Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA195762
`ESTTA Tracking number:
`03/03/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177695
`Plaintiff
`RobertoNoble
`Michael I. Santucci, Esq.
`Silverman Santucci, LLP
`Suite 500, 500 West Cypress Creek Road
`Fort Lauderdale, FL 33309
`UNITED STATES
`mis@500law.com
`Motion to Suspend for Civil Action
`Michael I. Santucci, Esq.
`mis@500law.com,joanna@500law.com
`/Michael I. Santucci/
`03/03/2008
`MT Suspend - 91177695.pdf ( 28 pages )(959270 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application
`Serial No. 78/955,663
`,
`for the mark BONGOS CUBAN CAFE
`_____________________________________________________________ __X
`
`ROBERTO NOBLE,
`
`'
`
`Opposer,
`
`V.
`
`Opposition No. 91177695
`
`ESTEFAN ENTERPRISES, INC.
`
`:
`Applicant.
`_____________________________________________________________ __X
`
`ROBERTO NOBLE'S MOTION TO SUSPEND PROCEEDINGS PENDING THE
`
`DETERMINATION OF A FEDERAL DISTRICT CIVIL ACTION
`
`Opposer, ROBERTO NOBLE, ("Noble"), by and through undersigned counsel, pursuant
`
`to TBMP §510.02(a), hereby requests the Board suspend this action pending the outcome of a
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`federal district court proceeding, and states:
`
`1.
`
`Noble brings to the Board's attention the pendency of the action in the United
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`States District Court for the Southern District of Florida, styled Marrero Enterprises of Palm
`
`Beach,
`
`Inc. v. Estefan Enterprises,
`
`Inc., Case No. 06—CIV—8l036— Ryskamp (the "Marrero
`
`action").
`
`2.
`
`On October 31, 2006,
`
`the undersigned attorney in this proceeding filed a
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`Complaint for Declaratory Judgment on behalf of Marrero Enterprises of Palm Beach, Inc.
`
`("Marrero") against ESTEFAN ENTEPRISES, INC. (“EEI”) in West Palm Beach, Florida. The
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`Marrero action involves a claim by Marrero for a declaration of non—infringement between
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`COCO BONGO as a trademark and EEI's BONGOS CUBAN CAFE trademark (see Complaint
`
`for Declaratory Relief attached hereto as Exhibit “A ”); a declaration that EEI’s mark is not
`
`

`
`protectable in the bar, nightclub, and entertainment industries; and for Cancellation of EEI’s U.S.
`
`Registration No. 2,490,999. EEI asserted an Amended Counterclaim for infringement of its
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`BONGOS CUBAN CAFE mark (see Amended Counterclaim attached hereto as Exhibit “B ”).
`
`Marrero also raises many of the same affirmative defenses as Noble has raised herein. On
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`November 29m, 2007, the U.S. District Court in the Marrero action joined Noble as a necessary
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`party to that action. Marrero and Noble have also recently filed a motion for leave to jointly file
`
`an Amended Complaint in the Marrero case.
`
`3.
`
`On September 19, 2006, Marrero assigned all right, title and interest in its COCO
`
`BONGO marks to Noble. Noble licensed to Marrero the right to use his COCO BONGO
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`trademark.
`
`4.
`
`The final determination of the Marrero action may have a bearing on the issues
`
`before the Board, because both proceedings are between the same parties concerning the same
`
`trademark rights.
`
`5.
`
`In its Order dated January 29th, 2008, in a related Board proceeding involving EEI
`
`and Noble (Estefan Enterprises, Inc. v. Roberto Noble and Bongo SA de CV, consolidated
`
`proceeding Opposition No. 91 l2l980), the Board suspended proceedings pending disposition of
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`the civil litigation (Marrero action), and stated that “[i]n view of the relationship between
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`Marrero and Noble, and the claims presented in the court case, a determination in the court case
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`may have a bearing on this Board proceeding.”
`
`Opposer ROBERTO NOBLE hereby requests the Board suspend this proceeding pending
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`disposition of the Marrero action.
`
`

