Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA197769
`ESTTA Tracking number:
`03/12/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92047910
`Defendant
`Estefan Enterprises, Inc.
`Karen L. Stetson
`P.O. Box 403023
`Miami, FL 33140
`UNITED STATES
`Opposition/Response to Motion
`Karen L. Stetson
`kls@kstetsonlaw.com, maf@kstetsonlaw.com
`/Karen L. Stetson/
`03/12/2008
`BCC Cancelaltion Response to Motion to Suspend.pdf ( 5 pages )(25671 bytes )
`Marrero Scheduling Order.pdf ( 4 pages )(109472 bytes )
`BCC Petition Ex B to Response to Motion to Suspend.pdf ( 2 pages )(71608
`bytes )
`Marrero Motion for voluntary dismissal FINAL.pdf ( 18 pages )(90215 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK
`
`OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92047910
`
`ROBERTO NOBLE,
`
`vs .
`
`Petitioner,
`
`ESTEFAN ENTERPRISES, INC.,
`
`Registrant.
`
`/
`
`REGISTRANT EEI’S RESPONSE TO NOBLE’S
`
`MOTION TO SUSPEND PROCEEDINGS
`
`Registrant, Estefan Enterprises, Inc. (“EEI”), hereby files its response in
`
`opposition to Noble’s Motion to Suspend and states as follows:
`
`Seven (7) months after filing the instant cancellation proceeding, Noble has
`
`suddenly brought to the Board’s attention the pendency of the Marrero action —— an action
`
`
`filed by the same counsel in November 2006 on behalf of Noble’s purported licensee,
`
`Marrero Enterprises of Palm Beach, Inc., in the United States District Court for the
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`Southern District of Florida. At the time Noble filed the instant cancellation proceeding,
`
`the Marrero action had already been pending for nine (9) months, yet no notice of
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`pendency of related action was filed when this proceeding was instituted by Noble
`
`despite the fact that the Marrero action was clearly known ‘H 8 and 9 of to Noble.
`
`First and foremost, contrary to Noble’s representation, there is Q cancellation
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`proceeding pending in the Marrero action. See Complaint attached as Exhibit A to
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`Noble’s Motion to Suspend. The Marrero action involves a claim by Marrero “Lhely for
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`a declaratory judgment of non—infringement” between COCO BONGO as a trademark
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`

`
`and EEI’s BONGOS CUBAN CAFE trademark (see ‘J1 3 of Complaint for Declaratory
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`Relief attached as Exhibit A to Noble’s Motion to Suspend) and a counterclaim asserted
`
`by EEI against Marrero and Noble for infringement of EEI’s BONGOS CUBAN CAFE
`
`mark (see Counterclaim attached as Exhibit B to Noble’s Motion to Suspend). As the
`
`Board can see from the Declaratory Complaint, there is no claim for cancellation in the
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`Marrero action. In fact, now that the Marrero action has been pending almost a year and
`
`a half and the Court’s deadline of April 30, 2007 to amend pleadings has long passed (see
`
`Exhibit A hereto), Noble and Marrero have sought leave to amend the Declaratory
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`Complaint to include a claim for cancellation (see Motion for Leave at ‘H 8 and 9
`
`attached hereto as Exhibit B). That motion has not even been briefed, let alone granted,
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`and it is unlikely to be given the Court’ s deadline for amendments and the fact that the
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`proposed amendments are not based on anything new. The point being that there is no
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`claim for cancellation pending in the Marrero action as misrepresented to the Board.
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`This action would be entirely superfluous if the issues raised herein were already
`
`to be determined in the Marrero action, as Noble now claims. Curiously, Noble does not
`
`attempt to explain this obvious inconsistency in his Motion to Suspend. What is also
`
`curious, is the timing of Noble’s Motion to Suspend. The Marrero action was filed a
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`year and a half ago, purportedly to protect Marrero’s right to use “Coco Bongo” as the
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`name of its nightclub. Ten months thereafter, Marrero changed the name of its nightclub,
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`thereby mooting the Marrero action. Now that EEI has filed a Motion for Voluntary
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`Dismissal to end the Marrero litigation based on the name change (see Exhibit C hereto),
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`Noble suddenly seeks to have this proceeding and a ruling on EEI’s fully briefed and
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`pending Motion to Dismiss delayed.
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`

