As they wait for a judge’s decision, both sides in a lawsuit involving national builder Premier Pools Management Corp. said the case is going their way.
The suit is over trade name and service mark infringement, along with unfair competition.
“It is unfortunate that any issues could not be worked out one-on-one,” said Paul Porter, CEO of Premier Pools Management Corp. “This matter could have easily been resolved without any legal expenses.”
The events leading up to the case began in 2011, when Shan Pools in Allen, Texas, became a licensee of Premier Pools Management Corp. Shan took the name Premier Pools and Spas and served the Dallas-Fort Worth Metroplex.
But a company in Lewisville, Texas, about 25 miles away, had been operating under the name Premier Pools since 1989. The older company sued Premier Pools Management Corp. and the new Allen location.
The plaintiffs, Sean, Peter and Thomas Dodd, said they became aware of the conflict soon after their similarly named competitor opened. Customers and suppliers called them in confusion. One supplier asked if they were opening a new branch, and another mistakenly billed the Dodds for materials purchased by the defendant, the plaintiffs said.
“Plaintiff has not only lost various jobs to [the defendant] from its use of plaintiff’s service mark and trade name, but has seen its reputation and goodwill seriously damaged by [the defendant’s] activities,” the Dodds stated in their complaint.
The Dodds alleged this confusion caused financial damage, estimated at approximately $500,000, and hurt their reputation. They also sought an injunction preventing Premier from doing business under that name in the 13 counties where the Dodds said they work.
As the case moved forward, the court ordered Premier Pools Management Corp to state on its website that the Allen location was not the same company as the Dodds’ Lewisville operation.
In its defense, Premier Pools Management Corp. said that use of the name Premier Pools by the Dodds is not eligible for trademark protection. “… Among other grounds, [the Dodds’ company] has created or permitted companies affiliated with plaintiff to use the name ‘Premier Pools,’ and … has failed to protect its interest in the name ‘Premier Pools’ by advertisements or marketing,” the defendants stated in a court filing.
The defendants also filed a countersuit, asking the court to cancel the Dodds’ registration of the name Premier Pools. They said the term “premier” is descriptive rather than distinctive, and therefore should not have been allowed to be registered. They said the name had not acquired secondary meaning, a term used to describe when a company becomes associated with a trademark in the minds of consumers in a particular market.
Premier Pools Management Corp. and Shan Pools also claimed they had been harmed by the Dodds’ registration of the name Premier Pools and sought damages.
Porter said that when his company opened the Allen office they didn’t know of the Dodds’ firm. Once he was aware, he tried reaching out to the other company, but the Dodds weren’t interested in coming to an agreement, he said.
A jury decided that the Dodds’ trademark is eligible for protection, but only in four of the 13 counties. They also found that the defendants willfully infringed and diluted the Dodds’ trademark. However, it was decided that the Dodds did not suffer irreparable harm and no financial damages were awarded.
The judge will now look at whether to impose an injunction.
“I think it’s terrific,” said Sean Dodd, president of the plaintiff firm. “It’s a start of getting back some business that was lost. We work on referrals and do very little advertising, so [we hope that] when people refer Premier Pools, they’re not confused about who’s coming out to their house.”
While the decisions didn’t go the Dodds’ way on every count, the plaintiffs said they got what mattered most. “We asked for money damages, but that was never the point …” said Bryan Rose, an attorney with Dallas-based Rose-Walker, LLP. “The important part was that the jury found Premier Pools Inc. in Dallas, Texas, had a protectable mark in Dallas, Collin, Tarrant and Denton counties, and that PPMC, by licensing another pool company in this area to use a name that they didn’t have a right to use, was infringing on and diluting the mark. And they found that it was willful. So it’s a pretty big win.”
Rose said his clients will seek permanent injunctions in the four counties listed by the jury, as well as attorney’s fees.
But the defendant’s attorney was quick to point out that the jury found no financial damages were caused, and it still isn’t known whether there will be an injunction.
“The jury verdict came back and found no damages, no irreparable harm,” said Leland de la Garza, a partner in Shackelford, Melton & McKinley, LLP, in Dallas. “And so, based upon those findings, there should be no recovery of damages, injunctive relief or attorney’s fees.”
He added that the judge may not grant the Dodds strademark protection.
PPMC began as Premier Pools, a single-office operation in Rancho Cordova, Calif., in 1988. In 2010, it began to license its name and, in 2011, sold the individual offices it owned and became a licensing-only operation, under the name Premier Pools Management Corp.