v.
JURY DEMANDED
HORSESHOE HILL COWBOY CAFE,
LLC, GRADY SPEARS BR, LLC, and
GRADY SPEARS,
Defendants
COMPLAINT
I. The Parties
company with an address of 2730 Meadowbrook Drive, Fort Worth, Texas 76103.
with an address of 204 West Exchange Avenue, Fort Worth, Texas 76164.
Exchange Avenue, Fort Worth, Texas 76164. Mr. Spears is the owner and sole
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manager of Defendant Grady Spears BR, LLC. He is the founder of the restaurant
under the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a). The Court has subject-matter
III. Facts
Martinez and his wife Janie Martinez opened the restaurant in 1952, serving home-
cooked meals based on Janie’s recipes. Under their guidance, Matt’s El Rancho grew
to become one of the most iconic restaurants in Austin, with a loyal customer base.
The restaurant is famous for its welcoming atmosphere and Tex-Mex specialties.
9. Since at least 1986, Matt’s El Rancho has offered its signature cheese-
dip appetizer under the mark BOB ARMSTRONG DIP (the “Mark”).
10. The signature appetizer was created by Matt’s El Rancho for the famous
Texas politician Robert Landis Armstrong (commonly known as Bob Armstrong), who
was a frequent patron of Matt’s El Rancho. During one visit in the early 1970s, Bob
Armstrong asked the chef—Matt and Janie’s son, Matt Jr.—to make an appetizer
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that was not on the menu. Matt Jr. improvised and created the BOB ARMSTRONG
DIP appetizer, which was an immediate hit. The signature appetizer has been on
11. The screenshot below shows an example of how Matt’s El Rancho uses
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12. Matt’s El Rancho has used the Mark in commerce in connection with the
13. The media has widely reported the story of the Mark and Matt’s El
segments.
14. Matt’s El Rancho has for years used the Mark to advertise and promote
its signature appetizer, both through traditional advertising and online. As a result,
15. The Mark is inherently distinctive of Matt’s El Rancho and its offerings.
16. Also, due to Matt’s El Rancho’s longstanding use and promotion of the
Mark, the Mark has become distinctive of Matt’s El Rancho and its offerings.
17. Matt’s El Rancho owns strong common law rights in the Mark.
18. The Mark is famous within the State of Texas. It is widely recognized by
19. In addition to its common law rights in the Mark, Matt’s El Rancho owns
a registration for the Mark on the Principal Register of the U.S. Patent and
Trademark Office (PTO). See U.S. Reg. No. 5,135,570. The registration covers “Dips;
cheese in the form of dips; snack dips, namely, cheese dips and queso dips” in Class
29 and claims November 1986 as the date of first use. A copy of the registration
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20. On information and belief, Defendants own and operate Horseshoe Hill
began using the Mark as the name of an appetizer on Defendants’ menu. The
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22. On information and belief, Defendants use the Mark on the same type
23. On information and belief, the parties target similar consumers and use
24. On information and belief, Defendants adopted and began using the
25. Matt’s El Rancho began using the Mark long before Defendants began
their use.
26. Defendants’ use of the Mark began after the Mark had become famous
27. Matt’s El Rancho did not authorize or permit Defendants’ use of the
Mark.
trademark rights in the Mark and its federal registration. The letter requested that
Defendants stop using the Mark, providing some amicable options for Defendants to
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30. On March 15, 2018, counsel for Matt’s El Rancho spoke with Defendant
Spears by phone about the cease-and-desist letter. During the call, Spears verbally
agreed that Defendants’ restaurant would stop using the Mark, but when asked for a
31. Defendants did not honor this verbal agreement to stop using the Mark.
Defendants’ online menu still uses the Mark in connection with an appetizer, as
shown above. On information and belief, the Mark also remains on Defendants’
32. On May 15, 2019, counsel for Matt’s El Rancho sent a follow-up letter.
The follow-up letter demanded that Defendants honor the verbal agreement from
March 15, 2018 and “immediately and permanently stop using the Mark.” A copy of
33. On June 10, 2019, one of Matt’s El Rancho’s owners emailed Defendant
Spears personally, asking him again to stop using the Mark. Spears did not respond.
potential consumers will likely perceive some connection between Defendants and
connection exists.
35. Defendants’ actions falsely designate the origin of their goods and falsely
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36. Defendants’ actions enable them to trade off and receive the benefit of
the goodwill built up by Matt’s El Rancho over decades of continuous and exclusive
37. Defendants’ actions effectively remove from Matt’s El Rancho the ability
to control the quality of the goods offered under the Mark. This places Matt’s El
Rancho’s reputation and goodwill at least partially in the hands of Defendants, whose
38. Defendants’ actions are likely to dilute the distinctiveness of the famous
Mark.
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Mark.
51. Matt’s El Rancho owns protectable state common law trademark rights
in the Mark.
56. Defendants’ actions are likely to cause dilution of the famous Mark
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57. The Mark became famous within the State of Texas before Defendants’
58. Defendants are thus liable for Texas trademark dilution in violation of
of Matt’s El Rancho.
62. Defendants are thus liable for unjust enrichment under Texas common
law.
63. With respect to each cause of action above, Defendants’ violations are
64. Defendants adopted the Mark with full knowledge of Matt’s El Rancho
65. Defendants have continued using the Mark after receiving notice from
Matt’s El Rancho that their unauthorized use violates Matt’s El Rancho’s rights.
