PC Puerto Rico LLC. v. El Smaili

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks
  • Date Filed: 02-28-2013
  • Case #: 12–1973 (FAB)
  • Judge(s)/Court Below: Besosa
  • Full Text Opinion

Injunctive relief was appropriate when gas stations stopped selling gas but continued to display the Texaco mark.

Opinion (Besosa): Nidal K. El Smaili ("El Smaili") sub-leased two Texaco gas stations from PC Puerto Rico, LLC ("PCPR"). The sub-lease gave El Smaili the right to buy and resell Texaco branded products and operate the gas stations for three years. The sub-lease agreement stipulated that PCPR could terminate sub-lease if the gas stations stopped selling gas for seven days. El Smaili stopped selling gas, and PCPR terminated the agreement. Subsequently, PCPR sued for trademark infringement and dilution due to the fact that El Smaili had not removed the Texaco signs from the defunct gas stations. The Court held that the failure to remove the signs negatively affected both Texaco and PCPR's goodwill because the public would expect Texaco products to be available, and assume that PCPR sanctioned the closures. Because money damages would not adequately compensate PCPR, injunctive relief was appropriate. Accordingly, the court GRANTED PCPR's request for an injunction against El Smaili's use of any Texaco mark at both stations.

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