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        United States Court of Appeals
             for the Fifth Circuit                                United States Court of Appeals
                                 ____________                              Fifth Circuit

                                                                         FILED
                                  No. 22-40587                          July 8, 2024
                                 ____________
                                                                    Lyle W. Cayce
                                                                         Clerk
Gibson, Incorporated, a Delaware corporation,

                                              Plaintiff—Appellee/Cross-Appellant,

                                         versus

Armadillo Distribution Enterprises, Incorporated, a
Florida corporation; Concordia Investment Partners, L.L.C.,

                                 Defendants—Appellants/Cross-Appellees.
                   ______________________________

                   Appeal from the United States District Court
                        for the Eastern District of Texas
                             USDC No. 4:19-CV-358
                   ______________________________

Before Stewart, Clement, and Ho, Circuit Judges.
Carl E. Stewart, Circuit Judge:
       Plaintiff     Gibson,    Inc.     brought     trademark-infringement             and
counterfeiting      claims     against    Defendants        Armadillo     Distribution
Enterprises, Inc. and Concordia Investment Partners, LLC. After a ten-day
trial, the jury found in favor of Gibson on several counts of infringement and
counterfeiting but also found that the doctrine of laches applied to limit
Gibson’s recovery of damages. In deciding Gibson’s omnibus motion in
limine, the district court excluded wholesale decades of third-party-use
evidence that Armadillo and Concordia submitted in support of their
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genericness defense and counterclaim. Armadillo and Concordia appeal that
exclusion order. Because we hold that the district court abused its discretion,
we REVERSE and REMAND for a new trial.
      I. Factual Background & Procedural History
         A. Factual Background
         A standard modern electric guitar consists of three main parts: the
body, neck, and headstock. The body is the largest part of the instrument,
and strings run upward from the body, over the neck, and tie into rods on the
headstock. The body of an electric guitar has electronic “pickups” that
capture and transmit soundwaves and control knobs that further modify the
instrument’s tonal characteristics. Spaced along the neck at set intervals are
“frets,” which mark the positions for the player to play the appropriate note
by varying the length of the string played. At the end of the neck is the
headstock, a block containing the rods that stretch the strings to different
tension levels. A player adjusts the pegs protruding from the headstock to
alter the guitar’s tune. This suit arises from a dispute regarding body and
headstock shapes as well as the use of word marks on the guitar headstocks.
               i. A Brief History of Gibson Guitars
         Gibson has produced guitars since the 1800s and in the 1940s
produced its first electric guitar, which had a solid body and a headstock in
the shape of dove wings. Over the latter half of the twentieth century, Gibson
became a larger player in the instrument market, with its growth coming after
its introduction of the Flying V and Z-shaped Explorer electric guitars in the
1950s.
         In that same decade, Gibson ventured into semi-hollow guitar bodies,
releasing its ES-335 design. The body of an ES-335 is symmetrical, with wings
similar to Mickey Mouse’s ears protruding from each side. In 1960, Gibson
introduced the Standard Guitar, or “SG.” The SG model offered a slimmer
body with horns sticking out from the connection of the guitar’s neck and




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body. The United States Patent and Trademark Office (“USPTO”) issued
Gibson trademark registrations for the body shapes, dove-wing headstock,
and the “Hummingbird” word mark. As Gibson continued producing
electric guitars, a new brand of electric guitars emerged: the so-called “Dean
Brand Guitar.”
              ii. A Brief History of Dean Brand Guitars
       Dean Zelinsky founded Dean Guitars, Inc. in 1976, in Evanston,
Illinois. The Dean brand released two guitar models in January 1977, the
Dean V and Dean Z. Both models grew in popularity during the 1980s, and
popular guitarists from rock bands Kansas, Heart, Def Leppard, and ZZ Top,
played on Dean model guitars. In 1991, Zelinsky sold his business to Tropical
Music Export Enterprises, Inc., which continued to promote and produce
electric guitars under the Dean house mark, including body shapes similar to
the Dean V and Dean Z until 1995.
       Armadillo then purchased the Dean brand and to date has promoted,
manufactured, and sold guitars under the same profile and specifications as
the original Dean V and Dean Z guitars released in 1977. Shortly after
acquiring the rights to produce Dean guitars, Armadillo began selling Dean-
branded guitars, including the Dean V and Dean Z models and a winged
headstock.
       In 2010, Armadillo introduced its Luna Athena acoustic guitar model,
a hollow-body style, similar to Gibson’s ES-335. The Luna brand strictly
produced acoustic guitars. One of Armadillo’s guitars in the Luna line was
the “Hummingbird” acoustic guitar. In 2013, Armadillo released its “Gran
Sport” model guitar, which—similar to Gibson’s SG model—sported a body
with horns poking up towards the guitar’s neck.
              iii. Gibson’s and Armadillo’s IP Disputes
       Reviewing precisely how this lawsuit was initiated requires turning
back the clock to the early 2000s. In 2004, Concordia, as a holding company




