Trojan Battery v. Golf Carts of Cypress — Fifth Circuit Affirms Trademark Infringement but Narrows Overbroad Injunction

Background

Trojan Battery has manufactured deep-cycle batteries under the TROJAN® brand since 1925. Its batteries dominate the golf-cart market, holding roughly 80% of original-equipment sales and 50% of the aftermarket. The brand commands premium pricing and generates hundreds of millions of dollars in annual golf-cart battery revenue.

In 2020, Federico Nell founded Trojan EV, L.L.C. to sell new golf carts under the “TROJAN-EV” mark. Trojan Battery sent a cease-and-desist letter the following year, but Nell refused to stop using the mark. Trojan Battery then sued for trademark infringement and unfair competition under the Lanham Act and Texas common law.

After a four-day bench trial in 2023, the district court found Trojan EV and its sister dealership Golf Carts of Cypress liable for infringement. It awarded Trojan Battery disgorgement of the defendants’ profits—totaling approximately $1.3 million from Trojan EV and $3.4 million from Golf Carts of Cypress—and issued a permanent injunction. The defendants appealed.

The Court’s Holding

The Fifth Circuit affirmed both the liability finding and the disgorgement award but vacated the permanent injunction as overbroad.

Likelihood of confusion: Applying the circuit’s eight-factor “digits of confusion” test, the court found no clear error in the district court’s conclusion that confusion was likely. Six of the eight factors favored Trojan Battery, including the strength of the TROJAN mark, the high similarity between “TROJAN” and “TROJAN-EV,” the complementary nature of batteries and golf carts, overlapping retail channels and advertising, and the degree of care exercised by buyers. Notably, the court reversed the district court on one factor—actual confusion—finding that only five documented instances over two-and-a-half years of concurrent sales were “insufficient” given the parties’ multi-million-dollar sales volumes, citing Amstar Corp. v. Domino’s Pizza. But this reversal did not change the bottom line.

Willful infringement: The court upheld the district court’s credibility finding that Nell knew about TROJAN batteries before choosing the TROJAN-EV name. Evidence showed Nell’s dealership had been selling TROJAN-branded batteries, and his employee had negotiated to buy Trojan batteries at a premium price. The district court found Nell’s testimony that he did not learn about TROJAN batteries until after founding Trojan EV to be untruthful—a determination entitled to heightened deference on appeal.

Disgorgement: The court held that disgorgement was proper given the willful infringement, the risk of diverted sales, and the public interest in making the misconduct unprofitable. It also approved the district court’s application of the Lanham Act’s burden-shifting framework, under which the plaintiff need only prove the defendant’s sales; the burden then shifts to the defendant to prove any costs or deductions.

Permanent injunction vacated: The injunction barred the defendants from using “TROJAN” on any goods or services. The Fifth Circuit held this was too broad because the likelihood of confusion arose specifically in the golf-cart and golf-cart-battery markets. The court observed that “TROJAN” appears in other well-known brands—including Trojan condoms and the University of Southern California mascot—making confusion unlikely outside the golf industry. The court declined to apply the “safe distance” rule aggressively here, finding that Nell’s willfulness was based primarily on a credibility determination rather than a “history of improper behavior.” The case was remanded for a narrower injunction covering only the golf-cart and golf-cart-battery markets.

Key Takeaways

• Actual confusion is not required. Even after reversing the district court on the actual-confusion factor, the Fifth Circuit affirmed infringement because the remaining seven digits of confusion overwhelmingly favored the plaintiff. Trademark owners do not need to document a critical mass of confused consumers to win.
• Credibility findings on willfulness are nearly untouchable. The heightened deference owed to trial courts’ credibility determinations made it nearly impossible for defendants to challenge the willful-infringement finding on appeal, even when the evidence was characterized as “a close question.”
• Injunctions must match the market where confusion occurs. Courts cannot issue blanket injunctions prohibiting all use of a mark when the infringement and confusion are limited to a specific industry. The “safe distance” rule is not a license for unlimited scope, especially when the mark at issue (here, “Trojan”) has other well-known uses in unrelated markets.
• Disgorgement survives even without proof of diverted sales. The Fifth Circuit confirmed that a plaintiff need not show actual lost sales to obtain disgorgement; the remedy also serves to prevent unjust enrichment and deter future willful infringement.

Why It Matters

This decision is a practical guide for trademark owners who discover competitors adopting confusingly similar marks for complementary products. Trojan Battery obtained a substantial financial recovery—nearly $4.7 million in disgorgement—but its permanent injunction was trimmed because the trial court overreached. The lesson for IP litigators: tailor injunctive relief to the specific markets where confusion actually exists. A mark that is famous in one industry does not automatically warrant protection across all goods and services, particularly when other businesses have independently built goodwill in the same word.

For entrepreneurs and brand owners, the case also underscores that choosing a name similar to an established brand in a related market is a high-risk strategy. Nell’s decision to use “TROJAN-EV” for golf carts sold through the same channels as TROJAN batteries proved extraordinarily expensive.

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