Drive down any Texas interstate long enough and you’ll run into Buc-ees. It is a Texas staple and many Texans’ favorite chain of convenience store. What most Texans don’t know is that there is a war brewing due to the arrival of Bucky’s, a Nebraska based chain of convenience stores.
Further complicating matters is the fact that the two companies have bumped heads in the past. Both companies sought trademark protection for their brands only a few months apart. In 2009, they entered into a consent agreement allowing them to both continue using their names due to the fact there was such a great distance between them.
However, Bucky’s has recently decided to play hardball and has already taken steps to bring six of its stores to Texas. Naturally, Buc-ees has filed suit to prevent their competitor from being able to operate in Texas. Buc-ees suit alleges that Bucky’s looking to confuse the market and asserts claims of trademark infringement and unfair competition.
What exactly is “unfair competition”? In all competitive situations there is some degree of unfairness. However, what makes unfair competition a cause of action is that it is categorized as arising out of business conduct which is contrary to honest practices in industrial or commercial matters. U.S. Sporting Prods., Inc. v. Johnny Stewart Game Calls, Inc., 865 S.W.2d 214, 217 (Tex. App.–Waco 1993, writ denied) (quoting Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 14 (5th Cir. 1974)). This includes
1) passing off or palming off;
2) trade secret misappropriation, and
3) common law misappropriation. Id.;
Conceal City, L.L.C. v. Looper Law Enforcement, LLC, 917 F.Supp.2d 611, 618 (N.D. Tex. 2013); see also Taylor Pub. Co. v. Jostens, Inc., 216 F.3d 465, 486 (5th Cir. 2000).
Obviously, Buc-ees will argue that if allowed to operate in Texas, Bucky’s will receive the benefit of 35 years of undeserved brand recognition. They’ll also probably assert that certain Bucky’s goods are going to be “passed off” as Buc-ees goods.