If the simultaneous use of different trademarks combine to form an infringing whole, to what extent does an injunction of that combination apply to the individual components (or to, what defendant argues are analogous components)?

Diageo sells CROWN ROYAL whisky in a purple cloth bag. Mexcor began selling TEXAS CROWN CLUB whisky, first without a bag, next in a Texas flag bag, and then a Texas flag bag that had the words TEXAS CROWN CLUB on it. It also branched into ‘local’ brand extensions, such as FLORIDA CROWN CLUB. Diageo sued and prevailed, An injunction issued. Diageo had made a concession that infringement began only when the TEXAS CROWN CLUB bag was used, and thus the two prior stages of use, use without a bag, and use with the ‘unlabeled bag,’ were not infringing.

What are the implications of that concession?

Mexcor now, citing the concession, seeks declaratory relief to peel away from the injunction what it believes are lawful usages inferred by the concession. For example, the concession implies that TEXAS CROWN CLUB in standard characters is non-infringing, therefore FLORIDA CROWN CLUB is non-infringing. Fifth Circuit declines to speculate on such questions that were not directly before the District Court.

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