court rejects affiliation confusion theory for lack of harm, declines to order tarps over P's goods

Survitec Survival Prods., Inc. v. Fire Protection Service, Inc., 2025 WL 2782332, No. H-21-312 (S.D. Tex. Sept. 30, 2025)

This case demonstrates exactly why harm to the plaintiff should be explicitly a part of a trademark case that relies on extended theories of confusion (that is, non-source confusion). It shows in great detail why any theoretical confusion about affiliation would have been completely irrelevant to both parties’ customers—which is why they make assumptions/don’t bother to think about the issue.

The court introduces the case:

Survitec Group Ltd. is the parent of a large group of corporate entities, including some that make maritime survival equipment, such as life rafts. Fire Protection Service, Inc. sells and services this kind of equipment. Beginning in the 1970s, Fire Protection and some Survitec entities operated under an oral agreement allowing Fire Protection to use Survitec-entity trademarks, trade names, and brand names and to serve as a dealer and servicer of Survitec-branded products. Survitec Group Ltd. terminated that agreement in 2017 after it acquired a Houston company that serviced life rafts and could compete with Fire Protection and similar companies in the Houston area.

Survitec here alleged that Fire Protection continued to use its trademarks without authorization, in violation of Texas and Louisiana law and the Lanham Act. After a bench trial, the court found that Survitec failed to prove its claims. [There are a lot of trademarks, I assume because of a private equity rollup trying to decrease competition in the field, but it turns out their specific identities don't matter.]

Survitec’s termination letters demanded that Fire Protection “cease using all trademarks, trade names and brand names of Survitec and its group companies,” with each notice listing a different, but overlapping, group of trademarks. “The letters did not prohibit Fire Protection from accepting Survitec-branded life rafts needing service or repairs and sending the rafts to a certified third party to do the work. Nor did the letters require Fire Protection to inform customers that it was outsourcing service and repair work to certified third parties.”

To service life rafts, both the U.S. Coast Guard and the equipment manufacturer—in this case, a Survitec entity—must certify the servicing technician. The certifications of two Fire Protection technicians were set to end the same month that Survitec Group Ltd. sent the termination letters, but Survitec Group Ltd. extended their certifications through the December 2017 termination date and immediately terminated the certifications of a third technician.

Fire Protection tried to sell its inventory of Survitec-branded products during the pre-termination period, including working to facilitate the repurchase of that inventory by a Survitec entity whose standard practice is to repurchase leftover inventory from terminated dealers. But the Survitec delayed in doing so, including by waiting until December 2018 to issue Fire Protection a return authorization. Because of that delay, and because Survitec’s termination letters forbade Fire Protection from selling its Survitec-branded inventory to third parties after the termination date, some of the inventory expired.

The parties agreed that under the first-sale doctrine, Fire Protection could resell genuine Survitec goods that Fire Protection had purchased before the termination. Thus, Survitec’s actions and inactions prevented Fire Protection from recovering the value of that inventory.

After the termination, Survitec entities filled orders from Fire Protection for the resale of safety equipment other than life rafts, such as personal flotation devices and worked with Fire Protection to service life rafts for the entities’ customers. Those Survitec entities serviced life rafts for some of Fire Protection’s customers. And Fire Protection serviced some third-party-branded life rafts for Survitec when, for example, customers had rafts that were subject to an exclusive servicing arrangement with Fire Protection.  

“After its termination as a licensed Survitec dealer, Fire Protection continued to assist customers who needed Survitec-branded life rafts serviced by subcontracting the servicing work to certified third-party servicers…. Fire Protection would accept orders to service customers’ life rafts; outsource the service work to a certified subcontractor; and return the life raft to the customer with an invoice that included all the work.” Sometimes, Fire Protection notified its customers that it was no longer a Survitec-authorized service station and that it was outsourcing the service work on the customers’ rafts.

Fire Protection used a brochure and line sheet that it used at trade shows and posted to its website before the termination that included some Survitec logos among over fifty brands for which Fire Protection offers some good or service, which it removed when a Survitec representative notified Fire Protection that they were still accessible online. Fire Protection also continued to use its pre-termination stock of printed brochures at trade shows after termination, until it ran out of brochures sometime in 2020. It also displayed lists of domestic and international products that it sells; Fire Protection updated its website in January 2021 to remove two remaining references.

brochure

website listing

In addition, the U.S. Coast Guard continued to list Fire Protection as an authorized servicer of Survitec-branded products after the termination. But the website included a disclaimer stating that the Coast Guard is not liable for “any reliance on its [website’s] accuracy, completeness, or timeliness.” No party told the Coast Guard to update its website until Fire Protection did so in April 2023.

