Constr Cost Data, et al v. Gordian Grp, et al

IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT

No. 19-20482

CONSTRUCTION COST DATA, L.L.C.; THE JOB ORDER CONTRACT
GROUP, L.L.C.; MANAGED J.O.C. SOLUTIONS, L.L.C.,

Plaintiffs - Appellants Cross-Appellees

v.

THE GORDIAN GROUP, INCORPORATED; R.S. MEANS COMPANY,
L.L.C.,

Defendants - Appellees Cross-Appellants

Appeals from the United States District Court
for the Southern District of Texas
USDC No. 4:16-CV-114

Before DAVIS, GRAVES, and DUNCAN, Circuit Judges.
PER CURIAM:*
Plaintiffs, Construction Cost Data, L.L.C., and Job Order Contracting
Group, L.L.C. (collectively “CCD”), appeal the district court’s judgment in favor
of Defendants, The Gordian Group, Inc., and R.S. Means Company, L.L.C.
(collectively “Gordian”). CCD argues that (1) the district court violated Rule 48,
which requires a unanimous verdict and a polling of the jury upon a party’s

*
Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5
TH
CIR. R. 47.5.4.
United States Court of Appeals
Fifth Circuit
FILED
June 30, 2020

Lyle W. Cayce
Clerk
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request, when it issued its judgment; (2) the district court erred in entering
judgment for Defendants based on the unanimous answer to Jury Question 12,
which related to the Noerr-Pennington affirmative defense, because the
answers to the jury interrogatories were irreconcilable and/or indicated jury
confusion; (3) the district court abused its discretion in excluding evidence at
trial of Defendants’ alleged fraudulent procurement of their trademark and
copyright registrations; and (4) the district court erred in concluding that
Noerr-Pennington immunity was applicable here. Defendants cross-appeal the
district court’s summary-judgment dismissal of their trademark infringement
claim against Plaintiffs. For the reasons set forth below, we conclude that the
parties’ various challenges to the district court’s judgment are without merit.
Therefore, we AFFIRM.
I. BACKGROUND
Job order contracting is a construction procurement method allowing
multiple jobs from a single bid contract. An integral component of job order
contracting is the “unit price book,” which provides all of the relevant preset
prices, including but not limited to labor, material, and equipment costs, for
construction tasks a contractor might be called upon to provide during the
course of the contract. In 2015, CCD introduced a unit price book called the
“Construction Cost Catalogue” into the job order contracting industry.
Gordian contended that Plaintiffs’ Construction Cost Catalogue
infringed on the copyright and trademark of its unit price book, the
“Construction Task Catalog.” Gordian sent cease-and-desist letters to CCD and
a cooperative association working with CCD, asserting that CCD was
improperly using Gordian’s proprietary material and intellectual property
through its Construction Cost Catalogue. As a result of the cease-and-desist
letters, CCD lost contracts and future business opportunities. CCD
subsequently filed suit in state court against Gordian for tortious interference
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with contract, antitrust violations, and business disparagement. Gordian
removed the case to federal court and filed counterclaims against CCD for
copyright and trademark infringement, as well as unfair competition.
1

CCD filed an amended complaint, which Gordian moved to dismiss
under Rule 12(b)(6). Gordian argued that it was immune from any liability
resulting from its cease-and-desist letters pursuant to the Noerr-Pennington
doctrine and that the “sham” exception to the doctrine did not apply because
the letters were not objectively baseless.
2
The magistrate judge issued a report
recommending that Gordian’s motion to dismiss be denied, which the district
court adopted. Gordian later filed a motion for summary judgment, reasserting
that it was entitled to Noerr-Pennington immunity and that therefore
Plaintiffs’ claims should be dismissed. The district court denied the motion.
CCD also filed a motion for partial summary judgment seeking dismissal
of Gordian’s counterclaims of copyright and trademark infringement. The
district court determined that “Construction Task Catalog” was not entitled to
trademark protection because it was a generic term. Consequently, the district
court granted summary judgment in favor of CCD and dismissed Gordian’s