`
`EEI has filed a dispositive Motion to Dismiss,1 which has been fully briefed since
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`January 7, 2008 based on the procedural deficiencies of Noble’s cancellation proceeding,
`
`namely, that any claim that EEI’ s mark is merely descriptive has long since been waived
`
`by Noble's failure to assert that claim as a compulsory counterclaim in the ongoing
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`Consolidated Proceedings No. 91121980 between the parties, and is barred by the 5-year
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`statute of limitations for such claims. In addition, EEI’s Motion to Dismiss as to the
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`fraud claim is based on the fact that there was no petition or counterclaim to cancel EEI's
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`mark filed by anyone either at the time of the incontestability declaration filed on January
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`31, 2007 or at any time during the five years after registration as evidenced by Noble’s
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`own description of pending actions set forth in his petition herein.
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`The filing of this Motion to Suspend was clearly intended to prevent the Board
`
`from ruling on EEI’s Motion to Dismiss. Pursuant to TBMP § 510.02:
`
`[i]f there is pending, at the time when the question of suspension of
`proceedings before the Board is raised, a motion which is potentially
`dispositive of the case, the potentially dispositive motion may be decided
`before the question of suspension is considered. The purpose of this rule is
`to prevent a party served with a potentially dispositive motion from
`escaping the motion by filing a civil action and then moving to suspend
`before the Board has decided the potentially dispositive motion.
`
`This case is an even more compelling example of an attempt to evade a dispositive ruling
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`than the example set forth in the Board’s Rule, where the so—called “similar action” was
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`already pending at the time this case was filed, yet no notice of pendency was filed until
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`many months thereafter and only after a dispositive motion was filed and fully briefed.
`
`1 On November 15, 2007, the Board suspended these proceedings pending disposition of EEI's
`motion to dismiss pursuant to Trademark Rule 2.127(d). Per the Board’s Order, “[a]ny paper filed during
`the pendency of this motion which is not relevant thereto will be given no consideration.” Therefore, for
`this reason alone, the Board should not consider Noble’s Motion to Suspend.
`
`

`
`The issue of whether this cancellation proceeding is, therefore, properly brought
`
`before the Board, as set forth in EEI’s pending Motion to Disrr1iss is n_ot before the Court
`
`in the Marrero action. Noble was recently joined as a necessary party to the Marrero
`
`action and has not yet filed an answer. EEI does not want this proceeding hanging like a
`
`cloud over its registration until such time as the Marrero case is detern1ined.
`
`There is no cancellation claim pending in the Marrero action and unlike the
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`Marrero action, Noble’s cancellation proceeding herein does not inVolVe the issue of
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`likelihood of confusion. Indeed, there are no allegations of any damage caused by EEI’s
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`registration to Noble to even support a cancellation pleading. Therefore, it is futile for
`
`the Board to suspend the proceedings herein and defer ruling on EEI’s dispositiVe Motion
`
`to Dismiss until the determination of the Marrero action.
`
`As Noble has indicated in its Motion to Suspend, the Board has recently
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`suspended Consolidated Proceedings No. 91121980 pending the outcome of the Marrero
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`action which 1 brought to the Board’ s attention. Unlike here, the Consolidated
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`Proceedings and the Marrero action raise the same issues, namely the likelihood of
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`confusion between the parties’ respective marks.
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`WHEREFORE, Registrant, Estefan Enterprises, Inc., respectfully requests that
`
`the Board deny Noble’s Motion to Suspend Proceedings.
`
`Respectfully submitted,
`
`KAREN L. STETSON, ESQ.
`
`Attorneys for Registrant
`Estefan Enterprises, Inc.
`P.O. Box 403023
`
`Miami, Florida 33140
`
`Telephone (305) 532-4845
`Facsimile (305) 604-0598
`
`By: s/Karen L. Stetson
`
`

`
`Karen L. Stetson, Esq.
`Florida Bar No. 742937
`
`Meredith A. Frank, Esq.
`Florida Bar No. 502235
`
`CERTIFICATE OF MAILING
`
`I HEREBY CERTIFY that the foregoing has been sent Via U.S. Mail to
`
`Michael Santucci, Esq., Silverman Santucci, LLP, 500 West Cypress Creek Road,
`
`Suite 500, Fort Lauderdale, Florida 33309 on this 12m day of March, 2008.
`
`By: s/Karen L. Stetson
`Karen L. Stetson
`
`

