Maida's Belts and Buckles, Inc. v. Lasting Designs, LLC

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
MAIDA' S BELTS AND BUCKLES, INC., 	§
§
~~~ 	§
VS. 	§ 	CIVIL ACTION NO. 4:22-cv-577
§
LASTING DESIGNS, LLC d/b/a MAIDA' S, 	§
§
Defendant. 	§
§
§
ORDER
Pending before the Court is Defendant Lasting Designs, LLC d/b/a Maida's ("Defendant"
or "Maida's Boots") Motion for Summary Judgment. (Doc. No. 33). Plaintiff Maida's Belts and
Buckles, Inc. ("Plaintiff'' or "Maida's Belts") responded in opposition, (Doc. No. 35), to which
Defendant replied, (Doc. No. 36). 1 After reviewing the pleadings, the applicable law, and the
summary-judgment evidence, this Court GRANTS IN PART and DENIES IN PART the Motion
for the following reasons.
I. 	BACKGROUND
This is a trademark infringement and unfair competition dispute involving numerous
members of Houston's boot-and-belt-making Maida family. The Maida family patriarch, John
Laureto Maida, immigrated from Sicily, Italy to Houston, Texas sometime in the late 1800s. (Jason
C. Maida Deel., Doc. No. 35-1 at 1; Doc. No. 35-30 at 3). In 1901 , John Laureto Maida started his
1 This case involves numerous members of the Maida famil y. Plaintiff and Defendant are both entities owned and
operated by members of the Maida famil y, and both businesses have " Maida 's" in their name. To aid in di sting ui shing
the two entities and the Maida family members associated with each, the Court will refer at times to Plaintiff as
"Maida's Belts," and to Defendant as " Maida's Boots." These short names are derived from the primary type of
products and services on which each party claims its business is focused. The use of these names is in no way a
comment from the Court regarding the merits of either party 's claims or arguments . It is simply a means to aid in
clarity and to consistently distinguish the parties in this Order.
United States District Court
Southern District of Texas
ENTERED
March 11, 2026
Nathan Ochsner, Clerk
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boot and shoe making career when he founded Maida & Cuccia in downtown Houston. (Doc. No.
35-30 at 3). He later founded the Houston Shoe Hospital, which specialized in shoe repair, and
would come to influence his family 's businesses for generations. (Salvador J. Maida, Jr. Deel. ,
Doc. No. 33-4 at 2). That business flourished and currently has many locations across Houston. It
is not in volved in this dispute.
John Laureto Maida's son, Salvador J. Maida, Sr., took over running the Houston Shoe
Hospital, and he ran it after his father 's death. (Jason C. Maida Deel., Doc. No. 35-1 at l ). In
addition to repairing shoes, Salvador J. Maida, Sr. also made hand-crafted boots and shoes,
including boots for celebrities like Gene Autry. (Doc. No. 33-6 at 2). To ensure the next generation
could inherit the Maida legacy, Salvador J. Maida, Sr. trained both of his sons, John L. Maida and
Salvador J. Maida, Jr. , in the art of boot making and shoe repair while they worked alongside him
at the Houston Shoe Hospital. (Id.).
A. The Defendant Maida's (Maida's Boots)
In 1983, Salvador J. Maida, Jr. left the Houston Shoe Hospital to start his own company,
which was incorporated as Maida's Black Jack Boot Co ., Inc. ("Maida's Black Jack"), and opened
a store named "Maida's." (Salvador J. Maida, Jr. Deel., Doc. No. 33-4 at 3). That store was first
located in the Highland Village area of Houston and later relocated further west on Westheimer
Road. (Id.). At his Maida's store, Salvador J. Maida, Jr. "fitted customers for hand-crafted boots
and shoes, and sold accessories such as belts, purses, handbags, pocketbooks, wallets, ammunition
bags," and other items made from leftover material from the boot-making process. (Id.) .
In December 2009, after roughly 26 years in business, Maida's Black Jack filed for
bankruptcy after it was unable to pay a personal injury claim made against the business. (Id.). Its
owner, Salvador J. Maida, Jr. , also personally filed for bankruptcy. (Id.) . On June 21, 2010, the
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Bankruptcy Court approved the Chapter 7 trustee 's sale of Maida's Black Jack's property, free and
clear of any liens, to Laura Plympton. The sale included all inventory at the shop and "[t]he use of
the debtor's name, business telephone number, and any customer list." (Doc. No. 33-10 at 2-3)
(Bankruptcy Order). Now known as Laura Maida Regan, Laura Plympton is Salvador J. Maida,
Jr. 's daughter. (Laura Maida Regan Deel., Doc. No. 33-19).
In the months after the bankruptcy was finalized, Laura Maida Regan worked with her
family to get the family 's boot business up and running again, "as [their] family had planned."
(Id.). At some point before August 2010, the family organized Lasting Designs, LLC, of which
Regan's mother was the President. (Salvador J. Maida, Jr. Deel., Doc. No. 33-4 at 5). On August
11 , 2010, Lasting Designs, LLC filed a d/b/a record with Harris County, Texas stating that Lasting
Designs, LLC would conduct business under the name "Maida's." (Id.) . Laura Maida Regan also
declared that she "quickly transferred the property [she] received in the [Bankruptcy Order] to
Lasting Designs, LLC, d/b/a Maida's." (Laura Maida Regan Deel., Doc. No. 33-19). There is no
evidence of this transfer (beyond her declaration). She recalled that "written documentation of this
transfer" existed, "but [she has] not been able to locate it." (Id.).
Since that time, Salvador J. Maida, Jr. 's branch of the Maida family has been doing business
as "Maida's," specializing in custom boots and shoes while also offering for sale other accessories
like belts, wallets, and handbags. (Salvador J. Maida, Jr. Deel., Doc. No. 33 -4 at 8) .
B. The Plaintiff Maida's (Maida's Belts)
Just as Salvador J. Maida, Jr.'s branch of the family broke off from the Houston Shoe
Hospital business, so too did another branch of the Maida family. While they were growing up ,
John L. Maida worked alongside his brother (Salvador J. Maida, Jr.) at the Houston Shoe Hospital.
(Jason C. Maida Deel., Doc. No. 35-1 at 1). John's son, Jason C. Maida, also worked for the
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Houston Shoe Hospital while he was in high school, where he learned the business of shoe repair
from his grandfather and father. (Id.). During this time, Jason Maida developed a passion for
making belts and collecting rare sterling silver buckles, which was an interest and specialty that
was somewhat distinct from his boot and shoe making heritage. (Id. at 1- 2).
In November 1990, when he was nineteen years old, Jason Maida, with his mother and
father, started a belt and buckle business called "Maida's Belts and Buckles." (Id. at 2). His first
store was inside one of the Houston Shoe Hospital locations, and his grandfather (Salvador J.
Maida, Sr.) guided him through the early years of his business. (Id.). He now has a separate store
on Westheimer Drive in Houston less than two and a half miles from Defendant's "Maida's" store.
(Salvador J. Maida, Jr. Deel. , Doc. No. 33-4 at 7). Maida's Belts and Buckles has been operating
in Houston since it began in 1990. See (Jason C. Maida Deel., Doc. No. 35-1 at 3). Jason Maida's
business does not manufacture or sell boots, shoes, or footwear. (Id. at 5).
C. The Alleged Infringing Activity
Based upon the current record, the parties appear to have operated their respective
businesses both using the Maida name for some time without conflict. As the saying goes, however,
all good things must come to an end. In 2015 , Salvador Maida III (cousin of Jason Maida, who is
affiliated with Maida's Belts; and son of Salvador J. Maida, Jr. , who is affiliated with Maida's
Boots) asked if he could make an order of belts for Maida's Belts and Buckles. (Id. at 7) . Jason
Maida agreed to this request because Salvador Maida III was in need of work and Maida's Belts
needed the belts made. See (Id.) . Thus, the son of the Maida's Boots family began work for his
cousin and Maida's Belts. (See (Id.) . After this exchange, Jason Maida claims that Salvador Maida
III failed to complete that order of belts for Maida's Belts and Buckles. (/d.). Instead, Jason Maida
claims he discovered that Maida's Boots was selling belts in its store that were identical to those
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that Maida's Belts sold at its store. (Id.). Moreover, Maida's Belts claims that by 2016, there was
"confusion in the marketplace" because Maida's Boots had begun selling belts and buckles at its
Maida's store. (Doc. No. 33-18 at 3) (Plaintiff's Interrogatory Responses).
