Maida’s Belts and Buckles, Inc. v. Lasting Designs, LLC is a case in the Southern District of Texas that involves two different branches of a dynasty founded on craftsmanship.
Because both businesses used the family name “Maida,” the court in this decision abbreviated the plaintiff’s name to “Maida’s Belts” and the defendant’s name to “Maida’s Boots.” After coexisting for over a decade under the assumption that both stores had inherited the right to use the MAIDA mark from the same predecessor business, a bad deal between the two stores led the plaintiff to uncover that the bankruptcy of the predecessor left ownership of the MAIDA name up in the air.
The dynasty was founded by Salvatore Maida, Sr. in Houston, Texas, with the final iteration of his custom boot-making career being a store called Maida’s Blackjacks, also in Houston. After that business became insolvent stemming from a personal injury lawsuit, it underwent Chapter 7 bankruptcy before shuttering its doors while the “boots” side of the Maida family regrouped.
That resulted in the granddaughter of Salvatore, Sr. (Laura Maida Regan) and her father (Salavatore, Jr.) buying the remnants of Maida’s Blackjacks and consolidating it into Maida’s Boots. Separately and independently, Jason Maida (grandson of Salvatore, Sr.) opened Maida’s Belts in 1990.
When a customer presented a gift certificate from Maida’s Boots to pay for a large order at Maida’s Belts, it set off a chain of events that led Jason Maida to discover that Maida’s Boots was selling buckles he deemed identical to some designs he created for Maida’s Belts. Jason Maida alleged it was during the bad business deal that his cousin had gained access to the designs.
After Maida’s Boots petitioned the USPTO for cancellation of Maida’s Belts’ trademarks, Maida’s Belts brought the dispute to the Southern District of Texas. Armed with the ambiguity in the defendant’s chain of assignment, the plaintiff added claims for trademark infringement, false designation of origin, and unfair competition under the Lanham Act. In response, the defendant (Maida’s Boots) asked the court for summary judgment.
The plaintiff claimed that defendant abandoned the MAIDA mark during a one-year period of inactivity following the bankruptcy of Maida’s Blackjacks. The defendant countered that it was actually tending to the goodwill associated with the mark during that period of time by fulfilling back orders for which it had already received payment.
Tracing the assignment uncovered that the remaining assets of Maida’s Blackjacks had been transferred to Laura Maida Regan. After having “burn[ed] the midnight oil” to salvage the reputation of the Maida name, Regan then transferred those assets to Maida’s Boots. (Notably, trying to fulfill orders from the bankrupt business was a factor that might establish a continuing use of the trademark.) Regan claimed the assignment existed in writing, but she could not present any evidence of the assignment.
The court noted that because the dispute involved a family name, which is not inherently distinctive, the party to establish that it was the first to acquire secondary meaning would be the senior user of the mark. Neither party was able to provide evidence of magazine or newspaper advertisements or anything else that might have shed light on the secondary meaning question, leading to a question of fact. Likewise, the weight to assign a single, yet glaring, instance of actual confusion was a question for a jury. So summary judgment was denied in favor of a trial.
The moral to this story is that purchasing a business does not automatically include a transfer of trademark rights. Transforming a business is often overwhelming, and it can be easy for the proprietor to assume the paperwork they signed would include the trademarks. But as the case shows, it ain’t necessarily so.