1
Gordian also filed a third-party demand against Benjamin Stack and Mark Powell,
who were alleged to have formed CCD.
2
The Noerr-Pennington doctrine comes from two Supreme Court cases: Eastern
Railroad Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127 (1961), and United
Mine Workers of America v. Pennington, 381 U.S. 657 (1965). “The essence of the doctrine is
that the parties who petition the government [including the courts] for governmental action
favorable to them cannot be prosecuted under the antitrust laws even though their petitions
are motivated by anticompetitive intent.” Video Int’l Prod., Inc. v. Warner-Amex Cable
Commc’n, Inc., 858 F.2d 1075, 1082 (5th Cir. 1988). The doctrine has been expanded to
include more than just antitrust claims, but also state law claims such as tortious
interference with contract. Id. at 1084. It has also been interpreted to cover pre-litigation
conduct such as cease-and-desist letters. Coastal States Mktg., Inc. v. Hunt, 694 F.2d 1358,
1367-68 (5th Cir. 1983). The doctrine is inapplicable, however, if Defendants’ activities were
“objectively baseless in the sense that no reasonable litigant could reasonably expect success
on the merits” and, if so, the baseless activities conceal an attempt to harass or interfere
directly with the business relationships of a competitor. Prof’l Real Estate Investors, Inc. v.
Columbia Pictures Indus., Inc., 508 U.S. 49, 60-61 (1993) (describing “sham” exception).
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trademark infringement claim. As to Gordian’s copyright infringement claim,
however, the district court concluded that there were genuine issues of
material fact for trial and denied summary judgment.
The case then proceeded to trial before a jury. The jury charges were
lengthy, and there were twenty-seven special jury interrogatories. The jury
could not reach a unanimous decision on five of the questions. Although
instructed not to do so, the jury indicated the number of jurors voting “yes” and
the number voting “no” next to the non-unanimous answers. After the district
court read the jury’s answers on the record, the court noted that the verdict
was “not immediately comprehensible” and excused the jury “so the lawyers
[could] debate the verdict form.”
Gordian argued that the case was over because the jury’s unanimous
answer to Question 12 entitled Gordian to Noerr-Pennington immunity from
all of CCD’s claims, and the jury’s unanimous answer to Question 22 required
dismissal of Gordian’s copyright infringement claim against CCD. CCD
asserted that the answer to Question 12 was inconsistent with the answers to
Questions 9, 10, and 11. CCD further requested that the district court give the
jury a charge under Allen v. United States
3
and allow the jury to deliberate
further regarding the non-unanimous answers, but the district court denied
the request. Instead, the district court ordered the parties to submit briefs
regarding how it thereafter should proceed and stated that “if we’ll have the
jury back, let’s do it quickly.”
CCD filed a motion requesting that the jury be recalled to continue
deliberations or that a new trial be ordered under Rule 49. CCD reasserted
that the jury’s response to Question 12 contradicted the responses to
Questions 9-11. CCD further argued that the jury’s award of $2.33 million

3
164 U.S. 492 (1896).
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dollars in damages in favor of CCD and the jury’s responses on the whole
showed that the jury believed Gordian unjustifiably harmed CCD and that
Gordian should be ordered to pay damages as a result. Gordian reasserted that
the district court should enter judgment in accordance with the jury’s
unanimous answer to Question 12 calling for application of Noerr-Pennington
immunity and its unanimous answer to Question 22 in which the jury
determined that Gordian failed to prove copyright infringement.
After hearing argument on CCD’s motion, the district court agreed with
Gordian and entered a final judgment in favor of Gordian on CCD’s claims of
tortious interference with contract, antitrust violations, and business
disparagement, and in favor of CCD on Gordian’s counterclaim of copyright
infringement. The district court also issued a lengthy memorandum and order
denying CCD’s Rule 49 motion for continued jury deliberations or new trial.

CCD then filed a Rule 59 motion for new trial or alternatively motion to
modify judgment. CCD re-urged the grounds for a new trial set forth in its
Rule 49 motion. Additionally, CCD argued that under Rule 48, which requires
a unanimous verdict unless the parties stipulate otherwise, the district court
had only two options in the face of the non-unanimous answers returned by
the jury: recall the jury and encourage further deliberations or declare a
mistrial. The district court denied CCD’s Rule 59 motion, noting that it
previously addressed many of CCD’s arguments in its decision denying CCD’s
Rule 49 motion. CCD and Gordian filed timely notices of appeal.
II. DISCUSSION
A. Rule 48
On appeal, CCD reasserts its argument that the district court violated
Rule 48 of the Federal Rules of Civil Procedure when it issued its judgment.
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Under Rule 48, “[u]nless the parties stipulate otherwise, the verdict must be
unanimous . . . .”
4
The rule further provides:
After a verdict is returned but before the jury is discharged, the
court must on a party’s request, or may on its own, poll the jurors
individually. If the poll reveals a lack of unanimity or lack of assent
by the number of jurors that the parties stipulated to, the court
may direct the jury to deliberate further or may order a new trial.
5