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for Armadillo, filed a trademark application with the USPTO to register a
winged-silhouetted headstock design without any brand name on it. Gibson
opposed Concordia’s application based on a likelihood of confusion with its
own dove-wing headstock, and the Trademark Trial and Appeal Board
(“TTAB”) heard the dispute. Initially, the TTAB declined to issue
Concordia a registered trademark due to similarities in the design of “the
undulating curved top of its peg head.”
       In that same year, the parties drafted an agreement allowing Armadillo
and Concordia to license the rights to use Gibson’s Flying V and Explorer
shapes and requiring Armadillo to secure Gibson’s approval for any
successor shapes derived from the Dean V and Dean Z. The agreement
stipulated that Gibson would drop its opposition to Concordia’s headstock
registration application and that it would receive royalties in return for the
sales of Dean-branded guitars utilizing the Flying V and Explorer shapes.
However, the parties did not consummate the agreement, and the dispute
languished in the TTAB until 2009. During this period, Armadillo retained
Zelinsky, Dean Guitars’ founder, as a consultant for its own guitars bearing
the Dean brand house mark. The TTAB denied Concordia’s application on
June 10, 2009, and held that the Dean headstock was likely to cause confusion
with Gibson’s dove-wing headstock.
       In 2015, a Gibson executive received reports from the company’s
primary trademark-compliance investigator, reigniting the dispute between
Gibson and Armadillo. The executives at Gibson averred that they believed
the dispute had been settled by agreement years prior. Upon learning that the
deal was never finalized, Gibson sought to negotiate a new royalty deal or
settlement. These efforts stalled due to Gibson’s filing of a voluntary petition
for bankruptcy reorganization in May 2018. In November 2018, Gibson
emerged from its Chapter 11 proceeding with new executive leadership that




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unsuccessfully attempted to reach an agreement with Armadillo and
Concordia.
       B. Procedural History
       On May 14, 2019, Gibson filed the instant lawsuit against Armadillo
and Concordia. It brought Lanham Act and Texas common law claims for
willful trademark infringement, willful counterfeiting, false designation of
origin, passing off, unjust enrichment, and unfair competition. It alleged that
Armadillo infringed on four of its trademarked guitar body shapes, one
trademarked guitar headstock shape, and two word marks (collectively, the
“Gibson Trademarks”). Gibson asserted a claim for contributory trademark
infringement under the Lanham Act against Concordia. It sought damages
and a permanent injunction preventing further infringement and
counterfeiting of the Gibson Trademarks. At the close of discovery,
Armadillo moved for summary judgment, arguing that (1) all of Gibson’s
claims were barred by the doctrine of laches, (2) Gibson’s marks were
commercially weak or generic, (3) Armadillo’s guitars were always sold with
their own branded house marks, (4) Gibson failed to create a genuine dispute
of material fact as to the existence of actual confusion between the alleged
infringing products and Gibson’s products, (5) consumers in the guitar
market are accustomed to distinguishing different brands from each other,
and (6) Armadillo’s and Concordia’s use of their own house marks on the
allegedly counterfeit products demonstrates that Gibson’s counterfeit claims
must fail as a matter of law. The district court determined that Armadillo
failed to demonstrate “that there is no material issue of fact as to these claims
[that] entitled it to judgment as a matter of law.”
       A few days before trial, the district court made various evidentiary
decisions from the parties’ motions in limine, including Gibson’s omnibus
motion in limine. The omnibus motion’s sixth motion (“MIL6”) sought
exclusion of all arguments and evidence relating to “advertisements or sales