`
`CERTIFICATE OF GOOD FAITH
`
`Pursuant to 37 C.F.R. §2.l20 (e), counsel for Opposer has conferred with counsel for
`
`Applicant in a good faith effort to resolve the issues raised in the herein Motion, who has
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`objected to the relief sough.
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a copy of the foregoing document was served on this 3rd day
`
`of March, 2008, by first class mail to Karen L. Stetson, Esq., P.O. Box 403023, Miami, Florida
`
`and TTAB.
`
`Respectfully submitted,
`
`SANTUCCI, PRIORE & LONG, LLP
`
`Attorneys for Opposer
`500 West Cypress Creek Road, Suite 500
`Fort Lauderdale, Florida 33309
`
`(954) 351-7474/telephone
`
`(954) 351-7475/facsimile
`
`By:
`
`/s/Michael I. Santucci
`Michael I. Santucci, Esq.
`Florida Bar Number: 0105260
`
`

`
`Case 9:06-cv-81036-KLR Document 1
`
`Entered on FLSD Docket 11/09/2006
`
`Page 1 of 10
`
`j
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`
`MARRERO ENTERPRISES or
`PALM BEACH, INC.,
`a Florida corporation,
`
`.-
`
`._
`
`W
`
`0 ® "“
`4
`_
`CASE NO. C U V...
`
`Plaintiff’
`
`ESTEFAN ENTERPRISES, INC.
`a Florida corporation,
`
`Defendant.
`
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`fit.
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`COMPLAINT FOR DECLARATORY JUDGMENT
`
`COMES NOW Plaintiff, MARRERO ENTERPRISES OF PALM BEACH, INC.
`
`and for their original Complaint for Declaratory Judgment against Defendant, ESTEFAN
`
`ENTERPRISES, INC. alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff MARRERO ENTERPRISES OF PALM BEACH,
`
`INC.
`
`(hereinafter “Ma.rrero”) is a corporation formed under the laws of the State of Florida and"
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`maintains its principal place of business at 2677 Forest Hill Boulevard, #112-116, West
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`Palm Beach, Florida 33406.
`
`2.
`
`Defendant ESTEFAN ENTERPRISES, INC. (hereinafter “Estefan”) is,
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`upon information and belief, a corporation formed under the laws of Florida with its
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`principal place of business at 420 Jefferson Avenue, Miami Beach, Florida, 33139. Upon
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`EXHIBIT “
`
`

`
`Case 9:06-cv—81036—KLR Document 1
`
`Entered on FLSD Docket 11/09/2006
`
`Page 2 of 10
`
`—
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`information and belief, Estefan and/or its subsidiaries do business and make sales to
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`retailers and other entities in this federal judicial district and throughout the United
`
`States.
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`JURISDICTION AND VENUE
`
`3.
`
`This action arises under the under 28 U.S.C. §§220l and 2202 in that it is
`
`an action solely for a declaratory judgment of non-infringement.
`
`1338.
`
`4.
`
`5.
`
`Subject matter jurisdiction of this Court is proper pursuant to 28 U.S.C. §
`
`At all times material hereto, the exercise of personal jurisdiction over
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`Estefan is appropriate under the circumstances of this case as its principal place of
`
`business is located in Florida, more specifically, within the jurisdiction of the United
`
`States District Court, Southern District of Florida.
`
`6.
`
`Venue is proper in this district under 28 U.S.C. 139l(c) because Estefan
`
`has engaged in business in the Southern District of Florida and all of the facts and
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`allegations of infringement and unfair competition occurred in West Palm Beach, Florida.
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`Additionally, venue is proper in the West Palm Beach Division of the United States
`
`District Court of the Southern District of Florida because the Defendant's counsel sent a
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`“cease-and-desist” letter to the Plaintiff in this District, threatening federal trademark
`
`infringement regarding Plaintiffs mark COCOBONGO for its use of the mark in
`
`connection with Plaintiffs West Palm Beach, Florida nightclub.
`
`

