    to       cut     fences.         The       conduct,


                                          7
railroad     cars,        trucks,    and     employees      belonged    to

Appellee, Tesoro Petroleum, which had now changed its

name to take Appellant’s name [RR:IV:127-129]. Then in

2009 Union Pacific Railroad, a potential customer of

both    Appellant        and     Appellee,    albeit     for    different

services, began making demands for money on Appellant.

What followed and continued through to the present were

demands for damages from other railroads, threats of

sanctions    from        Texas   governmental       agencies    like   the

insurance department and attorney general’s office, law

firms from as far away as Washington and Alaska sending

demand letters to Appellant for conduct and actions of

the Appellee and a continuous barrage of contact that

made it clear that Tesoro Petroleum’s name changed was

causing actual confusion within Texas and nationwide.

In    addition,     it    became    clear    that   potential    lenders

were confusing Appellant’s credit with that of Appellee

and    the   good    standing        of    Appellant     with   that    of

Appellee.         [RR:IV:129-192,204-207].             In       2010     a

consumer/client of Appellant counter sued Appellant in

Hidalgo County for conduct attributable to Appellee.


                                      8
Richard Schell, the attorney who filed the complaint

for     the    Defendant,     had       done    research       on   Tesoro

Corporation       and   due    to   the        confusion     created     by

Appellee’s usurpation of Appellant’s name, had come to

believe that the Appellant was misrepresenting itself

and its identity [RR:IV:259-271].

       During trial Appellant’s representatives testified

as to the irreparable harm caused by Appellee’s conduct

[RR:IV:127-128,129-192]         although        from   the     outset   the

trial was bifurcated and the Court agreed to hear the

issues relevant to the permanent injunction only after

a   jury      verdict   established       liability      and    that    any

judgment would be based upon the jury verdict and the

evidence adduced in the permanent injunction hearing

[RR: VIII: 59-62].          At the Permanent Injunction hearing

the Appellant’s President, Paul Sullivan, testified to

the on-going imminent harm caused by the confusion that

the jury in fact found existed [RR:VIII:70-103, 204-

207]    and    the   fact    that   he    could    not     calculate     or

predict the extent and degree of the potential harm

[RR:VIII:91-93, 204-207].               Ironically, the Appellee’s


                                    9
sole witness on the issue, Gene Trevino, admitted the

same    thing    both       at    trial        and   during    the     injunction

hearing [RR:VIII:235-236.RR:XI:26-30].

                            SUMMARY OF ARGUMENT

       The District Court erred in granting the Appellee’s

Motion    to    Set     Aside       Jury       Verdict.        Having       already

granted Plaintiff’s directed verdict on the issue of

senior    user,       the        Jury    properly       found        that    Tesoro

Corporation was in fact Appellant’s trade name and that

the    Appellee’s          use     of    Appellant’s          name     created    a

likelihood of confusion among consumers. The jury was

not    required       to    find        irreparable       harm       or     adequate

remedy at law, as that was an issue for the court to

determine in the injunction phase of the case. The jury

issues    as    to    trademark          infringement         and     declaratory

relief    were       proper        and     more      than     adequately         put

Appellee on notice as to the Appellant’s claims.                               With

only equitable relief requested the Appellant clearly

demonstrated both irreparable harm and the lack of any

relief at law.             Thus there was no basis for the Court




                                          10
to have nullified the award of attorney’s fees to the

Appellant.


                                 ARGUMENT

                                 Issue #1

    Did the District Court err in Granting the
Appellee’s Motion to Set Aside the Jury Verdict based
upon failure to Establish Irreparable harm and Adequate
Remedy at Law?

A.    The Issue of Irreparable Harm is for the Court:

      The first basis of Appellee’s Motion for Judgment

and to Disregard is the assertion that the jury failed

to    find   irreparable       harm    and    therefore    its   verdict

should be disregarded [CR; 143-157]. In light of the

law   and    how    the   case   was       tried,   that   assertion   is

invalid. The Appellee cited to Zapata v. Zapata 841

S.W. 2d 45 (Tex. App.—Houston [14th Dist], 1992) for the

proposition        that   a   jury    must   find   irreparable    harm.

First of all, Zapata was decided on a directed verdict,

the case never reached the jury nor was there a jury

charge in that case.           In other words the Court decided

the issue, not the jury. In this case, the only issues

required to be submitted to a jury were submitted based


                                      11
on the elements of common law trade infringement in

Texas.     To prevail in its common-law action for trade

name     infringement,         Plaintiff     has       the     burden   to

establish the following elements: (1) that the name it

seeks to protect is eligible for protection, (2) that

it is a senior user of the name, and (3) that there is

a likelihood of confusion between its name and that of

the other user, Zapata Trading Corp v. Zapata Trading,

Int’l,    Inc.    841   S.W.    2d   45,   47    (Tex.       App.--Houston

[14th Dist.] 1992, no writ) (citing Union Nat'l Bank v.

Union Nat'l Bank, 909 F.2d 839 (5th Cir.1990)).

       There was never an issue that the name was capable

of     protection.        To     determine       the     distinguishing

capability of a mark or a trade name, and thus its

eligibility for protection, courts employ the classic

trademark continuum articulated in Abercrombie & Fitch

Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir.

1976); Pebble Beach Co v. Tour 18 I Ltd., 942 F. Supp.

1513, 1537 (S.D. Tex., 1996). A mark or name may be (1)

fanciful,        (2)    arbitrary,         (3)     suggestive,          (4)

descriptive, or (5) generic. Id. Fanciful, arbitrary,


                                     12
and    suggestive     marks    are    inherently      distinctive      and

therefore protectable without an additional showing of

consumer identification. Id. At the other end of the

continuum       are    generic        marks,      which      are    never

protectable because they represent the name of the good

or    service   itself      and   therefore       cannot    identify    or

distinguish a particular source. Id. Descriptive marks

fall    somewhere     in    between.      These    marks     describe    a

characteristic of the good or service itself and may

not be protected absent a showing that the mark has

become associated in the minds of consumers with the

particular, albeit unknown, source. Pebble Beach Co..

v. Tour 18 I, Ltd., 155 F.3d 526 (5th Cir. 1998). This

association is called secondary meaning. Id.

       Appellant’s     trade      name      “Tesoro        Corporation,”

derives from the Spanish name for “treasure” and in

addition to being at the far end of the spectrum where

names are protectable without any showing of consumer

identification,       the     evidence    adduced     at    trial   shows

that after 37 years of business Tesoro Corporation has

also     acquired     consumer       identification.           Evidence


                                     13
showing long and extensive use has been held sufficient

to prove a trade name has acquired secondary meaning.

Douglas v. Walker, 707 S.W.2d 733, 734 (Tex. App.--

Beaumont 1986, no writ).

      In   this   case,        Appellant     was       willing        to     allow

Defendant to call itself Tesoro Petroleum, it simply

would not allow Appellee to use Tesoro Corporation.                            If

the   Appellant’s        trade     name     had    no     importance          the

Appellee    would       have     not    begun     to    use      it        without

permission,       nor     would        it   be     so      resistant            in

relinquishing the name.            The Texas Secretary of State’s

office clearly recognized the combination of Tesoro and

Corporation       into     one     name      as    being         worthy        of

registration      and    the     evidence    at    trial      demonstrated

that the Defendant thought it was protectable enough to

seek to use or buy it before simply trying to usurp the

name [RR:V:9-15, RR:V:41-4; RR: V:60-72; RR:V:84-87].

      Appellee tried to argue that it, not the Appellant,

was the senior user.              The Court granted a directed

verdict in Appellant’s favor on the issue of senior

user before the jury phase of the trial began [RR:V:


                                       14
150-151; RR:XI:35] The Appellee is simply wrong about

the issue.     It has never been about who was the senior

user of “Tesoro” or “Tesoro Petroleum” but rather who

was the senior user of “Tesoro Corporation.”              The jury

found that “Tesoro Corporation” was Plaintiff’s trade

name and by using that exact name, Defendant caused

actual confusion [RR:XI:75]. In this case the evidence

showed that the senior user of “Tesoro Corporation” was

not disputed, every Defendant witness, whether offered

by the Defendant or the Plaintiff had testified that

Plaintiff was the senior user of the name at issue

“Tesoro     Corporation”   [RR:V:84-85;   RR:V:61-72].      Having

rejected the Defendant’s argument that the fight was

over the name “Tesoro” and not “Tesoro Corporation,” it

was entirely appropriate to grant directed verdict for

the   Plaintiff    as   to    the    senior   user   of    “Tesoro

Corporation” when even the Defendant admitted that to

be the case.

B.    There Was Irreparable Harm:

      Thus Appellee was left with the argument that there

was    no    irreparable     harm.   However,   a    finding    of


                                15
likelihood of confusion brings with it a presumption of

irreparable harm. So the analysis, much like that in

Zapata v. Zapata also cited herein above, is whether

there was “evidence” to support a particular finding.