This confusion allegedly continued to become more evident. Some of Maida's Belts'
customers placed orders for custom belts and buckles, which Maida's Belts fulfilled, but when it
came time for payment, the customers presented gift certificates from Maida's Boots' store to pay
for the merchandise they had ordered. (Jason C. Maida Deel., Doc. No. 35-1 at 7). For example,
in March 2019, one customer ordered two custom belts and two buckles from Maida's Belts. (Doc.
No. 35-31 at 3). When the order was complete and the customer arrived to pay for the item, they
presented a $2,000 gift certificate issued by Maida's Boots to pay for the items. (Id. at 2). This
situation happened at least one more time, although the timeframe of when it occurred is not clear.
(Doc. No. 35-32 at 2). Furthermore, multiple customers brought products to Maida's Belts for
repair that were manufactured and sold by Maida's Boots. (Jason C. Maida Deel., Doc. No. 35-1
at 7). Maida's Belts admits that it accepted "Maida's" gift certificates from customers for payment
even though Maida's Belts knew it had not issued the gift certificate. Maida's Belts understood
that the certificates were issued by Maida's Boots, instead. (Doc. No. 33-9 at 3) (Defendant's
Requests for Admission).
To address these concerns about confusion, Jason Maida, owner of Maida's Belts and
Buckles, spoke with a lawyer in 2016 about protecting his business name and trademarks. (Jason
C. Maida Deel., Doc. No. 35-1 at 5). He then filed a trademark application for the name "Maida's"
in association with the products and services he provided under that mark. (Id.). On December 5,
2017, the United States Patent and Trademark Office ("USPTO") issued Maida's Belts two
trademarks: Trademark Registration Nos. 	5,348,998 	and 5,348,999. 	(Id.). 	Registration No.
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5,348,998 depicts the Maida name in a possessive form in standard characters. (Doc. No. 35-24 at
2) . Registration No. 5,348,999 depicts the Maida name in possessive form in a stylized script font.
JMAIDA'SI
(Doc. No. 35-24 at 2) (Registration No. 5,348,998).
(Doc. No. 35-25 at 2) (Registration No. 5,348,999).
Each mark was approved and issued for the following six classes of goods:
1. Int. Class 14 : boxes of precious metal; cuff links; gemstone jewelry; jewelry;
key chains as jewelry; slides for bolo ties;
2. Int. Class 16: money clips;
3. Int. Class 25: belts; hat bands;
4. Int. Class 26: belt buckles; belt clips;
5. Int. Class 3 5: retail store services featuring knives, clothing belts, belt buckles,
cuff links, jewelry
6. Int. Class 40 : custom manufacture of clothing belts, belt buckles, cuff links,
money clips, jewelry.
(Doc. No. 35-24 at 2; Doc. No. 35-25 at 2) . Jason Maida did not include boots, shoes, footwear, or
repair of boots and shoes in his application, as his goal with filing was to protect his craft of custom
belt and buckle manufacturing. (Jason C. Maida Deel., Doc. No. 35-1 at 5).
On December 30, 2021 , Maida's Boots filed a Petition for Cancellation of Maida's federal
trademark registrations in the USPTO. (Doc. No. 28-1). Shortly thereafter, Maid a' s Belts filed this
lawsuit against Maida's Boots alleging claims for federal trademark infringement under the
Lanham Act, 	false 	designation of origin under the Lanham Act, common 	law trademark
infringement and unfair competition, and unjust enrichment. (Doc. No. 1 at 9-13). Maida's Belts
also seeks injunctive relief. (Id.) . In its Answer, Maida's Boots brought three counterclaims against
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Maida's Belts: declaratory judgment of trademark fair use, declaratory judgment of trademark
registration invalidity, and unfair competition under the Lanham Act. (Doc. No. 8 at 20-26). That
Cancellation proceeding was stayed by the filing of this lawsuit and remains stayed pending the
outcome here. (Doc. No. 33 at 6).
Maida's Boots filed its Motion for Summary Judgment on all ofMaida 's Belts' claims, and
that Motion is now ripe for resolution.
II. 	LEGAL STANDARD
Summary judgment is warranted " 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). "The movant bears the burden of identifying those portions of the record it believes
demonstrate the absence of a genuine issue of material fact." Triple Tee Golf, Inc. v. Nike, In c., 485
F.3d 253 , 261 (5th Cir. 2007) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-25 (1986)).
Once a movant submits a properly supported motion, the burden shifts to the non-movant
to show that the court should not grant the motion. Celotex, 477 U.S. at 321-25. The non-movant
then must provide specific facts showing that there is a genuine dispute. Id. at 324; Matsushita
Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587 (1986). A dispute about a material fact
is genuine if "the evidence is such that a reasonable jury could return a verdict for the nonmoving
party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The court must draw all
reasonable inferences in the light most favorable to the nonmoving party in deciding a summary
judgment motion. Id. at 255. The key question on summary judgment is whether there is evidence
raising an issue of material fact upon which a hypothetical, reasonable factfinder could find in
favor of the nonmoving party. Id. at 248 . It is the responsibility of the parties to specifically point
the Court to the pertinent evidence, and its location, in the record that the party thinks are relevant.
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Malacara v. Garber, 353 F.3d 393,405 (5th Cir. 2003). It is not the duty of the Court to search the
record for evidence that might establish an issue of material fact. Id.
III. 	ANALYSIS
Maida's Boots (Defendant) moves the Court to grant summary judgment in its favor on
each ofMaida's Belts' claims: Trademark Infringement of Registered Maida's Marks in violation
of Section 32( 1) of the Lanham Act (Count I); False Designation of Origin in violation of Section
43(a) of the Lanham Act (Count II); Common Law Trademark Infringement (Count III); and
Unfair Competition (Count IV) under Texas law; and Unjust Enrichment (Count V). Maida's Boots
also moves on its affirmative defense of laches and its counterclaim for Declaratory Judgment of
Trademark Registration Invalidity. The Court will address each in turn.
A. Plaintiff's Trademark Infringement and Unfair Competition Claims (Counts I, II,
III, IV)
As a preliminary matter, Maida's Belts alleges trademark infringement in violation of
sections 32(1) and 43(a) of the Lanham Act, which are codified at 15 U.S.C. § 1114(1) and
15 U.S.C. § 1125(a), respectively. Section 32(1) creates a cause of action for infringement of
registered marks; Section 43(a) creates a cause of action for infringement of unregistered marks.
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225,236 n.8 (5th Cir. 2010) ("The Lanham
Act provides separate causes of action for infringement of a registered mark and an unregistered
mark."). The key difference between these causes of action is that only an owner or a true assignee
of a mark has statutory standing to bring a claim under section 32(1). Rex Real Est. L L.P v. Rex
Real Est. Exch., Inc., 80 F.4th 607, 616 (5th Cir. 2023). This is because section 32(1) protects
registered marks, and only the owner of a mark may apply for registration. Id.
On the other hand, section 43(a) does not require that the plaintiff own the trademark at
issue. Id. at 617. Accordingly, any challenge to Maida's Belts' ownership of the marks applies only
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to Maida's Belts' infringement claim under section 32(1). Id. Otherwise, the same two elements
and analysis apply to both causes of action. Id. at 616. To prevail on its section 32(1) and section
43(a) claims, "Plaintiff must show (1) it possesses a legally protectable trademark and (2)
Defendant's use of this trademark creates a likelihood of confusion as to source, affiliation, or
sponsorship." Id. (internal quotation omitted).
Maida's Belts also brings claims for trademark infringement and unfair competition under
Texas law. These common-law claims have virtually identical elements to the statutory elements
under the Lanham Act, so the analysis with respect to Maida's Belts' claims under the Lanham Act
will be dispositive of its corresponding claims under Texas law as well. Amazing Spaces, Inc. v.