Coast Guard listing

In addition, when Fire Protection shipped customers’ rafts to authorized service stations, the Survitec marks were on the life rafts, and Fire Protection’s name was on the transporting vehicles. And when Fire Protection’s subcontractors returned the Survitec-branded life rafts after servicing them, the certificates that were required by federal regulations included the Survitec entities’ marks as the manufacturer. Regulations required both identification of the manufacturer and of the facility that had serviced the life raft.

There was no evidence that any of these uses caused harm or confusion that affected Survitec’s goodwill. Two witnesses testified that they thought Fire Protection was still an authorized service station after the termination, but didn’t convince the court that Fire Protection’s limited use of the Survitec marks caused any economic or other harm to the plaintiffs.

One witness testified that her former employer used Fire Protection to service its Survitec-branded life rafts; that she did not know that Fire Protection outsourced the servicing work; and that she assumed Fire Protection serviced the life rafts itself because federal regulations require the manufacturer’s certification to service life rafts. The court gave this (paid) testimony little weight, since she didn’t testify that Fire Protection’s use of the plaintiffs’ marks confused her; rather, she testified that she simply assumed Fire Protection was an authorized service dealer doing the service work itself because it accepted a request to service Survitec-branded life rafts. A rare and welcome intervention of causation reasoning in a trademark case!

Her assumption that there would be no outsourcing was unreasonable, as subcontracting is a normal part of the industry. In addition, as part of her job, she reviewed certificates of servicing, which identify the entity that serviced a life raft, including the certificates that Fire Protection returned, which showed outsourcing on Survitec-branded rafts to an authorized, third-party service provider. She had no complaints about the quality of Fire Protection’s work or the price it charged. After she left her company, Fire Protection told employees that it had to outsource some of their requests for life-raft servicing, and the employees continued to use Fire Protection to service the company’s rafts. Thus, Fire Protection did not retain the company as a customer by failing to disclose that it subcontracted the servicing of Survitec-branded life rafts. (The theory here is really a false advertising theory.)

The other witness testified similarly, though he said that, if he had known that Fire Protection outsourced the life-raft servicing, he might have sought another service provider. But he lacked personal knowledge of the transactions with Fire Protection, and he did not testify that Fire Protection’s limited use of the plaintiffs’ marks caused his assumption that Fire Protection was doing the service work itself. He also testified that Fire Protection told one of his technicians that it had to ship their rafts to a different facility for servicing. The possibility of outsourcing its life-raft servicing did not cause him to look for other service providers with no complaint about the quality or price.

Indeed, Fire Protection was the only local service station in Corpus Christi, and ships often face a short period between docking and their next voyage, creating the need for “tried-and-true service providers that can service or repair life rafts in a short timeframe.” Further, “many customers’ vessels often have life rafts and other safety equipment from multiple manufacturers and are unlikely to use multiple service providers to avoid outsourcing service work on life rafts from a single manufacturer.” Thus, there was simply no causal link between use of Survitec’s marks and Fire Protection’s sales, or any damage to Survitec. (The court also noted that, even had some customers stopped using Fire Protection if they knew that Fire Protection was subcontracting its servicing work on Survitec-branded rafts, there was no credible evidence that those customers would have chosen a Survitec-owned service station to do the work. In non-TM fields, this could be an Article III standing problem.)

Nor was there any evidence of damage to the plaintiffs’ brand image or goodwill from the conduct at issue—the plaintiffs conceded that Fire Protection could subcontract the work, just argued that Fire Protection should have disclosed it. The court found no legal basis to conclude “that Fire Protection infringed Survitec’s trademark by accepting work on Survitec-branded rafts without disclosing to customers that it was not an authorized service station.”

Survitec’s harm theory was that the failure to disclose might give customers the impression that Survitec-branded rafts are expensive. But there was no supporting evidence; “Fire Protection delivered its customers a quality service at a price they paid without any evidence of complaints.”

Legal conclusions: Some of plaintiffs’ claims failed because Fire Protection did not use the marks in commerce. Specifically, marks used on the Coast Guard website weren’t use in commerce under trademark law. The plaintiffs cannot state a claim for Fire Protection’s miscellaneous uses of their marks. Use on a government website related to “regulatory approval,” not to the sale of goods or services. “The Coast Guard does not accept payment for listing information on its website, does not accept payment for individuals’ use of its website, and does not contain advertising or links to other commercial websites. The presence of a mark on that website is not actionable, commercial use.”

