November 9, 2020

Austin-based businessman José B. Sena, and the company he founded, SP Global Inc., successfully defeated a preliminary injunction motion brought by an Israeli company and one its founders relating to the use of the Skinny Pasta trademark. 

“We’re very pleased,” said Sena.  “The court’s ruling supports what we have been saying to our customers all along.” 

The Plaintiffs, Israeli company Skinny Pasta International, Ltd. and one of its founders, Gilad Ivgi, brought suit in the United States District Court for the Western District of Texas claiming that SP Global and Sena were infringing on the Skinny Pasta trademark by selling Skinny Pasta products, which consist of gluten free noodles made from the Konjac plant. 

Led by McGinnis Lochridge team Jonathan Baughman, Michael Kabat, and William Grubb, SP Global successfully argued that it was merely re-selling a limited quantity of Skinny Pasta products that it ordered in anticipation of its purchase of Skinny Pasta International’s business. 

“This was not a typical trademark infringement case,” Baughman said. “Our clients purchased this product with the understanding that they would end up owning the Skinny Pasta business.”  Testimony showed that the transaction fell apart when Ivgi abruptly raised the purchase price at the last minute. “Ultimately, we were able to convince the Court that the Plaintiffs could not show that the product was unauthorized or not genuine.” In his October 27th opinion denying the preliminary injunction, the Honorable Robert Pitman wrote that the “Plaintiffs have not satisfied their burden because they have not made a prima facie showing that the product at issue was not genuine or that its sale to SP Global was unauthorized.”

Travis Wimberly of Pirkey Barber also joined in the successful defense, providing additional expertise regarding trademark issues. “One of the things that we were able to successfully challenge was the registration of the mark,” McGinnis Lochridge partner Michael Kabat said. “Travis was an integral part of that argument, and ultimately the Court found that we were able to raise ‘serious doubts’ about the validity of the trademark registration––an essential element to the Plaintiffs’ claims.”

The preliminary injunction hearing took place over three days, and presented unique challenges due to the COVID-19 pandemic and the foreign location of several key witnesses. “With the Plaintiffs and many witnesses being in Israel, there were many late-night and early-morning Zoom calls,” said Grubb, an Associate in McGinnis’ Houston office.“We were constantly coordinating with Israeli counsel about the translation of documents and ongoing litigation in Tel-Aviv.” 

All told, six different witnesses were presented over Zoom at the hearing, one of which required a translator. “Our team did a great job of overcoming unique challenges and securing a significant victory for our clients,” said Baughman, who heads McGinnis’ Houston office.  “Now, it’s on to the merits stage.”


Skinny Pasta International et al. v. SP Global et al. is currently pending in the United States District Court for the Western District of Texas under case number 1:20-CV-669-RP. Skinny Pasta International Ltd. and Gilad Ivgi are represented by Efrem Schwalb and Gary Serbin of Koffsky Schwalb LLC.

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