Civil Action No. 4:23-cv-00399 § Judge Mazzant MEMORANDUM OPINION AND ORDER Pending before the Court is Plaintiff’s Application for Preliminary Injunctive Relief (Dkt. #7).Having considered the motion and the relevant pleadings, the Court finds thatPlaintiff’s Application for Preliminary Injunctive Relief (Dkt. #7) should be DENIED. BACKGROUND I. Factual History A. Chaos Lacrosse This case arises in the context of a trademark dispute over the term “Chaos” in the sport of lacrosse. Chaos Lacrosse, LLC (“Chaos”) is a youth lacrosse club based in Frisco, Texas (Dkt. #7 at p. 2; Dkt. #12 at p. 7). Chaos runs club lacrosse teams for lacrosse players between the third and twelfth grades of school (Dkt. #12 at p. 7). The club’s operations extend through North Texas, Oklahoma, and the surrounding areas (Dkt. #7 at p. 2). However, Chaos’s teams play in lacrosse tournaments across the United States (Dkt. #22). It began operations in June 2013 (Dkt. #7 at p. 2). Chaos owns two trademarks that are at issue in this case, service mark Reg. Nos. 6,617,481 and 6,617,482: (Dkt. #12, Exhibit 4; Dkt. #12, Exhibit 5). Chaos first commercially (and noncommercially) used each of these trademarks on January 15, 2014 (Dkt. #12, Exhibit 4; Dkt. #12, Exhibit 5). The club filed each mark on November 16, 2018 and each mark became registered on January 18, 2022 (Dkt. #12, Exhibit 4; Dkt. #12, Exhibit 5). Chaos claims to use these marks as “marks in commerce to provide coaching services, including services attendant thereto, such as instruction, organization, team structure, travel planning and execution, tournament play and other related activities for youth lacrosse players” (Dkt. #7 at p. 2). Both marks are within International Class 41, where Reg. No. 6,617,481 possesses the listed use of “[c]oaching in the field of sports” (Dkt. #12, Exhibit 5). Reg. No. 6,617,482 possesses the listed use of “professional coaching services in the field of lacrosse” (Dkt. #12, Exhibit 4). Most of Chaos’s equipment sales and advertising occur through online sources. Rather than using a traditional retailer, Chaos sells its equipment through its website (Dkt. #7 at p. 11). Chaos also has a presence on X (formerly and commonly known as Twitter), Instagram, and Facebook (Dkt. #7 at p. 11). B. Premier Lacrosse League Defendant Premier Lacrosse League, Inc. (“PLL”) is an American professional lacrosse league (Dkt. #12 at p. 8). The league was founded in 2019 and currently consists of eight teams (Dkt. #12 at p. 8). One of PLL’s eight teams is called “Chaos LC” (Dkt. #12 at p. 8). Chaos has either won or appeared in PLL’s championship games from 2020 to 2022 (Dkt. #12 at p. 8). PLL owns two trademarks related to Chaos LC that are at issue in this case, service mark Reg. Nos. 6,048,870 and 6,048,885: (Dkt. #7, Exhibit 2; Dkt. #7, Exhibit 3). PLL first commercially (and noncommercially) used each of these trademarks in May 2019 (Dkt. #7, Exhibit2; Dkt. #7, Exhibit3). The league filed the marks on February 25 and 26, 2019, respectively, and each mark became registered on May, 5, 2020 (Dkt. #7, Exhibit 2; Dkt. #7, Exhibit 3). Both marks are within International Classes 25 and 41 (Dkt. #7, Exhibit 2; Dkt. #7, Exhibit 3). Within Class 25, both marks possess the listed use of “[c]lothing intended to create an association with a professional lacrosse team” (Dkt. #7, Exhibit 2; Dkt. #7, Exhibit 3). Within Class 41, both marks possess the listed use of “[e]ntertainment services, namely, organizing and conducting athletic competitions and games in the field of lacrosse” (Dkt. #7, Exhibit 2; Dkt. #7, Exhibit 3). PLL sells its merchandise and advertises through various sources. PLL streams lacrosse games through ABC and ESPN (Dkt. #12 at p. 8). The league also sells tickets to attend its games (Dkt. #12 at p. 8).PLL sells its merchandise directly through its online store and at games (Dkt. #12 at pp. 8, 20). The league also advertises through social media, with relatively large followings on X, TikTok, YouTube, Instagram, Threads, and Facebook (Dkt. #12 at p. 22). Paul Rabil, a co-founder and the President of PLL, describes Chaos LC as one of PLL’s “signature teams” and notes that Chaos LC won the league championship in 2021 (Dkt. #12, Exhibit 3 8). Although Rabil does not describe how much money PLL has