In this case, just as in Zapata v. Zapata 841 S.W. 2d

45, 48-49, the Plaintiff demonstrated actual confusion

[RR:IV: 129-192; RR:IV: 259-270] and proof of actual

confusion     is    probative     evidence      that   likelihood       of

confusion       exists,     Zapata        Trading    Corp   v.     Zapata

Trading, Int’l, Inc. 841 S.W. 2d 45, 48 (Tex. App.—

Houston [14th Dist] 1992 no writ).              In fact, once actual

confusion is proved, an almost overwhelming amount of

proof    is     necessary    to   refute       the   existence     of    a

likelihood of confusion. Id.; see also Fuji Photo Film

Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591,

597 (5th Cir.1985).          In this case not only was there

proof of actual confusion as cited herein above, but

the record reflects no real effort by the Defendant to

refute    the      actual   confusion.        Once   the    jury   found

likelihood of confusion the irreparable nature of the

harm was established and the Court was free to presume


                                     16
irreparable injury, See Brennan's, Inc. v. Brennan's

Rest., L.L.C., 360 F.3d 125, 129 (2d Cir.2004); Ty,

Inc.      v.    Jones       Group,       Inc.,       237     F.3d      891,      902      (7th

Cir.2001); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d

1199, 1209 (9th Cir. 2000); Circuit City Stores, Inc.

v. CarMax, Inc., 165 F.3d 1047, 1056 (6th Cir.1999);

McDonald's          Corp.       v.     Robertson,          147      F.3d       1301,      1310

(11th Cir.1998); Pappan Enters., Inc. v. Hardee's Food

Sys., Inc., 143 F.3d 800, 805 (3d Cir.1998); Societe

Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982

F.2d 633, 640 (1st Cir.1992); Black Hills Jewelry Mfg.

Co. v. Gold Rush, Inc., 633 F.2d 746, 753 n. 7 (8th

Cir.1980).3

C.     There is no Adequate Remedy at Law:

       The corollary to lack of irreparable harm is the

argument that there is an adequate remedy at law. The

determination            of     whether        an     adequate         remedy        at    law

exists is not a mechanical task. The mere existence of

a    remedy       at     law     is     not     a    ground       for      a    denial       of

3
  At trial and during hearings the Appellee tried to argue that because these cases were
temporary and not permanent injunction cases, the presumption should not apply. There is no
valid reason to limit the presumption to temporary status quo relief versus permanent injunctive
relief.

                                               17
injunctive      relieve      unless       the    legal     remedy    is    as

practical and efficient to the ends of justice as the

equitable remedy, Jeter v. Associated Rack Corp., 607

S.W.2d       272,    278    (Civ.     App.—Texarkana         1980,        ref.

n.r.e.). Thus, while a plaintiff may have a right to

bring an action for damages, that remedy is inadequate

if damages cannot be calculated. Texas Soc. v. Ft. Bend

Chapter, 590 S.W.2d 156, 159 (Civ. App.—Texarkana 1980,

ref. n.r.e.).

       As set out in the testimony of Paul Sullivan it is

impossible      to   calculate      monetary       damages    [RR:IV:129-

192: RR: VIII: 70-103].             The instances of confusion are

continuous and haphazard.                 The effects on credit and

goodwill are impossible to gauge and may be immediate,

or     may    create       long-term        problems       that     do    not

immediately manifest themselves. Since it is impossible

to know when the confusion will again re-surface, it is

equally impossible to prepare for the problems or to

take     prospective       action      to       mitigate    harm.          The

impossibility of calculating damage in part contributed

to the Plaintiff’s decision to drop his monetary claims


                                     18
prior to the commencement of the jury trial.                          Appellant

simply    could     not       calculate       the   harm    in    a    monetary

sense.

                                  Issue #2

    Did the District Court err in Granting the
Appellee’s Motion to Set Aside the Jury Verdict based
on Improper Jury Charge and Instructions.


      The Appellee would have the Court believe that the

failure to present “irreparable injury” to the jury is

defective and precludes granting a summary judgment.

It    cites    a   long   list     of    cases      including         Zapata    v.

Zapata 841 S.W. 2d 45 (Tex. App.—Ho [14th Dist], 1992)

for the proposition that a jury must find irreparable

harm.     That     statement       is        blatantly     incorrect.      In    a

trademark infringement case the question of “likelihood

of confusion” is a question for the trier of fact.

Zapata v. Zapata 841 S.W. 2d 45, 49. See also Soweco v.

Shell    Oil   Co.,      617    F.2d    1178,       1186   (5th   Cir.1980),

cert. denied, 450 U.S. 981, 101 S. Ct. 1516, 67 L.Ed.2d

816 The only matters submitted to a jury in Texas are

the    elements     of    a    cause    of      action     that   a    jury     is



                                        19
required to answer.           There is no jury charge in Texas

for    a    permanent     injunction        because       a    permanent

injunction and the elements require of it are to be

determined by the Court in its sound discretion.

      The Jury charge in this case was as follows:

           Question one. Do you find from a preponderance
           of the evidence that Tesoro Corporation is the
           trade name of the Plaintiff? A trade name is
           any designation which is adopted and used by a
           person to denominate goods which the markets or
           services which he renders or a business which
           he conducts or has come to be so used by
           others.

           Answer yes or no.

           If you answered yes to question number one,
           then answer question number two. Otherwise, do
           not answer question number two.

           Question number two. Do you find from a
           preponderance of the evidence that there exists
           a likelihood of confusion between the
           Plaintiff's corporation and the Defendant's
           corporation by any consumer?

           Answer yes or no. [RR:VI:6-7].

The Appellee’s only objections to the Court’ charge and

instructions[RR: V: 164-170; RR: XII: Exhibit 1] wholly

failed     to   raise   any   issue    as   to   the   submission      of

irreparable      harm   and/or    adequate       remedy   at    law,   an



                                  20
objection it raised for the first time in its Motion to

Disregard two months later.

       In    the     hearing         on     May    21,     2013        the     Appellee

attempted to argue that because there was a claim for

common law trademark infringement and a claim for a

declaratory        action,          that    some    how    these        claims       were

“separate’         and    their       elements      were     not        “necessarily

referable”         to    one     another,         and    that     by     failing       to

present the issue of irreparable harm to the jury the

Appellee       had      not    know        what    it    need     to     respond       to

[RR:VII:31-38].               The    key     to    the    Appellee’s           argument

lies    in     the       declaratory         judgment       action           not   being

necessarily          referable        to     the        common     law        trademark

infringement case.               The facts of each were identical.

There       were   no     “two      unrelated       claims”       such        that    the

Appellee would have been confused as to which claim was

being asserted.            In this case there was only one claim,

common       law     trademark         infringement,             the     declaratory

action was simply a mode of relief, it did not have one

single      different         fact    or     element      and     the        Appellee’s

failure to object was fatal to its claim [CR:34-35]. To


                                            21
give any credence to the Appellee’s contention would be

to say “we were confused by the claim for relief under

the common law trademark infringement cause of action

and by the request that the Court declare Defendants

actions    a    violation      of        Texas     Common        law    trade

infringement law.” It is simply not a tenable argument.

      The Defendants cite to Hudgens v. Goen 673 S.W. 2d

420 (Tex. App-Waco, 1979) for the same proposition and

that case is equally flawed.               In Hudgens the cause of

action    was   not   common    law       trade       infringement,       but

unfair    competition.       Based        on     Miller     v.   Lone    Star

Tavern, Inc. 593 S.W.2d 341 (Tex. Civ. App.--Waco 1979,

no writ) irreparable harm was a necessary third element

of the main cause of action, not the injunctive relief.

More important, the Court then went on to say that the

third element found in Miller, of irreparable harm, was

not   required    for    a   plaintiff           to    be    entitled      to

injunctive relief when the cause of action is based on

unfair competition Hudgens v. Goen 673 S.W. 2d 420,

423. In this case, irreparable harm has never been an

element of a trade infringement case. Rather it is an


                                    22
element of a permanent inunction and that issue is left

to   the    Court    which    must    look    to   the   underlying

evidence, not the jury charge.

     In an amendment to its Motion to Set Aside [CR:

143-156] appellee cited to Physicians and Surgeons Gen.

Hosp. v. Koblizek 752 S.W. 2d 657, 660 (Tex. App.—

Corpus     Christ,   1988)    that    seems   to   stand    for    the

proposition     that   having    refused      to   submit   a     jury

question, this Court could not have previously made the

determination that there was no question of fact to

submit to the jury and therefore could not have granted

a directed verdict.          That is not what Physicians and

Surgeons Gen. Hosp. v. Koblizek stands for.                 Rather,

that case stands for the following proposition:

     The trial court was not authorized to find on its
     own that the answers found by the jury created an
     unreasonable risk of harm. That was a disputed and
     essential factual issue   which was never requested
     by appellees or presented to the jury. The trial
     court was prevented from making a finding on the
     omitted issue and such circumstances require   that
     judgment be rendered for appellant. Cameron County
     v. Velasquez, 668 S.W.2d 776, 781 (Tex.App.--Corpus
     Christi 1984, writ ref'd n.r.e.).