Defendants have also continued using the Mark after and despite Defendant Spears’
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66. Matt’s El Rancho has been and will continue to be irreparably harmed
damages cannot fully compensate Matt’s El Rancho for the harm it has suffered and
VII. Prayer
E. award Matt’s El Rancho its costs and reasonable attorney’s fees; and
F. award any other relief the Court deems just and proper.
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Exhibit 1
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Exhibit 2
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Travis R. Wimberly
600 Congress Avenue, Suite 2120
Austin, Texas 78701
twimberly@pirkeybarber.com
March 9, 2018
Re: Use of the BOB ARMSTRONG DIP Trademark (Our Ref. MATT008)
This law firm represents Matt’s El Rancho, Inc. (“Matt’s”) in trademark and unfair-
competition matters. We write regarding the use of our client’s trademark BOB
ARMSTRONG DIP (the “Mark”) by your restaurant, Horseshoe Hill Cafe.
Since at least as early as 1986, Matt’s has used the Mark in connection with its
restaurant’s signature appetizer. The recipe for this appetizer was created at Matt’s
restaurant decades ago by Matt Martinez Jr. Matt’s named the appetizer in honor of
former Texas statesman Bob Armstrong.
Over the years, Matt’s use of the Mark and the unique history of its signature
appetizer have received extensive national media coverage and consumer recognition.
For example, Bon Appétit last year published the recipe and wrote that BOB
ARMSTRONG DIP is the “signature dish at Matt’s El Rancho.” Examples of this
national media coverage about Matt’s use of the Mark are attached as Exhibit A.
As the result of its years of continuous use and widespread consumer recognition,
Matt’s has developed strong common law rights and significant goodwill in the Mark.
Also, Matt’s owns a federal registration for the mark. U.S. Reg. No. 5,135,570. A copy
of the registration certificate, listing Matt’s as the owner, is attached as Exhibit B.
The goodwill associated with the Mark is extremely valuable and important to Matt’s.
Accordingly, Matt’s cannot permit others to use the Mark (or any confusingly similar
mark) in a manner likely to confuse consumers.
Having said that, it has come to our attention that Horseshoe Hill Cafe is currently
using the Mark without Matt’s authorization in connection with an appetizer. Given
the strong consumer association between Matt’s and the Mark, our client is concerned
512.322.5200 Fax: 512.322.5201 600 Congress Avenue Suite 2120 Austin, Texas 78701 www.pirkeybarber.com
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that consumers encountering Horseshoe Hill Cafe’s use of the Mark will inevitably
assume some connection or affiliation with Matt’s.
While Matt’s is prepared to take legal action necessary to protect its Mark and
prevent consumer confusion, it would greatly prefer to resolve this matter amicably
and without significant disruption to your business. To that end, Matt’s will consider
this matter resolved if you will agree (a) to phase out all use of the Mark within 60
days from the date of this letter; and (b) to permanently refrain from using the Mark
or any confusingly similar mark in the future without Matt’s prior authorization.
Alternatively, if you would prefer to continue using the Mark, please let us know and
Matt’s will consider granting Horseshoe Hill Cafe an appropriate trademark license.
We ask that you provide your response within 10 days of the date of the letter. Please
call or email me if you have any questions.
Sincerely,
Travis R. Wimberly
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Exhibit A
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Exhibit B
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CLASS 29: Dips; cheese in the form of dips; snack dips, namely, cheese dips and queso dips
Int. Cl.: 29
FIRST USE 11-00-1986; IN COMMERCE 11-00-1986
Trademark
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
Principal Register PARTICULAR FONT STYLE, SIZE OR COLOR
No claim is made to the exclusive right to use the following apart from the mark as shown:
"DIP"
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular
living individual.
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
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Exhibit 3
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Re: Follow Up Regarding Your Infringement of the BOB ARMSTRONG DIP Trademark
(Our Ref. MATT008)
We write on behalf of our client Matt’s El Rancho, Inc. to follow up on our letter from
March 9, 2018 (enclosed again for your convenience).
In our earlier letter, we noted that your restaurant Horseshoe Hill Café has been using
BOB ARMSTRONG DIP (the “Mark”) as the name for one of your menu items. We then
explained that Matt’s owns a federal registration for the Mark with the U.S. Patent &
Trademark Office, and that your unauthorized use of the Mark infringes those federally
registered rights.
After you received our letter, you and I spoke on the phone around March 15, 2018. You
said during that call that your use of the Mark was meant to honor the late Matt Martinez,
Jr., who was a close friend of yours. You also said, however, that you understood our
client’s legal obligation to protect its trademark rights, and you advised me that you
would remove the Mark from your menu and stop using it. When I asked you for a
timetable, you refused to give one, but you suggested it would take a week or two.
Fourteen months have since passed, and so far as we can tell, you have not followed
through on your commitment to stop using the Mark. The Mark remains on your online
menu under “Appetizers,” and presumably it appears on your physical menus too. See
https://www.horseshoehillcafe.com/menu (last visited May 9, 2019).
Our client is disappointed that you are not respecting their trademark rights. We
understand your desire to honor your good friend Matt Jr., but there are plenty of ways
to honor him without infringing a federally registered trademark. Like any other
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trademark owner, our client has a legal obligation to prevent unauthorized uses of its
Mark. Unfortunately, the law does not make any exception for family friends.
Please understand that this is a serious legal matter. If you do not immediately and
permanently stop using the Mark and remove it from your menu, our client is prepared
to take formal legal action. If you force us to do so, we will seek all of the remedies
available, including but not limited to money damages, your profits, costs of court,
reasonable attorney fees, and a permanent injunction. See 15 U.S.C. §§ 1116, 1117(a).
Please contact me within 10 days of this letter’s date to advise whether you will comply
fully with these requests. If we do not hear from you by then, we intend to move forward
as discussed.
Sincerely,
Travis R. Wimberly
Enclosure
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JS 44 (Rev. 06/17) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Pirkey Barber PLLC, 1801 East 6th Street, Ste 300, Austin, TX 78701;
Tel: (512) 322-5200
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State
u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
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