`
`Case ‘E3:{)6—ev~8t{33E3—l<LR
`!
`
`Document 18
`
`Entered on FLSD Docket 01/23/2607
`
`Page 1 of 4
`
`hr
`
`_
`
`I
`
`.2
`
`e
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`WEST PALM BEACH DIVISION
`CASE NO. 06-81036-CIV-RYSKAMP
`
`MARRERO ENTERPRISES OF
`PALM BEACH, INC.,
`a Florida corporation,
`
`V.
`
`Plaintiff,
`
`ESTEFAN ENTERPRISES, INC.,
`a Florida corporation,
`
`Defendant.
`
`
`SCHEDULING ORDER
`
`Pursuant to Local Rule 16.l(b)(2), IT IS ORDERED AND ADJUDGED as follows:
`
`1.
`
`No pretrial conference shall be held in this action, unless the parties so request or
`
`the Court determines, sua sponte, that a pretrial conference is necessary. Should a pretrial
`
`conference he set, the compliance deadlines as set forth in the remainder of this Order shall
`
`remain unaltered.
`
`2.
`
`Counsel shall meet at least ONE MONTH prior to the beginning of the trial
`
`calendar to confer on the preparation of a pretrial stipulation.
`
`3.
`
`The original and one copy of a joint pretrial stipulation shall be filed on or before
`
`the date set forth in the attached Notice of Trial and shall conform to Local Rule 16.1(e). The
`
`Court will not allow unilateral pretrial stipulations.
`
`

`
`(Ease ‘E3:{)6—ev~8t{33E3—l<LR
`
`Document 18
`
`Entered on FLSD Docket 01/23/2607
`
`Page 2 of 4
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`4.
`
`Each party shall file the proposed findings of fact and conclusions of law at least
`
`ONE WEEK prior to the beginning of the trial calendar. Proposed conclusions of law shall be
`
`supported by citations of authority.
`
`5.
`
`All exhibits must be pre-marked. The plaintiff and defendant shall both mark
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`their exhibits numerically. A typewritten exhibit list setting forth the number, and description of
`
`each exhibit shall be submitted at the time of trial. The parties shall submit said exhibit list on
`
`Form A0 187, which is available from the Clerk’s office. All electronically filed exhibits shall
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`be listed as one attachment unless 5mb (100 pages).
`
`6.
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`A motion for continuance shall not stay the requirement for the filing of a pretrial
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`stipulation and, unless an emergency situation arises, a motion for continuance will not be
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`considered unless it is filed at least twenty (20) days prior to the date on which the trial calendar
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`is scheduled to commence.
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`7.
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`Non-compliance with any provision of this order may subject the offending party
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`to sanctions or dismissal.
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`It is the duty of all counsel to enforce the timetable set forth herein in
`
`order to insure an expeditious resolution of this cause.
`
`8.
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`The parties submit the following timetables to govern the pretrial procedure in
`
`this case. This schedule shall not be modified absent compelling circumstances.
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`flpril 330. $007. - .
`
`Joiner of additional parties and amended pleadings
`
`W St» 1007
`
`§é*§f{2.§iIinSg"13.321122‘2.§’.‘Zt°§3".fi§s‘i‘é2‘S§i Zil”;§£‘$5§En'§ZZes
`
`trial and only those mg
`intended to be called at
`witnesses listed shall be permitted to testify. Within the 14
`day period following this disclosure,
`the plaintiff shall
`make its experts available for deposition by the defendant.
`
`2
`
`