It was also not actionable to ship life rafts and resell servicing certificates because of first sale. It was inevitable that Survitec’s marks would be used in reselling its products. Also:

Plaintiffs’ counsel later suggested that, to avoid infringement, Fire Protection should have draped tarp over Survitec-branded life rafts that Fire Protection picked up from a ship and drove to a servicing facility in a truck bearing Fire Protection’s name. Plaintiffs’ counsel argued that the rafts had to be covered to avoid suggesting to onlookers that Fire Protection had manufacturer and Coast Guard authorization to service Survitec-branded rafts. This argument presents an absurdity that the first-sale doctrine is supposed to prevent.

“In the absence of any credible evidence of confusion or harm supporting the plaintiffs’ theory of infringement based on Fire Protection’s transporting Survitec-branded rafts from ships to servicing facilities, the court ‘decline[s] to expand the reach of’ trademark protections.”

So too with Fire Protection’s use of plaintiffs’ marks on servicing certificates that it returns to customers along with their serviced life rafts. The servicing certificates are “valid and authentic documents, created by life-raft manufacturers, including the plaintiffs, and sold to authorized service stations. Federal regulations require their use and prescribe their content and form.” Thus, the use of these certificates wasn’t commercial use, and also subject to first-sale.

There was some potential for confusion about whether Fire Protection was authorized to perform service work on Survitec-branded rafts after Survitec had terminated that authorization.

The court started with the multifactor test, though it’s not really suitable for affiliation confusion. It recognized this problem by reasoning that nominative fair use and first sale “inform the likelihood-of-confusion analysis.” Thus, Fire Protection would not be liable for using the plaintiffs’ marks on its website or in its brochure if doing so merely identifies the goods or services it offers. “Fire Protection infringes the plaintiffs’ trademarks, however, if its advertisements suggest that it is selling specific goods or services with the plaintiffs’ endorsement.”

But the website, brochure, and line sheet weren’t likely to cause a consumer to believe that the plaintiffs have an association with, or endorse, Fire Protection. The court noted that the line sheet put plaintiffs’ marks among about 50 others, offered both sales and services, and also touted that Fire Protection is the only manufacturer-authorized Viking service station in Texas. Likewise, the website includes a long list of manufacturer names (without logos) whose goods Fire Protection sells.

These types of “crowded, list-based advertisements, with no other special indication of affiliation,” are the kind as to which no reasonable jury could find affiliation confusion. Even with the special feature that, because of federal regulation, a representation that Fire Protection services, as opposed to merely sells, Survitec-branded rafts comes with a consumer expectation that the service station has technicians certified by the manufacturer, “[a] consumer is unlikely to believe that Fire Protection has technicians certified by over fifty brands.” Few service stations are certified by more than a handful of manufacturers. And the express statement that it was a Viking-authorized service station “create[ed] the inference that it was not manufacturer-authorized to service other brands.”

Plaintiffs’ failure to provide evidence of actual confusion confirmed this finding. Their confusion witnesses “testified only that they thought Fire Protection was affiliated with the plaintiffs because it accepted their requests to service Survitec-branded life rafts, not because of Fire Protection’s use of the plaintiffs’ marks. This is not evidence of confusion; it is evidence that some consumers made faulty, and unwarranted, assumptions that Fire Protection was not subcontracting the servicing of some life rafts.” The relevant misrepresentation has to come from the defendant, not from some other source, including an assumption that a seller of legitimate goods is an authorized dealer or repair shop. “An erroneous and unreasonable consumer assumption is not actionable infringement. The fact that this is the strongest evidence of confusion that the plaintiffs introduced at trial generates an additional inference against finding a likelihood of confusion.”

There was one exception—page 7 of the brochure indicated that Fire Protection was authorized to service some of Survitech’s brands.  This was likely to lead consumers to believe that the parties were affiliated, because only service stations with technicians certified by manufacturers can service that manufacturer’s life rafts. [For what it’s worth, I don’t even think that’s true, if “affiliation” is read in its ordinary legal meaning—I’m not “affiliated” with the place I got my driver’s license; I’m a graduate of various schools, but hardly an affiliate of most of them.]

Page 7 claiming to service some Survitec brands

But this “technical” infringement didn’t entitle them to actual or statutory damages. There was no proof of monetary harm, as required for actual damages.  As discussed above, Fire Protection neither gained nor retained customers because those customers thought Fire Protection was authorized to service Survitec-branded life rafts. Thus, Fire Protection was not unjustly enriched by its misrepresentation.

Also, kind of hilariously,

complicating the plaintiffs’ proof of injury is the fact that Fire Protection used Survitec entities as subcontractors. If Fire Protection had lost its customers, the plaintiffs could have lost the customers that Fire Protection had referred to it. Third-party service stations could have captured a greater proportion of the business that left Fire Protection. In other words, Fire Protection’s subcontracting may have helped, rather than hurt, the plaintiffs’ business.