`
`Case 9:O6—cv—81036—KLR Document 1
`
`Entered on FLSD Docket 11/09/2006
`
`Page 3 of 10
`
`_
`
`FACTUAL ALLEGATIONS APPLICABLE
`TO ALL CAUSES OF ACTION
`
`7
`
`Plaintiff is the owner of the COCOBONGO Nightclub located in West
`
`Palm Beach, Florida.
`
`8.
`
`Plaintiff has used the mark COCOBONGO in Florida and in interstate
`
`commerce in connection with its nightclub lounge and bar services since at least as early
`
`as 2000.
`
`9.
`
`Plaintiff has expended considerable sums of money for advertising, has
`
`exerted every effort to maintain the highest standards of service, and has created goodwill
`
`among restaurant and nightclub goers.
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`10. Defendant claims to be the owner of a restaurant called “BONGOS
`
`CUBAN CAFE” with locations in Miami and Orlando, Florida.
`
`11. Defendant has alleged that
`
`it owns a federally registered trademark
`
`(Registration No. 2,490,999) for the mark BONGOS CUBAN CAFE.
`
`12. Defendant’s mark for BONGOS CUBAN CAFE has been registered for less
`
`than five (5) years.
`
`13. Defendant’s Registration No. 2,490,999 and Application Serial No.
`
`78/955,663 are two marks which Defendant claims to use in connection with restaurant,
`
`nightclub, music and entertainment related services in International Class 42.
`
`

`
`.
`
`" """""""""""'-"
`
`Case 9:06-cv—81036-KLR Document 1
`
`Entered on FLSD Docket 11/09/2006
`
`Page 4 of 10
`
`14.
`
`Defendant has alleged, in writing, that Plaintiff’s mark COCOBONGO is
`
`confusingly similar to Defendant’s marks and, as a result, because it is allegedly injurious
`
`to the Defendant, that the Plaintiff has no right to use COCOBONGO as a trademark.
`
`15.
`
`Defendant has demanded that Plaintiff immediately cease and desist from
`
`using the mark COCOBONGO.
`
`16.
`
`On or about March 31, 2006, Estefan threatened litigation and demanded
`
`Marrero to cease and desist any use, display, or advertising of any mark containing the
`
`term BONGO and/or any other similar mark or name, and provide proof of the demanded
`
`cessation. See, Exhibit “A” attached hereto.
`
`17.
`
`On or about April 26, 2006, correspondence from Estefan to Marrero again
`
`alleged infringement and further threatened recourse with the Courts. See, Exhibit “B”
`
`attached hereto.
`
`18.
`
`Plaintiff has a reasonable apprehension of Defendant pursuing litigation
`
`due to the correspondence and actions of the Defendant.
`
`19.
`
`Plaintiff categorically denies that its use of its mark violates any federal or
`
`other rights Defendant claims to have in its name and mark COCOBONGO used in
`
`association with restaurants, nightclubs, music or entertaimnent related services.
`
`20.
`
`Plaintiff fiirther asserts that Defendant’s Registration Number 2,490,999 is
`
`invalid as a matter of law because it is either a generic term or an admittedly descriptive
`
`term lacking secondary meaning and therefore is not entitled to any federal trademark
`
`registration or trademark protection.
`
`

`
`Entered on FLSD Docket 11/09/2006
`
`Page 5 of 10
`
`‘ C
`
`ase 9:06-cv—81036—KLR Document 1
`
`21.
`
`The Defendant’s mark BONGOS CUBAN CAFE is generic or merely
`
`descriptive of the services provided in connection therewith, and thus incapable of
`
`functioning as a mark.
`
`22.
`
`The word itself “BONGO” is merely descriptive because it is the common
`
`English word for the drum used in the music performed and played at Estefan’s nightclub
`
`and restaurant.
`
`23.
`
`The designation of BONGOS CUBAN CAFE is not inherently distinctive
`
`and therefore, Defendant’s mark is weak at best.
`
`24.
`
`Defendant has admitted that the term “BONGO” is the common English
`
`term for a “drum customarily used in Cuban and Latin music exhibited in their restaurants
`
`and nightclubs.”
`
`25.
`
`Defendant has also admitted that “BONGOS” [plural] simply means two
`
`such drums.
`
`26.
`
`The Defendant’s mark BONGOS CUBAN CAFE has become diluted, as a
`
`result of its admitted widespread use in the restaurant, music, nightclub, and
`
`entertainment industries.
`
`27.
`
`The designation of BONGOS CUBAN CAFE has not acquired secondary
`
`meaning. Moreover, the public does not identify the designation of BONGOS CUBAN
`
`CAFE with the Defendant.
`
`28.
`
`The Defendant has abandoned any rights, if any, in the mark, by failing to
`
`police the same for several years.
`
`29.
`
`Defendant is barred from asserting trademark infringement of its mark
`
`

