United States District Court, S.D. Mississippi, Eastern Division
DENNIS PIERCE, INC., et al. PLAINTIFFS
LETITIA PIERCE, et al. DEFENDANTS
MEMORANDUM OPINION AND ORDER
Starrett UNITED STATES DISTRICT JUDGE
reasons below, the Court grants in part and denies in
part Plaintiffs' Motion for Summary Judgment
. The Court denies the motion as to Plaintiffs'
request for a declaratory judgment that they own a valid
trademark registration for the disputed logo. The Court
grants the motion as to their request for a declaratory
judgment that they have not infringed Defendant's
trademark rights, and as to Defendant's counterclaim for
a copyright/trademark case. Plaintiffs Dennis Pierce, Inc.
(“DPI”) and Piercon, Inc. have used a particular
logo for over two decades - a green block “P”
with the shape of a house as the cutout in the
“P.” Defendant Letitia Pierce created the logo.
Plaintiffs are construction companies in the Hattiesburg,
Mississippi area, and Defendant's brother, Dennis Pierce,
was employed by Plaintiffs in the mid-nineties. She had a
variety of duties, but she encouraged her brother to
incorporate a logo into the business's branding.
Defendant eventually left her employment with Plaintiffs. The
parties dispute when Defendant created the logo, and they
dispute the degree of Dennis Pierce's participation in
its creation. Regardless, Plaintiffs used the logo for over
twenty years without any trouble. During this time period,
the logo was also used in Dennis Pierce's real estate
business, Pierce Realty, Inc.
January 2015, Dennis Pierce transferred ownership of Pierce
Realty to his brother, Darian Pierce. Darian Pierce continued
to use the logo after the transfer of ownership. In July
2015, Plaintiffs filed an application with the United States
Patent and Trademark Office (“USPTO”) to
trademark the logo. In April 2016, Plaintiffs received their
USPTO registration of the logo and sent a cease-and-desist
letter to Pierce Realty. When Defendant found out that Dennis
Pierce had registered the logo with the USPTO, she sent her
own cease-and-desist letter to Plaintiffs and demanded that
they cancel the trademark registration. She later filed her
own application for copyright registration with the United
States Copyright Office.
filed this declaratory judgment action. They seek a
declaratory judgment that they are the rightful owners of the
logo, that they are the rightful owners of a valid trademark
registration, and that they did not infringe upon any
trademark rights of Defendant. Defendant filed a counterclaim
for copyright infringement. Plaintiffs filed a Motion for
Summary Judgment , which is ripe for review.
Standard of Review
provides that “[t]he court shall grant summary judgment
if the movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a
matter of law.” Fed.R.Civ.P. 56(a); see also Sierra
Club, Inc. v. Sandy Creek Energy Assocs., L.P., 627 F.3d
134, 138 (5th Cir. 2010). “An issue is material if its
resolution could affect the outcome of the action.”
Sierra Club, Inc., 627 F.3d at 138. “An issue
is ‘genuine' if the evidence is sufficient for a
reasonable jury to return a verdict for the nonmoving
party.” Cuadra v. Houston Indep. Sch. Dist.,
626 F.3d 808, 812 (5th Cir. 2010).
Court is not permitted to make credibility determinations or
weigh the evidence. Deville v. Marcantel, 567 F.3d
156, 164 (5th Cir. 2009). When deciding whether a genuine
fact issue exists, “the court must view the facts and
the inference to be drawn therefrom in the light most
favorable to the nonmoving party.” Sierra Club,
Inc., 627 F.3d at 138. However, “[c]onclusional
allegations and denials, speculation, improbable inferences,
unsubstantiated assertions, and legalistic argumentation do
not adequately substitute for specific facts showing a
genuine issue for trial.” Oliver v. Scott, 276
F.3d 736, 744 (5th Cir. 2002).
Validity of Trademark Registration
the Court will address the parties' arguments concerning
the validity of Plaintiffs' trademark registration.
Plaintiffs seek a declaratory judgment that they are the
lawful owners of a valid trademark registration for the logo.
They argue that registration of the disputed logo creates a
presumption of ownership. In response. ...