`
`(Ease ‘E3:{)6—ev~8t{33E3—l<LR
`
`Document 18
`
`Entered on FLSD Docket 01/23/2607
`
`Page 3 of 4
`
`.AVjU$+ 3} ) gvoj
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`.
`
`"
`
`'
`
`SCPWWBW M 9071 .
`'
`'
`
`.
`--
`
`.
`
`'
`
`The experts’ depositions may be conducted without fiirther
`order from the Court.
`
`Defendant shall furnish opposing counsel with a written list
`containing the names and addresses of all expert witnesses
`intended to be called at
`trial and only those expert
`witnesses listed shall be permitted to testify. Within the 14
`day period following this disclosure, the defendant shall
`make its experts available for deposition by the Plaintiff.
`The experts’ depositions may be conducted without further
`order from the Court.
`
`Parties shall furnish opposing counsel with awritten list
`containing the names and addresses of all witnesses
`intended to be called at trial and only those witnesses listed
`shall be permitted to testify.
`
`34.p.\4,mlo@«( zggpoq
`
`All discovery must be completed.
`
`-
`
`<g i
`
`All pretrial motions and memoranda of law must be filed.
`
`This case is assigned to the standard track pursuant to
`L.R.16.1.A(2)(b).
`
`This trial will be a (non-jury) trial.
`
`9.
`
`Trial, calendar call and the pretrial stipulation due date will be set by separate
`
`notice.
`
`

`
`Case ‘E3:{)6—ov~8t{33E3—i<LR
`-.-........q
`
`Document 18
`._.
`.._..
`
`Entered on FLSD Docket 01/23/2607
`
`Page 4 of 4
`
`U
`
`10.
`
`If this case is settled, counsel are directed to inform the Court promptly be calling
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`chambers and submitting an appropriate order for dismissal, within ten (10) days of notification
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`of settlement to the Court, pursuant to Fed. R. Civ. P. 4l(a)(1).
`
`Dated this
`
`Z 7/ day of NNETH L. RYS
`
`nited States Distri
`
`Judge
`
`Copies provided:
`
`Karen L. Stetson, Esquire
`Michael I. Santucci, Esquire
`
`

`
`
`
`Case 9:006-cv—81036-KLR Document 234
`
`Entered on FLSD Docket 02/29/2008
`
`Page 1 of 14
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`WEST PALM BEACH DIVISION
`
`CASE NO. 06-81036-CIV-RYSKAMP/VITUNAC
`
`MARRERO ENTERPRISES OF
`
`PALM BEACH, INC.,
`a Florida corporation
`
`Plaintiff,
`
`vs.
`
`ESTEFAN ENTERPRISES, INC.
`
`a Florida corporation,
`
`Defendant.
`
`/
`
`PLAINTIFF’S AND THIRD-PARTY‘ DEFENDANT’S MOTION FOR LEAVE TO FILE
`AMENDED COMPLAINT AND JOIN THIRD PARTY DEFENDANT ROBERTO
`
`NOBLE, SR. AS A PLAINTIFF
`
`Plaintiff, MARRERO ENTERPRISES OF PALM BEACH, INC. ("MEP") and Third-
`
`Party Defendant, ROBERTO NOBLE, SR. (“Noble”), by and through undersigned counsel, and
`
`pursuant to Rules 15(a), 15(d), l9(a)(2)(i), l9(a)(2)(ii) and 20(a)( 1), Fed.R.Civ.P. and Local Rule
`
`15.1, S.D.Fla.L.R. hereby move for leave’ to file an Amended Complaint to add Noble as an
`
`additional Plaintiff to the Complaint, and to add claims for cancellation of Defendant’s U.S.
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`Trademark Registration.
`
`1.
`
`In this case, amended pleadings and joinder of additional parties were to be
`
`completed by April 30, 2007.
`
`2.
`
`However, subsequent to this date, on September 20, 2007, Defendant ESTEFAN
`
`ENTERPRISES, INC. (“EEI”) filed a Motion for Leave to Join Noble as a Necessary Party and
`
`

`
`
`
`Case 9:06-cv-81036—KLR Document 234
`
`Entered on FLSD Docket 02/29/2008
`
`Page 2 of 14
`
`to File Amended Defenses and Counterclaim [DE-50], which was granted on November 29,
`
`2007 [DE-170].
`
`3.
`
`EEI filed its Amended Counterclaim against Noble on December 13, 2007 [DE-
`
`182] which was the first claims asserted against Noble herein, but Defendant has not served
`
`Noble therewith despite alleged efforts to do so.
`
`4.
`
`Nonetheless, on February 12, 2008, Noble waived service of process by filing a
`
`Motion to Dismiss the Amended Counterclaim [DE-231].
`
`5.
`
`This Court has already held that Noble is a necessary party to EEI’s
`
`Amended Counterclaim.
`
`7.
`
`The proposed amendments to the Complaint in this action sought by Marrero and
`
`Noble are directly related to EEI’s Amended Counterclaim against Marrero and Noble, and
`
`involve issues which must be decided for a full adjudication of the claims which have already
`
`been presented to this Court.
`
`8.
`
`The claim for declaratory relief contained in the proposed Amended Complaint is
`
`identical to that which has already been asserted by Marrero in the original Complaint, with the
`
`exceptions of additional allegations to address EEI’s change in position relative to the acts which
`
`it claims constitute infringement and unfair competition, allegations regarding EEI’s new
`
`allegations of infringement and unfair competition against Noble, and the addition of a more
`
`detailed prayer for relief.
`
`9.
`
`The proposed Amended Complaint also contains
`
`additional
`
`claims
`
`for
`
`cancellation of EEI’s U.S. Trademark Registration No. 2,499,999 directed to the mark BONGOS
`
`CUBAN CAFE due to its descriptiveness, and due to EEI’s fraud in the maintenance and
`
`