                                 23
In Physicians and Surgeons Gen. Hosp. v. Koblizek the

trial   judge   had     refused     an   issue      on     whether      the

hospital “knew” that the conditions of its floor had

created an unreasonable risk of harm.                      That was an

essential   element     of   the    cause    of    action     (Emphasis

Added) and it remained disputed after the presentation

of evidence. Irreparable harm/adequate remedy at law is

simply not an essential element of a common law trade

infringement    case,    both   become      relevant       only    in   the

event of a request for injunctive relief which falls

squarely into the realm of the trial judge’s authority.

    More important, in a common law trade infringement

case the entire case can be tried to the Court and it

determines both facts and law. Thompson v. Thompson Air

Conditioning    &   Heating,    Inc.,    884      S.W.2d    555,     (Tex.

App.-Texarkana 1994, no pet.); All Am. Builders, Inc.

v. All Am. Siding of Dallas, Inc., 991 S.W.2d 484,

(Tex. App.-Fort Worth 1999, no pet.).                    In this case

only the injunction phase has been bifurcated and just

as in Thompson, the Court’s findings of factual issues




                                   24
relating   to    the   injunctive    relief   are   every   bit    as

proper and binding as a jury’s.

    In granting a permanent injunction the standard of

review is clear abuse of discretion by a trial court,

not a jury. See 2300, Inc. v. City of Arlington, 888

S.W.2d 123, 126 (Tex. App.--Fort Worth 1994, no writ).

A trial court’s ruling is however reversible on appeal

if it acts without reference to any guiding rules and

principles. See Downer v. Aquamarine Operators, Inc.,

701 S.W.2d 238, 241-42 (Tex.1985), cert. denied, 476

U.S. 1159, 106 S. Ct. 2279, 90 L.Ed.2d 721 (1986).

Thus, the jury does not find “irreparable harm,” it

finds likelihood of confusion in an infringement case

and the Court must look to the record to see if the

Plaintiff has “evidence to support irreparable harm.”

In this case evidence clearly exists and there was no

requirement to submit the issue to the jury. If a jury

finding    was   necessary   there    would    be   no   case     law

allowing the Court to grant or deny an injunction based

on “conflicting evidence.” A jury finding would take




                                25
that discretion from the Court and that is not the law

in Texas.

      Finally,       the       Appellee’s          argument        completely

overlooks      the     legal     effect       of    the     likelihood       of

confusion element that is submitted to a jury in a

common law trade infringement case.                   In virtually every

circuit in the United States the appeals courts have

expressly adopted the holding that a court may presume

irreparable       injury        upon     finding      a     likelihood       of

confusion in a trademark case. See Brennan's, Inc. v.

Brennan's      Rest.,      L.L.C.,          360    F.3d   125,      129     (2d

Cir.2004); Ty, Inc. v. Jones Group, Inc., 237 F.3d 891,

902 (7th Cir.2001); GoTo.com, Inc. v. Walt Disney Co.,

202   F.3d     1199,     1209    (9th       Cir.   2000);     Circuit     City

Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1056 (6th

Cir.1999);      McDonald's        Corp.      v.    Robertson,       147   F.3d

1301,   1310     (11th     Cir.1998);        Pappan   Enters.,       Inc.    v.

Hardee's     Food      Sys.,     Inc.,       143   F.3d     800,    805     (3d

Cir.1998); Societe Des Produits Nestle, S.A. v. Casa

Helvetia, Inc., 982 F.2d 633, 640 (1st Cir.1992); Black

Hills Jewelry Mfg. Co. v. Gold Rush, Inc., 633 F.2d


                                       26
746, 753 n. 7 (8th Cir.1980). Although the 5th Circuit

has not expressly adopted the holding it has done so

implicitly in S. Monorail Co. v. Robbins & Myers, Inc.,

666 F.2d 185, 188 (5th Cir. Unit B 1982) and districts

throughout the Fifth Circuit recognize that a finding

of likelihood of confusion is a finding of irreparable

harm/injury. Quantum Fitness Corp. v. Quantum Lifestyle

Ctrs., L.L.C., 83 F.Supp.2d 810, 831 (S.D.Tex.1999).

In short, Appellee’s argument as to the charge fails at

every level and because of the unique nature of an

infringement case, the likelihood of confusion finding

establishes irreparable harm.

    In addition, the argument is disingenuous given the

fact that the Appellee knew that the case would be

tried   in   a   bifurcated    manner,   with   the   entire

injunction issue left to the Court.      The Appellee even

filed and had granted, a motion for continuance seeking

time to develop more evidence for the injunction phase

and in fact have took the Appellant’s deposition for a

third time in this case. The argument of a defective

jury charge has no merit.


                              27
                                  Issue #3

    Even if the Court Rejected the Appellee’s Motion ot
Set Aside Jury Verdict Did the District Court err in
Denying Appellant’s Request for Permanent Injunction
after the Full Hearing.

      In light of the facts that the Appellant won a jury

verdict as to Tesoro Corporation being its trade name

and   the    Appellee’s         use    of     that    name    creating      the

likelihood of consumer confusion, was given a directed

verdict as to being the senior user, and presented in

evidence at trial and the permanent injunction hearing

of irreparable harm and no adequate remedy at law, the

Trial Court erred in denying injunctive relief.

      To obtain a permanent injunction, a plaintiff must

prove (1) the existence of a wrongful act, (2) the

existence        of    imminent       harm,    (3)     the    existence      of

irreparable injury, and (4) the absence of an adequate

remedy      at   law.     Jim   Rutherford       Investments         Inc.    v.

Terramar     Beach       Community     Ass'n.,       25    S.W.3d   845,    849

(Tex. App.—Hous. [14 Dist.] 2000, pet. den’d). In the

present case the Plaintiff has established its common

law    trade          infringement      claim        and     has    therefore



                                       28
established the existence of a wrongful act which in

addition to be wrongful, is on-going.                   Therefore, what

the    Court   must       determine        is   the   existence   of   the

remaining three elements.

A.    Standard of Review:

      In granting a permanent injunction the standard of

review is clear abuse of discretion. See 2300, Inc. v.

City of Arlington, 888 S.W.2d 123, 126 (Tex. App.--Fort

Worth 1994, no writ). A trial court’s ruling must be

based upon some reference guiding rules and principles.

See Downer v. Aquamarine Operators, Inc., 701 S.W.2d

238, 241-42 (Tex.1985), cert. denied, 476 U.S. 1159,

106 S. Ct. 2279, 90 L.Ed.2d 721 (1986). An abuse of

discretion exists where the trial court lacks evidence

in    the   record    which    reasonably         supports    that   trial

court's decision. Davis v. Huey, 571 S.W.2d 859, 862

(Tex.1978);     Recon       Exploration,         Inc.   v.   Hodges,   798

S.W.2d 848, 852 (Tex.App.--Dallas 1990, no writ).

B.    Imminent Harm:

      In    order    to   justify     a     permanent    injunction    the

underlying injury must be real and substantial Parkem


                                      29
Indus. Servs., Inc. v. Garton 619 S.W. 2d 428, 430

(Tex. Civ. App.—Amarillo 1981, no writ). An injunction

will    not   issue   to   prevent        merely    speculative     harm,

Camarena v. Texas Employment Comm’n, 754 S.W. 2d 149,

151 (Tex. 1988). In this case the harm was and is both

real and on-going.         The evidence adduced at trial shows

a clear confusion created by the Defendant’s use of

Texas   Tesoro’s      name.        Appellant    demonstrated       actual

confusion [RR:IV:129-192; RR:IV:259-270] and based in

part on that evidence, the jury found likelihood of

confusion. Where likelihood of confusion exists in a

trademark or trade name case, the case law in Texas is

clear that the plaintiff's lack of control over the

nature and quality of the defendant's goods or services

constitutes      an   immediate       (and     in   fact   irreparable

injury),      regardless      of   the    actual    quality   of    those

goods or services. See Joy Mfg. Co. v. CGM Valve &

Gauge    Co.,   730   F.   Supp.      1387,    1394   (S.D.Tex.1989);

Chemlawn Servs. Corp. v. GNC Pumps, Inc., 690 F.Supp.

1560, 1569 (S.D.Tex.1988); Pro Hardware, Inc. v. Home




                                     30
Ctrs     of     America,        Inc.,      607      F.      Supp.        146,154

(S.D.Tex.1984).