CCD argues that the district court’s judgment violates the above provisions of
Rule 48 because the verdict was not unanimous and because it was “deprived
of the right to conduct a jury poll.” It further contends that in violating Rule 48,
the district court also violated its Seventh Amendment right to a jury trial, and
that this error is per se reversible.
1. Unanimity Requirement
CCD is correct that Rule 48 requires a unanimous verdict. Under this
court’s precedent, however, “a jury’s failure to reach a verdict on every
interrogatory does not prevent a court from accepting the properly-answered
interrogatories.”
6
Specifically, “[p]roperly-answered interrogatories may
support a verdict on the issues to which they respond. This is true even if other
claims in the case remain unsettled.”
7

Other circuits have noted the various options available to a district court
when a jury fails to agree unanimously on all interrogatory answers.
8
These
options include (1) resubmitting the issues to the jury for further deliberation
in the hope of obtaining unanimous answers, (2) asking the parties if they
would be willing to forego the requirement of unanimity and accept a majority

4
FED. R. CIV. P. 48(b).
5
FED. R. CIV. P. 48(c).
6
Bridges v. Chemrex Specialty Coatings, Inc., 704 F.2d 175, 180 (5th Cir. 1983)
(citations omitted).
7
Id.
8
Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1580-81 (Fed. Cir. 1995).
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verdict, (3) entering judgment on the basis of the unanimous verdicts if they
are dispositive of the case, (4) declaring the entire case a mistrial and ordering
the case reheard in its entirety, and (5) ordering a partial retrial only as to
those issues which were not unanimously agreed upon by the jury.
9

In this matter, the district court entered judgment on the basis of the
jury’s unanimous answer to Question 12, which it held established that the
“sham” exception to Noerr-Pennington immunity did not apply and
consequently required dismissal of all of CCD’s claims against Gordian. The
district court also entered judgment on the basis of the jury’s unanimous
answer to Question 22, which established that Gordian did not meet its burden
of proof on its claim of copyright infringement and consequently required
dismissal of Gordian’s claim against CCD. Because the jury’s unanimous
answers to Questions 12 and 22 were dispositive of all claims in this matter,
the district court rightly entered judgment in reliance on those answers.
10

Therefore, CCD’s argument that the district court violated Rule 48 in entering
judgment because not all of the jury’s answers were unanimous is without
merit.
2. Polling of the Jury
CCD argues that the district court also violated Rule 48 by denying CCD
an opportunity to poll the jury. CCD maintains that, contrary to Gordian’s
contention, it did not waive its right to poll the jury, but that such right was
taken away “when the court secretly discharged the jury.”
As reflected above, Rule 48 specifies that a party may request the district
court to poll the jury “[a]fter a verdict is returned but before the jury is
discharged,” and that if a party makes such request within that time period,

