Buc-ee’s Deputy General Counsel Tracy Richardson was told there was no way he could win a trademark infringement against competitor Choke Canyon.
“Anything we can do?” Wasek asked.
Against the advice of intellectual property experts, Richardson filed a federal trademark infringement lawsuit claiming that Choke Canyon was simply trying to confuse customers that their store had a connection to Buc-ee’s.
“I don’t think anybody gave me a chance of winning this case,” said Richardson, who recently won the 2019 Business Litigation of the Year Award from the Association of Corporate Counsel’s Houston Chapter and The Texas Lawbook. “They probably knew that I knew nothing about federal trademark law.”
For seven-days last year, Richardson did battle in federal court in Houston. Expert witnesses testified. Owners of the two companies took the witness stand. Internal Choke Canyon documents were introduced as evidence. Even a couple customers of both stores swore under oath that they thought Choke Canyon, because of its logo and other marketing and product efforts, was part of Buc-ee’s.
“This case is not about an alligator versus a beaver,” Richardson told jurors. “It is about an intent to deceive and confuse. There are two dissimilarities and 12 similarities in the two logos.”
The jury ruled in favor of Buc-ee’s. Choke Canyon conceded, paying Buc-ees a “couple million dollars.”
On HoustonChronicle.com: Buc-ee’s wins federal court trademark fight against competitor Choke Canyon
“Most importantly, they had to forfeit their logo and change their signs, which is all we wanted to begin with,” he said.
Very few corporate in-house counsel take cases to trial anymore. Buc-ee’s and Richardson are the exception.
In fact, Buc-ee’s executives proudly point out that Richardson is not afraid to go to trial and that he has never lost a case.
“I hired Tracy because he has a wealth of trial experience,” Buc-ee’s General Counsel Jeff Nadalo told The Texas Lawbook. “He’s tried 30 jury trials and he’s won all 30. We go out of our way to let opposing counsel know that we are willing to go all the way to trial.”
Richardson was born in Linden, Texas. His father was a sergeant in the 1st Infantry Division in Vietnam in 1966 when his soldiers suddenly found themselves surrounded by the Viet Cong. Richardson’s father took point and battled in hand-to-hand combat, killing two of the enemy before he was defeated.
“The most important event in my life was my father’s death,” he said. “I was two. Before he was killed, he wrote letters home to me saying that he was fighting to give me a better life.
“I always ask myself, ‘would my dad be proud?’” he said.
Richardson said his dad, who received the Silver Star, was a real rebel when he was young. In high school, the boy sitting next to his father in class threw an eraser and hit the teacher.
“The teacher accused my dad and they got into an argument and my dad punched the teacher,” he said. “As crazy as it sounds, the other student later became a judge in East Texas and sworn me in as an attorney in 1989.”
During middle school, Richardson worked for two years as a page in in the Arkansas State Senate.
“My desk was right next to the lieutenant governor, and he would have me take bills over to the state attorney general to review,” he said. “He would always tell me a joke to tell the attorney general, and I always would.”
The Arkansas attorney general at the time was Bill Clinton.
“That experience got me interested in law and I never really changed my mind about doing anything different after that,” he said.
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Richardson went to college at Texas A&M and then graduated from South Texas College of Law in 1989.
His first big trial came about a year after he started practicing law. It was an auto collision trial in Tyler and $20,000 was at stake.
During the trial, the plaintiff’s attorney forgot to move to introduce some key evidence into the court record.
“The lawyer started talking during closing argument about the evidence he had failed to introduce and I objected,” he said. “The judge agreed and kept it out.”
The plaintiff made another mistake that Richardson seized on. The plaintiff had a scheduling conflict and wasn’t actually present during closing arguments.
“I told the jury that she obviously wasn’t too interested in the case or she would have been there for closing arguments,” he said.
The jury deliberated for two hours and ruled in favor of Richardson’s client.
Richardson, who is a huge Dallas Cowboys fan, practiced for 13 years at Strong Pipkin Bissell & Ledyard in Beaumont.
In the fall of 2013, he noticed an advertisement in the Texas Bar Journal about an opening in the legal department at Buc-ee’s. Richardson and 600 other lawyers applied.
“I saw it as a great opportunity to get in on the ground floor and help build the business and be part of its identity,” he said. “But I also liked the position because it allowed me to still be a practicing trial lawyer, which is very unique for an in-house counsel position.”
Richardson said he and his buddies would stop by Buc-ee’s on their way hunting. His favorite items: coconut pie in a cup, chocolate malt balls and cinnamon corn snack puffs.
“I’ve had every type of matter hit my desk – slip-and-fall cases, intellectual property and employment disputes, water rights issues, contract disputes and 18-wheeler issues,” he said. “Since I’ve been at Buc-ee’s, I’ve learned something new just about every day.”
Richardson and Nadalo agree that the Choke Canyon case was very important to Buc-ee’s protecting its intellectual property.
“This was a great courtroom victory for Buc-ees and it’s because Tracy did an amazing job,” Nadalo said. “Throughout the trial, Tracy broke down the complex issues in the case for the jury, presenting them in a unique fashion with PowerPoint and testimony.
“Tracy does a terrific job of connecting with the jury and telling a story and explaining a complex business or legal issue in a way that everyone can understand and appreciate,” Nadalo said. “He deserves to be the business litigator of the year.”
For a longer version of this article, please visit TexasLawbook.net.