Metro Mini Storage, 608 F.3d 225 , 235 n.7 (5th Cir. 	2010) (explaining that a trademark
infringement and unfair competition action under Texas common law presents essentially no
difference in issues than those under the Lanham Act); RE/ MAX Int '!, Inc. v. Trendsetter Realty,
LLC, 655 F. Supp. 2d 679, 711 (S.D. Tex . 2009) ("The same legal standard applies to Lanham Act
infringement 	claims, 	Texas 	statutory 	trademark 	infringement 	claims, 	Texas 	common-law
trademark infringement claims, and federal and state unfair competition claims." ). Accordingly,
the following analysis is applicable to Plaintiff's Counts I, II, III, and IV, and any distinctions
between the causes of action will be specifically addressed.
In its Motion for Summary Judgment, Maida's Boots argues that Maida's Belts' trademark
infringement claims fail for two reasons: (1) Maida's Belts does not own the marks at issue because
Maida's Boots is the senior user and thus, the true owner of the marks; and (2) the Maida's marks
are distinctive marks that have not gained secondary meaning, so they are not legally protectable
marks. (Doc. No. 33 at 10). The Court will address each argument and its related issues in turn.
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1. 	Ownership and Priority of Use: Who is the senior user?
First, Maida's Boots argues that it, not Maida's Belts, is the senior user of the Maida's
marks. In trademark law, ownership is determined by priority of use. See Hana Fin., Inc. v. Hana
Bank, 574 U.S. 418,419 (2015) ("The party who first uses a mark in commerce is said to have
priority over other users."). Generally, the first party to use a trademark becomes the holder of the
mark and the "senior" user regardless of whether that party registers the mark first. Rex Real Est.
L L.P, 80 F.4th at 844. This is because ownership of trademarks is established by use, not by
registration. Id. Registering a mark with the USPTO does not "wipe out" any prior unregistered,
common 	law 	trademark 	rights 	of 	others. 	2 	McCARTHY 	ON 	TRADEMARKS AND 	UNFAIR
COMPETITION § 16: 18.50 (5th ed.) (hereinafter " McCARTHY " ). 2 The senior user of a trademark is
entitled to enjoin "junior" users from using the mark, or one that is deceptively similar to it, subject
to certain limits. Union Nat. Bank of Texas , Laredo v. Union Nat. Bank of Texas , Austin, 909 F.2d
839, 842-43 (5th Cir. 1990). The party seeking to prove prior use must do so by a preponderance
of the evidence. 2 McCARTHY§ 16:20 (citing Araujo v. Framboise Holdings Inc., 99 F.4th 1377,
1380 (Fed. Cir. 2024)).
Each side contends that it is the actual senior user of the Maida's marks. Maida's Boots'
position is that it started using the marks first, so it is the senior user. Maida's Belts's position is
that Maida's Boots cannot show it continuously used the marks from Maida's Black Jack's first
use, so Maida's Belts is the senior user. Within these arguments, the parties raise three separate
ownership-related issues the Court must address. (Doc. No. 33 at 10). The first question is whether
Maida's Boots demonstrated a sufficient assignment and chain of title to its predecessor's use of
2 The Fifth Circuit has cited as authority Professor McCarthy's treatise on Trademarks and Unfair Competition on
multiple occasions. See , e. g. , Amazing Spaces, 608 F.3d at 233; Rex Real Est. /, L. P , 80 F4th at 619; Viacom Int'/ v.
/JR Cap. fnvs ., L. l. C., 891 F.3d 178, 185 n.6 (5th Cir.2 018). See generally MCCARTHY ON TRAD EMA RKS AND UNFAIR
COMPETITION (5th ed.). Accordingly, the Court references this treatise when necessary.
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the Maida's marks. The second question is whether Maida's Boots abandoned its use of the Maida's
marks after its predecessor's bankruptcy. The third question is which party, if either, established
secondary meaning (and thus ownership) first. The Court will address each issue in tum.
a. 	Chain of Title from Maida's Black Jack to Defendant
First, the Court will 	address whether Maida's Boots has demonstrated a sufficient
assignment of trademark rights and chain of title to its predecessor's use of the Maida's marks. As
explained previously, Maida's Boots' predecessor (Maida's Black Jack) was founded in 1983 by
Salvador J. Maida, Jr. (Salvador J. Maida, Jr. Deel., Doc. No. 33-4 at 3) . In contrast, Jason Maida
founded Maida's Belts in 1990. (Jason C. Maida Deel., Doc. No. 35-1 at 1).
Maida's Boots argues that it has demonstrated a sufficient chain of title to the trademark
rights from Maida's Black Jack, beginning from its founding in 1983 to present day. Maida's Belts
argues that Maida's Boots' evidence of trademark assignment is insufficient, so Maida's Boots
cannot establish a chain of title running back to Maida's Black Jack's first use.
In order to enjoin junior users from using a mark, the senior user's use must be continuous
and without abandonment, although some evolution in use over time is tolerated. See Vai s Arm s,
Inc . v. Vais , 383 F.3d 287, 293 (5th Cir. 2004); Helpful Hound, L.L.C. v. New Orleans Bldg Corp. ,
331 F. Supp. 3d 581, 595-96 (E.D. La. 2018) (citing 2 McCARTHY § 16:9). If owners have
changed, one way to demonstrate continuous use is through an assignment of trademark rights.
See Dumdei v. Certified Fin. Planner Bd. of Standards, Inc., No. CIV. 398CV1938H, 1999 WL
787402, at *6 (N.D. Tex. Oct. 1, 1999) ("Generally, an assignment of a trademark and its
accompanying goodwill will allow the assignee to "step into the shoes" of the assignor, gaining
whatever priority date the assignor had in the mark." ). In order to become a senior user through
the valid assignment of a mark, the party claiming assignment must trace its title through a valid
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chain of title, which consists of an unbroken line of use and good will going back to the date of
the mark's first use. See id.; 2 McCARTHY § 18: 15 (" To prove the earliest priority of use, a person
or company must be able to prove a chain oftitle extending back to the original user of the mark.").
The assignment issue in this case can be broken down into two alleged transfers: first, the
bankruptcy trustee's transfer of Maida's Black Jack's business name and goodwill to Laura Maida
Regan, and second, Regan's transfer of this property to Maida's Boots (a/k/a Lasting Designs,
LLC). Maida's Belts does not challenge the first transfer of the Maida's trademarks and business
goodwill. Instead, Maida's Belts focuses on the second alleged transfer from Regan to Maida's
Boots. (Doc. No. 35 at 14).
In challenging the second alleged transfer, Maida's Belts cites the Lanham Act to argue
that any transfer of an owner's interest in a trademark must be signed and in writing, and it must
include the goodwill of the business connected with the mark. (Doc. No. 35 at 13 - 14 (citing 15
U.S.C. § 1060)). Maida's Belts claims Regan's alleged transfer to Maida's Boots, if it exists at all,
is invalid because Maida's Boots cannot produce a writing memorializing the assignment of
trademark rights or goodwill between Laura Maida Regan and Maida's Boots. (Id.).
The provision of the Lanham Act at issue specifies that a "registered mark or a mark for
which an application to register has been filed" can only be transferred if there is an accompanying
signed writing. 15 U.S.C. § 1060(a)(l), (3) (emphasis added). Maida's Boots argues that this
provision does not apply to it because Maida's Boots does not claim it (or its predecessor) ever
registered a Maida's mark that would have been subject to the statute's writing requirement.
Maida's Boots' use of the Maida's mark is more properly characterized as a common law
trademark, or an unregistered mark. Trojan Battery Co. , LLC v. Trojan EV, LLC, No. 4:21-CV-
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3075, 2024 WL 1331783, at * 12 (S.D. Tex. Mar. 28 , 2024) (explaining that "unregistered
trademarks" are "also called common law trademarks" ).
An assignment by writing is not necessary to transfer ownership of a trademark under
common law, but an assignment is still necessary. Rex Real Est. I, L.P , 80 F.4th at 617 (citing
2 McCARTHY§ 18:4 (section titled "Proving the existence of an assignment")). Nevertheless, the
Fifth Circuit requires "strong evidence to establish an assignment." Id. This requirement " is
appropriate both to prevent parties from using self-serving testimony to gain ownership of
trademarks and to give parties incentives to identify expressly the ownership of the marks they
employ." Id. (quoting TMT N Am. , Inc. v. Magic Touch GmbH, 124 F.3d 876,884 (7th Cir. 1997)).