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of third-party guitars prior to 1992” due to their limited probative value and
the risk of unfair prejudice and the presentation of cumulative evidence.
Gibson further argued that evidence predating Armadillo’s acquisition of the
Dean brand in 1997 should be excluded due to hearsay and authentication
issues, marginal relevance, and improper foundation. Thus, Gibson asserted
that any third-party-use evidence must be restricted to the five-year period
preceding Armadillo’s and Concordia’s acquisition of the rights to produce
Dean guitars in 1997.
       Armadillo and Concordia opposed MIL6, arguing that evidence of
third-party use is highly relevant to genericness and that no legal authority
supported a determination that third-party evidence predating a
competitor’s market entry is irrelevant to evaluating the strength of a mark.
The district court partially granted MIL6, limiting Armadillo to evidence of
third-party use from 1992 to the present, beginning five years before it
acquired the Dean brand from Tropical Music (the “First Exclusion
Order”). In its First Exclusion Order, the district court noted that evidence
of third-party use—even where the evidence predates the time period at issue
in the litigation—is relevant to the inquiry of determining whether a
plaintiff’s marks are generic or otherwise unprotectable. The district court
quoted the Federal Circuit’s decision in Converse, Inc. v. International Trade
Commission, 

 (Fed. Cir. 2018) for the proposition that
third-party use “older than five years should only be considered relevant if
there is evidence that such uses were likely to have impacted consumers’
perceptions of the mark as of the relevant date.” Thus, the district court
concluded that the probative value of evidence of third-party use before the
1990s was low and that the five-year cutoff date was reasonable.
       Armadillo and Concordia objected to the determination, and the
district court heard further oral argument as to the third-party-use evidence
issue. As a result, the district court issued a Second Exclusion Order that




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upheld its MIL6 determination because “concerns regarding judicial
efficiency and possible confusion with the jury compel[led]” adherence “to
a cut-off date.” In Armadillo’s formal offer of proof during trial, it referenced
the fact that the excluded evidence of third-party use was relevant to the
genericness of Gibson’s claims.
       The parties proceeded to trial on May 16, 2022. At trial, Armadillo
moved for judgment as a matter of law before the close of the evidence. The
district court denied the motion, concluding that it presented factual issues
for the jury to decide. After a ten-day trial, the jury returned a verdict finding
that: (1) Armadillo infringed on all of the Gibson Trademarks except for the
Flying V word mark, (2) Armadillo marketed counterfeits of the Flying V
body shape, the Explorer body shape, the SG body shape, and the
“Hummingbird” word mark, (3) Gibson inexcusably delayed asserting its
trademark rights in the dove-wing headstock, Flying V body shape, and
Explorer body shape, thus barring recovery of damages under the doctrine of
laches, (4) Armadillo and Concordia did not act with “unclean hands” in
connection with their use of Gibson’s marks, (5) Gibson suffered no actual
damages from Armadillo’s infringement, but was entitled to an award of
$4,000 in statutory damages under its Lanham Act counterfeiting claim, (6)
none of the Gibson body shapes’ marks should be cancelled due to
genericness, and (7) Gibson did not tortiously interfere with Armadillo’s
prospective business relationships. After supplemental briefing and before
final judgment, the district court granted a permanent injunction against
Armadillo and Concordia prohibiting the sale of the infringing products.
       Armadillo and Concordia filed a motion for post-trial relief that
offered a renewed motion for judgment as a matter of law and sought relief
pursuant to Federal Rules of Civil Procedure 50(b), 59(a), 59(e), and 60(a)–
(b). Armadillo and Concordia also moved for a new trial and vacatur of the
permanent injunction based on the district court’s erroneous granting of




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MIL6. They further contended that Gibson’s infringement and
counterfeiting claims were not cognizable as a matter of law and lacked
sufficient evidence to sustain the jury’s verdict. The district court denied the
motion for post-trial relief in its entirety. Armadillo and Concordia timely
appealed.
                         II. Standard of Review
       “We review rulings on motions in limine for abuse of discretion.”
Dial One of the Mid-South, Inc. v. BellSouth Telecomms., Inc., 