`
`Case 9'06-cv-81036—KLR Document 1
`
`Entered on FLSD Docket 11/09/2006
`
`Page 6 of 10
`
`BONGOS CUBAN CAFE due to collateral estoppel based on the opinion of the U.S.
`
`District Court in and for the Southern District of Florida, in Caruso & Co., Inc. v. Estefan
`
`Enterprises, Inc., 994 F. Supp. 1454, 1458-1460 (S.D. Fla. 1998).
`
`30.
`
`The Defendant has acquiesced in enforcing its rights in the mark
`
`BONGOS CUBAN CAFE.
`
`31.
`
`Contrary to Defendant’s allegations, there is no likelihood of confusion
`
`between Defendant’s mark and the Plaintiffs mark.
`
`32.
`
`All conditions precedent to the bringing of this action have been satisfied,
`
`have occurred, have been waived, or have been excused.
`
`33.
`
`As direct and proximate result of Defendants’ actions complained of
`
`herein, Plaintiff was forced to retain the undersigned law firm and has agreed to pay it a
`
`reasonable fee for its services.
`
`COUNT I — DECLARATORY JUDGMENT OF NON—INFRINGEMENT
`
`MARRERO incorporates and re-alleges paragraphs one (1) through thirty-three
`
`(33) of this Complaint as if set forth fully at length herein, and would allege still further:
`
`34.
`
`This action arises under the under 28 U.S.C. §§220l and 2202 for a
`
`declaratory judgment.
`
`35.
`
`Defendant claims that Plaintiff is infringing on its federally registered
`
`trademark and otherwise engaging in acts of unfair competition in violation of the federal
`
`Lanham Act, Title 15, U.S.C. in Palm Beach County, Florida.
`
`36.
`
`Defendant has sent notice to Plaintiff to cease and desist its use of the
`
`name COCOBONGO in the operation of its restaurant and nightclub in Palm Beach
`
`County, a copy of which is attached to this Complaint as Exhibit “A”.
`
`

`
`Case 9:06-ov—81036-KLR Document 1
`
`Entered on FLSD Docket 11/09/2006
`
`Page 7 of 10
`
`because its use of the name does not infringe upon, dilute or unfairly compete with, any
`of Defendant’s alleged marks.
`
`38.
`
`Based upon the threats and demands made by Defendant, Plaintiff
`
`possesses an objectively reasonable apprehension that Defendant will
`
`file suit for
`
`trademark infringement, dilution and/or unfair competition based on Plaintiffs use of the
`
`COCOBONGO mark.
`
`39.
`
`Therefore an actual and justiciable controversy exists between Plaintiff
`
`and Defendant as to whether, under the federal Lanham Act, Title 15, Plaintiff is
`
`infringing upon, diluting or unfairly competing with Defendant’s federally registered
`
`trademark directed to BONGOS CUBAN CAFE.
`
`40.
`
`Plaintiff is in need of a judicial resolution and declaration of the rights of
`
`the respective parties in order to plan for the future of its business.
`
`41.
`
`Plaintiff seeks to resolve that dispute in this Court.
`
`PRAYER FOR RELIEF
`
`For these reasons, Plaintiff asks for judgment against Defendant for the following:
`
`a. Declaring that Plaintiff’s COCOBONGO mark does not infringe upon any
`of Defendant’s alleged marks,
`including without
`limitation, BONGOS
`CUBAN CAFE, and the marks which are the subjects of Registration No.
`2490999 and US. Application Serial No. 78/955,663.
`
`b. Declaring that Plaintiffs COCOBONGO mark does not cause the dilution
`of any of Defendant’s alleged marks,
`including without
`limitation,
`BONGOS CUBAN CAFE, and the marks which are the subjects of
`Registration No. 2490999 and U.S. Application Serial No. 78/955,663.
`
`