The only evidence Maida's Boots presents to prove that any common law trademark rights
in the Maida's mark were transferred from Laura Maida Regan to Maida's Boots is Regan's own
declaration. That declaration states that Regan "quickly transferred the property [she] received in
the [bankruptcy order] ... to Lasting Designs, LLC d/b/a Maida' s. " (Laura Maida Regan Deel.,
Doc. No. 33-19 at 3). She also recalled that written documentation of the transfer existed, but she
has been unable to locate that documentation. Id. ("I recall we had written documentation of this
transfer [, ] but I have not been able to locate it. " ). Maida's Belts argues that since there is no
evidence of a written agreement or written document reflecting this alleged transfer, there is still a
genuine issue of material fact as to whether there was an assignment, and thus a fact issue exists
as to whether Maida's Boots or Maida's Belts is the senior user of the Maida's marks.
Neither party offers guidance to the Court regarding whether or not Regan's declaration is
evidence that might be considered sufficiently "strong" to establish an assignment here. Se e Rex
Real Est. I, L.P, 80 F.4th at 617. That being so, the Fifth Circuit's indication that evidence stronger
than "self-serving testimony" is required to show assignment of a common-law trademark leads
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this Court to consider this single piece of evidence as not strong enough to declare as a matter of
law that Maida's Boots sufficiently assigned its trademark rights to establish its continuous use of
the "Maida's" mark. Id. Accordingly, an issue of material fact remains regarding Regan's alleged
assignment of the trademarks to Lasting Designs, LLC (Maida's Boots). Therefore, this issue
cannot be resolved at summary judgment.
b. 	Abandonment of the Maida 's Marks
Next, Maida's Boots argues that Maida's Belts cannot demonstrate that Maida's Boots
abandoned its use of the Maida's marks in the time between Maida's Black Jack's bankruptcy and
when Maida's Boots resumed its use of the Maida's marks. (Doc. No. 33 at 12). Maida's Belts did
not respond to or address Maida's Boots' attack on Maida's Belts' abandonment allegations, which
in and of itself constitutes a waiver of this issue. Del Toro v. Fiesta Mart, LLC, No. 4:21-CV-1166,
2023 WL 3025072, at *2 (S.D. Tex. Apr. 20 , 2023) (citing Hargrave v. Fibreboard Corp., 710 F.2d
1154, 1164 (5th Cir. 1983)).
Under the Lanham Act, a mark is deemed "abandoned"
[w]hen its use has been discontinued with intent not to resume such use. Intent not
to resume may be inferred from circumstances ... "Use" of a mark means the bona
fide use of that mark made in the ordinary course of trade, and not made merely to
reserve a right in a mark.
Vais Arms, Inc., 383 F.3d at 293 (quoting 15 U.S.C. § 1127). The party asserting abandonment
must establish that the owner of the mark both (1) discontinued use of the mark and (2) intended
not to resume its use. Id. The burden of proof is on the party claiming abandonment, which is
Maida's Belts in this case. Id. Abandonment is normally an issue of fact. FirstHealth of Carolinas,
Inc. v. CareFirst of Maryland, Inc., 479 F.3d 825, 830 (Fed. Cir. 2007).
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In its Motion, Maida's Boots argues that Maida's Belts has failed to meet its burden to raise
an issue of material fact that supports its contention that Maida's Boots abandoned its use of the
Maida's marks. This Court agrees.
In addition to the fact that Maida's Belts does not address the issue of abandonment in its
response, Maida's Belts offers no evidence that would support an inference that Maida's Boots or
its predecessor stopped using the Maida's marks or intended to not resume using the Maida's marks
during the relevant time period. In contrast, Maida's Boots presents evidence that around the time
the bankruptcy was finalized on June 21 , 2010, Regan, Salvador J. Maida, Jr. , and other members
of that branch of the Maida family (that were affiliated with Maida's Black Jack) worked to return
customer's items that had been completed before the business closed. (Salvador J. Maida, Jr. Deel.,
Doc. No. 33-4 at 5) . This occurred throughout June and July of2010. (Id.) . By August 11th, Lasting
Designs, LLC had been formed and registered with Harris County, Texas to do business as
"Maida's." (Doc. No. 33-12 at 2-3).
This evidence demonstrates that Maida's Boots did not abandon its use of the Maida's mark
after the bankruptcy and before Lasting Designs, LLC started using the mark. Throughout the
summer, Regan and her family worked to fulfill the final customer orders and repairs that had been
undertaken by Maida's Black Jack. Those orders were presumably completed under the name
"Maida's" as that was the company those customers had purchased from originally. It is clear from
its relatively quick reorganization as Lasting Designs, LLC, d/b/a Maida's that Maida's Boots
intended to continue using the "Maida's" mark as the family reorganized and rebuilt after its
bankruptcy. Even assuming Maida's Boots stopped using the marks in June and July, that time
period is not sufficient to demonstrate abandonment of the marks. See Sheila :S Shine Products, Inc.
v. Sheila Shine, Inc., 486 F.2d 114 , 124-25 (5th Cir. 1973) (three or four year lapse in exercise of
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control not enough to show abandonment); Bennigan :S Franchising Co ., L.P v. Sweet Onion, Inc.,
No. 08 -CV-2132-F, 2009 WL 10678344, at *2 (N.D. Tex. Apr. 1, 2009) (explaining that the
abandonment defense "is only available in the very limited and unusual situation where a
trademark has lost all significance, i.e. the mark no longer represents the brand").
Accordingly, based on the uncontroverted facts , the Court finds as a matter of law that
Maida's Boots did not abandon its use of the Maida's marks in the period between Maida's Black
Jack's bankruptcy and the formation of Lasting Designs, LLC. The resolution of the abandonment
issue does not change the fact that there still exists an issue of fact for resolution at trial regarding
whether Regan executed a valid assignment of any original common law Maida's trademarks to
Maida's Boots.
c. 	Secondary Meaning and Prior Use
The final issue relevant in determining whether Maida's Belts or Maida's Boots is the
senior user of the Maida's marks is the issue of secondary meaning. The parties discuss secondary
meaning in their briefing as it relates to determining whether the Maida's mark is a legally
protectable mark, but not in the context of priority ofuse .3 Maida's Boots argues that the first party
to use the mark in commerce establishes ownership of the mark, so the parties accordingly focused
their analysis on which party started using the Maida's marks first. (Doc. No. 33 at 11) (citing
Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341 , 1347 (D.C. Cir. 2008)).
While this is a valid standard applicable to certain types of trademark disputes, it is not the
standard that applies in cases that involve surname marks. Surname marks require secondary
3 As is explained below, secondary meaning in the eyes of the consumer is an inquiry relevant to determining both
whether a surname mark is legally protectable in the first place and to the priority of use inquiry. If a surname mark
has not acquired secondary meaning, then it is not legally protectable under the Lanham Act. See Rex Real Est. I, L.P ,
80 F.4th at 619. The timing of when a surname mark developed secondary meaning is relevant to determining which
party is the senior user. 2 MCCARTHY§ 16:34. Secondary meaning is relevant to two issues the parties address in their
briefing, but they only discussed secondary meaning in the context of one of those issues: whether the Maida's marks
are legally protectable marks.
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meaning to be valid trademarks. Rex Real Est. I, L.P , 80 F.4th at 619.When two parties dispute
who is the senior user of a surname mark, priority of use is not the test. The party who first achieved
trademark significance through secondary meaning is the senior user of the surname mark.
2 Mc CARTHY § 16:34; Levi Strauss & Co . v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir. 1985);
Helpful Hound, L.L.C. v. New Orleans Bldg. Corp., 331 F. Supp. 3d 581 , 596 (E.D. La. 2018) ("For
a mark that is distinctive only because it has acquired secondary meaning, the senior user is the
party that first developed secondary meaning." ).