 (5th Cir. 2001) (citation omitted). To show an abuse of discretion, the
appellant must demonstrate that the district court’s evidentiary decision was
“based on an erroneous view of the law or on a clearly erroneous assessment
of the evidence.” Bocanegra v. Vicmar Servs., Inc., 

 (5th Cir.
2003) (citation omitted). The appellant must also show prejudice from the
grant or denial of a motion in limine. Hesling v. CSX Transp., Inc., 

, 643 (5th Cir. 2005) (citing Buford v. Howe, 

 (5th Cir.
1994)). Thus, a ruling that constitutes “an abuse of discretion in admitting or
excluding evidence” will be affirmed “under the harmless error doctrine”
unless “the [evidentiary] ruling affected substantial rights of the complaining
party.” Bocanegra, 

.
                               III. Discussion
       In addressing a motion in limine, the “trial court must weigh the
evidence’s contribution to the case against any potential prejudice or
confusion.” F.D.I.C. v. Wheat, 

 (5th Cir. 1992). Armadillo1
contends that the district court abused its discretion by excluding decades of
third-party-use evidence predating the registration of the Gibson
Trademarks. It further asserts that the wholesale exclusion of this evidence

       _____________________
       1
          Because Armadillo and Concordia jointly prosecute this appeal, the discussion
section refers to them collectively as “Armadillo.”




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was not harmless error because the evidence was central to both Armadillo’s
counterclaim seeking cancellation of Gibson’s marks and its main defense of
genericness. For the reasons given below, we agree.
         A. Abuse of Discretion
         Third-party-use evidence, or evidence demonstrating an alleged
trademark’s usage by parties other than the alleged infringer or rightsholder,
is often relevant to show the genericness of a mark. See Springboards to Educ.,
Inc. v. Houston Indep. Sch. Dist., 

 (5th Cir. 2019) (“Extensive
third-party use of a term throughout the market suggests that consumers will
not associate the junior mark’s use with the senior mark user.” (citation
omitted)). A mark that is generic is not entitled to trademark protection. See
Xtreme Lashes, LLC v. Xtended Beauty, Inc., 

 (5th Cir.
2009).
         In the proceedings below, the district court excluded wholesale third-
party-use evidence central to Armadillo’s genericness counterclaim and
defense based on Federal Rule of Evidence 403 and Converse, 

.
We examine each of these rationales in turn, beginning with the latter.
                i. Converse
         On appeal, Armadillo argues that the district court abused its
discretion by relying on Converse to exclude third-party-use evidence
predating 1992. Armadillo explains that Converse is inapposite because that
case concerns secondary meaning and not genericness; thus, according to
Armadillo, Converse cannot support the proposition that only certain
temporal evidence is relevant to a genericness defense or counterclaim. In
response, Gibson asserts that the district court appropriately relied on
Converse in making its evidentiary ruling because secondary meaning and




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genericness are closely interrelated issues. 2 It further contends, relying on
Converse, that the five-year period predating the infringement is the “most
logical measuring line” because “[c]onsumers are more likely to remember
and be impacted in their perceptions by third-party uses within five years and
less likely with respect to older uses.” Gibson alternatively argues that 

 bars Armadillo from introducing pre-1992 third-party-use
evidence because Section 1064 provides that a petition to cancel a mark’s
registration may be filed only “[w]ithin five years from the date of the
registration of the mark.” We are unconvinced by Gibson’s arguments.
        In Converse, the court did not determine that third-party-use evidence
older than five years before the alleged infringer’s first use was irrelevant to
a genericness analysis. See 

. Rather, the Federal Circuit
analyzed whether such evidence provides the best evidence to determine
whether a mark has attained secondary meaning in the minds of consumers.
See 

 It determined that “[third-party] uses older than five years should only
be considered relevant if there is evidence that such uses were likely to have
impacted consumers’ perceptions of the mark as of the relevant date.” 

Notably, the Federal Circuit remanded the case to the International Trade
Commission to examine whether “[e]vidence older than th[e] five-year
period” was relevant. 

