Intent and Mistake Not Excuses for Trademark Infringement

In a recent lawsuit filed by the Kings of Convenience (also the Kings of Clean Restrooms and One Jillion gas pumps per location), convenience store giant Buc-ee’s® sued Sugar Land businessman Sarrim Damani over his use of the name Bukys in connection with his own convenience stores located in El Campo and Rosenberg.

Damani Argues No Intent for Trademark Infringement in Use of Buckys

The trademark lawsuit, filed late last month, claims Damani intentionally capitalized on Buc-ee’s® name and likeness both in the name, itself, and in the bright red block letters used to display the name on Damani’s stores.  Buc-ee’s® brings claims of trademark infringement, trademark dilution, unfair competition and false designation of origin, and unjust enrichment and seeks injunctive relief, damages, profits, and attorneys’ fees. Damani denies any intent to infringe and asserts he actually chose the name “Buky’s” because it was his childhood nickname.  Do we believe him?  Maybe.  Will it matter?  Probably not.

Willful Intent Not Necessary to Recover for Trademark Infringement

Even assuming Damani truly called his stores after his childhood nickname, he likely faces an uphill battle.  While willful infringement may certainly expose one to liability for increased monetary damages, the United States Supreme Court’s unanimous opinion in Romag Fasteners, Inc. v. Fossil Inc. (2020) made clear that a plaintiff does not have to prove willful intent to recover for trademark infringement.  In other words, it does not matter whether one intends to infringe.  So what does matter?  Rather than the intent (or lack thereof) of the defendant, courts consider the similarities between the marks themselves; similarities between the goods and services sold in connection with those marks; where and how the goods and services are sold, for how much, and to whom; the strength of the plaintiff’s mark; and whether any actual confusion has occurred.

Here, Buc-ee’s® points to the similar name of “Bukys” as well as the bright red block lettering used in Damani’s name and also complains of the slightly larger “B” and “S” at the beginning and end of the marks as proof of infringement. That both parties use their names in connection with convenience stores—and in the same geographic areas—adds strength to these claims.

Minimizing Risk of Risk Trademark Infringement

The take-away here is simple: whether you are a small, family-owned business or a giant corporation, your intent in selecting a name or brand for your business likely will not protect you from claims of trademark infringement. The wiser course of action is to minimize your risk of such claims. Do your research—particularly within your own industry and among competitors. Note (and eliminate) any similarities in sound, appearance, or meaning between your proposed name or brand and other marks already in existence. Better yet? Retain experienced intellectual property attorneys to evaluate your proposed mark and minimize your risk. Even better? Avoid anything remotely similar to Buc-ee’s®—they don’t play.

For more information on trademark litigation, see our IP Litigation and Industry Focused Legal Solutions pages.