## Facts

- Southern Specialty Brands, Inc. (SSB) acquired the “Adams” trademark and related branding from Ted Adams and related entities.
- SSB granted Regions Bank a security interest in its assets, including trademarks.
- After SSB defaulted, Regions foreclosed on SSB’s assets; Brown Bark II, L.P. purchased the foreclosed assets and claimed ownership of the “Adams” mark.
- Separately, Ted Adams obtained an Alabama state-court judgment declaring Adams the owner of the “Adams” trademark in litigation adverse to SSB/Regions’ interests.
- Dixie Mills, LLC (formed by former SSB shareholders) and others began marketing food products using marks and packaging similar to the Adams-family branding.
- Brown Bark sued in federal court alleging federal and state trademark infringement, trade dress infringement, unfair competition, and civil conspiracy.
- The parties filed cross-motions for summary judgment on ownership and liability.

## Issues

1. Whether Brown Bark had superior, enforceable rights in the “Adams” mark against defendants despite the Alabama judgment declaring Adams the owner.
2. Whether Brown Bark’s acquisition of the mark through foreclosure was an invalid assignment in gross because goodwill did not transfer with the mark.
3. Whether Brown Bark could show protectable rights through secondary meaning for the asserted marks and trade dress.
4. Whether preclusion principles bound Brown Bark to the Alabama judgment based on privity with Regions.
5. Whether a civil conspiracy claim could survive without an underlying tort.

## Decision

- The court granted defendants’ motions for summary judgment on all claims.
- The court denied Brown Bark’s motion for partial summary judgment on ownership and related issues.
- The court held the Alabama judgment bound Brown Bark through privity, defeating Brown Bark’s claimed superior rights.
- The court independently concluded the foreclosure transfer amounted to an assignment in gross, so Brown Bark did not acquire valid trademark rights.
- The court found Brown Bark failed to show secondary meaning linking the marks or trade dress to Brown Bark as a source.
- With no viable infringement or unfair competition claim, the civil conspiracy claim failed for lack of an underlying tort.

## Legal Principles

- A trademark plaintiff must show enforceable rights and priority (superior rights) in the mark to maintain infringement and related unfair competition claims.
- Issue preclusion/res judicata can bind a nonparty who is in privity with a prior litigant, including a successor whose claimed rights are derived from the prior party’s interest.
- Trademark assignments must transfer the associated goodwill; a transfer of a mark without goodwill is an invalid assignment in gross and conveys no enforceable trademark rights.
- Secondary meaning requires proof that consumers primarily associate the designation or trade dress with a particular producer; a claimant that never used the mark in commerce generally cannot establish secondary meaning in itself.
- Civil conspiracy is not an independent cause of action and requires a viable underlying tort.

## Conclusion

The court entered summary judgment for defendants because Brown Bark was bound by a prior state-court ownership judgment, acquired no valid trademark rights through foreclosure due to an assignment in gross, could not prove secondary meaning tied to itself, and therefore lacked the predicate tort necessary for its conspiracy claim.


Brown Bark II, L.P. v. Dixie Mills, LLC, 732 F. Supp. 2d 1353 (N.D. Ga. 2010)