. With this added context, it is clear that
Converse does not compel a strict five-year limitation of third-party-use
evidence and, if anything, compels trial courts to examine whether older
evidence is relevant.

        _____________________
        2
          The parties’ debate about secondary meaning versus genericness is beside the
point because, as explained below, Converse did not impose any sort of categorical five-year
limitation on admissible evidence—regardless of whether that evidence went to
genericness or secondary meaning or both—and in fact instructed the lower court to
consider whether evidence predating that five-year window is relevant. 909 F.3d at 1121–
22.




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        Converse is instructive here because there is scant circuit authority
addressing the relevance of third-party-use evidence dating back several
decades. 3 Converse detailed that third-party-use evidence older than five
years before the date of infringement is relevant “if there is evidence that
such uses were likely to have impacted consumers’ perceptions of the mark
as of the relevant date.” 

.
        On that question, in numerous cases, both inside and outside of the
trademark-registration-challenge context, courts 4 and the TTAB have
examined third-party-use evidence from decades prior to the five-year period
before the alleged infringement. See, e.g., In re Jasmin Larian, LLC, No.
87522459, 

, at *7 (T.T.A.B. Jan. 19, 2022) (holding
trademark generic where the “Examining Attorney [] presented substantial
evidence that third parties have sold, offered for sale, and/or otherwise
advertised, discussed or promoted identical or nearly identical handbags

        _____________________
        3
          We have never confronted this precise issue of placing temporal limitations on
the exclusion of third-party-use evidence based on relevancy to a claim of genericness. Cf.
Amstar Corp. v. Domino’s Pizza, Inc., 

, 259–60 (5th Cir. 1980) (examining
district court’s discounting of decades of third-party uses in likelihood-of-confusion
analysis where a mark’s distinctiveness was conceded and genericness was not argued at a
bench trial).
        4
           Malaco Leaf, AB v. Promotion in Motion, Inc., 

, 364–65
(S.D.N.Y. 2003) (holding that decades of unchecked third-party use of product design
trade-dress for gummy candy fish was relevant to the genericness of the contested mark);
BellSouth Corp. v. White Directory Publishers, Inc., 

, 607–10, 610 n.5
(M.D.N.C. 1999) (determining that thirty years of third-party use of the “walking fingers”
rendered the logo “an unprotectible mark”); see generally Ale House Mgmt., Inc. v. Raleigh
Ale House, Inc., 

, 142 (4th Cir. 2000) (“Trade dress should be considered
generic if ‘well-known’ or ‘common’ . . . or a ‘common basic shape or design’ . . .”)
(citation omitted); Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 

 (2d
Cir. 1997) (“Yet trade dress protection has its limits. A trade dress that consists of the
shape of a product that conforms to a well-established industry custom is generic and hence
unprotected.”).




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prior to and concurrently with Applicant’s use [beginning on January 27,
2013], and that consumers have seen identical or nearly identical handbags
emanating from parties other than Applicant since at least the 1940s and
recognize Applicant’s mark as a common design”) (emphasis added); Stuart
Spector Designs Ltd. v. Fender Musical Instruments Corp., 

,

, at *8 (T.T.A.B. 2009) (examining evidence of third-
party-use of the contested guitar-body shapes dating back several decades).
       Here, Armadillo argues that it was “prepared to present ample
evidence that older third-party uses of the [body shapes] had affected
consumer perceptions as of the date of either Armadillo’s first alleged
infringement or the dates of the body shapes’ respective registrations.” In its
opposition to MIL6, Armadillo averred that testimony from both experts on
both sides of this case would demonstrate how third-party uses from the
1960s to the present “have impacted consumer perceptions of Gibson’s
[body shapes] over the years such that those shapes are either generic or, at
a minimum, incredibly weak.”
       Armadillo thus provided—or was prepared to provide—evidence that
third-party uses of the body shapes prior to the five-year period fashioned in
this case were relevant to the genericness inquiry. The district court did not
even consider the relevance of the pre-1992 evidence in light of this showing.
So, to the extent that its reliance on Converse would be appropriate, the
district court misapplied it by not giving Armadillo the opportunity to
demonstrate relevance. We conclude that the district court erred by
excluding wholesale, without proper consideration or explanation, all pre-
1992 third-party-use evidence. See Bocanegra, 

