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Nebraska beats Texas: Bucky’s defeats Buc-ee’s in court fight over convenience stores’ similar names

November 28, 2018

The Cornhusker State, apparently, is where the Buc stops.

The second name-related court fight between similar-sounding convenience stores in Texas and Nebraska ended here, much like the first.

This month, a federal judge in Nebraska tossed a lawsuit alleging trademark infringement filed by Texas-based Buc-ee’s, known for its Bosselman-like highway rest stops, against Nebraska-based Bucky’s, a gas station and convenience store chain.

Buc-ee’s sued Bucky’s in 2017, after the Nebraska chain began work to open stores in the Houston area, including one within 15 miles of a Buc-ee’s. Now that the suit has been thrown out, Bucky’s is free to open stores under its own name in Texas.

The local chain already operates 25 convenience stores in the Omaha area, including Iowa. The company also operates 44 stores in suburban Chicago and seven in greater St. Louis.

The Buc-ee’s lawsuit against Bucky’s alleged that Bucky’s was trying to unjustly profit off of its work to build its brand, along with claims that the public might be confused by the similar sound and spellings of the brands’ names.

[Read more: Plans by Omaha-based Bucky’s to move into Texas could lead to a trademark battle with Buc-ee’s ]

Buc-ee’s has developed a reputation for suing smaller competitors in Texas, the Houston Chronicle and Dallas Morning News reported. It recently and successfully sued a San Antonio store for using an alligator inside a circular logo. It argued that the logo might be confused with the Buc-ee’s beaver in a circle.

Buc-ee’s and Bucky’s first crossed paths more than a decade ago. A trademark dispute erupted in 2006 after Nebraska’s Bucky’s filed paperwork to federally trademark its name, some three months before the Texas Buc-ee’s did.

Buc-ee’s took Bucky’s to court in 2008, but ultimately negotiated an agreement that allowed Buc-ee’s to join Bucky’s in registering its name federally. In return, Bucky’s negotiated the ability to expand its chain without fear of being sued.

That agreement played a role in U.S. District Judge Laurie Smith Camp’s Feb. 9 ruling on a summary judgment siding with Nebraska’s Bucky’s, despite some complaints from the Texans about whether the Nebraska chain had been truthful about its past.

Much of Buc-ee’s effort to ask the judge to throw out the previous agreement appeared to hinge on whether Bucky’s had misrepresented when it started using the name “Bucky’s” as a business. The owner of Bucky’s said it had used the name as early as 1982.

But, as Smith Camp wrote, that didn’t matter because lawyers for Buc-ee’s had raised red flags about the date before the two sides agreed. The agreement itself used a later, provable date of 1989, she wrote.

She also knocked down Buc-ee’s argument that the agreement somehow precluded Bucky’s from moving into Texas, pointing to language that contained temporary restrictions on Buc-ee’s but not Bucky’s. Customer confusion, she explained, is irrelevant because of the agreement’s lack of limitations on expansion.

She also dismissed related claims, including one regarding a subcontractor who accidentally confused Bucky’s and Buc-ee’s on some documentation.

Granting such motions for summary judgment is rare in contract disputes, because it means that a judge has decided there is almost no chance for the legal arguments of a plaintiff to succeed.

“I think the case and the way it was handled speaks for itself,” said Stephen Kalhorn, general counsel of Omaha’s Buck’s Inc.

The case was first filed in the Southern District of Texas. It was moved because the agreement from the 2008 case included a provision that said future disagreements would be handled in Nebraska. The recent case concluded on all but a tangential point on Nov. 8, when the two sides finished working with an arbitrator, who decided that Buc-ee’s would pay Bucky’s legal fees.

A Buc-ee’s spokesman, reached Tuesday in Texas, declined to comment.

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