invested into Chaos LC, he states that PLL “has invested tens of millions of dollars every year in its product and employs hundreds of people across the nation” (Dkt. #12, Exhibit 3 16). He further states that PLL’s “media promotion, creation of merchandise, the coaching staff and players that are associated with each team, and the fans who provide the PLL’s revenue are heavily linked to the trademarks for each team, one of which is Chaos LC” (Dkt. #12, Exhibit 3 16). “PLL sells itself . . . through brand loyalty to a team, which requires logos and wordmarks identifiable to fans” (Dkt. #12, Exhibit 3 19). Additionally, Rabil claims that the “inability to use the word mark and logo would cause significant harm to the PLL by damaging its ability to provide its promised product to its fans, thereby damaging its goodwill” (Dkt. #12, Exhibit 3 21). Beyond its eight-team lacrosse league, PLL also runs two programs where it hosts youth sports camps (Dkt. #12 at p. 9). The first program, PLL Academy, occurs on various weekends across the United States (Dkt. #12 at p. 9). Rabil describes the PLL Academy as “offer[ing] extensive year-round training for youth lacrosse” (Dkt. #22). The second program, “PLL Junior Championships,” is held in Florida and Arizona (Dkt. #12 at p. 9). The PLL Junior Championships are held for about four or five weekends at about two days each (Dkt. #12 at p. 9; Dkt. #12, Exhibit 3 10). One team at each PLL Junior Championship is called the “Chaos Jr.” (Dkt. #22). C. Interaction Between Chaos Lacrosse and the Premier Lacrosse League Chaos’s history with PLL dates back to 2019 when Jason Gildea, the founder of Chaos, made a phone call to PLL. During that phone call, he stated that Chaos “was confused with [Chaos LC's] name” and that Chaos would like to find a way to work together with PLL because “it’s been about growing the game” (Dkt. #22).[1] Chaos first became aware of Chaos LC’s name in February 2019, prior to this phone call (Dkt. #22). In 2020, about one year later, Gildea sent an email to PLL regarding further cooperation (Dkt. #22). The ensuing exchange resulted in Chaos becoming a member of PLL’s Verified program (Dkt. #22). PLL’s Verified program works with youth lacrosse clubs to “aim[] at building networks of youth lacrosse organizations” (Dkt. #12 at p. 11). Chaos joined this program in 2020, when only five youth clubs were in the program (Dkt. #22). However, Chaos left this program after about one year because it felt that it received minimal benefits (Dkt. #22). Chaos claims that multiple instances demonstrating “confusion regarding the similarity and/or perceived affiliation between [Chaos] . . . and PLL” have occurred on social media (Dkt. #7 at p. 12). Chaos’s Twitter handle is @ChaosLacrosse and PLL’s Twitter handle is @PLLChaos (Dkt. #7 at pp. 11–12). Chaos claims the following tweets from February 26, 2023 and September 12, 2022 demonstrate confusion: (Dkt. #7 at p. 12). On July 31, 2022, Chaos claims that confusion between it and PLL occurred (Dkt. #7 at p. 11). Chaos “held a tryout at BF Philips Park in Frisco Texas, on the same date PLL was hosting a youth clinic at the same facility” (Dkt. #7 at p. 11). Chaos claims “[d]uring check-in, six players showed up to [Chaos's] tryout instead of the PLL clinic they had registered for due to confusion created by [Chaos's] players wearing reversible ‘Chaos Lacrosse’ jerseys. Gildea had to direct them to the PLL event” (Dkt. #7 at p. 11). Additionally, Chaos states that “[l]ater, two professional lacrosse players also mistook Plaintiff’s event for the PLL event they were attending” (Dkt. #7 at p. 11). Chaos also claims that PLL has been and still is selling merchandise through its website that infringes upon Chaos’s word mark (Dkt. #7 at p. 13). The allegedly infringing products consist of (Chaos’s word mark is placed above for comparison): (Dkt. #7 at p. 13). II. Procedural History On May 4, 2023, Chaos brought suit against PLL for common law unfair competition, unjust enrichment under Texas law, and under the Lanham Act for trademark infringement and unfair competition (Dkt. #1 at
24–37).Chaos requested that the Court provide both preliminary and permanent injunctive relief to prevent PLL from “using ‘Chaos’ or any confusingly similar variation thereof” (Dkt. #1 at