Accordingly, the key question is whether Maida's Belts or Maida's Boots established
secondary meaning in the Maida's marks, and if so, who did it first. Furthermore, the senior user
of the marks must have achieved secondary meaning prior to the junior user 's first use of the
marks. 2 McCARTHY § 16:34 (" If the senior user cannot prove that its mark possessed secondary
meaning at the time defendant commenced its use, there can be no infringement, for if there was
no secondary meaning, there was no likelihood of confusion when the junior user arrived on the
scene." ); see Brown v. Quiniou, 744 F. Supp. 463 , 469-70 (S.D.N.Y. 1990) ("[E]ven if secondary
meaning is acquired, it will "not prevent the use of [the] term by one whose use had begun before
the secondary meaning was acquired.") (quoting Saratoga Vichy Spring Co. , Inc. v. Lehman, 625
F.2d 1037, 1043 (2d Cir. 1980)).
A mark develops secondary meaning "when, in the minds of the public, the primary
significance of [the mark] is to identify the source of the product rather than the product itself."
Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211 (2000) (internal quotations omitted).
"Because the primary element of secondary meaning is a mental association in buyer[s'] minds
between the alleged mark and a single source of the product, the determination whether a
mark ... has acquired secondary meaning is primarily an empirical inquiry." Amazing Spaces, 608
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F.3d at 248 (quotation omitted). To determine whether a mark has acquired secondary meaning,
courts in the Fifth Circuit consider these seven factors:
(1) the length and manner of use of the mark or trade dress, (2) sales volume, (3)
amount and manner of advertising, (4) the nature of the use of the mark or trade
dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct
consumer testimony, and (7) defendant's intent in copying the mark.
Viacom Int '! v. !JR Cap. lnvs., L.L.C., 891 F.3d 178, 190 (5th Cir. 2018). "Whether a mark has
acquired secondary meaning is a question of fact." Id. The Court will now consider each factor in
turn, keeping in mind that the issue is before this Court in a summary judgment context and that
the relevant inquiry is which party developed secondary meaning in the Maida's marks first.
Helpful Hound, L.L. C., 331 F. Supp. 3d at 596.4
(1) Length and Manner of the Use of the Mark
"Extensive periods of use can make a mark more likely to have acquired secondary
meaning[,]" but "length of time alone is not always sufficient to establish secondary meaning."
Appliance Liquidation Outlet, L.L. C. v. Axis Supply Corp., 105 F.4th 362, 177 (5th Cir. 2024)
(internal citations omitted).
Maida's Belts first began using the Maida's marks in 1990 when it formed its business
entity named "Maida's Belts and Buckles." (Jason Maida Deel., Doc. No. 35-1 at 2). It used the
Maida's marks in association with its goods and services, "including but not limited to , belts,
4 In their briefing, the parties do not frame the summary-judgment evidence according to the question of when in time
their respective "Maida's" entity developed secondary meaning in the Maida's marks. The parties' secondary meaning
analysis was only framed in the context of whether the Maida 's marks are legally protectable marks. In that context,
Maida's Boots argued that Maida's Belts had not developed secondary meaning in the marks, so they are not legally
protectable marks. In its briefing, Maida's Boots does not argue that it developed secondary meaning in the Maida's
marks. Nevertheless, Maida's Boots does argue that it is the senior user of the mark because it was using the Maida's
mark before Maida's Belts started using the mark. Since Maida's Boots argues it is the senior user (albeit applying a
standard inapplicable to surname marks), this Court applies Maida's Boots' arguments about why it is the senior user
to the factors of the secondary meaning analysis. This was done in an effort to evaluate the summary-judgment
evidence through the lens of which Maida's entity formed secondary meaning in the mark first (if either ever did), so
that the Court can determine if one party has demonstrated that it is the senior user at the summary-judgment stage.
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buckles, belt clips, money clips," and other western accessories of the like. (Id. at 3). As of 2025,
Maida's Belts used the Maida's mark in its general branding for its business, including in the
following ways: on signage in multiple areas in its showroom, (Doc. No. 35-4 at 2; Doc. No. 35-8
at 2); on signage in its money clip display case, (Doc. No. 35-7 at 2); as brand engraving on the
back of the belt buckles it sells, (Doc. No. 35-14 at 2); on branded order forms used within the
business, (Doc. No. 35-15 at 2; Doc. No. 35-16 at 2); on tags attached to merchandise for sale
within the showroom, (Doc. No. 35-17 at 2); on the boxes customers' purchases are placed in after
purchase, (Doc. No. 35-18 at 2-3), and on Maida's Belts' website, (Doc. No. 35-19 at 2). It also
used the marks in its advertising materials. (Doc. No. 35-20 at 2-3).
Maida's Boots started using the Maida's mark in 1983 at its Houston store, which was
called "Maida's." (Doc. No. 33-4 at 3). It used the mark on the outside of the building, (Doc. No.
33-7 at 2), and as branding inside the store's showroom, (Doc. No. 33-13 at 2). By 2014, Maida's
Boots used the "Maida's" mark on its stagecoach which served as its mobile showroom. (Salvador
J. Maida, Jr. Deel., Doc. No. 33-4 at 6; Doc. No. 33-14 at 2-3 (photo of stagecoach). It also used
the Maida's mark in its advertising. (Doc. No. 35-30 at 2).
Both Maida's Belts and Maida's Boots have presented evidence sufficient to support an
inference that they have both publicly and prominently associated their respective businesses with
the term Maida's for decades. See Appliance Liquidation Outlet, L.L. C., 105 F.4th at 377.
(2) Volume of Sales
"Proof of a significant number of sales of goods or services using the alleged mark is
relevant evidence from which to infer the existence of a secondary meaning." 2 McCARTHY
§ 15 :49. That being so, neither Maida's Belts nor Maida's Boots presents any evidence at summary
judgment regarding its sales volume, so this factor favors neither party.
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(3) Amount and Manner ofAdvertising
"The 	relevant 	question 	with 	regard 	to 	factor 	three-the 	amount 	and 	manner 	of
advertising-is not the extent of the promotional efforts, but their effectiveness in altering the
meaning of the mark to the consuming public." Viacom Int'l, 891 F.3d at 191 (emphasis in original)
(internal quotation omitted). Thus, this Court must focus on whether the parties have promoted
with the marks and whether that promotion was effective. Id. The record contains evidence of the
extent of the parties' advertising; however, there is little evidence addressing the effectiveness of
this advertising at altering the meaning of the mark to the public.
Maida's Belts has invested heavily in advertising on both the local and national level.
(Jason C. Maida Deel., Doc. No. 35-1 at 2). It advertises with the Maida's mark in magazines, print
media, on billboards, in promotional materials, through newspapers, high school programs, and
trade shows. (Id.). From 1999 through May 2, 2022, Maida's Belts has spent over a million dollars
on advertising expenses. (Id.; Doc. No. 35-3 (Plaintiff's Advertising Expenses)). It is Jason
Maida's opinion that "[l]ong ago, consumers came to associate the term "Maida's" in association
with Maida's Belts and Buckles," and that it "has become one of the largest dealers of buckles and
western jewelry made from precious metal." (Jason C. Maida Deel., Doc. No. 35-1 at 3) .
Maida's Boots and its predecessor advertised its products with the Maida's mark; however,
Salvador J. Maida, Jr. (previous principal ofMaida's Black Jack) declared that a significant amount
of its business is/was through "word of mouth" referrals and repeat customers, since the business
is focused on providing custom services. (Salvador J. Maida, Jr. Dec., Doc. No. 33-4 at 6).
Overall, both parties have invested in advertising to different degrees. Maida's Boots'
evidence that most of its customers are repeat customers or learned ofMaida's Boots through word
of mouth suggests that its promotional efforts have associated "Maida's" with quality custom
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boots. (Id.). On the other hand, Maida's Belts also presented evidence that "long ago" consumers
began associating "Maida's" with Maida's Belts' business and its quality belts and buckles. (Jason
C. Maida Deel., Doc. No. 35-1 at 3). Setting aside the actual advertising expenses, in many ways,
the evidence provided on this topic is just the basic opinion of both owners.