`
`UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`WEST PALM BEACH DIVISION
`
`CASE NO. 06—8l036—CIV—RYSKAMP
`
`MARRERO ENTERPRISES OF PALM
`
`BEACH, INC., a Florida corporation,
`
`V.
`
`Plaintiff/Counter-Defendant,
`
`ESTEFAN ENTERPRISES, INC.,
`
`a Florida corporation,
`
`Defendant/Counter-Plaintiff,
`
`V.
`
`MARRERO ENTERPRISES OF PALM
`
`BEACH, INC., a Florida corporation, and
`ROBERTO NOBLE, SR.,
`
`Counter—Defendants.
`
`/
`
`VOLUNTARY DISMISSAL OF EEI'S AMENDED COUNTERCLAIM
`
`EEI'S CONDITIONAL MOTION FOR
`
`Defendant/Counter—Plaintiff, Estefan Enterprises, Inc. (“EEI”), by and through
`
`undersigned counsel, and pursuant to Rule 41, Fed.R.Civ.P., hereby conditionally moves for the
`
`voluntary disn1issal of EEI's amended counterclaim against Counter—Defendants Marrero
`
`Enterprises of Palm Beach County, Inc. ("Marrero") and Roberto Noble, Sr. ("Noble"), and in
`
`support thereof states:
`
`EEI Seeks to End The Needless Expenditure of Both the Court's and the
`I.
`Parties’ Resources Through the Overall Dismissal of this Litigation Which Has Been Made
`Moot By the Name Change of Marrero's Nightclub.
`
`EEI files this motion seeking the dismissal of this action in its entirety based upon the
`
`fact that, ten months after initiating this action, Marrero changed the name of its nightclub from
`
`"Coco Bongo" to "Ibiza" and is no longer engaging in any activities as to which EEI has either
`
`objections or claims, thus eliminating any ongoing Article III controversy to support Marrero's
`
`declaratory action. EEI's current counterclaim, as amended, contains only a claim for past
`
`

