WIENER, Circuit Judge:
Defendant-Appellant George Vais appeals from the district court's grant of summary judgment and entry of permanent injunction in favor of Plaintiff-Appellee Vais Arms, Inc. on claims for (1) unfair competition under § 43(a) of the Lanham Act, (2) trademark dilution and injury to business reputation under the Texas commercial code, (3) trademark infringement and unfair competition under Texas common law, and (4) breach of a covenant not to compete ("non-compete agreement") under the Texas commercial code. We affirm.
I. FACTS AND PROCEEDINGS
From 1996 until May 15, 2000, Defendant-Appellant George Vais ("George") manufactured and sold firearm muzzle brakes
On December 30, 1999, George and Bartlett executed a Bill of Sale in which "Vais Arms," as seller, agreed to sell to "Vais Arms, Inc.," as buyer, all of Vais Arms's assets and equipment, for a lump sum payment of $40,000. The Bill of Sale specified that the transfer would take place on May 15, 2000. It also referenced an attached exhibit listing the assets and equipment to be sold. The total cost of the items listed was $39,848.97, roughly $150 less than the amount of the purchase price.
In addition, the parties executed an Attachment to the Bill of Sale which reads as follows:
The following is agreed to by George Vais and Ronald Bartlett
Finally, the parties executed a non-compete agreement which states, in pertinent part:
Vais Arms, Inc. immediately began operations on May 15, 2000. For approximately two weeks thereafter, George worked alongside Bartlett in Bartlett's store, assisting him in the production of the muzzle brakes. When Vais Arms, Inc. became fully operational, George went home to Greece.
Vais Arms, Inc. soon began marketing its muzzle brakes nationwide and, like its predecessor, Vais Arms, quickly recognized sales throughout this country. Early in 2001, however, George returned from Greece and began manufacturing and marketing muzzle brakes under the VAIS mark.
In March 2001, after receiving a series of customer inquiries prompted by
In September 2001, Vais Arms, Inc. filed suit in the district court alleging that George's use of the VAIS mark infringed Vais Arms, Inc.'s rights as senior user of the mark and that George's sales and marketing efforts violated the terms of the non-compete agreement. Vais Arms, Inc. brought claims for (1) unfair competition under § 43(a) of the Lanham Act,
In January 2003, the district court granted summary judgment in favor of Vais Arms, Inc. on its claims for unfair competition, trademark dilution and injury to business reputation, and trademark infringement and unfair competition under Texas common law ("the trademark claims"). The district court based its decision on a determination that no genuine issue of material fact existed as to whether George had abandoned the VAIS mark in selling his business to Bartlett and leaving the country. The court declined to grant summary judgment in Vais Arms, Inc.'s favor as to its claim for breach of the non-compete agreement, however, choosing instead to hold the motion in abeyance pending further briefing on the reasonableness of the agreement's geographic and temporal limitations. Accordingly, the district court entered a preliminary injunction prohibiting George's use of the VAIS mark but reserved ruling on Vais Arms, Inc.'s request for an injunction enforcing the terms of the non-compete agreement.
Following further briefing on the reasonableness of the temporal and geographic limitations of the non-compete agreement, the district court granted Vais Arms, Inc.'s motion for summary judgment on its claim for breach of the non-compete agreement. The court also permanently enjoined George from competing with Vais Arms, Inc. in the manufacturing and marketing of firearm muzzle brakes anywhere in the United States until May 15, 2010. After judgment was entered in its favor, Vais Arms, Inc. filed a motion to alter or amend the judgment to make permanent the court's earlier injunction prohibiting George's use of the "VAIS" mark.
Before the district court could rule on that motion to alter or amend, however, George filed a motion to reconsider the grant of summary judgment on Vais Arms, Inc.'s trademark claims. George advanced that Vais Arms, Inc. waived its abandonment argument by failing to assert it in its complaint, and that he had not had adequate time to respond to Vais Arms, Inc.'s abandonment argument before the district
After considering the supplemental briefing and evidence on abandonment, the district court determined that no genuine issue of material fact existed as to whether George had abandoned the mark. Accordingly, the court denied George's motion to reconsider its prior grant of summary judgment on Vais Arms, Inc.'s trademark claims. The court then granted Vais Arms, Inc.'s motion to alter or amend the judgment and permanently enjoined George from using the mark in connection with the manufacturing, marketing, or selling of firearm muzzle brakes. The court denied George's motion to stay the injunction pending appeal.