`
`Clase 9:06-cv—81036-KLR Document 1
`
`-a
`
`Entered on FLSD Docket 11/09/2006
`
`Page 8 of 10
`
`e. Declaring that Defendant has abandoned its alleged marks or caused the
`dilution of same, including without limitation, the mark BONGOS CUBAN
`CAFE, and the marks which are the subjects of Registration No. 2490999
`and U.S. Application Serial No. 78/955,663 are merely descriptive or generic
`through its own actions and acquiescence.
`
`limitation,
`including without
`f. Declaring that Defendant’s alleged marks,
`BONGOS CUBAN CAFE, and the marks which are the subjects of
`Registration No. 2490999 and U.S. Application Serial No. 78/955,663 have
`not acquired secondary meaning.
`
`g. Declaring that no likelihood of confusion exists between Plaintiffs mark
`and any of Defendant’s alleged marks,
`including without
`limitation,
`BONGOS CUBAN CAFE, and the marks which are the subjects of
`Registration No. 2490999 and U.S. Application Serial No. 78/955,663.
`
`h. Declaring that Defendant has no right to enforce their trademark registration
`directed to the name BONGOS CUBAN CAFE against Plaintiff.
`
`i.
`
`j.
`
`Reasonable attorneys’ fees.
`
`Costs of court.
`
`k. All other relief this Honorable Court deems appropriate.
`
`

`
`'
`
`'
`Case 9:06-cv—81036-KLR Document 1
`
`_
`11/09/2006
`Pa e 9 of 10
`Q
`
`Entered on FLSD Docket
`
`DEMAND FOR TRIAL BY JURY
`
`Plaintiff demands trial by jury in the West Palm Beach Division of the U.S.
`
`Disttict Court in and for the Southern District of Florida on all issues so triable as a
`
`matter of right.
`
`Respectfully submitted,
`
`Counsel for Plaintiff:
`
`SILVERMAN SANTUCCI, LLP
`Michael I. Santucci, Esq.
`500 West Cypress Creek Road
`Suite 500
`
`Fort Lauderdale, Florida 33309
`(954) 35 1-7474/telephone
`(954) 351-747 /facsimi
`
`
`
`BY:
`
`

`
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`D 875 CustomerChallenge
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`
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`CI 720 Labor/Mgmt. Relations 0 863 DIWC/DIWW (405(g))
`0 190 Other Contract
`Product Liability
`D 385 Property Damage
`12 USC 3410
`El 360OtherPersonal
`0 730Labor/Mgmt.Reporting U 864 SSID Title XVI
`0 I95 Contract ProductLiability
`Product Liability
`D 890Other StatutoryActions
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`FEDERAL TAX SUITS
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`D 870 Taxes (U.S. Plaintiff
`D 510 Motions to Vacate D 790 Other Labor Litigation
`893 Environmental Matters
`D 442 Employment
`CI 79l Empl. Ret. Inc.
`Cl 220 Foreclosure
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`894 Energy Allocation Act
`Sentence
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`D 230 Rent Lease & Ejectment
`D 443 Housing/
`Hnbeas Corpus:
`Security Act
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`895 Freedom ofInformation
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`Cl
`Cl 240 Tons to Land
`Accommodations
`530General
`26 USC 7609
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`0 245Tort ProductLiability
`D 444 Welfare
`0 535 Death Penalty
`900Appeal ofFee Determination
`0 445 Amer. w/Disabilities - D 540 Mandamus & Other
`D 290 All Other Real Property
`Under Equal Access
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`0 550 Civil Rights
`Employment
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`D 446 Amer. w/Disabilities - D 555 Prison Condition
`Cl 950 Constitutionality of
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`V. ORIGIN
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`second page):
`JUDGE
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`diversity):
` VII. CAUSE OF
`ACTION
`28 U.S.C. § 2201; 2202 Declaratory Judgment Action
`
`
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`LENGTH OF TRIAL via 7
`days estimated (for both sides to try entire case)
`CHECK IF THIS IS A CLASS ACTION
`DEMAND 5
`CHECK YES only ifdemanded in complaint:
`VIII. REQUESTED IN
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`UNDER F.R.C.P. 23
`i::Yes
`COMPLAINT,
`ABOVE INFORMATION IS TRUE & CORRECT T0
`THE BEST OF MY KNOWLEDGE
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`0}: RECORD
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`