       As set out above, evidence of the imminence of the

harm to the Plaintiff was adduced in the testimony from

Richard Shell and from Paul Sullivan that showed based

on the actual confusion there was a real and on-going

damage    to    the     Appellant’s        business        in   Texas.         In

addition, since the trial, additional events testified

to by Mr. Sullivan show that the Defendant’s actions

now had Appellant identified in the public forum as a

“Donna    based”       oil   and     gas    company      [RR:VIII:70-103,

RR:XIV: Exhibit 2, pp.11]. Appellant clearly had and

has no control over the actions and business practices

of Appellee and the Appellee’s perceived presence in

Texas completely overshadows the business enterprise of

Appellant       even     though      the     two     companies           are   in

different businesses.              Again, it bears repeating that

Plaintiff’s          evidence   of    actual       confusion     was       never

refuted    by    any     Defense     witness       and   proof      of    actual

confusion       is    probative      evidence       that    likelihood         of

confusion       exists,      Zapata        Trading       Corp    v.       Zapata


                                      31
Trading, Int’l, Inc. 841 S.W. 2d 45, 48 (Tex. App.—

Houston [14th Dist] 1992 no writ), a fact that did not

escape the jury.

C.    Irreparable Injury and Adequate Remedy at Law:

      Irreparable         injury     and     adequate      remedy      at     law

although distinct elements of a permanent injunction

often      become     intertwined            because       proof        of     an

irreparable injury in many cases is done by showing

that there is no adequate remedy at law. Appellee has

red   to   focus     on    the     magnitude       of    harm    and    somehow

downplay     the     actual        damage     to    Appellant.         However,

federal courts have long recognized that it is not so

much the magnitude but the irreparability that counts

for purposes of an injunction and ....[A]n injury is

irreparable        only     if     it    cannot     be     undone       through

monetary    remedies        ....     The     absence     of     an   available

remedy by which the movant can later recover monetary

damages ... may ... be sufficient to show irreparable

injury.     Enter.        Int'l,     Inc.     v.    Corporacion         Estatal

Petrolera     Ecuatoriana,           762     F.2d       464,    472–73       (5th

Cir.1985).


                                        32
1. Irreparable Injury:

       At least one district court in the Fifth Circuit

has held that in a trademark case, “[w]hen a likelihood

of confusion exists, the plaintiff's lack of control

over the quality of the defendant's goods or services

not     only    shows        imminent       harm,       but     constitutes        an

irreparable injury, regardless of the actual quality of

those    goods       or    services.”           Quantum    Fitness      Corp.      v.

Quantum Lifestyle Ctrs., L.L.C., 83 F.Supp.2d 810, 831

(S.D.Tex.1999). The Fifth Circuit has neither expressly

adopted or a rejected the notion of a presumption of

irreparable injury where likelihood of confusion has

been    shown    to       exist,      S.   Monorail       Co.    v.    Robbins      &

Myers, Inc., 666 F.2d 185, 188 (5th Cir. Unit B 1982).

But,     as    set     out       previously        herein,       several      other

federal        circuits       have         addressed       this       issue     and

expressly       held      that    a   court       may   presume       irreparable

injury    upon       finding      a   likelihood          of   confusion      in    a

trademark case. See Brennan's, Inc. v. Brennan's Rest.,

L.L.C., 360 F.3d 125, 129 (2d Cir.2004); Ty, Inc. v.

Jones Group, Inc., 237 F.3d 891, 902 (7th Cir.2001);


                                           33
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1209

(9th Cir. 2000); Circuit City Stores, Inc. v. CarMax,

Inc., 165 F.3d 1047, 1056 (6th Cir.1999); McDonald's

Corp.     v.     Robertson,      147      F.3d     1301,       1310       (11th

Cir.1998); Pappan Enters., Inc. v. Hardee's Food Sys.,

Inc.,    143    F.3d   800,    805    (3d   Cir.1998);         Societe      Des

Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d

633, 640 (1st Cir.1992); Black Hills Jewelry Mfg. Co.

v.   Gold      Rush,   Inc.,   633     F.2d      746,    753    n.    7   (8th

Cir.1980).

       Even absent a presumption based on likelihood of

confusion the courts have held that factually an injury

is     also    irreparable     when       compensatory         damages      are

extremely difficult to calculate. See Chemlawn Servs.,

690 F. Supp. at 1569; Pro Hardware, 607 F. Supp. at

154.    Mr.     Sullivan   has    provided        more     than      adequate

evidence of irreparable harm/inadequate remedy at law

at this hearing and in the trial [RR:IV: 127-192; RR:

VIII: 70-103].

2.     Adequate Remedy at Law:




                                     34
    The determination of whether an adequate remedy at

law exists is not a mechanical task. The mere existence

of a remedy at law is not a ground for a denial of

injunctive     relief     unless        the   legal     remedy     is     as

practical and efficient to the ends of justice as the

equitable remedy, Jeter v. Associated Rack Corp., 607

S.W.2d   272,    278    (Civ.      App.—Texarkana          1980,        ref.

n.r.e.)]. Thus, while a plaintiff may have a right to

bring an action for damages, that remedy is inadequate

if damages cannot be calculated. Texas Soc. v. Ft. Bend

Chapter, 590 S.W.2d 156, 159 (Civ. App.—Texarkana 1980,

ref. n.r.e.).

    As set out in the testimony of Paul Sullivan during

the permanent injunction portion of this proceeding, it

is impossible to calculate damages.                   The instances of

confusion are continuous and haphazard.                 The effects on

credit   and   goodwill    are     impossible     to     gauge   may      be

immediate, or may create long-term problems that do not

immediately manifest themselves. Since it is impossible

to know when the confusion will again surface, it is

equally impossible to prepare for the problems or to


                                   35
take    prospective       action      to    mitigate         harm.    He   simply

could    not   calculate        the     harm       in    a    monetary     sense

[RR:VIII:208-210.

       Appellee’s      sole    effort       to    establish      an    adequate

remedy at law was the testimony of its expert, Gene

Trevino. Trevino’s entire testimony as to damages was

restricted     to   the       cost   of     hiring      someone       to   handle

telephone      calls      relating        to     the    on-going      confusion

generated      by   the    Appellee’s            wrongful      usurpation      of

Appellant’s name [RR:VIII:225-227].                          However, Trevino

and the Appellee completely ignored all of the other

harm and the inability to calculate that harm, in great

part because Mr. Trevino’s client simply told him not

to look into that area of damage.

       It as clear from Trevino’s trial testimony and his

deposition testimony that he only addressed “some of

the elements” of economic damages [RR:VIII:228]. When

pressed, Trevino admitted he was not even asked to try

and calculate economic damage.                    He claims there is no

economic loss, yet never did a calculation to make that

determination nor did he ever look at documents that


                                       36
would    have    enabled      him     to      even     address     the    issue

[RR:VIII:229-232].          In   his        own   words,    “I     didn’t      do

anything.”      [RR:VIII:232].              However,      the     lack    of    a

clearly discernable economic loss is the very essence

of irreparable harm that lacks a clear remedy at law.

Therefore,      with   no     other     evidence,         other    than    Paul

Sullivan, Richard Schell, and the voluminous documents

provided as exhibits showing the inability to calculate

past economic harm, how can the Appellee even argue as

to either the extent of the harm or its irreparable

nature?    It cannot.

      When asked directly to confront the issue of future

harm, Trevino fell back on his telephone answering cost

analysis and then admitted, he was not asked to do a

calculation of future economic harm [RR:VIII:232-233].

Then after admitting he had no basis for any of his

numbers, he admitted he had no way of know the degree,

the frequency, or the intensity of any future confusion

and     harm    and    that      no    one        could    ascertain       that

[RR:VIII:234-236].            More important he was not asked,

and therefore did not perform, any calculation on loss


                                       37
of    good    will,       loss      of    reputation,          loss    of    credit,

future attorney’s fees or any other factor.                                 The only

quantifiable        damage          he    calculated        was    phone         calls,

because in the end he was not asked to do anything else

and   so     he    did    not       [RR:VIII:236-239,            243-246].          The

problem is the Appellee should have done so because Mr.

Trevino      was    the    only       witness          offered    to   refute       the

Appellant’s         case       on    irreparable          harm     and      lack     of

adequate remedy at law and by his own admission he

looked at only one narrow area.

D. The Record Shows a Complete Absence of any Guiding
Principles or Rules Upon Which the Court Relied in
Denying Injunctive Relief.

1.    Requested Scope:

(i) State Wide Prohibition of Use:

      The    Appellant         requested          an    injunction       preventing

the   Appellee          from    using       the    Plaintiff’s         trade       name

anywhere in the state of Texas [RR:IV:175-176;RR:XI:36-

36;CR:297-303].            The       harm       that      has     befallen          the

Appellant         has    flowed          directly       from     the     Appellee’s

assumed name filing.                 In effect consumers and business

entities      are       searching        the    Texas     Secretary         of    State


                                           38
data basis and finding Tesoro Corporation listed as a

San Antonio based oil & gas company.                           To allow the

Appellee        to   continue       to    use       the   Appellant’s      name

anywhere        in   Texas   will    only      continue       the   confusion.