`
`damages arising from infringing conduct which has now ceased. EEI's primary concern has
`
`always clearly been with the name of the nightclub.1 Given the fact that Marrero changed its
`
`name, albeit ten months into the litigation, EEI has no desire to continue the litigation merely to
`
`pursue the claim for past money damages, and is, accordingly, moving for the voluntary
`
`dismissal of its counterclaim in conjunction with the dismissal of Marrero's declaratory action on
`
`the conditions stated herein, which conditions include a release from EEI to Counter—Defendants
`
`of any claim for past damages and a covenant not to sue with regard to Marrero's current non-
`
`objectionable conduct.
`
`Despite EEI's lack of objection to the current conduct, Marrero is acting as the stalking
`
`horse on behalf of the real—party—in interest, Roberto Noble, Sr. (who has declined to accept
`
`service of process since being added as a necessary party)". Marrero is maneuvering to keep this
`
`matter alive in order to seek an impermissible "advisory opinion" about hypothetical future
`
`trademark usage for purposes of the broader trademark litigation between EEI and Noble which
`
`long pre—dates this action. The pending proceedings before the Trademark Trial and Appeal
`
`Board ("TTAB") between EEI and Noble pre—date this action by years and encompass all of the
`
`issues between the parties with regard to their respective trademarks. The identical issues raised
`
`herein are also pending before that tribunal (in addition to broader issues than those encompassed
`
`in this action). 3 EEI anticipates that Marrero may argue, as it has in the past when EEI has filed
`
`1 From the outset, EEI made clear that the change of the name of Marrero's nightclub was considered by
`EEI to be the only material issue. See, for example, EEI's prior Motion to Dismiss based upon what EEI believed
`was a pre-suit settlement agreement providing for the exact name change that Marrero has now instituted, stating,
`"In the instant case the o_nly essential term of the settlement -- changing the "Coco Bongo" name -- was agreed upon.
`EEI's sole purpose in sending its March 31, 2006 letter to Marrero was to obtain Marrero's agreement to change its
`name, .
`.
`." (D.E. # 5, p 7). Marrero was at all times well aware of the fact that the dispute was all about the name
`change. "After careful consideration of our options,
`.
`. .[I decided] not to change the name of the nightclub;" "[O]f
`significant importance to my company was the timing of any name change;" "I never agreed .
`.
`. to change the name
`of our nightclub." Declaration of Christopher Marrero, D.E. # 11-4, pars. 16, 20, 22.
`
`2 Unless Noble changes his mind and cooperates, EEI is advised that the process of effecting service on
`him in Mexico under the Hague Convention can take 4 months or longer.
`
`3 Estefan Enterprises Inc. v Bongo, S.A. de C.V. and Roberto Noble, Consolidated Action No. 92042251.
`The Trademark Trial and Appeal Board ("TTAB") is a tribunal which adjudicates and determines trademark rights
`and which enjoys concurrent jurisdiction with the district courts to do so. 15 U.S.C. §§ 1067, 1092 and 1119. In
`addition to the issue of the likelihood of confusion between "Coco Bongo" and "Bongos Cuban Cafe" and all of the
`defenses raised in this case, the TTAB proceeding also involves Noble's registration rights and whether he has used
`the "Coco Bongo" mark in the United states in the manner required to obtain registration rights.
`
`

`
`dismissal motions based upon the principles that an actual controversy must exist and that
`
`judicial time and resources should not be expended needlessly, that EEI is merely trying to
`
`"avoid" a ruling on the parties’ summary judgment motions. That is not the case at all. EEI
`
`believes that in light of the numerous factual disputes contained in the record herein, summary
`
`judgment would be clear error. D.E. # 218. Marrero cannot seriously contend that EEI is
`
`seeking to avoid rulings on these issues when it knows very well that a_ll of these issues are
`
`already fully briefed and pending before the TTAB in the pre—existing proceedings between EEI
`
`and Noble. In fact, that litigation is ready to proceed to trial as soon as this action is concluded.
`
`At any rate, the pendency of a fully briefed summary judgment is an insufficient basis to justify
`
`the denial of a voluntary dismissal without prejudice. See, e. g., Pontenberg v. Boston Scientific
`
`Corp., 252 F.3d 1253, 1259 (llth Cir. 2001).
`
`It is in anticipation of the Court's denial of Marrero's summary judgment motion and the
`
`amount of work still remaining both for the Court and the parties to ready the case for trial and
`
`conduct the trial" —— for no good reason —— that dismissal is sought. EEI simply believes that
`
`under these circumstances it is pointless to continue to litigate this matter and that it is
`
`appropriate at this juncture that this matter be dismissed in its entirety. Enough is enough. The
`
`controversy that this action was about is over and it is not proper to utilize the resources of the
`
`Court to litigate hypothetical trademark issues in order generate an advisory opinion.
`
`Accordingly, pursuant to Rule 4l(a)(2), EEI moves for the voluntary dismissal of its
`
`counterclaim based upon the following conditions:
`
`the Court's granting EEI's pending Renewed Motion to Dismiss Declaratory
`(a)
`Action for Lack of Subject—Matter Jurisdiction (D.E. # 214);
`
`EEI will provide Marrero and Noble with a release for any damages claim based
`(b)
`upon lit activity in connection with Marrero's West Palm Beach nightclub;
`
`EEI will provide Marrero and Noble with a covenant not sue with regard to their
`(c)
`current activity (i.e. advertising a "Coco Bongos Cancun" theme night at a nightclub that does
`not contain the word "Bongo" or "Bongos" in its name);
`
`(d)
`
`the dismissal shall be "without prejudice";
`
`4 There are presently approximately 15 motions pending and, going forward, the action will have to
`achieve "at issue" status after Noble is joined, discovery will need to be conducted regarding Noble, the parties’ pre-
`trial stipulation will need to be modified after discovery and the disposition of motions, the parties will need to
`prepare for trial, including motions in limine, and ultimately a jury trial will need to be conducted.
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`