`
`Case 9:O6—cv—81036—KLR Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 1 of 15
`
`UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`
`CASE NO. 06-8 1 036—CIV-RYSKAMP
`
`MARRERO ENTERPRISES OF
`
`PALM BEACH, INC., a Florida corporation,
`
`Plaintiff,
`
`V.
`
`ESTEFAN ENTERPRISES, INC.,
`a Florida corporation,
`
`Defendant/Counterplaintiffl
`
`V.
`
`MARRERO ENTERPRISES OF
`
`PALM BEACH, INC., a Florida corporation,
`and ROBERTO NOBLE, SR.,
`
`Counterdefendants.
`
`/
`
`ESTEFAN ENTERPRISES, INC.’S AMENDED ANSWER,
`AFFIRMATIVE DEFENSES AND COUNTERCLAIM
`
`Defendant/Counterplaintiff, Estefan Enterprises, Inc. (“EEI”), by and through its
`
`undersigned, hereby files its Amended Answer, Affirmative Defenses and Counterclaim
`
`as follows: 1
`
`ANSWER
`
`1.
`
`EEI is without sufficient knowledge as to the truth of the allegations of
`
`Paragraph 1 of Marrero’s Complaint and, therefore, denies same.
`
`1 EEI has filed this Amended Answer, Affirmative Defenses and Counterclaim pursuant to the
`Court’s Orders of November 28 and 29, 2007. However, inasmuch as Marrero has not joined Noble as a
`plaintiff to the declaratory action per the Court’s Order granting EEI’s Motion to Join Noble, EEI reserves
`the right to further supplement and/or amend upon the filing of such amended complaint for declaratory
`relief.
`
`EXHIBIT “ B ”
`
`

`
`Case 9:06—cv-81036-KLR Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 2 of 15
`
`2.
`
`3.
`
`EEI admits the allegations of Paragraph 2 of Marrero’s Complaint.
`
`EEI admits that this case purports to arise under 28 U.S.C. §§ 2201 and
`
`2202 and that it is action solely for declaratory of non-infringement.
`
`4.
`
`See EEI’s Motions to Dismiss and the Court’s Orders regarding the
`
`Court’s subject matter jurisdiction over this declaratory action.
`
`5.
`
`6.
`
`7.
`
`EEI does not contest personal jurisdiction.
`
`EEI does not contest venue.
`
`EEI admits that from March 2000 until approximately September 13,
`
`2007, Plaintiff was the owner of the “COCOBONGO” nightclub located in West Palm
`
`Beach, Florida, but denies that Plaintiff is currently the owner of a “COCOBONGO”
`
`Nightclub as alleged.
`
`8.
`
`EEI admits that from March 2000 until approximately September 13,
`
`2007, Plaintiff used the mark COCOBONGO in Florida in connection with its nightclub
`
`and bar, but is without sufficient knowledge regarding the remaining allegations and
`
`therefore denies same.
`
`9.
`
`EEI is without sufficient knowledge as to the truth of the allegations of
`
`Paragraph 9 of Marrero’s Complaint and, therefore, denies same.
`
`10.
`
`EEI denies the allegations of Paragraph 10 of Marrero’s Complaint.
`
`1 1.
`
`EEI admits that it owns a federally registered trademark (Registration No.
`
`2,490,999) for the mark BONGOS CUBAN CAFFL.
`
`12.
`
`13.
`
`EEI denies the allegations of Paragraph 12 of Marrero’s Complaint.
`
`EEI denies the allegations of Paragraph 13 of Marrero’s Complaint.
`
`14.
`
`EEI denies the allegations of Paragraph 14 of Marrero’s Complaint.
`
`