Having prevailed on its trade name infringement claim,

Appellant was entitled to deny the Appellee the use of

its trade name throughout the state. Even Appellee’s

alleged expert, Mr. Trevino admitted that a business

is entitled to do operate and solicit business state-

wide and that he in fact has his own business name and

can        do    business     state-wide             [RR:XI:26-30].        Both

Appellant’s request and Appellee’s admissions of state-

wide rights find support in Texas law.

(ii)       Presumption of State-Wide Rights:

       A    certificate       of     registration          issued     by   the

Secretary of State under the provisions of the Texas

Trademark Act is admissible in evidence as prima facie

proof of: 1) the validity of the registration; 2) the

registrant's          ownership      of       the     mark;    and    3)    the

registrant's exclusive right to use the mark through-

out the state of Texas in connection with the goods or


                                         39
services specified in the certificate, subject to any

conditions or limitations stated therein. Tex. Bus. &

Comm.   Code    §   16.15(c)        (1968).          The       Act     specifically

provides    that    no    registration             of      a    trademark          shall

adversely      affect     common         law       rights           acquired       in    a

trademark      prior     to   its        registration.               While     a    mark

remains effectively registered, no common law right may

be acquired against the owner unless he abandons such

mark. Tex. Bus. & Comm. Code s 16.27(a) (1968). Cano v.

Macarena, 606 S.W.2d 718, 722 (Tex. Civ. App. 1980). It

is undisputed that Mr. Sullivan had properly registered

the mark and that it was in place continuously since

1975 [RR:IV:43; RR: XII: Exhibits 24-25].

      The   registration           of    Tesoro         Corporation            created

certain protections as to its exclusive right to use

that name. The jury verdict in this case has confirmed

the   principle     established           in       Cano        v.    Macarena,          606

S.W.2d 718, 722 that Appellee acquired no rights in the

name Tesoro Corporation and in fact has violated the

Appellant’s     rights.       To    give       the      Appellant        less       than

exclusive      state-wide          use        is   to      reward        Appellee’s


                                         40
efforts by providing Appellant less than what the plain

reading of the law provides.                 In addition, the problem

is more complex because even if Appellee was restricted

to some small corner of one county in Texas, the fact

that    it    continues    to     be       allowed     to     list    “Tesoro

Corporation” as its assumed name lies at the center of

the confusion. Appellant receives calls from out-of-

state state regulator’s, taxing authorities, creditors,

consumers,        and      other            persons         [RR:IV:127-192;

RR:VIII:70-103],        based    on    what     is    on    file     with    the

Texas Secretary of State.                  Therefore, not only should

Appellee not be allowed to use the name in Texas, but

its assumed name registration should be withdrawn or

the harm to the Appellant continues unabated.

(iii)        Actual Use and Business Transactions:

       In addition to the nature of the harm occasioned by

the    Appellee’s      continued       use    of     Tesoro    Corporation,

evidence presented in this case demonstrates the state-

wide presence of the Appellant, including a significant

and    long-established         presence       in     Bexar    County       that

continues      today    that    even       Appellee’s       expert    had     to


                                      41
acknowledge [RR:XI:17-24]. Appellant is in every region

of the state including Bexar, Dallas, Harris, Tarrant

and       El      Paso         counties.               In      addition             to      Texas’           major

cities,           the        counties             virtually              encircle             every          large

metropolitan area in the state.                                             In West Texas where

Plaintiff                 presence                is         not          as         pronounced,                    he

nevertheless                 does        business              in     every         county           with           any

significant population center that would seek out and

utilize sign-based advertising.                                          In addition, in those

areas of the state, the metropolitan areas are also the

places where business in the outlying counties would be

acquired.                For example, the county seat of Tom Green

County is San Angelo and San Angelo is the closest city

where business is conducted for at least a 10-12 county

surrounding area.4

         It      is      also        important              to      note        that        the       counties

where the Appellant actively does business are also the

areas          where         the       Appellee              and       its       business              is      very

likely to operate and create the same type of confusion


4
 By way of illustration Plaintiff in west Texas where Plaintiff is not in every county it does business in Potter
County (Amarillo), Lubbock County (Lubbock), Taylor County (Abilene), Midland County (Midland), Ector
County (Odessa), El Paso County, (El Paso), and Val Verde County (Del Rio).


                                                          42
that has been testified to in this case.                       Tom Green,

Ector, Midland and the contiguous and near-by counties

are now at the very center of a re-vitalized Texas oil

and    gas    industry.       Allowing      the   Appellee    to    use   the

Appellant’s trade name anywhere in these areas invites

the    same       confusion    and    harm    that   gave    rise   to    the

lawsuit.

(iv)    All Speech Mediums:

       The evidence adduced at trial and at the permanent

injunction hearing shows that beginning in 2009 when

Appellee began using Tesoro Corporation as its assumed

name,       the    confusion     became      disseminated      through      a

variety      of    mediums,     all   of     which   contribute      to   the

underlying problem and must be stopped.                     At issue here

is the ability of a Court to regulate speech and its

natural corollary, the printed word. However it is not

any speech, but commercial speech that the Plaintiff

seeks to enjoin.

       Commercial speech in any form occupies one of the

lowest rungs on the First Amendment hierarchy, enjoying

only    a    "limited    measure       of    protection,     commensurate


                                       43
with its subordinate position in the scale of First

Amendment values, and is subject to modes of regulation

that     might    be    impermissible       in     the   realm   of

noncommercial expression." Bd. of Trustees v. Fox, 492

U.S. 469, 477, 109 S.Ct. 3028, 106 L.Ed.2d 388 (1989)

(quoting Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447,

456, 98 S.Ct. 1912, 56 L.Ed.2d 444 (1978)). Commercial

speech     does   "no   more    than    propose      a   commercial

transaction" and may be freely regulated. Pittsburgh

Press Co. v. Pittsburgh Comm'n on Human Relations, 413

U.S. 376, 385, 93 S.Ct. 2553, 37 L.Ed.2d 669 (1973).

          In Central Hudson Gas & Electric Corp. v. Public

Service Commission of New York, 447 U.S. 557, 566, 100

S. Ct. 2343, 65 L.Ed.2d 341 (1980), the Supreme Court

outlined    its   method   of   analyzing    the    lawfulness   of

restrictions on commercial speech:

       In commercial speech cases, then, a four-part
       analysis has developed. At the outset, we must
       determine whether the expression is protected
       by the First Amendment. For   commercial speech
       to come within that provision, it at least must
       concern lawful activity   and not be misleading.
       Next, we ask whether the asserted governmental
       interest is substantial. If both inquiries     yield
       positive answers, we must determine whether the


                                44
      regulation   directly  advances   the  governmental
      interest asserted, and whether it is not   more
      extensive than is necessary to serve that interest.
      Misleading commercial speech, is not protected by
      the First Amendment. Thompson v. W. States Med.
      Ctr., 535 U.S. 357, 367, 122 S. Ct. 1497, 152
      L.Ed.2d 563 (2002).


As the Central Hudson Court noted, "there can be no

constitutional        objection        to     the     suppression      of

commercial messages that do not accurately inform the

public about lawful activity. The government may ban

forms of [235 S.W.3d 670] communication more likely to

deceive   the   public     than    to       inform    it...."   Central

Hudson, 447 U.S. at 563, 100 S. Ct. 2343 (emphasis

added).     Thus,   "the   government         may     freely    regulate

commercial speech that ... is misleading," Florida Bar

v. Went For It, 515 U.S. 618, 623-24, 115 S. Ct. 2371,

132   L.Ed.2d   541    (1995)    (citations         omitted),   and   the

remaining    Central    Hudson    factors       apply    only    if   the

speech is not misleading.

      In this case it has already been established that

the speech Appellant seeks to enjoin is the improper

and impermissible use of Appellant’s own trade name.



                                  45
The use by Appellee of that trade name has been found

by a jury to mislead and confuse the public and has

caused harm to the Appellant.                         The assertion that a

Texas court cannot enjoin the Appellee from using the

Appellant’s        trade   name       is    without       legal    or   factual

foundation.

(v) Publicly Traded Stock Designation:

       Appellee trades its publicly issued and held stock

on the New York Stock Exchange and its symbol, “TSO,”

is identified as “Tesoro Corporation and was founded in

1939 and is headquartered in San Antonio, Texas.                           While

the    Appellee     has    the    right          to    use   the   name    as   a

“Delaware Corporation” it use as being headquartered in

“San    Antonio,      Texas      coupled         with     its   assumed    name

filing       contributes         to        the        confusion.     Appellant

requested that as part of the permanent injunction that

Appellee      be     prohibited            from        referencing      “Tesoro

Corporation” as a San Antonio, Texas Company.

