Trieu, LLC v. Nguyen et al — Court Enforces Trademark Settlement, Orders Specific Performance and Permanent Injunction

Background

Trieu, LLC, a Tennessee limited liability company with a principal place of business in Coral Springs, Florida, is the registrant of six federal trademark registrations covering the VENETIAN and VENETIAN NAIL SPA word marks and related design marks used for nail salon services. On April 29, 2024, Trieu filed a trademark infringement action in the Northern District of Texas against Phuc C. Nguyen, Thanh Mai Do, Venetian Nail Spa LLC, and Venetian Nails & Hair Inc., all located in Amarillo, Texas. On July 20, 2024, the parties executed a written Settlement Agreement under which the Defendants agreed to permanently cease using marks identical or confusingly similar to Trieu's marks, change their business name to "Vernet Nail Spa" within 120 days, and file all documents necessary to implement the name change.

On July 25, 2024, Trieu filed a Notice of Voluntary Dismissal Without Prejudice, and the next day the Court dismissed the action while expressly retaining jurisdiction to enforce the Settlement Agreement. On August 7, 2026, Trieu filed a Motion to Enforce Settlement Agreement, which the Defendants did not oppose. Trieu argued that the Defendants continued to infringe its trademarks in violation of the agreement and requested a finding of material breach, specific performance, and a permanent injunction directing the Defendants to cease all use of confusingly similar marks in any medium, adopt the new trade name, file the required governmental documents, and provide written proof of compliance, along with attorneys' fees and costs.

The Court’s Holding

The Court granted the Motion to Enforce Settlement Agreement. It held that a district court has inherent power to enforce settlement agreements and that ancillary jurisdiction supports enforcement because the dismissal order expressly retained jurisdiction, citing Kokkonen v. Guardian Life Insurance Co. of America. Treating the settlement agreement as a contract that may not be repudiated absent fraud, deception, coercion, or overreaching, the Court found the agreement expressly required the Defendants to cease use of all marks identical or confusingly similar to Trieu's registered marks within 120 days of July 20, 2024, and to adopt "Vernet Nail Spa" as the trade name for the salon at 6017 Hillside Road, Unit 800, Amarillo, Texas.

The Court determined that the Defendants materially breached the agreement by continuing to use confusingly similar marks, failing to adopt the new trade name, and failing to file the documents necessary to effectuate the name change. It therefore ordered specific performance: the Defendants must permanently cease all use of marks identical or confusingly similar to Trieu's registered marks, adopt "Vernet Nail Spa" as the business trade name for the salons, file all documents necessary to effectuate the name change with the appropriate governmental authorities, and provide Trieu written proof of full compliance. The Court further ordered Trieu to pursue any request for attorneys' fees through a separate motion under Rule 54(d)(2)(A).

Key Takeaways

• A district court may enforce a settlement agreement through its inherent power and ancillary jurisdiction when the dismissal order expressly retains jurisdiction to do so.
• Specific performance is an available equitable remedy for breach of a settlement agreement, and courts may issue permanent injunctions to enforce trademark-related rebranding obligations.
• Because the Defendants did not respond to the enforcement motion, the Court resolved the unopposed motion on the motion, briefing, and relevant law.
• Attorneys' fees incurred in enforcing a settlement agreement must be sought by separate motion under Rule 54(d)(2)(A), not within the enforcement motion itself.
• Trademark owners can secure ongoing compliance with settlement terms by including express jurisdiction-retention language in dismissal orders.

Why It Matters

The decision illustrates how express jurisdiction-retention provisions in dismissal orders allow trademark owners to return to court years later to enforce settlement terms through specific performance and permanent injunctions rather than filing a new infringement action. It confirms that continued use of confusingly similar marks after a settlement constitutes a material breach warranting injunctive relief across all media, including signage, storefronts, websites, social media, and advertising.

For practitioners, the ruling underscores two drafting and procedural points: settlement agreements should clearly define cessation and rebranding deadlines, and fee requests in enforcement proceedings must follow Rule 54(d) separate-motion procedures. The unopposed posture here shows that courts will still examine the agreement's terms and the record before ordering compliance.