(4) Nature of the Use of the Mark in Newspapers and Magazines
"In considering [this factor], courts consider to what extent third-party media have reported
on the purported trade(mark]." Appliance Liquidation Outlet, 105 F.4th at 377 (quoting Beatriz
Ball, L.L. C. v. Barbagallo Co. , L.L.C. , 40 F.4th 308, 318 (5th Cir. 2022)) (alteration in original).
This Court "must discern whether these publications impacted public perception of the trademark."
Id. For context, in Nola Spice, the Fifth Circuit held that this factor did not weigh in favor of
secondary meaning where the mark holder presented only " [t]wo short online articles" and offered
" no evidence of these magazines' circulation or their impact on public perception." Nola Spice
Designs, L.L.C. v. Haydel Enters., Inc. , 783 F.3d 527, 546 (5th Cir. 2015).
Both parties have used the mark to advertise their products and services in newspapers and
magazines. Maida's Belts has advertised in Texas Monthly Magazine, (Doc. No. 35-20) (December
2009), and 	in 	the 	Houston 	Symphony 	Magazine, (Doc. 	No. 	35-21) 	(no 	date 	visible 	on
advertisement). Additionally, Maida's Belts and its principal, Jason Maida, were featured in a
magazine article published in March 2016. (Doc. No. 35-35 at 1-2).
Similarly, Maida's Boots and Salvador J. Maida, Jr. were featured in the Houston Chronicle
newspaper in October 2010. (Doc. No. 33-16).
Based upon the record, it appears that both Maida's Belts and Maida's Boots have
developed a reputation associated with the Maida's marks in the Houston area, if not beyond, and
that media sources have reported on that reputation. Here, however, neither party has offered any
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evidence of the relevant magazines and newspaper 's circulation, or other evidence that would be
helpful to the Court in discerning their impact on the consuming public. See Nola Spic e, 783 F.3d
at 546.
(5) Consumer-Survey Evidence
Neither party has presented any consumer-survey evidence for the Court to consider. The
Fifth Circuit has "consistently expressed a preference for an objective survey of the public's
perception of the mark at issue, but survey evidence is not required to establish secondary
meaning." Appliance Liquidation Outlet, 105 F.4th at 379 (internal citations omitted).
(6) Direct Consumer Testimony
The only direct consumer testimony presented is by Maida's Boots, and it is in the form of
a Houston Chronicle newspaper article that talks about a Maida's customer named James Painter,
who is a loyal customer, having purchased twelve pairs of custom boots from Maida's Boots.
(Salvador J. Maida, Jr. Deel., Doc. No. 33-4 at 6; Doc. No. 33-16 at 3). The excerpt reads:
[James Painter's] enthusiasm began nearly two decades ago, when ... [he] found
himself in need of custom cowboy boots to accommodate the quirks of aging feet.
A friend offered a single suggestion: Maida's.
I've been in love with Maida's boots ever since," Painter said.
***
Many of [Maida' s] customers, like Painter, have had money to spend, concepts in
mind, and word-of-mouth recommendations to visit [Maida's].
***
Painter, who has designed new boots for himself almost every year since slipping
his feet into that first ostrich-skin pair, said he hadn't expected to be so involved in
the process.
(Doc. No. 33-16 at 3, 6) (Houston Chronicle Article Dated October 27, 2016).
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This single anecdote demonstrates that at least one consumer associated "Maida's" with
Maida's Boots.
(7) Defendant's Intent in Copying the Mark
For this factor, " [t]he relevant inquiry is whether [defendant] intended to derive benefits
from [plaintiff] 's reputation by using the [trademark]. Viacom , 891 F.3d at 195 - 96. "Evidence that
a defendant intends to ' pass off ' its product as that of another can be found through imitation of
packaging, similar distribution methods, and more." Id. at 196.
There is no evidence in the record that would indicate either party intended to "pass off' '
its product as that of the other "Maida's." In fact, it is entirely possible that both parties branded
their business with the "Maida's" name to "pass off'' on the legacy Salvador J. Maid a, Sr.
established through the Houston Shoe Hospital. Accordingl y, at this time, this factor provides less
weight in the situation currently before the Court.
Secondary Meaning Conclusion
As a reminder, the inquiry of which party may have developed secondary meaning first is
relevant to the ownership inquiry because the senior user of a surname trademark (like the Maida's
mark) is not the party who first used the mark; it is the party that first developed secondary meaning
in the mark. 2 Mc CARTHY§ 16:34; Levi Strauss & Co, 778 F.2d at 1358; Helpful Hound, L.L. C.,
331 F. Supp. 3d at 596. Accordingly, if Maida's Belts is the junior user of the marks (and not the
senior user), it may not have rights to enjoin Maida's Boots for infringement. S ee Union Nat 'l
Bank, 909 F.2d at 842--43 ("The first one to use a mark is generally held to be the ' senior' user and
is entitled to enjoin other 'junior' users from using the mark, or one that is deceptively similar to
it, subject to limits imposed by the senior user 's market and natural area of expansion." ).
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After considering all the factors relevant to secondary meaning, the Court concludes that
disputes of material fact remain. A reasonable jury could find that either Maida's Belts or Maida's
Boots had acquired secondary meaning at some point in time. Both parties have put forth evidence
that, considered all together, might suggest that " in the minds of the public, the primary
significance" of "Maida's" is to identify Maida's Belts or Maida's Boots and its respective
products/services. Appliance Liquidation Outlet, l 05 F.4th at 380. At the same time, a reasona bl e
jury could also find that neither party developed secondary meaning in the Maida's marks.
Additionally, the summary-judgment record is lacking in evidence regarding which party
may have established secondary meaning first, and whether that occurred before the junior user
began using the Maida's marks. That inquiry is necessary to determine which party was the senior
user of the Maida's marks and, thus, which party owns the marks at issue in this case. Without
evidence to discern which party may have established secondary meaning first, this Court cannot
declare at summary judgment that Maida's Boots is the prior user of the mark or that Maida's Belts
has failed to establish secondary meaning, like Maida's Boots moves for in this Motion.
This conclusion is supported by the fact that the Fifth Circuit has cautioned against granting
summary judgment on fact-intensive issues similar to the inquiry into secondary meaning in
trademark cases. Cf 	Git-R-Done Prods., Inc. v. Giterdone C Stor e, LLC, No. 1: 15CV386-LG-
RHW, 2017 WL 11681357, at *3 (S .D. Miss. Jan. 9, 2017) (explaining the Fifth Circuit's caution
against granting summary judgment on fact-intensive trademark issues such as likelihood of
confusion). The Court, and this case, would benefit from further development of the factual record
at trial.
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d. 	Ownership and Priority of Use Conclusion
As the Court previously mentioned, in trademark law, ownership of a mark is determined
by priority of use, not federal registration. Rex Real Est. I, L.P , 80 F.4th at 844. Accordingly, to
maintain a claim for trademark infringement in violation of Section 32(1) of the Lanham Act
(infringement of registered marks), Maida's Belts must demonstrate that it owns the marks at issue.
Id. at 616. To demonstrate its ownership, Maida's Belts must show that it continuously used the
Maida's marks and that it developed secondary meaning in the marks. Helpful Hound, L.L.C. , 331
F. Supp. 3d at 595-96. On the other hand, if Maida's Boots wishes to prevail on its contention that
it is the senior user of the Maida's marks, it must demonstrate its continuous use of the marks and
that it developed secondary meaning. Accordingly, the parties raised three separate issues relevant
to this ownership inquiry: (1) whether the alleged assignment of trademark rights between Laura
Maida Regan and Maida's Boots was sufficient to establish continuous use; (2) whether Maida's
Boots abandoned 	its 	use 	of the 	Maida's marks; and 	(3) 	whether 	either part sufficiently
demonstrated it had developed secondary meaning in the Maida's marks.
After examining the issues relevant to the ownership of the marks at issue, the Court
concludes that, as a matter of law, Maida's Boots did not abandon its use of the Maida's marks in
the time between June and August of 2010. That being the case, the Court also finds that material
disputes of fact exist regarding whether Maida's Boots can demonstrate an unbroken chain of title
to its predecessor's first use (or more relevant, when or if its predecessor may have achieved
secondary meaning). There are also fact issues regarding which party established secondary
meaning in its use of the Maida's mark first and thus has ownership of the mark.