(vi) Use of Appellant’s Trade Name on the Internet:

       The   Appellant     is     well      aware       of   the   maxim   that

“equity will not do a vain thing.”                       The idea that this


                                       46
Court or any regulatory body can take back or remove

four years of material that the Appellee has improperly

placed on the internet is absurd.           However, A court can

prospectively       prevent   the    Appellee,         its   agents,

employees, and personnel from using Appellant’s trade

name in the future.       The starting point for this relief

is the Appellee’s web-site.              The web-site is easily

accessed   by   simply    typing    in    the   Appellant’s    trade

name, “Tesoro Corporation.”          In addition the web-site

can be accessed by typing in “Tesoro Corp.” Appellee

has so completely co-opted the Appellant’s trade name

that when Tesoro Corporation is entered on the web,

Plaintiff’s business never appears.             In order to reach

Tesoro Corporation one must enter “Tesoro Corporation,

Donna,     Texas”      [RR:    VIII:        80-92].      Appellee’s

misapplication      and   misappropriation        of    Appellant’s

trade name has not only served as an improper use of

the name, but has allowed Defendant to virtually co-opt

the Appellant’s name.

    An examination of the Appellee’s web-site not only

reveals that it purports to be Tesoro Corporation of


                               47
Texas, but Appellee also uses the site to disseminate

other     material     such        as   press     releases,        news

conferences, copies of its annual reports and social

responsibility reports to name just some of what is

published on the site, all of which use Appellant’s

trade name and perpetuate the confusion and harm that

already   exists     [RR:   XII:    Defendant’s   Exhibit     7;    RR:

XIV, Exhibit 3].        In Rescuecom Corp. v. Google, Inc.

562 F.3d 123 (2d Cir. 2009), the Court found that even

persons   and   entities     several    steps   removed   from      the

actual infringer could be compelled to stop using a

trade name.      In Rescuecom Corp. v. Google, Inc. the

federal court found that Google was infringing on a

mark through “keyword use” and that such a practice

qualified as “use” in commerce under the Lanham Act.

The keyword in this instance is “Tesoro Corporation,”

and as set out herein above and testified to in this

hearing, Defendant has completely co-opted that term on

the internet.      Plaintiff does not even appear when it

inputs its own trade name.




                                   48
2. In Light of the Appellant’s Evidence and the
Virtual Absence of Appellee’s Evidence to the Contrary
the Court Denied Appellant’s Injunctive Relief without
Any Basis in Guiding Principles or Rules:

     An abuse of discretion exists where a Court lacks

evidence in the record which reasonably supports that

trial court's decision. Davis v. Huey, 571 S.W.2d 859,

862 (Tex.1978); Recon Exploration, Inc. v. Hodges, 798

S.W.2d 848, 852 (Tex. App.--Dallas 1990, no writ). The

test for abuse of discretion is whether the court acted

without reference to any guiding rules and it is a

question of whether the court acted without reference

to   any   guiding      rules   and        principles.    Craddock    v.

Sunshine Bus Lines, 134 Tex. 388, 133 S.W.2d 124, 126

(Tex.Comm.App.--1939, opinion adopted). Another way of

stating the test is whether the act was arbitrary or

unreasonable.     Smithson      v.        Cessna   Aircraft   Co.,   665

S.W.2d     439,   443     (Tex.1984);         Landry     v.   Travelers

Insurance Co., 458 S.W.2d 649, 651 (Tex.1970). As set

out herein above, all of the evidenced adduced at trial

supports the following:

-The Appellee knowingly usurped Appellant’s trade name;



                                     49
-The    Appellee’s    usurpation       of   the    Appellant’s     trade

name caused clear, actual confusion which creates an

almost     irrebuttable       presumption         of    likelihood      of

consumer confusion;

-The Appellee made no effort to rebut the presumption;

-The Appellant presented abundant evidence of actual

harm for which no adequate remedy at law existed

-The only evidence of any quantification of damage, ie

of an adequate remedy at law, was the very limited

testimony of Gene Trevino that he admits covered only

his    assertion   of   the    cost    of   answering         phones.   He

admits to not looking at any other element of harm or

damage.

       On what basis and upon what evidence did the Court

deny     injunctive     relief?         The       Court’s      order    is

completely    silent     on    any     basis      for   the    judgment,

including whether the Court actually reached the issue

of injunctive relief at all.            That factor alone should

be fatal to the Court’s denial of Appellant’s Request

for Permanent Injunction.




                                  50
                              Issue#4

The District Court erred in denying Appellant’s
Injunctive Relief based on Failure to Balance the
Equities and/or Unclean Hands.


      In addition to the factors required for trademark

and/or name infringement and the four elements of a

permanent injunction in Texas, the Texas courts have

articulated     several       sub-factors      that         must   be

considered. Because the Trial Court’s judgment in this

case is virtually silent as to the underlying basis of

the decision, the Appellant must address these factors

as well because they were raised by Appellee during the

course of the trial.

A.    Balancing the Equities:

      There is a line of cases that suggests that a trial

court   must   balance      the   equities   before    issuing     an

injunction and consider injury to (1) the defendant and

the   public   were   the   injunction   granted      and    (2)   the

complainant were the injunction denied. See Storey v.

Cent. Hide & Rendering Co., 148 Tex. 509 226 S.W.2d

615, 618-19 (1950). An injunction will ordinarily be



                                  51
denied if the "injury to the complainant is slight in

comparison to the injury caused the defendant and the

public."      Id.     at    619.       Conversely,        an    injunction      may

issue if the injury to the defendant and the public is

slight       when     compared         to     injury       suffered       by     the

complainant. See id. "Public convenience or necessity,

economic burden to the defendant, and the adequacy of a

legal remedy may affect this balance." McAfee MX v.

Foster, No. 02-07-080-CV, 2008 WL 344575, at *2, 2008

Tex.App. LEXIS 968, at *8 (Tex.App.-Fort Worth Feb. 7,

2008, pet. denied), petition for cert. filed, No. 08-

639 (U.S. Nov. 12, 2008).

      However, the case cited most frequently in Texas is

Storey v. Central Hide & Rendering Co.,148 Tex. 509,

226    S.W.2d       615    and    that       case    is    a    nuisance       case.

Strictly       speaking          the     doctrine         of    balancing        the

equities does not even apply to a non-nuisance setting.

If    this    Trial       Court     applied     the       doctrine    Appellant

would    point      out     that       the    public      suffers    no    injury

whatsoever       by       forcing      Appellee      to     cease    using      the

Appellant’s         trade    name.      Based       on    the   nature     of    the


                                         52
confusion     demonstrated          in     this     case,       by     clearly

delineating itself as Tesoro Petroleum, the confusion

caused to the public or the government seeking to reach

Appellee    would    virtually       cease.         The     two      “Tesoros”

would again be distinct as they were prior to 2004. The

evidence    adduced    at    trial        makes    it    clear       that   the

steady confusion Appellant suffers from did not begin

until     after     Tesoro         Petroleum        began       using       the

Appellant’s trade name.

    The larger problem with this Trial Court having

applied     an     equity      balancing          test     to     deny      the

Appellant’s       injunctive       relief    is     that    the       Appellee

presented no concrete evidence of harm that would have

been occasioned by a name change.                   In other words, it

gave the Court nothing to “balance.” Aside from some

conjecture from Appellee’s witness, Kelly Curll, at the

end of the Permanent Injunction hearing suggesting that

changing the name back to Tesoro Petroleum would result

in the demise of Tesoro Petroleum as a San Antonio

based   company     and     with    it    the     jobs,     tax      base   and

possibly other unforeseen consequences [RR: IX: 62-75],


                                     53
Appellee offered no equity to balance.            It presented no

evidence of any real harm or cost to change the name.

Even Ms. Curll had no idea when asked what would really

happen if the Appellee had to change its name.                    When

asked if she could articulate the harm to Appellee, she

simply said “no.” [RR: IX: 68].          The one witness that

could   have    provided     insight     into     the     question,

Elizabeth   Ising,   offered   nothing.         Ms.    Ising   was   a

Washington D.C. based attorney who handles matters of

corporate governance and Security Exchange Commission

issues for her clients.        Since 2007 she has performed

those functions for Appellee [RR: IX: 6-8].                Over the

course of her direct testimony Ms. Ising testified as

to the requirements of a name change and what would

have to be done in order for Appellee to relinquish the

use of Appellant’s trade name in Texas. She indicated

three   areas   where    Appellee    would   be       affected,   but

offered no testimony as to cost of such a name change

[RR: IX: 9-31].         On cross-examination Ms. Ising was

asked   directly,    what    would     she   charge      to    change

Appellee’s name and she testified she “had no idea” and


                               54
could not quantify any financial harm to Appellee that

would be occasioned by a name change [RR: IX: 40, 42].