`
`Case 9:06—cv-81036-KLR Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 3 of 15
`
`15.
`
`EEI denies the allegations of Paragraph 15 of Marrero’s Complaint.
`
`16.
`
`EEI admits that the correspondence dated March 31, 2006 was sent to
`
`Marrero and states that the terms of the letter speak for itself.
`
`17.
`
`EEI admits that the correspondence dated April 26, 2006 was sent to
`
`Marrero and states that the terms of the letter speak for itself.
`
`18.
`
`19.
`
`Denied as of the time of filing the instant Declaratory Judgment action.2
`
`EEI denies that Marrero’s past use (prior to September 13, 2007) of its
`
`mark did not violate EEI’s rights and denies the remaining allegations of Paragraph 19 of
`
`Marrero’s Complaint.
`
`20.
`
`EEI denies the allegations of Paragraph 20 of Marrero’s Complaint.
`
`21.
`
`EEI denies the allegations of Paragraph 21 of Marrero’s Complaint.
`
`22.
`
`EEI denies the allegations of Paragraph 22 of Marrero’s Complaint.
`
`23.
`
`EEI denies the allegations of Paragraph 23 of Marrero’s Complaint.
`
`24.
`
`EEI denies the allegations of Paragraph 24 of Marrero’s Complaint as
`
`worded.
`
`25.
`
`EEI denies the allegations of Paragraph 25 of Marrero’s Complaint as
`
`worded.
`
`26.
`
`EEI denies the allegations of Paragraph 26 of Marrero’s Complaint.
`
`27.
`
`EEI denies the allegations of Paragraph 27 of Marrero’s Complaint.
`
`28.
`
`EEI denies the allegations of Paragraph 28 of Marrero’s Complaint.
`
`29.
`
`EEI denies the allegations of Paragraph 29 of Marrero’s Complaint.
`
`2 See Motion to Dismiss and Court Order D.E. # 5 and D.E. # 31. By this answer, EEI desires to
`avoid any claim of waiver should further review of these issues be deemed appropriate at a later date.
`
`

`
`Case 9:06-cv—81036-KLR, Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 4 of 15
`
`30.
`
`EEI denies the allegations of Paragraph 30 of Marrero’s Complaint.
`
`31.
`
`EEI denies that from March 2000 until approximately September 13,
`
`2007, there was no likelihood confusion between EEI’s mark and Plaintiffs mark. EEI
`
`admits that there is currently no likelihood of confusion due to Plaintiffs name change
`
`from Coco Bongo nightclub to Club Ibiza on or about September 14, 2007 and that
`
`Plaintiffs current alleged use of the Coco Bongo mark to advertise a “Coco Bongo
`
`Cancun Thursday Night” event at its nightclub Club Ibiza is not likely to cause customer
`
`confusion in the marketplace as to the source of its nightclub services.
`
`32.
`
`EEI denies the allegations of Paragraph 32 of Marrero’s Complaint.
`
`33.
`
`EEI is without sufficient knowledge as to the truth of the allegations of
`
`Paragraph 33 of Marrero’s Complaint and, therefore, denies same.
`
`34.
`
`EEI admits that this case purports to arise under 28 U.S.C. §§ 2201 and
`
`2202 for a declaratory judgment.
`
`35.
`
`EEI admits that from March 2000 until approximately September 13,
`
`2007, Plaintiff was infringing on EEI’s federally registered trademark and otherwise
`
`engaged in acts of unfair competition, but denies that Plaintiff is currently infringing on
`
`EEl’s federally registered trademark and otherwise engaging in acts of unfair competition
`
`due to Plaintiffs name change of it Coco Bongo nightclub to Club Ibiza on or about
`
`September 14, 2007.
`
`36.
`
`EEI admits that Exhibit A is a true copy of the letter; denied as to the
`
`remainder of the allegations in Paragraph 36 of Marrero’s Complaint.
`
`37.
`
`EEI denies that Plaintiff will not agree to cease and desist from its use of
`
`