George timely filed notices of appeal from the district court's rulings granting summary judgment, enjoining his use of the VAIS mark, and enjoining his activities in contravention of the non-compete agreement.
A. Standard of Review
We review de novo a district court's grant of summary judgment.
B. Trademark Abandonment
George asserts that genuine issues of material fact exist as to whether he abandoned the VAIS mark when he sold his business to Bartlett and moved back to Greece. He argues that, as a result, the district court erred in holding that Vais Arms, Inc. was the senior holder of the mark and granting summary judgment on Vais Arms, Inc.'s trademark claims. Specifically, George contends that (1) as a matter of law, a person cannot abandon his surname, and (2) even assuming arguendo that a person can abandon his surname, genuine issues of material fact exist as to whether he intended to abandon the VAIS mark. Because he did not argue before the district court that a person cannot abandon his surname, George has waived this argument on appeal.
As a threshold matter, George reasserts on appeal his argument that in the district court Vais Arms, Inc. waived the issue of abandonment by raising it for the first time in its reply to George's memorandum in opposition to Vais Arms, Inc.'s motion for summary judgment. George cites the Sixth Circuit's decision in Atlas Supply Company v. Atlas Brake Shops, Inc., 360 F.2d 16 for the proposition that abandonment is "an affirmative defense which must be pleaded; otherwise it is deemed waived."
George's procedural contention that he was denied an adequate opportunity to respond to Vais Arms, Inc.'s abandonment argument is equally unpersuasive. The record establishes that the district court permitted him to file a supplemental memorandum on the issue of abandonment along with any additional evidence in his favor. Although we have not comprehensively identified all the circumstances under which a district court may rely on arguments and evidence presented for the first time in a reply brief, we have stated that "Rule 56(c) merely requires the court to give the non-movant an adequate opportunity to respond prior to a ruling."
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. The burden of proof is on the party claiming abandonment.
The parties do not dispute that George discontinued his use of the mark when he sold his business to Bartlett and departed for Greece. Rather, the sole point of contention is whether, in so doing, George possessed the requisite intent to abandon his proprietary right to the VAIS mark.
For his part, George produced nothing but his own self-serving affidavit, in which he states that he had developed a condition known as "multiple chemical sensitivity" and had left for Greece in the hope that the "clean environment" there would improve his health. He further states conclusionally that he did not "intend to abandon [his] business name of Vais Arms" and that he had "hoped to return after a stay in Greece to pursue [ ]his craft [of manufacturing muzzle brakes]." As objective evidence of his intent not to abandon the
Bartlett does not contest that he struck-out and initialed provision 1(A). He insists, however, that he did not strike out the provision prior to George's signing the Bill of Sale in December of 1999, as George avers, but did so early in March 2000 to reflect that he no longer held George responsible for registering the VAIS mark. Thus, he asserts, this act cannot be construed as evidence that George lacked the requisite intent to abandon, only that Bartlett would assume responsibility for registering the mark.
That intent is determined by an objective test is too well settled to require citation. Viewing the summary judgment evidence in the light most favorable to George as non-movant — including an assumption that the strike-out occurred, as he contends, at the signing in December, 1999 — we agree with the district court's determination that George failed to establish that a genuine issue of material fact exists as to his intent to abandon the VAIS mark. George's vague, self-serving statements in his affidavit to the effect that he "hoped" to regain his health in Greece and return one day to his "craft of manufacturing muzzle brakes" is not sufficient to raise a genuine issue of material fact as to the element of intent, particularly when viewed in light of Vais Arms, Inc.'s overwhelming evidence of abandonment. "[T]he owner of a trademark cannot defeat an abandonment claim ... by simply asserting a vague, subjective intent to resume use of a mark at some unspecified future date."
Neither does Bartlett's striking out of provision 1(A) in the Attachment raise a genuine issue of material fact as to the element of intent to abandon the mark. That provision referred to George's duty to procure a "trade name patent" and to "include it in the sale of assets"; it says nothing about the actual transfer of the trade name itself. Neither does it make the transfer due at signing, only at some unidentified time in the future. Thus, even assuming that the provision was stricken at or prior to George's signing the Bill of Sale, Bartlett's act of striking it out does not convey an understanding on the part of either party that the VAIS mark was not being transferred along with the sale of the business's other assets. Quite to the contrary, a reasonable reading of provision 1(A) in context of the whole transaction over the five months between the signing of the Bill of Sale and the effective date of the sale confirms that the provision was struck out by Bartlett solely to relieve George of the procedural hassle of registering the VAIS mark before he left the country for health reasons.