       Any harm to the Appellee should have been totally

discounted because the uncontroverted evidence adduced

at   trial      indicates     that    Appellee      knew      the    name     it

wanted    to    use    had    been   taken    and    that      after    being

refused the right to use the name, Appellee chose to

move ahead anyway with full knowledge that it might be

successfully          sued    for    common       law        trademark/name

infringement. Both Mr. Parrish and Ms. Ryan testified

Appellee       made     the   change      because       it    suited        it’s

business interest to do so.                 Ms. Ryan even testified

that    the    issue     of   Plaintiff’s     ownership         of   “Tesoro

Corporation” was actually raised and that no one at

Appellee       was    concerned      even    though      the    very        real

possibility existed that the Appellee could be sued for

trade    name      infringement.     Therefore,       any     harm     to    the

Appellee      is     self-induced    and    the   product       of   extreme

corporate arrogance.




                                     55
B.    Overly Broad:

      Because this case will involved denying Appellee

access     or    use    over    a      geographic       area,    Appellant

anticipated the Appellee raising the notion that the

injunction on a state-wide basis was “overly broad.”

Appellee    put    on     testimony         and    cross-examined        Paul

Sullivan    on    the     issue     as      to    where    Appellant      did

business. However, Appellee’s attack on where Appellant

did    business    was     misplaced        in    the     context   of     an

injunction because “overly broad” does not refer to the

geographical      reach    of     an    injunction,       but   rather     to

something completely unrelated.

      An injunction should be broad enough to prevent a

repetition of the evil sought to be corrected. Hitt v.

Mabry, 687 S.W.2d 791, 795 (Tex. App.-San Antonio 1985,

no writ) (citing Lower Nueces River Water Supply Dist.

v. Live Oak County, 312 S.W.2d 696, 701 (Tex.Civ.App.-

San   Antonio     1958,   writ      ref'd    n.r.e.))      An   injunction

must not be so broad, however, as to enjoin a defendant

from activities that are a lawful and proper exercise

of his rights. Id. Where a party's acts are divisible,


                                       56
and some acts are permissible and some are not, an

injunction should not issue to restrain actions that

are     legal    or    about        which    there     is        no     asserted

complaint.        Hellenic Inv. v. Kroger Co., 766 S.W.2d

861, 866 (Tex. App.-Houston [1st Dist.] 1989, no writ).

Thus, the entry of an injunction that enjoins lawful as

well    as    unlawful       acts    may    constitute       an        abuse   of

discretion. Webb v. Glenbrook Owners Association, Inc.,

98 S.W.3d 374, 384 (Tex. App.—Dallas, 2009).

       In this case “legality” did not pose an issue to

the entry of an injunction. Appellant’s right to the

name “Tesoro Corporation” has been sustained by a jury

verdict and that right extends to the state-wide use of

the name.        There is no valid argument that Appellee

cannot       legally   use    the     name    Tesoro    Corporation            in

Hidalgo County, but may do so in Bexar County.                                 An

injunction that prohibits the use of the Plaintiff’s

trade     name    on     a    state-wide       basis        is        completely

consistent with Plaintiff’s rights as conveyed by Texas

statute and as evidenced by his registration with the

Texas Secretary of State.


                                      57
      It is also important to note that this case does

not involve the enforcement of a non-compete clause.

There is significant case law in Texas that limits the

geographical reach of a non-compete to a “reasonable”

geographic area and time span. Light v. Centel Cellular

Co,   883   S.W.2d   642   (Tex.     1994).   Isunai    v.   Manske-

Sheffield Radiology Group, 805 S.W. 2d 602 (Tex. App—

Beaumont,   1991);   Gonzalez      v.   Zamora,   791   S.W.2d   258

(Tex. App.--Corpus Christi, 1990).            That is not what is

at issue in this case. Appellant is not seeking to

prevent the Appellee from competing in the market place

in any county in Texas. Confusion among consumers is

the issue here and it has been established.             Therefore,

in arriving at appropriate injunctive relief the Court

was not bound by the non-compete parameters established

in the employment field, but was free to award relief

consistent with the Appellant’s statutory right that a

jury had already determined was being infringed upon by

the Defendant.




                                58
C.    Unclean Hands:

      To the extent the Trial Court’s ruling reflects a

finding   that    Appellant      lacked        “unclean      hands”       that

ruling is completely in error. The Appellee argued that

Appellant’s      corporate     representative,          Paul     Sullivan,

used inappropriate language in deposition and put on

evidence to that effect.                 It is a timeless doctrine

that one who seeks equity must do equity and must come

to court with clean hands. See Dunnagan v. Watson, 204

S.W.3d 30, 41 (Tex. App.—Fort Worth 2006, pet. denied);

Flores v. Flores, 116 S.W.3d 870, 876 (Tex. App.—Corpus

Christi 2003, no pet.). Whether equitable relief should

be    denied   based     on   unclean         hands   is     left    to    the

discretion of the trial court. Dunnagan, 204 S.W.3d at

41;    Flores,     116     S.W.3d        at    876.    The     only       real

prohibition      against      applying         the    doctrine       is    the

requirement that it be confined to misconduct in regard

to, or at all events connected with, the matter in

litigation, so that it has in some measure affected the

equitable      relations       subsisting            between        the    two

parties, and arising out of the transaction.                          Lazy M


                                    59
Ranch, Ltd. v. TXI Operations, LP, 978 S.W.2d 678, 683

(Tex. App.-Austin 1998, pet. denied).

      Based on a two-page brief that could not even tie

Appellant’s alleged conduct to any case authority, or

show how Appellant’s conduct in this case prejudice it

CR:   294-296],    Appellee    requested     the   Court    to   deny

Appellant’s     injunctive     relief      based   upon    testimony

elicited form Mr. Sullivan as to alleged perjury that

his company had always been in good standing when in

fact it had lapsed once and he had to pay a $50 fee to

reinstate. In addition they alleged Mr. Sullivan had

violated an agreement to produce some documents during

the    course     of    the    litigation      [RR:VIII:180-198].

Appellee also played excerpts from Mr. Sullivan’s three

depositions     where   he    used    in   appropriate     language.

However, the Appellee could not show any harm to it,

serious or otherwise, and the Court correctly stated

that the doctrine applies to events leading up to the

litigation [RR:VIII:198].            In addition, the lone case

cited by Appellee, Union Gas Corp. V. Gisler, 129 S.W.

3d 245 (Tex. App.-Corpus Christi, 2003), does not even


                                 60
apply.        In   that   case    the      interpleader        had   actually

caused       the    dispute      giving         rise   to     the    need    to

interplead the funds and the Court denied any equitable

relief to the interpleader.                More importantly the Court

stated:

       For a complainant to be entitled to relief in
       equity, it is necessary that he bring himself
       within the full meaning of the maxims that he who
       seeks equity must do equity, and that he who comes
       into equity must come with cleans hands. These
       maxims comprehend not only the previous conduct of
       the complainant toward the defendant, but also the
       attitude of the complainant toward the defendant
       throughout the litigation. The complainant must in
       good conscience offer to do equity and to have the
       court accord to the defendant all of his rights.
       Union Gas Corp. V. Gisler, 129 S.W. 3d 245, 153.


The Court in this case never sanctioned the Appellant

for any conduct, nor did the Appellee ever file any

pleading      requesting        any   such       relief.       As    sited   to

above,    not      only   were    all      of    the   Appellee’s      rights

afforded it, but Appellee offered no evidence of any

kind    as    to   how    any    of   its       rights      were    harmed   or

affected, seriously or otherwise.

       What makes this argument patently absurd is that

the Appellee’s conduct leading up to the litigation,


                                      61
the arena where “unclean hands” traditionally and most

often applies, was wrought with fraud and a blatant

disregard of he Appellant’s rights. The Appellee’s own

conduct brought about the dispute, and it sought to

limit its damage by having the court reward it for its

conduct,      conduct     even    the        Court   questioned       as   being

fraudulent [RR:XI:61].

                                  Issue #5

    Did the District Court err in vacating the Jury’s
Attorney Fee award.

       The Court’s denial of Appellant’s attorney’s fees

ignores       two   salient      facts.          First,      the   Appellant

prevailed      in   the    jury    trial.            Second,    the    parties

stipulated to the amount of attorney’s fees in this

case     to    be   afforded       the         prevailing       party.      That

stipulation is memorialized in a Rule 11 Agreement on

the record in this case [RR: V:128-129].

       The Plaintiff was awarded a jury verdict [RR: VI:

75]. The jury had answered yes to both questions, that

“Tesoro Corporation” was the Appellant’s trade name and

that    Appellee’s      conduct     had        created   a     likelihood     of



                                        62
consumer confusion.        Coupled with the Court’s directed

verdict    on   the   issue    of     senior       user       [RR:V:151]    the

result of the jury trial was a complete victory for he

Appellant. Under the terms of the Rule 11 Agreement

[RR:V: 128-129] Appellant’s attorney’s fees should have

been sustained.