Thus, the court could find neither actual damages nor unjust profits from the infringement.

Survitec had another theory: Fire Protection damaged their goodwill by accepting servicing work for the plaintiffs’ branded life rafts, outsourcing that work, and increasing the prices the customers paid to cover the prices that the third-party servicers charged Fire Protection for the servicing work. This would allegedly cause consumers to believe that Survitec-branded rafts are more expensive. [Wouldn’t it more plausibly prompt you to find a cheaper servicer?]

The record undermined the theory: there was no evidence that Fire Protection charged more than other raft-servicing establishments for similar work, whether done in-house or outsourced; no one complained about the price; and the record suggested that plaintiffs’ goodwill and reputation were not particularly price-sensitive. In particular, Survitec didn’t control the price that its authorized service stations charge their customers or the profit margin the service stations may generate from servicing. “If the plaintiffs were concerned about associating their brand with high prices, they could have contracted to limit the prices that the authorized service stations could charge. There is no record evidence that they did so.” As to Fire Protection allegedly encouraging customers to switch to Viking by raising prices on Survitec, “an authorized service station could, without infringing on the plaintiffs’ marks or violating any other obligation to the plaintiffs, raise the servicing prices on Survitec-branded rafts to influence customers to select other brands. Generally, switching customers from one brand to another is not improper business behavior; the law favors competition among manufacturers selling different brands of the same type of product.’”

Ultimately, the plaintiffs didn’t tie their damages theory to their theory of trademark infringement.

What about counterfeiting and statutory damages? The marks/uses remaining in the case didn’t qualify. Two marks were unregistered; one was registered, but not for the services at issue, only for the underlying life rafts.

Dilution: Ugh.  Survitec argued that Fire Protection’s failure to disclose to customers that it was subcontracting the service work on Survitec-branded rafts gave customers the impression that Survitec-branded rafts were expensive.

First, there was no federal fame. Slightly misstating the law, the court says that marks must be both registered and famous, not just distinct, so the unregistered marks couldn’t qualify. Even for the registered marks, they introduced no proof that those marks were “famous,” that is, “widely recognized by the general consuming public of the United States.”

Texas dilution: there was no proof of tarnishment via Fire Protection’s acceptance of requests to service Survitec-branded rafts or Fire Protection’s outsourcing of that work. The fact that the plaintiffs did not control the prices that authorized service stations could charge also weighed against any finding that Fire Protection charged prices that tarnished the plaintiffs’ reputation.

False designation of origin/reverse passing off (because the subcontractor provided the services): The traditional concern in a reverse-passing-off case is that the actor “misrepresent[s] the relative capabilities or accomplishments of the parties, thus creating the likelihood of a future diversion of trade to the actor.” Thus liability attaches “only if the actual producer can establish both the fact of a misrepresentation and a likelihood of harm to its commercial relations.”

Most of the Survitec entities lacked standing, only the ones Fire Protection used as a subcontractor and whose servicing work Fire Protection allegedly passed off as its own. Plus, there was no proof of passing off. “The case law does not recognize an affirmative duty on the part of a seller to disclose the identity of the manufacturer or producer of goods offered for sale; liability is imposed only on the basis of an express or implied misrepresentation that the goods have been produced by the actor or a third person.” Fire Protection hadn’t been shown to represent to customers that it did the servicing work on Survitec-branded life rafts in-house. Whatever witnesses assumed, Fire Protection always provided its customers with the servicing certificates that clearly identified the entities that serviced the Survitec-branded rafts. Customers are required by regulation to maintain these certificates, which customers review “to ensure that they show that the life rafts are properly serviced and to log the date of inspection so that the life raft is serviced again at the proper time.” Because the service station name and number are conspicuously next to the date of inspection, a Fire Protection customer “would immediately know that a subcontractor—in this example, Donovan Marine—serviced the rafts.”

certification example

big Survitec stamp on document provided to customer

Finally, the plaintiffs didn’t show harm.  In a subcontracting situation, there is a stronger presumption that the subcontractor “implicitly consented to sales under the seller’s trade name or trademark.” The plaintiffs didn’t try to protect its commercial interests through contractual arrangements with Fire Protection. They sent to Fire Protection and its customers certificates that identify Survitec Survival Products, with special stamps to clearly mark that a Survitec entity serviced the raft:

No reverse passing off.

False advertising:

The market for life raft services had multiple players, so there was no presumption of damage from false comparative advertising. And there was no evidence of harm from Fire Protection’s failure to change its brochure after the termination to remove the statement that it was an authorized service station, nor of unjust enrichment to Fire Protection. Plaintiffs’ damages expert provided no causation analysis.