`
`Case 9:06-cv-81036—KLR Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 5 of 15
`
`the name COCOBONGO for its nightclub and bar, having changed the name of its
`
`nightclub on or about September 14, 2007. EEI denies the remaining allegations in
`
`Paragraph 37 of Marrero’s Complaint.
`
`38.
`
`Denied as of the time of filing the instant Declaratory Judgment action}
`
`39.
`
`EEI denies that an actual and justiciable controversy currently exists
`
`between Plaintiff and EEI due to Plaintiffs name change of it Coco Bongo nightclub to
`
`Club Ibiza on or about September 14, 2007.4
`
`40.
`
`EEI denies the allegations of Paragraph 40 of Marrero’s Complaint.
`
`41.
`
`EEI is without sufficient knowledge as to the truth of the allegations of
`
`Paragraph 41 of Marrero’s Complaint and, therefore, denies same.
`
`EEI’S AMENDED AFFIRMATIVE DEFENSES
`
`1.
`
`EEI’s BONGOS CUBAN CAFE mark is incontestable as a matter
`
`of law.
`
`2.
`
`In the alternative, EEI’s BONGOS CUBAN CAFE mark has acquired
`
`secondary meaning and has attained a high level of goodwill and fame.
`
`3.
`
`EEI’s certificate of registration for the BONGOS CUBAN CAFE mark
`
`constitutes primafacie evidence that its mark is valid.
`
`4.
`
`EEI has engaged in numerous enforcement efforts against unauthorized
`
`users of confusingly similar names.
`
`5.
`
`Marrero has failed to police its mark and has otherwise acquiesced in the
`
`use of its marks by others.
`
`3 See footnote 2.
`
`4 See Motion to Dismiss and Court Order. D.E. # 134 and D.E. 167. By this answer, EEI desires
`to avoid any claim of waiver should further review of these issues be deemed appropriate at a later date.
`
`

`
`Case 9:06-cv-81036-KLR Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 6 of 15
`
`6.
`
`7.
`
`Marrero lacks standing to maintain this action.5
`
`The Coco Bongo mark utilized by Marrero is of no legal force or effect in
`
`that it is an abandoned mark.
`
`COUNTERCLAIM
`
`Defendant/Counterplaintiff, Estefan Enterprises, Inc. (“EEI”) by and through its
`
`undersigned counsel,
`
`sues Plaintiff/counterdefendant, Marrero Enterprises of Palm
`
`Beach, Inc. (“Marrero”) and Roberto Noble, Sr. (“Noble”), and alleges:
`
`THE PARTIES
`
`1.
`
`EEI is a corporation organized under the existing laws of the State of
`
`Florida and has its principal place of business in Miami, Florida.
`
`2.
`
`Marrero is a corporation organized under the laws of the State of Florida
`
`and has its principal place of business in West Palm Beach, Florida.
`
`3.
`
`Noble is an individual residing in Cancun, Mexico.
`
`NATURE OF ACTION
`
`4.
`
`This is an action for trademark infringement and false designation of
`
`origin under the Trademark Act of 1946, as amended (The Lanham Act, 15 U.S.C. §
`
`1051 et seq.), unfair trade practices under the Florida Unfair Trade Practices Act, Florida
`
`Statutes § 501.204 and unfair competition under the common law of the State of Florida,
`
`based on Marrero’s adoption and use of “Coco Bongo” as a name for its bar and
`
`nightclub and including advertising and promotion of a bar and nightclub known as
`
`“Coco Bongo” from March 2000 until approximately August, 2006 and as Marrero and
`
`5 The Court has already determined that Marrero lacks standing as a bare licensee to maintain this
`action. However, Noble has not voluntarily joined as a plaintiff to the declaratory action and, therefore,
`EEI maintains this affirmative defense until such times as that occurs.
`
`

`
`Case 9:06-cv—81036—KLR Document 182
`
`Entered on FLSD Docket 12/13/2007
`
`Page 7 of 15
`
`Noble’s use of
`
`“Coco Bongo” as a name for its bar and nightclub and
`
`including
`
`advertising and promotion of a bar and nightclub known as “Coco Bongo” from
`
`approximately August, 2006 until September 13, 2007 in violation of EEI’s established
`
`rights in BONGOS CUBAN CAFE as a registered trademark for restaurant and bar
`
`services (collectively referred to as the “past infringing conduct”).
`
`JURISDICTION AND VENUE
`
`5.
`
`This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121
`
`(actions arising under the Federal Trademark Act), 28 U.S.C. 1338(a) (acts of Congress
`
`relating to trademarks) and 28 U.S.C. l338(