9
Id. at 1581.
10
See id.; Bridges, 704 F.2d at 180.
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“the court must” poll the jurors individually. The trial transcript reveals that
after the jury returned its verdict and the district court read the verdict on the
record, the district court asked the forewoman if its reading was correct, and
the forewoman answered affirmatively. Immediately thereafter, the district
court stated: “I think what we need to do right now is excuse the jury so the
lawyers can debate the verdict form.” After the jury exited, the district court
said: “I think it’s going to take us a long time to figure this out. Some of the
questions were not answered unanimously. I would propose that we send the
jury home today with the possibility of recalling them. But what are your
thoughts on it?”
CCD agreed with the court’s suggestion. Gordian asserted that because
the jury answered Question 12 unanimously, it was immune from all of CCD’s
claims under the Noerr-Pennington doctrine. The district court responded,
“That’s what we got to figure out. This verdict is not immediately
comprehensible.” The district court then stated: “Normally at the end of a trial,
the Court, I, shake hands with the jury, and we offer them a chance to take a
photo, group photo. I’m inclined to think I should do that, and then I’ll tell them
we may need them back another day.” Neither party objected.
When the district court returned, the court stated that it did not know
“quite what to do with [the verdict]” and that it did “think there is some
inconsistency.” Gordian reasserted that that the unanimous answer to
Question 12 meant Gordian was immune from all of CCD’s claims and that the
unanimous answer to Question 22 “found against [Gordian] on copyright
infringement.” Gordian posited that “the case is therefore over.” CCD
disagreed, contending that the jury should continue to deliberate the non-
unanimous answers, and that, in any event, the non-unanimous answers to
Questions 9-11 were inconsistent with the unanimous answer to Question 12.
The district court denied CCD’s request to give the jury an Allen charge, and
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it requested briefing on how to proceed. The court stated: “If we’ll have the jury
back, let’s do it quickly.”
CCD argues that based on the above, it reasonably understood that after
briefing was submitted, the jury would be re-called, and trial would resume to
determine if a complete and unanimous verdict could be obtained. It asserts
that “[t]he verdict was not final and a request to poll the jury was premature.”
CCD is mistaken that a request to poll the jury would have been
premature. Rule 48 specifically denotes the time period for requesting a poll:
“[a]fter a verdict is returned but before the jury is discharged.”
11
In this case,
a verdict was clearly returned and read aloud by the district court, with the
forewoman confirming that the district court read the verdict correctly. CCD
could have requested a poll of the jury starting at that point.
CCD’s argument that the district court “deprived” it of its “opportunity
to request a jury poll” is also without merit. CCD had the opportunity to
request a poll any time after the verdict was read. Moreover, the district court
did not “secretly” discharge the jury. Although the district court “excused” the
jury after reading the verdict, the district court solicited the parties’ consent to
proceed with what it would normally do “at the end of a trial” and that it would
inform the jurors that they “may” need to come back another day. CCD did not
object to this procedure. The district court’s actions and statements should
have put CCD on notice that the jury was potentially being discharged. Under
these circumstances, CCD’s argument that it was denied the opportunity to
poll the jury in violation of Rule 48 is without merit.
B. District Court’s Reliance on Answer to Jury Question 12
CCD reasserts its argument that the jury’s interrogatory answers were
irreconcilable and/or indicated jury confusion such that the district court erred

11
FED. R. CIV. P. 48(c).
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in entering judgment for Defendants based on the unanimous answer to
Question 12, which related to Noerr-Pennington immunity. Specifically, CCD
asserts that Jury Questions 9-12 substantively address the same factual
determination, i.e., whether there was any merit to Gordian’s allegations of
infringement as stated in its cease-and-desist letters. CCD submits that the
jury’s responses to Questions 9, 10, and 11 directly contradict the answer to
Question 12; therefore, the judgment should be reversed and the conflicting
issues retried. As explained below, we disagree.
1. Standard of Review
This court “grant[s] considerable latitude to the trial court when
interpreting special interrogatories since it is in a better position to analyze
the jury’s intention[s] and thus is charged, in the first instance, with the
obligation of giving effect to those intentions in light of the surrounding
circumstances.”
12
Therefore, we review the “trial court’s treatment of special
interrogatories only for abuse of discretion.”
13
Similarly, we review the trial
court’s denial of a motion for new trial only for abuse of discretion.
14

2. Jury Questions 9-12
Jury Questions 9-11 were included under the section of the jury packet
entitled “Defenses,” and the subsection entitled “Legal Justification.” The
questions asked whether Defendants had a “good-faith belief that they had a
valid basis to send cease-and-desist letters regarding their copyrighted
material.” Question 12 was included in the jury packet under the subsection
entitled “Noerr-Pennington Doctrine” and had two parts. The first part asked
whether Gordian’s pre-litigation correspondence was “objectively baseless in

