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 plaintiffshould be explicitly a part of a trademark case that relies on extendedtheories of confusion (that is, non-source confusion). It shows in great detailwhy any theoretical confusion about affiliation would have been completelyirrelevant to both parties’ customers—which is why they make assumptions/don’tbother to think about the issue.

The court introduces the case:

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

Survitec here alleged that Fire Protection continued to useits trademarks without authorization, in violation of Texas and Louisiana lawand the Lanham Act. After a bench trial, the court found that Survitec failedto 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 itsgroup companies,” with each notice listing a different, but overlapping, groupof trademarks. “The letters did not prohibit Fire Protection from acceptingSurvitec-branded life rafts needing service or repairs and sending the rafts toa certified third party to do the work. Nor did the letters require FireProtection to inform customers that it was outsourcing service and repair workto certified third parties.”

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

Fire Protection tried to sell its inventory ofSurvitec-branded products during the pre-termination period, including workingto facilitate the repurchase of that inventory by a Survitec entity whosestandard practice is to repurchase leftover inventory from terminated dealers. Butthe Survitec delayed in doing so, including by waiting until December 2018 toissue Fire Protection a return authorization. Because of that delay, andbecause Survitec’s termination letters forbade Fire Protection from selling itsSurvitec-branded inventory to third parties after the termination date, some ofthe inventory expired.

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

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

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

Fire Protection used a brochure and line sheet that it usedat trade shows and posted to its website before the termination that includedsome Survitec logos among over fifty brands for which Fire Protection offerssome good or service, which it removed when a Survitec representative notifiedFire Protection that they were still accessible online. Fire Protection alsocontinued to use its pre-termination stock of printed brochures at trade showsafter termination, until it ran out of brochures sometime in 2020. It also displayedlists of domestic and international products that it sells; Fire Protectionupdated its website in January 2021 to remove two remaining references.

brochure website listing

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

Coast Guard listing

In addition, when Fire Protection shipped customers’ raftsto authorized service stations, the Survitec marks were on the life rafts, andFire Protection’s name was on the transporting vehicles. And when FireProtection’s subcontractors returned the Survitec-branded life rafts afterservicing them, the certificates that were required by federal regulationsincluded the Survitec entities’ marks as the manufacturer. Regulations requiredboth identification of the manufacturer and of the facility that had servicedthe life raft.

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

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

Her assumption that there would be no outsourcing wasunreasonable, as subcontracting is a normal part of the industry. In addition,as part of her job, she reviewed certificates of servicing, which identify theentity that serviced a life raft, including the certificates that FireProtection returned, which showed outsourcing on Survitec-branded rafts to anauthorized, third-party service provider. She had no complaints about thequality of Fire Protection’s work or the price it charged. After she left hercompany, Fire Protection told employees that it had to outsource some of theirrequests for life-raft servicing, and the employees continued to use FireProtection to service the company’s rafts. Thus, Fire Protection did not retainthe company as a customer by failing to disclose that it subcontracted theservicing of Survitec-branded life rafts. (The theory here is really a falseadvertising theory.)

The other witness testified similarly, though he said that,if he had known that Fire Protection outsourced the life-raft servicing, hemight have sought another service provider. But he lacked personal knowledge ofthe transactions with Fire Protection, and he did not testify that FireProtection’s limited use of the plaintiffs’ marks caused his assumption thatFire Protection was doing the service work itself. He also testified that FireProtection told one of his technicians that it had to ship their rafts to adifferent facility for servicing. The possibility of outsourcing its life-raftservicing did not cause him to look for other service providers with nocomplaint about the quality or price.

Indeed, Fire Protection was the only local service stationin Corpus Christi, and ships often face a short period between docking andtheir next voyage, creating the need for “tried-and-true service providers thatcan service or repair life rafts in a short timeframe.” Further, “manycustomers’ vessels often have life rafts and other safety equipment frommultiple manufacturers and are unlikely to use multiple service providers toavoid outsourcing service work on life rafts from a single manufacturer.” Thus,there was simply no causal link between use of Survitec’s marks and FireProtection’s sales, or any damage to Survitec. (The court also noted that, evenhad some customers stopped using Fire Protection if they knew that FireProtection was subcontracting its servicing work on Survitec-branded rafts,there was no credible evidence that those customers would have chosen aSurvitec-owned service station to do the work. In non-TM fields, this could bean 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 thatFire Protection could subcontract the work, just argued that Fire Protectionshould have disclosed it. The court found no legal basis to conclude “that FireProtection infringed Survitec’s trademark by accepting work on Survitec-brandedrafts without disclosing to customers that it was not an authorized servicestation.”

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

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

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

Plaintiffs’ counsel later suggestedthat, to avoid infringement, Fire Protection should have draped tarp overSurvitec-branded life rafts that Fire Protection picked up from a ship anddrove to a servicing facility in a truck bearing Fire Protection’s name.Plaintiffs’ counsel argued that the rafts had to be covered to avoid suggestingto onlookers that Fire Protection had manufacturer and Coast Guardauthorization to service Survitec-branded rafts. This argument presents anabsurdity that the first-sale doctrine is supposed to prevent.

“In the absence of any credible evidence of confusion orharm supporting the plaintiffs’ theory of infringement based on FireProtection’s transporting Survitec-branded rafts from ships to servicingfacilities, the court ‘decline[s] to expand the reach of’ trademarkprotections.”