.
       Gibson’s interpretation of Sections 1064(1) and (3) does not save the
district court’s evidentiary ruling. Gibson argues that Armadillo is barred by
statute from even arguing pre-1992 genericness at this point. Under Gibson’s
reading of the relevant statute, once five years have passed from a mark’s




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registration, a challenging party loses any opportunity to argue that the mark
was generic before registration and, going forward, may argue only that the
registered mark has become generic since registration. It is true that Section
1064 of the Lanham Act freely allows cancellation actions brought within five
years of registration but limits the options for a party seeking such relief after
that window passes. See 

. But Gibson’s construction
conflicts with other provisions of the statute—namely, Section 1065(4),
which provides that “no incontestable right shall be acquired in a mark which
is the generic name for the goods or services or a portion thereof, for which
it is registered.” 

(4). This provision notes no sort of time
limitation for bringing a claim that a party’s mark became generic before
registration. To the contrary, we have held that “if it is determined that the
mark is generic, it can never become incontestable.” Texas Pig Stands, Inc. v.
Hard Rock Café Int’l, Inc., 

, 689 n.5 (5th Cir. 1992) (emphasis
added). Thus, the Lanham Act allows for a petition filed more than five years
after registration to cancel a trademark on the theory that the mark was
generic prior to registration. Reading these provisions together demonstrates
that Section 1064 does not stretch so far as to per se bar third-party-use
evidence predating five years before the first alleged infringing use. Because
the district court excluded wholesale the pre-1992 evidence without
examining the possible relevance of that evidence, it abused its discretion.

              ii. Rule 403
       In its Second Exclusion Order, the district court referenced Rule 403
as a basis for the wholesale exclusion. Rule 403 provides that “[t]he court
may exclude relevant evidence if its probative value is substantially outweighed
by a danger of one or more of the following: unfair prejudice, confusing the
issues, misleading the jury, undue delay, wasting time, or needlessly
presenting cumulative evidence.” Fed. R. Evid. 403 (emphasis added). In
MIL6, Gibson sought the wholesale exclusion of third-party-use evidence




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prior to 1992 on the grounds that the admission of such evidence would
disserve judicial economy. The district court agreed. It reasoned that
“concerns regarding judicial efficiency and possible confusion with the jury
compel[led]” adherence “to a cut-off date.”
       We hold that this determination is inconsistent not only with the
district court’s previous holdings in this case addressing Armadillo’s
genericness defense but also with the principle that exclusion of probative
evidence under Rule 403 is “an extraordinary remedy that must be used
sparingly.” Herrington v. Hiller, 

 (5th Cir. 1989) (citation
omitted). Such a sweeping use of Rule 403 conflicts with the principle that
pretrial motions seeking the wholesale exclusion of a class of relevant
evidence require careful review. See Kelly v. Boeing Petroleum Servs., 

, 357 & n.7 (5th Cir. 1995); Jackson v. Firestone Tire & Rubber Co., 

 (5th Cir. 1986). While Rule 403 requires a district court to balance
the proffered evidence with the risk of countervailing concerns, it provides
no basis for the complete exclusion of all third-party-use evidence prior to
1992. Doing so caused substantial prejudice to Armadillo as the party seeking
admission of third-party-use evidence critical to its primary defense. The
district court determined that Armadillo’s third-party-use evidence was
highly relevant at several points during discovery. For instance, it denied a
Daubert motion to exclude Appellant’s music history expert because it
determined that his “opinion aids the jury by providing insight into Gibson’s
trademarks and relevant third-party usage of similar guitar shapes.” Thus, we
hold that the district court abused its discretion in excluding wholesale all
third-party-use evidence predating 1992.
       B. Harmless Error
       As noted above, an abuse of discretion in an evidentiary ruling will not
be overturned absent a showing of substantial prejudice resulting from that
determination. See Hesling, 396 F.3d at 643. In Bocanegra v. Vicmar Services,




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Inc., a pedestrian was fatally injured when he was struck by a streetsweeper
on the median of a highway. 