Accordingly, genuine issues of material fact remain regarding the ownership element of
Maida's Belts' trademark infringement claim.
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2. 	Are the Maida's Marks "Legally Protectable Marks?"
Having addressed the parties' arguments regarding ownership of the Maida's mark s, th e
Court now turns to their arguments regarding whether "Maida's" is a legally protectable mark
under trademark law. To satisfy the first element of its trademark infringement claim, Maida's
Belts must demonstrate that the Maida's marks are legally protectable trademarks. Rex Real Est.
I, L.P , 80 F.4th at 618 ; Union Nat '! Bank, 909 F.2d at 844. A trademark that is "primarily merely
a surname" is a descriptive term that is not protectable based upon mere adoption and use. See 15
U.S.C. 	§ 1052(e)(4). To 	acquire legally protectable status, a surname must have acquired
secondary meaning or distinctiveness, that is , the marks are uniquely associated with a specific
source in the minds of the public. 15 U.S.C. § 1052(e)(4); Vais Arm s, Inc. v. Vai s, 383 F.3d 287,
291 n.6 (5th Cir. 2004); see Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. C oll. v.
Smack Apparel Co ., 550 F.3d 465, 476 (5th Cir. 2008). It is an undisputed fact that the marks at
issue in this case are the Maida family's shared surname and thus fall under this rule. 5
In its Motion, Maida's Boots argues that the Maida's marks are not legally protectable
because they are not distinctive, meaning that they have not acquired secondary meaning. (Doc.
No. 36 at 2) . Maida's Belts contends that at a minimum a fact issue exists as to whether its marks
have acquired secondary meaning. The parties also dispute the applicability of the presumption
of validity to this element of Maida's Belts' trademark infringement claims.
Proof that a mark has been registered with the USPTO typically constitutes prima facie
evidence both of the applicant's ownership and that the mark is valid, and thus legally protectable.
5 The fact that a mark is a surname is not diminished by the fact that the term is presented in its plural or possessive
form. S ee In re Bed & Bars Ltd. , 122 U.S.P.Q.2d 1546, 1551 (T.T.A .B. 2017) (noting that presenting BELUSHI in the
possessive form " is consistent with perception of the term as a surname"). Despite the fact that both of Plaintiff's
re gistered marks depict the surname " Maida" in it s possessive form, the marks still qualify as surnames under the
Lanham Act. Id.
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See Amazing Spaces, 608 F.3d at 237. In other words, registration gives rise to the presumption of
validity. Id. This presumption is slightly altered in cases involving registered surname trademarks,
however. 	Proof that a surname trademark has 	been registered with the USPTO creates a
presumption that the registered mark had acquired distinctiveness, or secondary meaning, at the
time of its registration. See All. for Good Gov 't v. Coal. for Better Gov 't, 901 F.3d 498, 507 n.10
(5th Cir. 2018); Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed.
Cir. 2009) ("[T]he presumption of validity that attaches to a Section 2(f) registration includes a
presumption that the registered mark has acquired distinctiveness."). 6 This is because a surname
mark cannot be registered with the USPTO unless the party seeking registration proves that
the mark "has become distinctive of the applicant's goods in commerce," which means that it
has acquired a "secondary meaning." See 15 U.S.C. § 1052(e), (f). In other words, a registered
surname trademark gives rise to a presumption that the mark had acquired secondary meaning at
the time of registration, since the US PTO would not have registered it absent a sufficient showing
of secondary meaning. See id.; All. for Good Gov 't, 901 F.3d at 507 n. l 0.
This presumption of acquired distinctiveness is , however, rebuttable. Maida's Boots can
overcome this presumption by producing evidence sufficient to show by a preponderance of the
evidence that the Maida's marks did not have secondary meaning at the time of registration. See
Amazing Spaces, 608 F.3d at 237-39; Lovely Skin, Inc. v. Ishtar Skin Care Prods ., LLC, 745 F.3d
877 , 883 (8th Cir. 2014) (citing Cold War Museum, 586 F.3d at 1356); S. Snow Mfg. Co . v. Snow
Wizard Holding s, Inc. , No. CV 06-9170, 2011 WL 13203106, *7 n.9 (E.D. La. Mar. 23 , 2011);
2 McCARTHY §§ 15 :32-15 :34. This burden is one of production rather than persuasion. See
6 Plaintiff's word marks were registered under Section 2(f) of the Lanham Act, which allows registration based on
evidence that the mark has "become distinctive" based on "proof of substantially exclusive and continuous us e thereof
as a mark by the applicant in commerce for five years before the date on which the claim of distinctiveness is made."
15 U.S .C . § 1052(f); (Doc. No. 35-24 at 2); (Doc. No. 35 -25 at 2 ).
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Amazing Spaces, 608 F.3d at 237-39; Pearson's Inc. v. Ackerman, No. 7:18-CV-00013-BP, 2019
WL 3413501, at *17 (N.D. Tex. July 29, 2019) (applying Amazing Spaces to the presumption of
acquired distinctiveness as of the date of registration). If Maida's Boots can produce sufficient
evidence, then the presumption of validity is reduced simply to evidence that the USPTO was of
the opinion the Maida's marks had acquired distinctiveness sufficient to be legally protectable as
a mark. See Amazing Spaces, 608 F.3d at 237-39. 7
Maida's 	Belts 	has 	sufficiently 	raised 	the 	presumption 	of 	validity 	and 	acquired
distinctiveness because it presented proof of its trademark Registration Nos. 5,348,998 and
5,348,999 with the USPTO. (Doc. No. 35-24 ("Maida's" mark), Doc. No. 35-25 ("Maida 's"
mark)). See Amazing Spaces, Inc. , 608 F.3d at 237. As a result, the burden of production shifts to
Maida's Boots to produce evidence that the Maida's marks had not acquired secondary meaning
at the time of registration. See id.
This Court already determined that there is a fact issue regarding whether or when either
party may have developed secondary meaning in its use of the Maida's marks. See discussion
above in Section III.A. I .iii. Rather than conduct two separate secondary meaning analyses based
on different relevant timeframes, this Court determines it to be more appropriate to allow one fact
finder to hear all of the evidence regarding the timeline of each party 's development of any
secondary meaning. Then, the fact finder can determine if the Maida's marks ever acquired
secondary meaning, making them legally protectable marks, and if so, which party established
secondary meaning first, determining whether Maida's Belts or Maida's Boots is the senior user.
For these reasons, a dispute of material fact remains on a required element ofMaida 's Belts' claims:
whether the marks at issue are legally protectable marks.
7 The parties discuss the applicability of the broader presumption of validity, but they fail to address the more specific
presumption of acquired distinctivenes s, which applies to registered surname marks.
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3. 	Conclusion on Plaintiff's Trademark Infringement Claims
In summary, genuine issues of material fact exist regarding the resolution of multiple
elements of Plaintiff's trademark infringement claims, so Defendant's Motion for Summary
Judgment is DENIED.
B. Plaintiff's Common Law Unjust Enrichment Claim (Count V)
Next, Maida's Boots moves for summary judgment on Maida's Belts' claim for unjust
enrichment under Texas law, arguing that "Plaintiff has made no specific allegations of fraud ,
duress, or the taking of an undue advantage with respect to its claim for unjust enrichment," and
thus cannot establish a dispute of material fact. (Doc. No. 33 at 17).
Under Texas law, unjust enrichment is an implied-contract basis for requiring restitution
when it would be unjust to retain benefits received. Walk er v. Cotter Prop s., Inc. , 181 S.W.3d 895 ,
900 (Te x. App.-Dallas 2006, no pet.). Unjust enrichment allows recovery "when one person has
obtained a benefit from another by fraud, duress, or the taking of an undue advantage." Heide n/els
Bro s., Inc. v. City of Corpus Christi, 832 S. W.2d 39, 41 (Tex. 1992). It is "based upon the promise
implied by law to pay for beneficial services rendered and knowingly accepted." In re Kellogg
Brown & Root, Inc., 166 S.W.3d 732, 740 (Tex. 2005) (internal quotation marks omitted).