12
Carr v. Wal-Mart Stores, Inc., 312 F.3d 667, 670 (5th Cir. 2002) (internal quotation
marks and citation omitted).
13
Id. (citation omitted).
14
Id.
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the sense that no reasonable litigant could reasonably expect success on the
merits.” The second part of Question 12 asked: “If the activity of the
[Defendants] was objectively baseless, was the subjective intent merely to
interfere with the CCD parties?”
The court’s charges immediately preceding Question 12 specifically
described the circumstances under which a lawsuit was “objectively
baseless”—“no reasonable litigant could realistically expect to win.” The
charges instructed the jurors that if they found Gordian’s lawsuit “not
objectively baseless,” then they did not need to consider the second part of
Question 12, whether the lawsuit was “an attempt to harass or interfere with
the business relationships of the Plaintiffs.”
The jury unanimously answered “no” to the first part of Question 12,
which asked: “Was the [Defendants’] pre-litigation correspondence objectively
baseless in the sense that no reasonable litigant could reasonably expect
success on the merits?” The jury put a slash next to the answer to the second
part of Question 12, indicating that, as instructed, it did not consider whether
the Defendants’ “subjective intent [was] merely to interfere with the CCD
Parties” because it found that Defendants’ lawsuit was not objectively baseless.
CCD argues that Questions 9-11, which asked whether Defendants had
“a good-faith belief that they had a valid basis to send cease-and-desist letters
regarding their copyrighted material,” presented a similar factual question as
the first part of Question 12, which asked whether Defendants’ correspondence
was “objectively baseless in the sense that no reasonable litigant could
reasonably expect success on the merits.” Because the jury answered, by a vote
of 11 to 1, “no” to Questions 9-11, and unanimously answered “no” to
Question 12, CCD contends that the district court’s judgment must be reversed
because it is based on contradictory factual findings.
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CCD is correct that if answers to jury interrogatories reflect inconsistent
fact findings relating to a claim, the district court may not enter judgment on
that claim and instead must order a new trial.
15
This rule, however, applies
only when the jury’s inconsistent answers are unanimous.
16
Because the
answers to Questions 9-11 were not unanimous, they cannot be considered, in
the first instance, as jury findings. But we conclude that even if the jury’s
answers to Questions 9-11 were unanimous, there would be no inconsistency
with the answer to Question 12. CCD submits that Questions 9-11 essentially
asked the jury whether Defendants “believed they had any valid basis” for
sending the cease-and-desist letters threatening litigation for infringement.
CCD contends that when 11 jurors answered “no” to Questions 9-11, the jurors
found that Defendants “knew their infringement claims weren’t valid.” CCD
argues that such finding is inconsistent with the jury’s unanimous finding in
Question 12 that the cease-and-desist letters were not objectively baseless.
In Professional Real Estate Investors, Inc. v. Columbia Pictures
Industries, Inc., the case in which the Supreme Court set forth the elements
needed to establish the “sham” exception to the Noerr-Pennington doctrine, the
petitioner similarly argued that the respondent was not entitled to Noerr-
Pennington immunity because the respondent “did not honestly believe that
the infringement claim was meritorious.”
17
The Court described the question
presented by the case as: “whether litigation may be sham merely because a
subjective expectation of success does not motivate the litigant.”
18
The Court

15
See Guidry v. Kem Manufacturing, Co., 598 F.2d 402, 408 (5th Cir. 1979).
16
See FED. R. CIV. P. 48(b) (“Unless the parties stipulate otherwise, the verdict must
be unanimous . . . .”).
17
508 U.S. 49, 54 (1993) (internal quotation marks and citation omitted).
18
Id. at 57.
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“answered this question in the negative and h[e]ld that an objectively
reasonable effort to litigate cannot be sham regardless of subjective intent.”
19

The Court’s decision in Professional Real Estate Investors makes clear
that even if a party does not believe its infringement claim has merit, he may
still be entitled to Noerr-Pennington immunity if the claim has objective
merit.
20
We disagree that the jury’s 11-1 answer that Defendants did not “have
a good-faith belief that they had a valid basis to send cease-and-desist letters
regarding their copyrighted material” indicates jury confusion or is
inconsistent with the jury’s unanimous finding that the letters were not
“objectively baseless.” The Court in Professional Real Estate Investors
considered such a possibility and held that a party’s subjective expectation,
intent, and/or motivation regarding its infringement claim were not relevant if
there was proof of the “objective legal reasonableness of the litigation.”
21

Based on the foregoing, we conclude that it was not an abuse of discretion
for the district court to rely on the unanimous answer to Question 12 and
render judgment for Gordian based on the jury’s unanimous finding that the
cease-and-desist letters were not objectively baseless.
22

C. Alleged Evidence of Fraud
CCD argues that the district court abused its discretion when it excluded
evidence at trial regarding Gordian’s procurement of trademark and copyright
registrations. CCD asserts that Gordian lied in its applications and obtained