. On the eve of trial, the
pedestrian’s estate sought to introduce evidence demonstrating that the
driver of the streetsweeper was impaired by the use of marijuana a few hours
prior to the fatal collision. 

 Citing Rule 403 and the Daubert standard, the
district court granted the driver’s motion in limine and excluded the driver’s
expert testimony and an admission from the driver that he had smoked
marijuana a few hours before the incident. 

 at 583–84. The jury returned a
take-nothing verdict, and the pedestrian’s estate appealed. 

 On appeal, this
court determined that the district court’s “reliance on Rule 403 as another
basis to exclude [the relevant expert] testimony concerning cognitive
impairment resulting from [the driver’s] ingestion of marijuana” constituted
an abuse of discretion. 

. This court further held that the error
affected the pedestrian’s substantial rights because “the jury was not
presented with a complete picture of what happened on the night in
question.” 

 This court concluded that the pedestrian’s estate was left with
no means of countering the driver’s argument that he “reacted reasonably
and did the best he could under the circumstances.” 

       Just as in Bocanegra, the jury in this case “was not presented with a
complete picture of what happened” prior to the alleged period of
infringement and heard little to no evidence supporting Armadillo’s theory
that the Gibson Trademarks were generic at the time of their registration. See

 Thus, it is apparent that the wholesale exclusion of all pre-1992 third-
party-use evidence affected Armadillo’s substantial rights. At several periods
in this litigation, the district court agreed that third-party-use evidence is
highly relevant to the genericness analysis and the likelihood of confusion
factors. For instance, the district court previously held that “third-party sales
data are at the core of Armadillo’s argument that Gibson’s marks are
generic” and that such evidence “is therefore necessary to Armadillo’s




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defense.” The trial court also acknowledged that Fifth Circuit precedent says
“that evidence of the state of the market, even where that evidence
‘predates’ the time period relevant to the litigation, is relevant to whether
the marks have become generic.” In granting MIL6 pursuant to Rule 403, the
district court contradicted its prior evaluations of the evidence with only a
few lines of text in its Second Exclusion Order.
        Armadillo’s genericness claim is central to its case because “[g]eneric
marks . . . are categorically excluded from [trademark] protection.” Amazing
Spaces, Inc. v. Metro Mini Storage, 

, 241–42 (5th Cir. 2010). Put
another way, Gibson would not sustain actual or statutory damages if
Armadillo were to prevail on its genericness counterclaim. 5 In its offer of
proof at trial, Armadillo consistently reiterated that the excluded evidence
was relevant to its genericness defense and counterclaim. This claim cannot
be divorced from the rest of the issues on appeal, and the appropriate remedy
to this evidentiary error is to order a new trial. See Brooks v. Great Lakes
Dredge-Dock Co., 

 (5th Cir. 1985) (“Courts must order a
complete retrial of issues ‘unless it clearly appears that the issue to be retried
is so distinct and separable from the others that a trial of it alone may be had
without injustice.” (quoting Gasoline Prods. v. Champlin Ref., 

 (1931)). We conclude that the district court’s abuse of discretion affected
Armadillo’s substantial rights to put on its primary defense to the
infringement and counterfeiting claims against it, and thus, a new trial must
occur. See 

        _____________________
        5
         Armadillo also raised the equitable defense of laches. This court has determined
that “a finding of laches alone” may limit the availability of injunctive relief for a
trademark-infringement claim. See Conan Props., Inc. v. Conans Pizza, Inc., 

 (5th Cir. 1985). From this, it can be said that Armadillo’s primary defense was
genericness, and that the district court’s partial granting of MIL6 severely limited
Armadillo’s ability to support its main theory of the case.




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Case: 22-40587      Document: 109-1        Page: 17   Date Filed: 07/08/2024




                                 No. 22-40587


                            IV. Conclusion
       In sum, we hold that the district court abused its discretion in
excluding wholesale all pre-1992 evidence of third-party use of the Gibson
Trademarks pursuant to Rule 403. Rule 403’s ambit does not contemplate
broad, case-dispositive exclusions that severely restrict a party’s ability to
advance its primary defense to a cause of action. Thus, we REVERSE and
REMAND with instructions to hold a new trial.




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