## Facts

- Conan Properties, Inc. (CPI) owned rights in the fictional character “CONAN THE BARBARIAN” and held a federal registration for that mark for comic books.
- Conans Pizza, Inc. opened a pizza restaurant in Austin, Texas, in 1976 using the name “Conans Pizza” and barbarian-themed menus, signage, decor, and promotions.
- Conans’ materials depicted a barbarian-like figure closely resembling CPI’s CONAN character and used “sword and sorcery” artwork associated with CONAN illustrations.
- Soon after the restaurant opened, one of CONAN’s creators visited the Austin restaurant, identified himself, expressed friendly approval, and later informed CPI’s board.
- CPI discussed Conans’ use for years but did not sue while Conans expanded within the Austin market.
- CPI sent a cease-and-desist letter in 1981; Conans continued its use.
- In 1982 Conans opened a San Antonio location and considered broader expansion; CPI then sued for trademark infringement, unfair competition, and related state-law claims.
- A jury found infringement and unfair competition but found no damages due to CPI’s unreasonable delay and acquiescence; the district court denied all injunctive relief on equitable defenses.

## Issues

1. Whether laches and acquiescence barred injunctive relief, and if not, what geographic scope of injunction was proper.
2. Whether sufficient evidence supported the finding of a likelihood of confusion between CPI’s CONAN marks and Conans’ name and imagery.

## Decision

- The court affirmed the finding that evidence supported likelihood of confusion and therefore sustained the infringement and unfair competition verdict.
- The court affirmed denial of damages based on the jury’s findings of unreasonable delay and acquiescence.
- The court held CPI was barred from injunctive relief against Conans’ established Austin operations because CPI’s conduct reasonably conveyed consent on which Conans relied.
- The court reversed the blanket denial of injunctive relief and remanded to craft an injunction preventing Conans’ use of the infringing name and imagery outside the Austin area.

## Legal Principles

- Likelihood of confusion is a fact question; an appellate court will not disturb a supported jury finding.
- Acquiescence may estop a trademark owner from obtaining damages and injunctive relief where the owner’s conduct communicates consent and the user relies to its prejudice.
- Laches and acquiescence are equitable defenses whose effect depends on the scope of the owner’s conduct and the defendant’s reliance-based prejudice.
- A trademark owner’s tolerance of a localized use does not, without more, amount to broad abandonment of rights or immunize the user’s later expansion into new markets, especially after the owner objects.

## Conclusion

The Fifth Circuit held that CPI’s long delay and apparent consent barred injunctive relief against Conans’ established Austin restaurants, but did not shield Conans’ expansion beyond Austin; the case was remanded to impose geographically limited injunctive relief outside Austin while leaving Austin operations intact.


Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145 (5th Cir. 1985)