Two federal courts recognized the fame of the FIRESTONE mark, given its century-long use, in suits filed by Bridgestone for trademark counterfeiting, trademark infringement, trademark dilution, unfair competition, and breach of contract against holdover licensees, related entities, and their owner who unlawfully used the FIRESTONE, FIRESTONE COMPLETE AUTO CARE, and BRIDGESTONE marks to offer automotive services in Houston, Texas. Bridgestone, represented by Finnegan, was granted summary judgment in both cases.
In the Southern District of Texas, the court granted summary judgment on all claims against one of the entities and its owner in his individual capacity. In the Middle District of Tennessee, the court granted Bridgestone’s motion for summary judgment on the trademark counterfeiting, trademark infringement, trademark dilution, and unfair competition claims. Both courts rejected defendants’ arguments that holdover licensees are exempt from the heightened penalties for counterfeiting, noting the split of authority on the issue. In the Sixth Circuit, a holdover licensee may not be liable for the heightened penalties available for counterfeiting if it continues to use a mark as originally authorized. This represents the minority view and other courts have rejected the holding. The defense thus did not apply in Texas, and the defendants in Tennessee could not rely on this precedent to shield them from liability because one defendant was never a party to any license with Bridgestone and the other was never licensed to use the FIRESTONE COMPLETE AUTO CARE mark as it did. Both courts held that defendants’ willful conduct—using Bridgestone’s exact federally registered FIRESTONE and FIRESTONE COMPLETE AUTO CARE marks—entitles Bridgestone to recover the enhanced remedies (to be determined at trial) available for counterfeiting.
Bridgestone v. Apollo Auto Sales & Services, Inc., 3:15-cv-00857, M.D. Tenn., Campbell, Holmes, McCalla
Bridgestone v. Katy Freeway Tire & Automotive, Inc., 4:15-cv-02274, S.D. Tex., Werlein