The DTPA does not apply to wholly intangible property rights." Meineke Disc. Muffler v. Jaynes, 999 F.2d 120, 125 (5th Cir. 1993) (citing Texas Cookie Co. v. Hendricks & Peralta, Inc., 747 S.W.2d 873, 876 (Tex. App. 1988, writ denied)). Both the acquisition of a business entity, see Texas Cookie, 747 S.W.2d at 877, and the right to act as a company's sales representative, see Fisher Controls, 911 S.W.2d at 139, are intangible property rights that the DTPA does not cover. "[W]hen a transaction's central objective is the acquisition of an intangible, Texas law requires . . . that a collateral service was an objective of the transaction and not merely incidental to the performance of a transaction excluded under the DTPA."
Id. To disprove the presumptive validity of the trademark, see 15 U.S.C. § 1115(a), Letitia relied on a defense of fraudulent registration. "To succeed on a claim of fraudulent registration, the challenging party must prove by clear and convincing evidence that the applicant made false statements with the intent to deceive the licensing authorities." Meineke Disc. Muffler v. Jaynes, 999 F.2d 120, 126 (5th Cir. 1993). Letitia points to Dennis's awareness that Pierce Realty was using the logo.
“An agreement is ancillary to an otherwise enforceable agreement if ‘it is part of and subsidiary to an otherwise valid transaction or relationship which gives rise to an interest worthy of protection .... Examples of legitimate, protectable interests include business goodwill, trade secrets, and other confidential or proprietary information.'” Meineke Disc. Muffler v. Jaynes, 999 F.2d 120, 123 (5th Cir. 1993) (quoting DeSantis v. Wackenhut Corp., 793 S.W.2d 670, 682 (Tex. 1990), cert. denied, 498 U.S. 1048 (1991).
“An agreement is ancillary to an otherwise enforceable agreement if ‘it is part of and subsidiary to an otherwise valid transaction or relationship which gives rise to an interest worthy of protection.'” Meineke Disc. Muffler v. Jaynes, 999 F.2d 120, 123 (5th Cir. 1993) (quoting DeSantis v. Wackenhut Corp., 793 S.W.2d 670, 682 (Tex. 1990)). A promisee's legitimate interests worthy of protection
To succeed on such a claim, a plaintiff must prove by clear and convincing evidence that the defendant made false statements with the intent to deceive the USPTO. Meineke Discount Muffler v. Jaynes, 999 F.2d 120, 126 (5th Cir.1993). An applicant for a trademark registration with the USPTO must sign a declaration that declares that "to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce."
Commercial use of a mark for more than five years post-registration makes the mark “incontestable,” and the mark can only be cancelled if: “(1) the mark has become generic; (2) the mark was abandoned; (3) the registration was obtained fraudulently; or, (4) the mark was used to misrepresent the source of the goods or services.” Meineke Disc. Muffler v. Jaynes, 999 F.2d 120, 125 (5th Cir.1993) (citing 15 U.S.C. §§ 1064, 1065; Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 197, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1326 (Fed.Cir.1983)). If the mark has not yet attained “incontestable” status, it still benefits from a presumption of validity. This presumption, however, may be rebutted by establishing the mark is not inherently distinctive.
Commercial use of a mark for more than five years post-registration makes the mark "incontestable," and the mark can only be cancelled if: "(1) the mark has become generic; (2) the mark was abandoned; (3) the registration was obtained fraudulently; or, (4) the mark was used to misrepresent the source of the goods or services." Meineke Disc. Muffler v. Jaynes, 999 F.2d 120, 125 (5th Cir. 1993) (citing 15 U.S.C. §§ 1064, 1065; Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 197 (1985); Selva&Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1326 (Fed. Cir. 1983)). If the mark has not yet attained "incontestable" status, it still benefits from a presumption of validity. This presumption, however, may be rebutted by establishing the mark is not inherently distinctive.
At the same time, however, "[t]he DTPA does not apply to wholly intangible property rights." Meineke Discount Muffler v. Jaynes, 999 F.2d 120, 125 (5th Cir. 1993) (citing Tex. Cookie Co. v. Hendricks & Peralta, Inc., 747 S.W.2d 873, 876 (Tex. Civ. App.—Corpus Christi 1988, writ denied)). Like the homeowner in Marquez, "[Gatling] obtained a loan to purchase the Property, and it is clear from the record that [Gatling]'s objective was the purchase of this residence."
50 "An agreement is ancillary to an otherwise enforceable agreement if `it is part of and subsidiary to an otherwise valid transaction or relationship which gives rise to an interest worthy of protection. . . .'" Meineke Discount Muffler v. Jaynes, 999 F.2d 120, 123 (5th Cir. Tex. 1993) (citing DeSantis v. Wackenhut Corp., 793 S.W.2d 670, 682 (Tex. 1990)). Texas courts have found the interests worthy of protection to include inter alia goodwill, trade secrets, and proprietary information.
A false statement or misrepresentation forms the basis of a fraud claim, but scienter — the intent to deceive — is also among the required elements of a claim of fraud. See, e.g., Meineke Discount Muffler v. Jaynes, 999 F.2d 120, 126 (5th Cir. 1993) ("To succeed on a claim of fraudulent [trademark] registration, the challenging party must prove by clear and convincing evidence that the applicant made false statements with the intent to deceive the licensing authorities"); Cyrak v. Lemon, 919 F.2d 320, 325 (5th Cir. 1990) (elements of a fraud claim include: 1) a misstatement or omission; 2) of material fact; 3) made with the intent to defraud; 4) on which the plaintiff relied; and 5) which proximately caused the plaintiff's injury).