19
Id. (footnote omitted).
20
Id. at 60.
21
Id. at 66.
22
At oral argument, CCD raised for the first time that the jury’s unanimous answer
to Question 8, in which the jury determined that Defendants committed business
disparagement, precluded application of Noerr-Pennington immunity. We do not generally
consider points raised for the first time at oral argument. Bartel v. Alcoa S.S. Co., Inc., 805
F.3d 169, 174 (5th Cir. 2015).
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the registrations through fraud. It further contends that the exclusion of this
evidence prevented it from showing that Gordian’s litigation was a “sham.”
CCD contends that when Gordian applied for a trademark registration,
it stated in its application that it previously held a trademark for Construction
Task Catalog on the Principal Register, when in fact the mark was on the
Supplemental Register. As Gordian argues, Gordian’s registration of the
Construction Task Catalog on the Supplemental Register was a matter of
public record. Gordian states that this was an “unintentional error” that an
examiner with the Trademark Office would easily check as all trademark
registrations are public record.
In order to prove fraud on the Trademark Office, CCD would need to
show that the Trademark Office reasonably relied on a false representation of
material fact.
23
CCD would be unable to do so here because it would not be
reasonable for the Trademark Office to rely on the error in Gordian’s
application when the public record would clearly show that its trademark was
previously on the Supplemental Register. Moreover, as Gordian points out,
CCD did not call any witnesses from the Trademark Office, or any experts in
the field, who could testify that such reliance would be reasonable. Allowing
introduction of this evidence and argument that such error constituted fraud
would, as the district court determined, be highly prejudicial to Gordian under
a Rule 403
24
balancing test.
The same is true with respect to Gordian’s applications for copyright
registration. CCD contends that Gordian lied in its second copyright

23
See Tex. Pig Stands, Inc. v. Hard Rock Café Int’l, Inc., 951 F.2d 684, 693 n.14 (5th
Cir. 1992).
24
FED. R. EVID. R. 403 (“The court may exclude relevant evidence if its probative value
is substantially outweighed by a danger of one or more of the following: unfair prejudice,
confusing the issues, misleading the jury, undue delay, wasting time, or needlessly
presenting cumulative evidence.”).
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application that its first application had been approved and that only “minor”
portions of its data were provided by a third party. Again, as Gordian alleges,
CCD did not have an expert on this issue and it did not seek testimony from
the examiners involved from the Copyright Office to testify regarding any
reasonable reliance on such alleged “lies.” As the district court determined,
raising the issue of fraud under these circumstances would be highly
prejudicial to Gordian. In sum, the district court did not abuse its discretion in
excluding such evidence.
D. Applicability of Noerr-Pennington
CCD argues that Noerr-Pennington immunity in this matter was
misapplied and is not dispositive. Specifically, CCD asserts that the district
court erroneously focused on whether the “sham” exception to the doctrine was
established without first deciding whether the doctrine should have even be en
applied. It contends that “[b]ecause misrepresentations and false statements
are not entitled to First Amendment protections, they cannot be immunized
under Noerr-Pennington whether or not any exception is applicable.”
As discussed above, however, the district court did not abuse its
discretion in excluding the evidence of Gordian’s alleged fraudulent
procurement of trademark and copyright registrations. CCD argues that,
nevertheless, the cease-and-desist letters were “false, or at best, misleading”
because the jury unanimously found no copyright infringement and the district
court found no trademark infringement. But, these findings do not establish
that Gordian lied or made misrepresentations in the cease-and-desist letters;
rather, they show that Gordian did not prove the elements of trademark and
copyright infringement. The same is true of the jury’s favorable findings as to
CCD’s affirmative claims. Those findings showed that CCD established the
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elements of its affirmative claims,
25
and not that Gordian lied or made
misrepresentations in its letters.
In sum, we conclude that the district court properly applied the Noerr-
Pennington doctrine in this matter, and that CCD’s challenges to the
application of the doctrine are without merit.
E. Summary Judgment Ruling
On cross-appeal, Defendants argue that the district court erred in
dismissing on summary judgment their claim against CCD for trademark
infringement. We review a district court’s grant of summary judgment de
novo.
26
Summary judgment is appropriate “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.”
27