                              CONCLUSION

      The Appellant requests that this Court reverse the

Trial Court’s judgment and render a verdict.                       The Court

should    grant     the   Appellant          a     permanent      injunction

consistent with the Trial Court’s directed verdict on

the issue of senior user prior to the start of the

trial, the unanimous jury verdict finding the remaining

two      elements      required           for      common        law      trade

infringement, and the evidence presented showing both

irreparable harm and inadequate remedy at law.                              The

Defendant’s     Motion    to        Set     Aside       Jury    Verdict    was

without merit.        The jury instruction and charge did not

require a question as to irreparable harm because the

Appellant’s       claim       for         common        law     trade      name

infringement      necessarily        related       to    its    request    for


                                     63
declaratory relief that was based on that sole claim.

There was no confusion created by the jury charge nor

did    that    charge          omit   any     essential         element      of    the

Appellant’s trade name infringement claim.

       The    requested          scope        of     injunction         was       both

appropriate         and    within     the     scope       of    what   the      Trial

Court    could      provide.           It     placed      the    Appellant         and

Appellee in the exact position they were in prior to

2004    when     the       Appellee      knowingly         and    intentionally

usurped the Appellant’s trade name. To the extent that

the     doctrine          of    balancing          the    equities        has      any

applicability         to       this   case     the       Appellee      put    on    no

evidence       of      any      substance          that     demonstrated           any

monetary harm to it as the result of having to change

its name back to Tesoro Petroleum.                         To the extent the

equities must be weighed, they all come down in favor

of the Appellant.               The Appellee’s alleged hardship in

having to change its name is the direct result of its

own actions, taken with full knowledge that Appellant

owned the name Tesoro Corporation and that if it tried

to use that name in Texas it could be successfully sued


                                         64
for    common     law   trade    name     infringement.       That    same

arrogance brought Appellee, not Appellant, into Court

with    unclean    hands.        Appellee’s       two-page    brief    and

alleged     evidence      of    discovery     impropriety      did     not

deprive Appellee of one single vested right nor did it

occasion any harm.             Throughout the four-year life of

the case Appellee never once moved for any relief in

the form of sanctions or otherwise against Appellant

for any reason. Finally, having prevailed upon both a

directed verdict and a jury verdict, the Appellant’s

entitlement to $100,000 in attorney’s fees should be

restored.

                                 PRAYER

       Appellant prays that this Court reverse the Trial

Court’s    ruling       and    render    a   judgment    in   favor     of

Appellant for the declaratory relief as set out herein

above     and   in      the    Trial     Record    and   restore       its

attorney’s fees award.




                                    65
                               Respectfully Submitted,


                               /S/ Mark A. Weitz________
                               Reynaldo Ortiz
                               SB#15324275
                               Ortiz & Millin LP
                               1305 E. Nolana, Suite F
                               McAllen, Texas 78504
                               956-687-4567
                               965-631-1384 facsimile
                               Mark A. Weitz
                               SB# 21116500
                               Weitz Morgan PLLC
                               100 Congress Avenue
                               Suite 2000
                               Austin, Texas 78701
                               512-394-8950
                               512-852-4446 (facsimile)
                               ATTORNEYS FOR APPELLANT
                               TESORO CORPORATION




                CERTIFICATE OF SERVICE

    The undersigned does hereby certify that on the
30th day of January, 2015, I caused to be served a true
and correct copy of the foregoing Appellant’s Brief on
Defendant Tesoro Corporation d/b/a Tesoro Petroleum
Corporation by serving its attorney of Record, Frank
Weahtered   by  electronic  service   and/or  facsimile
transmission and/or by United States First Class Mail,
Return Receipt Requested.



                               /S/ Mark A. Weitz________
                               Mark A. Weitz



                          66
                APPELLANT’S CERTIFICATE OF BRIEF


       I, Mark A. Weitz, certify that Appellant’s Brief

filed    in    this    case    is   in      14   point   font,    and   the

footnote text is in 12 point font.

       I further certify that this brief was prepared with

Microsoft Word 2011 for Mac, and that, according to

that     program’s      word-count          function,     the    sections

covered by TRAP 9.4(i)(1) that the number of words in

this brief including footnotes (excluding any caption,

identity of parties and counsel, statement regarding

oral argument, table of contents, index of authorities,

statement of the case, statement of issues presented,

statement      of     jurisdiction,         statement    of     procedural

history,      signature,      proof    of    service,    certification,

certificate of compliance, and appendix) is 11,285.


                                           Respectfully Submitted,


                                           /S/ Mark A. Weitz________
                                           Mark A. Weitz




                                      67
	  
	  
	  
	  
	  
	  
	  
	  
	  
       APPENDIX	  1	  
             Electronically Filed
             7/2/2014 8:31:37 AM
             Hidalgo County District Clerks
             Reviewed By: Virginia Granados




Appendix 1
                                                                 Electronically Filed
                                                                 7/2/2014 8:31:37 AM
                                                                 Hidalgo County District Clerks
                                                                 Reviewed By: Virginia Granados




                                                                   xxxxxxxx

xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx

 xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
each party shall bear their own attorneys' fees.
                                                                        Electronically Filed
                                                                        7/2/2014 8:31:37 AM
                                                                        Hidalgo County District Clerks
                                                                        Reviewed By: Virginia Granados




        xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx




                       7/2/2014
                            xxxxxxxxxxxxxxxxx




CC:

Hon. Reynaldo Ortiz, Esq -EMAIL rey@leydeortiz.com; gh@leydeortiz.com
Hon. Gerald Drought, ESq.-EMAIL gdrought@mdtlaw.com

 Hon. Sarah Cowen, Esq. E-MAIL sarah@cowengarza.com
	  
	  
	  
	  
	  
	  
	  
	  
	  
       APPENDIX	  2	  
Appendix 2
	  
	  
	  
	  
	  
	  
	  
	  
	  
       APPENDIX	  3	  
                                                                                    150


15:43:01    1                  MR. DROUGHT:     No, Your Honor.

15:43:02    2                  THE COURT:     Okay.   In reference to the

15:43:03    3   motion for directed verdict, the -- I got a bit

15:43:19    4   sidetracked between what the -- the Plaintiff's Motion

15:43:25    5   For Directed Verdict was insofar as the Court's Charge.

15:43:31    6   Tell me again which issues you're asking for a directed

15:43:34    7   verdict on?

15:43:35    8                  MR. ORTIZ:     We were asking for a directed

15:43:37    9   verdict on -- on the issue of -- to grant the senior --

15:43:41   10   that senior -- that Mr. -- that Tesoro Corporation is

15:43:45   11   the senior user of that name in Texas.

15:43:48   12   Tesoro Corporation.     Plaintiff is the senior user of

15:43:52   13   Tesoro Corporation in Texas.

15:43:53   14                  THE COURT:     Okay.

15:44:04   15                  MR. DROUGHT:     Your Honor, I think the Zapata

15:44:05   16   case sinks the ship for the Plaintiff.             I'm sorry, but I

15:44:08   17   don't know any other clearer way to say it.             Zapata is

15:44:12   18   Zapata, Tesoro is Tesoro.

15:44:14   19                  THE COURT:     Tesoro's not a geographic name.

15:44:18   20   Zapata, that's what they relied on, the geographic

15:44:21   21   perspective.     And that's distinguishable from the

15:44:22   22   Thompson case that use surnames.             And when you start

15:44:25   23   looking at the detailed information about what the

15:44:29   24   protected name is in a trademark case, there's major

15:44:29   25   distinction between surnames, geographic, generic names.




                                                Appendix 3
                                                                            151


15:44:34    1   I've read quite a few cases before this afternoon,

15:44:38    2   counsel, and I'm not getting any new information than

15:44:41    3   what I was led to believe and I wanted to give an

15:44:44    4   opportunity to be enlightened.      I always welcome

15:44:48    5   enlightenment, but, with all due respect, I'll agree to

15:44:51    6   disagree with you, Mr. Drought, on the Zapata case

15:44:55    7   because of the -- the language used within it.

15:44:59    8                In reference to that Motion For Directed

15:45:01    9   Verdict, the court is going to grant Plaintiff's

15:45:04   10   directed verdict that the Plaintiff is the senior user

15:45:08   11   of the name Tesoro Corporation.

15:45:16   12                MR. DROUGHT:     And our -- our objection is

15:45:17   13   noted obviously?

15:45:19   14                THE COURT:     Absolutely.

15:45:21   15                Was there any other directed verdict?

15:45:23   16                MR. ORTIZ:     No, Your Honor.

15:45:25   17                THE COURT:     Okay.   While we were off the

15:45:32   18   record and in reviewing the proposed charges again, it

15:45:38   19   came to my head that it would be wise to suggest to both

15:45:45   20   sides to modify your stipulation breaking it down even

15:45:52   21   further as to the different levels; trial, Court of

15:45:57   22   Appeals and Supreme Court.      Did anyone want to heed that

15:46:01   23   advice?   And if you don't, that's fine.

15:46:04   24                MR. ORTIZ:     We did, Your Honor.   We

15:46:05   25   conferred many times but we were unable to reach an