As George has failed to produce evidence that would establish the existence of
C. Non-Compete Agreement
"The enforceability of a covenant not to compete is a question of law for the court."
On appeal, George does not contest that the non-compete agreement was ancillary to the Bill of Sale or that the time limitation (10 years) was reasonable. He challenges only the geographic extent of its restriction. That provision, confected by an accountant, not a lawyer, reads:
The district court, on Vais Arms, Inc.'s request, reformed this clause to include only "U.S. states"; Vais Arms, Inc. abandoned any claim to coverage of foreign countries.
Albeit the geographic limiter was inartfully drafted, a plain reading confirms beyond quibble that the phrase "current customer bases" modifies only the foreign "countries" aspect of the geographic coverage — not the "U.S. states" portion. Thus, the covenant as drafted covered (1) "all United States" and (2) any foreign countries in which George had a "current customer base," i.e. sales of muzzle brakes. By reforming the geographic limiter to cover only "U.S. states" in conformity with Vais Arms, Inc.'s voluntary abandonment of foreign coverage, the district court eliminated any potential interpretive issue with the modifier "current customer bases."
Indeed, this reading of the geographic limitation is the only one that sensibly comports with the national character of the business that George sold. The record establishes that when George conducted the business, he advertised his muzzle brakes via nationally-distributed trade publications, mail order catalogues, and, importantly, the Internet. In addition, George does not contest that he marketed his products and enjoyed sales throughout the United States. Accordingly, to interpret this provision as requiring the parties to restrict the geographic limits of the covenant to just those states in which George had actually consummated one or more sales, while disregarding the nationwide scope of his marketing efforts,
No genuine issue of material fact exists as to whether George abandoned his rights to the VAIS mark in selling his business to Bartlett and relocating to Greece. We affirm the district court's grant of summary judgment and entry of permanent injunction in favor of Vais Arms, Inc. on its trademark claims. Further, we also agree that the geographic limitation imposed by the non-compete agreement as reformed by the district court is reasonable and enforceable. We affirm the district court's grant of summary judgment on Vais Arms, Inc.'s claim for breach of the non-compete agreement, as well as the court's entry of a permanent injunction enforcing that agreement against Defendant-Appellant George Vais.
PICKERING, Circuit Judge, concurring in part and dissenting in part:
I concur in all aspects of the majority opinion except the part dealing with the non-compete clause. In Texas, "[c]ourts generally disfavor noncompete covenants because of the public policy against restraints of trade and the hardships resulting from interference with a person's means of livelihood." Zep Mfg. Co. v. Harthcock, 824 S.W.2d 654, 658 (Tex.App.Dallas 1992). I recognize that it is possible to have a valid non-compete clause; however, I would conclude that there is an ambiguity in this particular non-compete clause. A contract is ambiguous when its meaning is reasonably susceptible to more than one interpretation. Heritage Res. Inc. v. NationsBank, 939 S.W.2d 118, 121 (Tex.1996). In this case, the agreement states that "[t]his covenant shall apply to the geographical area that includes all U.S. states and countries which are included in the current customer base." The phrase "which are included in the current customer base" could be read to apply only to the word "countries", or it could be read to apply to "all U.S. states and countries." Because the phrase is susceptible to more than one reasonable interpretation, the issue should be remanded to the district court for an appropriate determination. See Exxon Corp. v. West Texas Gathering Co., 868 S.W.2d 299, 302 (Tex.1993) (explaining that contract ambiguities are fact questions to be submitted to a jury).
For the foregoing reasons I respectfully dissent as to that part of the majority opinion dealing with the non compete clause.
Further, George's reliance on the Ninth Circuit's decision in Abdul-Jabbar v. Gen. Motors Corp. as support for his proposition that a person cannot abandon his surname is misplaced. See 75 F.3d 1391 (9th Cir.1996), superseded by 85 F.3d 407 (9th Cir.1996). Abdul-Jabbar is distinguishable. Unlike the VAIS mark, the surname at issue in Abdul-Jabbar was not a trademark, as the plaintiff had not used the name for commercial purposes for more than ten years prior to filing suit. See id. at 411