The district court found, and CCD argues on appeal, that the
“Construction Task Catalog” mark is generic and thus not entitled to
trademark protection. Gordian contends that the mark is descriptive, and that
there was a genuine issue of material fact as to whether it was entitled to
trademark protection.
To be protectable, a mark must be “distinctive” in one of two ways—
either “inherently” or “by achieving secondary meaning in the mind of the
public.”
28
A mark is inherently distinctive “if its intrinsic nature serves to

25
Although CCD argued at oral argument that the jury found that Gordian made a
false statement in its answer to Question 8, we do not review arguments raised for the first
time at oral argument. In any event, CCD is unable to show that the district court plainly
erred.
26
Uptown Grill, L.L.C. v. Camellia Grill Holdings, Inc., 920 F.3d 243, 247 (5th Cir.
2019).
27
FED. R. CIV. P. 56(a).
Because the evidence of the Defendants’ “alleged fraud” was properly excluded, we
need not decide whether misrepresentations and false statements can be immunized under
the Noerr-Pennington doctrine.
28
Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).
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No. 19-20482
17
identify a particular source,”
29
and acquires distinctiveness if, “in the minds of
the public, the primary significance of a mark is to identify the source of the
product rather than the product itself.”
30

Trademarks fall into five “categories of generally increasing
distinctiveness”:
31
(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and
(5) fanciful.
32
Suggestive, arbitrary, and fanciful marks are inherently
distinctive.
33
Generic marks cannot be distinctive, and descriptive marks are
distinctive only if they have acquired a secondary meaning.
34

Registration of a mark with the Patent and Trademark Office
“constitutes prima facie evidence that the mark is valid,”
35
but the
presumption “may be rebutted by establishing that the mark is not inherently
distinctive.”
36
There was no dispute on summary judgment that the
“Construction Task Catalog” mark is not inherently distinctive.
37
So, CCD
overcame the presumption of validity that accompanied Gordian’s registration
of the mark.
“A generic term is one which identifies a genus or class of things or
services, of which the particular item in question is merely a member.”
38

29
Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000) (quotations
omitted).
30
Id.
31
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
32
Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527, 537 (5th Cir.
2015).
33
Id.
34
Id.
35
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237 (5th Cir. 2010).
36
Id.; see also Vison Ctr. v. Optiks, Inc., 596 F.2d 111, 119 (5th Cir. 1979) (“this
presumption is rebuttable and may be overcome by establishing the generic or descriptive
nature of the mark.”).
37
On summary judgment, CCD argued the mark was generic, and Gordian argued it
was descriptive. Neither category is “inherently distinctive.”
38
Union Nat. Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex.,
909 F.2d 839, 845 (5th Cir. 1990).
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No. 19-20482
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Essentially, a mark is generic if it describes “what the product or service is, not
its source or where it came from.”
39
In contrast, a descriptive mark is one that
“identifies a characteristic or quality of an article or service, such as its color,
odor, function, dimensions, or ingredients.”
40

The district court did not err in dismissing on summary judgment
Gordian’s trademark infringement claim based on its determination that
“Construction Task Catalog” is a generic term not entitled to trademark
protection. The “Construction Task Catalog” mark is generic because it is
exactly that: a catalog of construction tasks.
41
Gordian argues the actual name
of the product is a “job order contracting unit price book.” But, as the district
court noted, a term need not be a product’s only possible name to be generic.
42

What’s more, the district court’s reasoning was supported by record evidence
that “job order contracting unit price books” “are often referred to as
construction catalogs.”
Because the “Construction Task Catalog” mark simply describes the
nature of the product in common industry terms, the district court did not err
in classifying it as “generic.” And because a generic term can never be
trademarked, summary judgment dismissing Gordian’s trademark
infringement claim was appropriate.
III.
CONCLUSION
Based on the foregoing, the district court’s judgment is AFFIRMED.

39
McCarthy on Trademarks and Unfair Competition § 12:1 (4th ed. 2010).
40
Amazing Spaces, 608 F.3d at 241 (citation omitted).
41
See, e.g., Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1035,
1041 (D.C. Cir. 1989) (“It is difficult to imagine another term of reasonable conciseness and
clarity by which the public refers to former members of the armed forces who have lost their
vision.”).
42
See, e.g., McCarthy § 12:9 (“There is usually no one, single and exclusive generic
name for a product. Any product may have many generic designations”); Blinded Veterans
Ass’n, 872 F.2d at 1041 (“A term need not be the sole designation of an article in order to be
generic”).
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