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`(e)
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`each party will bear its own fees and costs.
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`EEI submits that the stated conditions are fair, reasonable and even—handed, serve to
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`avoid any prejudice to all parties and should be accepted by the Court, resulting in the dismissal
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`of this action in its entirety. Rule 4l(a)(2) provides that "an action may be dismissed at the
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`plaintiffs request only by court order, on terms that the court considers proper." Since Noble has
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`not yet been served, EEI can dismiss all claims as to him without prejudice without leave of
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`court. See, Rule 4l(a)(l), Fed.R.Civ.P. Noble, therefore, has no ability to object to the dismissal
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`of EEl's counterclaim in any event. If EEI must proceed vis—a—vis Marrero, however, it intends
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`to continue to proceed against Noble as well since he is the real party in interest and owner of the
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`trademark at issue. In the event the Court determines that any of the conditions upon which the
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`proposed voluntary dismissal is based are not satisfactory, EEI's intention is to withdraw this
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`conditional motion for voluntary dismissal. See, eg. Yofle v. Keller Industries, Inc., 582 F.2d
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`982, 983 (5th Cir. l978)(party moving for voluntary dismissal under Rule 4l(a)(2) may
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`withdraw motion and decline to dismiss if conditions imposed by district court are
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`unacceptable); Marlow v. Winston & Strawn, 19 F.3d 300, 304 (7th Cir. 1994) (party seeking
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`voluntary dismissal has option of withdrawing motion if district court's conditions are too
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`onerous and proceeding instead to trial on the merits); 9 Wright & Miller, Fed. Prac. & Proc.
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`Civil 2d § 2366 at 303 (where the plaintiff finds the court—imposed conditions “too onerous, [he]
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`need not accept the dismissal on those terms”).
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`A strikingly similar situation to the one here occurred in Read Corp. v. Bibco Equipment
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`Co., Inc., 145 F.R.D. 288 (D.N.H. 1993) in which the Court ordered the Rule 4l(a)(2) voluntary
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`dismissal of a patent infringement damages claim without prejudice, with each party to bear their
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`own fees and costs where, as here, the plaintiff had achieved its main goal because the infringing
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`activity had ceased during the case, the money damages claim was only an incidental part of the
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`case, the allegedly infringing party was acting as a "stalking horse" for another party (represented
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`by the same counsel) who refused to voluntarily appear, and the defendant was not even paying
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`its own legal fees. For the Court's convenience, we briefly discuss each of the conditions of
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`EEl's proposed voluntary dismissal in the following sections.
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`

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`II.
`This Matter
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`The Voluntary Dismissal On the Specified Conditions Will Fairly Conclude
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`a.
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`The Granting of EEI's Renewed Motion to Dismiss the Declaratory Action
`for Lack of Subject Matter Jurisdiction.
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`There would be no point in EEI voluntarily dismissing its counterclaim if Marrero's
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`declaratory action remained pending. As the Court recognized in its order joining Roberto Noble
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`as a necessary party (D.E. # 170), EEI's infringement claim and Marrero's request for a
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`declaration of "non—infringement" are merely mirror images of one another, and the dismissal of
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`the counterclaim while the declaratory action remains pending will not save any resources or
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`terminate this moot action.
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`1.
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`Trademark Infringement Depends Upon the Particular Use in the
`Marketplace
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`As detailed in EEI's pending Renewed Motion to Dismiss for Lack of Subject Matter
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`Jurisdiction (D.E. # 214), Marrero's current activities (advertising a "Coco Bongo" theme night
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`held at a nightclub without the word "Bongo" in its name) is not likely to cause confusion. EEI's
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`theory of the case has always been, and remains, that Marrero infringed its mark by operating a
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`nightclub named Coco Bongo because that particular use of the mark was likely to, and did,
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`cause confusion as to the source of the nightclub services in the relevant group of consumers,
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`i.e., nightclub goers. As the Eleventh Circuit has recently cautioned, EEI can only evaluate
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`whether the use of a mark is likely to cause confusion based on the actual and particular use in
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`the real—world marketplace at any given time. Custom Manufacturing and Engineering, Inc. v.
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`Midway Services, Inc., 508 F.3d 641 (l lth Cir. 2007). At the core of this issue is the fact that, in
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`an infringement action, a court does not have plenary power to consider hypothetical uses of a
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`trademark. It must determine whether there is a likelihood of confusion as to the source of
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`services based upon the actual use of the mark in the marketplace, taking into consideration the
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`unique facts and circumstances of the use.
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`2.
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`The Current Use Is Not Likely to Cause Confusion
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`As more fully set forth in EEI's motion, and supported by the Declarations of EEI's
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`President Frank Amadeo as well as the Declarations of club promoters Robert Rivera and Edison
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`Farrow, Marrero's references to a Coco Bongo event at Club Ibiza are typical of such nightclub
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`events and related flyers, and are not likely to confuse nightclub customers into thinking that the
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`

