Northern District of Texas Blog

Send a cease and desist letter, get sued.  We see that fact pattern a lot, including in Texas Hill Country Barbecue, Inc. v. Hill Country IP, LLC.  Hill Country claims to own a registered trademark for HILL COUNTRY with respect to “services providing food and drink.”  According to Texas Hill Country Barbecue, Hill Country sent it a cease and desist letter claiming exclusive rights in the name “Hill Country” and demanding that Texas Hill Country Barbecue no longer use “Hill Country” in its name.  Hill Country demanded a response (confirming that Texas Hill Country Barbecue would comply with Hill Country’s demand) by September 30, 2010.  In response, Texas Hill Country Barbecue filed a declaratory judgment lawsuit in Texas state court seeking a declaration that it has the common law right to continue to use its name.  On October 13, 2010, Hill Country removed the case to the Northern District of Texas (pdf copy of Texas Hill Country Barbecue’s complaint and Hill Country’s notice of removal available here).

Judge McBryde is presiding over the case.

Texas Hill Country Barbecue is represented by Wesly Maness of Shannon, Gracey, Ratliff & Miller L.L.P.

Hill Country is represented by Jay Rosenberg, Phillip Conley, and Kelly Kleist, all of Conley, Rosenberg & Brenneise LLP; and Philip Hoffman, of Pryor Cashman LLP.

That’s the question raised by The Original Mattress Factory, Inc.’s false advertising lawsuit filed in the Northern District of Texas on October 11, 2010 against The Mattress Factory (pdf copy of the complaint here).  The Original Mattress Factory claims that, forty years ago, its founder Ron Trzcinski began working at Sealy, eventually rising through the ranks to become Sealy’s CEO.  In 1989, Trzcinski left Sealy to start his own mattress company, which he dubbed The Original Mattress Factory.  According to The Original Mattress Factory, it has become quite successful, earning Consumer Reports’ number one ranking for retail stores and number two ranking for mattress brands.

One of its competitors, according to The Original Mattress Factory, took notice of its success and tried to confuse people into thinking that it is the The Original Mattress Factory.  That competitor is The Mattress Factory. 

The Original Mattress Factory asserts that the Mattress Factory states on its website that it is the “Original Mattress Factory”, displays images on its website of images identical to those displayed on The Original Mattress Factory’s website, uses Google AdWords to cause misleading links to The Mattress Factory’s website to appear when consumers search for The Original Mattress Factory, and has even told consumers that it is The Original Mattress Factory founded by Trzcinski.  The complaint attaches declarations attesting to The Mattress Factory’s alleged misdeeds.

The Original Mattress Factory asserts causes of action for false advertising, unfair competition, and unjust enrichment.

The case is before Judge McBryde.

David Walton and Sawnie McEntire, both of Beirne Maynard & Parsons, and David Movius and Matthew Cavanagh, both of McDonald Hopkins, L.L.C., represent The Original Mattress Factory.