Maida's Belts has not presented any evidence that would suggest Maida's Boots obtained
any benefit from Maida's Belts by fraud , duress, or the taking of undue advantage. In fact, Maida's
Belts does not address Maida's Boots' arguments at all in its response. Accordingly, Maida's Belts
fails to raise a genuine issue of material fact sufficient to preclude summary judgment as to this
claim. Fischer v. Fischer, No. 05-23-00679-CV, 2025 WL 3055619, at * 11 (Tex. App.- 	Dallas
Oct. 31 , 2025, no pet.) (affirming that plaintiff failed to raise a genuine issue of fact regarding an
element of her unjust enrichment claim when she failed to cite any evidence in support of her
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argument). That being so, Defendant's Motion for Summary Judgment is GRANTED as to this
claim, and Maida's Belts' common law unjust enrichment claim is DISMISSED with prejudice.
C. Defendant's Laches Defense
Maida's Boots next moves for summary judgment on its affirmative defense of laches. In
doing so, it argues that Maida's Belts knew about Maida's Boots' predecessor's ongoing use of the
"Maida's" name for its business when Maida's Belts adopted "Maida's" and started using it for its
own business. (Doc. No. 33 at 17).
"Lachesis an inexcusable delay that results in prejudice to the defendant." Smack Apparel,
550 F.3d at 489. Laches has three elements: "(1 ) delay in asserting one's trademark rights, (2) lack
of excuse for the delay, and (3) undue prejudice to the alleged infringer caused by the delay." Id.
at 490. The Fifth Circuit has explained that the relevant period of delay for purposes of the laches
defense runs from when the plaintiff knew or should have known of the infringing use until the
plaintiff demands that the defendant cease and desist. See Elvis Presley Enters. , Inc. v. Capece,
141 F.3d 188,205 (5th Cir. 1998) ("The period for laches begins when the plaintiff knew or should
have known of the infringement."). Infringement only occurs when there is a likelihood of
confusion between the products of the plaintiff and defendant, however. See Blue Bell Bio- Med.
v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989). "Lachesis not established by undue delay
and prejudice. Those factors merely lay the foundation for the trial court's exercise of discretion."
Derrick Mfg. Corp. v. Southwestern Wire Cloth, Inc., 934 F. Supp. 796, 810 (S.D. Tex.1996)
(quoting Gasser Chair Co., Inc. v. Jnfanti Chair Mfg. Corp., 60 F.3d 770, 773 (Fed. Cir. 1995)).
Laches, as an equitable defense, is an issue of law for the Court to decide. Reservoir, Inc. v.
Truesdell, No. CIV.A. 4:12-2756, 2013 WL 5574897, at *5 n.10 (S.D. Tex. Oct. 9, 2013). A district
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court enjoys considerable discretion in deciding the issue of laches. National Ass 'n of Gov i
Employees v. City Public Service Bd., 40 F.3d 698, 707 (5th Cir. 1994).
Maida's Boots argues that since Maida's Belts and Maida's Boots have coexisted in
Houston for over a period of 35 years, Maida's Belts' trademark infringement claim is barred by
laches. That evidence by itself is not sufficient for the Court to find as a matter of law that laches
applies here. The laches period begins "when the plaintiff knew or should have known of the
infringement." Elvis Presley, 141 F.3d at 205 . Without undisputed facts establishing when Maida's
Belts learned of any infringement (and the resulting existence of consumer confusion), the Court
cannot find as a matter of law that Maida's Belts' infringement claims should be barred by laches.
See 4 McCARTHY § 31 : 17 ("If there is no evidence that the trademark owner knew or should have
known of the infringing use, sometimes decades can pass without a laches defense being created.")
(citing Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008) (affirming district
court's denial of laches defense when plaintiff had no reason to know of defendant's low-level
infringement for 20 years).
At this time, the record reflects some level of confusion by consumers, but it is not
conclusive and undisputed as to when Maida's Belts may have known or should have known of
any infringement. At some point Maida's Belts' customers presented gift certificates issued by
Maida's Boots to pay for products they had ordered from Maida's Belts, but the record does not
disclose when this began to occur. See (Jason C. Maida Deel. , Doc. No. 35-1 at 7). One such gift
certificate and associated order occurred in 2019. (Doc. No. 35-31 at 2-3). Additionally, customers
have presented to Maida's Belts multiple products to repair that were manufactured instead by
Maida's Boots. See (Id.; Doc. No. 35 - 33 at 2; Doc. No. 35-34 at 2-3). From this evidence, it
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appears that some element of confusion arose at some point in time. What is not clear is when that
confusion (or infringement) may have begun.
According to the summary-judgment record, Jason Maida agreed to allow Salvador Maida
III (affiliated with Maida's Boots) to make belts for Maida's Belts around 2015 . (Jason Maida
Deel. , Doc. No. 35-1 at 7). He did not discover until "some time later" that Maida's Boots was
selling in its store "identical" belts to those sold by Maida's Belts. (Id.). Around 2016 is when
Jason Maida sought legal counsel to protect his trademarks, and in 201 7 he filed his trademark
applications with the USPTO. (Jason Maida Deel. , Doc. No. 35-1 at 5). Maida's Boots did not fil e
a Petition for Cancellation of Maida's federal trademark registrations in the USPTO until
December 30 , 2021. (Doc. No. 28-1 ). Based on the current record, the Court cannot grant Maida's
Boots summary judgment on this equitable defense as a matter oflaw. See e.g., New Ce ntury Fin. ,
Inc. v. New Century Fin. Corp. , No. C-04-437, 2005 WL 2453204, at *10 (S .D. Tex. Oct. 4, 2005)
("In the trademark context, six years of delay do not necessarily constitute !aches as a matter of
law.") (collecting cases).
Accordingly, Defendant's Motion for Summary Judgment is DENIED as to its laches
defense.
D. Defendant's Declaratory Judgment Claim of Trademark Invalidity
In its Counterclaim, Maida's Boots brings a claim for Declaratory Judgment of Trademark
Registration Invalidity, specifically asking this Court to cancel Plaintiff's trademark registrations.
Section 37 of the Lanham Act provides that "[i]n any action involving a registered mark
the court may . .. order the cancellation of registrations, in whole or in part." 15 U.S. C. § 1119 .
Maida's Boots argues that this Court should exercise this statutory authority and cancel Plaintiff's
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federal Registration Nos. 5,348,998 and 5,348,999 because Plaintiff cannot meet its burden of
showing that either of the Maida's marks are distinctive to Maida's Belts. (Doc. No. 33 at 16) .
As detailed previously, a fact issue remains as to whether the Maida's marks have gained
secondary 	meaning 	and 	thus, 	acquired 	distinctiveness. Accordingly, issuing 	a declarato ry
judgment and/or cancellation of Plaintiff's marks is inappropriate at this stage in the litigation.
Defendant's Motion for Summary Judgment on its Declaratory Judgment Claim of Trademark
Invalidity is DENIED.
IV. 	CONCLUSION
First, Defendant's Request to File its Summary Judgment Motion Out of Time (Doc. No.
34) is GRANTED.
Second, for 	the 	foregoing 	reasons, Defendant's Motion 	for 	Summary Judgment 1s
GRANTED IN PART and DENIED IN PART.
The Motion is GRANTED as to Plaintiff's unjust enrichment claim (Count V) , and that
claim is DISMISSED with prejudice.
Additionally, the Motion is GRANTED as to the issue of abandonment, and the Court
finds as a matter of law that Defendant did not abandon its use of the Maida's marks in the period
between Maida's Black Jack's bankruptcy and the formation of Lasting Designs, LLC.
The Motion is DENIED as to Plaintiff's remaining claims (Counts I, II , III, and IV),
Defendant's affirmative 	defense 	of !aches, and 	Defendant's 	counterclaim 	for 	Declaratory
Judgment of Trademark Registration Invalidit y.
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All deadlines in this case were terminated pending the Court's ruling on Defendant's
Motion for Summary Judgment. Accordingly, the Court will enter an Amended Scheduling Order
alongside this Order that will see this case to its conclusion.
It is so ordered.
~
Signed on this the ___t_!:!___ day of March, 2026. 	\
,~ s1	~Andrew S. Hanen
United States District Judge
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