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`source of the nightclub services is anything other than the actual nightclub identified on the flyer
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`as the location of the sponsored advertised event. (D.E. # 214, Exhibits C, D and E). As aptly
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`stated by one of those nightclub promoters:
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`I have been involved in marketing and promoting
`In all of the years that
`nightclubs,
`including theme/party nights
`sponsored by others,
`I have not
`experienced any confusion by customers about who was actually providing the
`nightclub services. While flyers and advertisements might contain the logos or
`names of a sponsoring person or corporate entity, the identity of the nightclub
`who is offering the nightclub services is clear from the advertisement as it is
`important not to confuse the customers for the purpose of finding the venue/club
`easily.
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`Declaration of Robert Rivera, D.E. # 214, Ex D, par. 6.
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`EEI's lack of any objection to Plaintiffs current use of "Coco Bongos,” is now reflected
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`in EEI's Amended Answer, Affirmative Defenses and Counterclaim (D.E. # 182), which
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`specifically distinguish the Plaintiffs past infringing conduct from its present non—infringing
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`conduct, and which, in recognition of the belated name change, no longer seeks injunctive relief,
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`treble damages, or attorney's fees.
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`(D.E. # 182, ‘M 13, 26, 27, 31 32, 34, 35 38, 39). For
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`example, at paragraph 18, EEI's counterclaim now reads: "Ten months after filing the instant
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`declaratory judgment action and three months after the filing of EEI's counterclaim, Marrero, on
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`or about September 14, 2007, changed the name of its nightclub from "Coco Bongo" to "Ibiza"
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`and is now operating the nightclub as "Ibiza" and not as "Coco Bongo." All damages alleged in
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`the counterclaim are limited to the period "until approximately September 13, 2007" (i.e. until
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`the name changed). EEI specifically alleges that Marrero's current use of the mark to advertise a
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`"Coco Bongo" theme night is not likely to cause confusion and not objectionable. D.E. # 182,
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`pars. 20, 21. The Court's Order denying EEI's previous request to dismiss the declaratory action
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`due to lack of a continuing controversy indicated that EEI should amend its counterclaim to
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`reflect the lack of dispute.
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`As detailed in EEI's Renewed Motion to Dismiss, the type of theme night and related
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`advertising flyers being used by Marrero are typical in the nightclub industry. EEI has explained
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`its position and supported its motion with declarations detailing the practices in the industry. By
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`contrast, Marrero relies only upon its own counsel's mischaracterization of its own already self-
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`serving affidavit, to implore the Court that, even after changing the nightclub's name, Marrero is
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`still engaged in infringing activity. There is a discrepancy between the declaration and Marrero's
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`counsel's argument, which stretches the declaration to the point of trying to equate the holding of
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`a Coco Bongos Theme Night at Club Ibiza with the nightclub actually being named Coco
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`Bongos on those specific nights. Based on the clear record and the declarations on file
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`explaining these types of theme nights in the industry, that is plainly not the case. Such theme
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`nights are not likely to confuse customers that the nightclub services provided by Club Ibiza are
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`being offered by anyone other than Club Ibiza. The use of the Coco Bongo Cancun logo is likely
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`to suggest a sponsorship or affiliation between Club Ibiza and Coco Bongo Cancun, but is not
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`likely to suggest a sponsorship or affiliation between Club Ibiza and Bongos Cuban Cafe or
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`between Coco Bongos and Bongos Cu