So too with Fire Protection’s use of plaintiffs’ marks onservicing certificates that it returns to customers along with their servicedlife rafts. The servicing certificates are “valid and authentic documents,created by life-raft manufacturers, including the plaintiffs, and sold toauthorized service stations. Federal regulations require their use andprescribe their content and form.” Thus, the use of these certificates wasn’tcommercial use, and also subject to first-sale.

There was some potential for confusion about whether FireProtection was authorized to perform service work on Survitec-branded raftsafter Survitec had terminated that authorization.

The court started with the multifactor test, though it’s notreally suitable for affiliation confusion. It recognized this problem by reasoningthat nominative fair use and first sale “inform the likelihood-of-confusionanalysis.” 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 goodsor services it offers. “Fire Protection infringes the plaintiffs’ trademarks,however, if its advertisements suggest that it is selling specific goods orservices with the plaintiffs’ endorsement.”

But the website, brochure, and line sheet weren’t likely tocause a consumer to believe that the plaintiffs have an association with, orendorse, Fire Protection. The court noted that the line sheet put plaintiffs’marks among about 50 others, offered both sales and services, and also touted thatFire Protection is the only manufacturer-authorized Viking service station inTexas. 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 noother special indication of affiliation,” are the kind as to which no reasonablejury could find affiliation confusion. Even with the special feature that, becauseof federal regulation, a representation that Fire Protection services, asopposed to merely sells, Survitec-branded rafts comes with a consumerexpectation that the service station has technicians certified by themanufacturer, “[a] consumer is unlikely to believe that Fire Protection hastechnicians certified by over fifty brands.” Few service stations are certifiedby more than a handful of manufacturers. And the express statement that it wasa Viking-authorized service station “create[ed] the inference that it was notmanufacturer-authorized to service other brands.”

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

There was one exception—page 7 of the brochure indicatedthat Fire Protection was authorized to service some of Survitech’s brands.  This was likely to lead consumers to believethat the parties were affiliated, because only service stations withtechnicians certified by manufacturers can service that manufacturer’s liferafts. [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 gotmy driver’s license; I’m a graduate of various schools, but hardly an affiliateof most of them.]

Page 7 claiming to service some Survitec brands

But this “technical” infringement didn’t entitle them toactual or statutory damages. There was no proof of monetary harm, as requiredfor actual damages.  As discussed above, FireProtection neither gained nor retained customers because those customersthought 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’ proofof injury is the fact that Fire Protection used Survitec entities assubcontractors. If Fire Protection had lost its customers, the plaintiffs couldhave lost the customers that Fire Protection had referred to it. Third-partyservice stations could have captured a greater proportion of the business thatleft Fire Protection. In other words, Fire Protection’s subcontracting may havehelped, rather than hurt, the plaintiffs’ business.

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

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

The record undermined the theory: there was no evidence thatFire Protection charged more than other raft-servicing establishments forsimilar work, whether done in-house or outsourced; no one complained about theprice; and the record suggested that plaintiffs’ goodwill and reputation werenot particularly price-sensitive. In particular, Survitec didn’t control theprice that its authorized service stations charge their customers or the profitmargin the service stations may generate from servicing. “If the plaintiffswere concerned about associating their brand with high prices, they could havecontracted to limit the prices that the authorized service stations couldcharge. There is no record evidence that they did so.” As to Fire Protectionallegedly encouraging customers to switch to Viking by raising prices onSurvitec, “an authorized service station could, without infringing on theplaintiffs’ marks or violating any other obligation to the plaintiffs, raisethe servicing prices on Survitec-branded rafts to influence customers to selectother brands. Generally, switching customers from one brand to another is notimproper business behavior; the law favors competition among manufacturersselling different brands of the same type of product.’”

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

What about counterfeiting and statutory damages? The marks/usesremaining in the case didn’t qualify. Two marks were unregistered; one wasregistered, but not for the services at issue, only for the underlying liferafts.

Dilution: Ugh.  Survitecargued that Fire Protection’s failure to disclose to customers that it wassubcontracting the service work on Survitec-branded rafts gave customers theimpression that Survitec-branded rafts were expensive.

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

Texas dilution: there was no proof of tarnishment via FireProtection’s acceptance of requests to service Survitec-branded rafts or FireProtection’s outsourcing of that work. The fact that the plaintiffs did notcontrol the prices that authorized service stations could charge also weighedagainst any finding that Fire Protection charged prices that tarnished theplaintiffs’ reputation.

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

Most of the Survitec entities lacked standing, only the onesFire Protection used as a subcontractor and whose servicing work FireProtection allegedly passed off as its own. Plus, there was no proof of passingoff. “The case law does not recognize an affirmative duty on the part of aseller to disclose the identity of the manufacturer or producer of goodsoffered for sale; liability is imposed only on the basis of an express orimplied misrepresentation that the goods have been produced by the actor or athird person.” Fire Protection hadn’t been shown to represent to customers thatit did the servicing work on Survitec-branded life rafts in-house. Whateverwitnesses assumed, Fire Protection always provided its customers with theservicing certificates that clearly identified the entities that serviced theSurvitec-branded rafts. Customers are required by regulation to maintain thesecertificates, which customers review “to ensure that they show that the liferafts are properly serviced and to log the date of inspection so that the liferaft is serviced again at the proper time.” Because the service station nameand number are conspicuously next to the date of inspection, a Fire Protectioncustomer “would immediately know that a subcontractor—in this example, DonovanMarine—serviced the rafts.”

certification example

big Survitec stamp on document provided to customer