A luxury Western wear retailer is under scrutiny for alleged trademark abuse and abandonment. On August 30, 2024, New World Assets, LLC filed a complaint in the Harris County District Court against Pinto Western Retail Holdings, L.P., and several associated entities.
The plaintiff, New World Assets, LLC, claims that the defendants have misused and abandoned various trademarks related to the "Pinto Ranch" brand. The complaint details that Pinto Ranch operates high-end retail stores specializing in cowboy boots, hats, apparel, and accessories celebrating American West heritage. These stores are located in Houston and Dallas, Texas. The trademarks in question include "PINTO RANCH," "PINTO RANCH & Design," "PINTO YY RANCH," and "YY & Design." According to the complaint, these trademarks were initially owned by Cockrell Interests LLC but were later assigned to Guido Caranti.
New World Assets alleges that Guido Caranti does not manufacture goods or provide retail services under the Pinto Ranch marks. Furthermore, there are no licensing agreements between Caranti and any of the entities operating Pinto Ranch stores—namely Pinto LP, Pinto GP, Pinto Houston, Pinto IAH, and Pinto Dallas. Even if such licenses exist, the plaintiff argues that they constitute "naked licenses" because Caranti does not control the quality of goods and services provided under these marks. A naked license is when a trademark owner allows others to use their mark without ensuring quality control over the products or services offered under that mark. This can lead to abandonment of trademark protection.
The complaint also highlights an abrupt closure of all Pinto Ranch storefronts and online operations around June 15-20, 2024. Media reports from ABC 13 Houston and other outlets noted that customer orders were left unfulfilled and it was impossible to make purchases either online or in-store. Following this closure, New World Assets filed an application with the United States Patent and Trademark Office (USPTO) to register the "Pinto Ranch" trademark.
New World Assets seeks a court order for pre-suit discovery to investigate potential claims further. They request depositions from corporate representatives of each respondent entity involved with Pinto Ranch. The plaintiff aims to uncover documents related to assignment agreements between Cockrell Interests LLC and respondents concerning PINTO RANCH Marks; any licensing agreements involving Guido Caranti; communications regarding store closures; and business relationships among respondents vis-a-vis PINTO RANCH Marks.
Representing New World Assets is attorney Justen S. Barks from Barks PLLC. The case has been assigned Case ID 2024-58566 in Harris County District Court with Judge Wanda Chambers presiding.