throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA481524
`ESTTA Tracking number:
`07/03/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055403
`Defendant
`Thanh Nguyen
`SCOTT KONOPKA
`PAGE MRACHEK FITZGERALD & ROSE PA
`1000 SE MONTEREY COMMONS BLVD, SUITE 306
`STUART, FL 34996
`UNITED STATES
`skonopka@pm-law.com, pgillman@pm-law.com, lchristian@pm-law.com,
`snickey@pm-law.com, mjohnston@pm-law.com
`Other Motions/Papers
`Scott Konopka, Esq.
`skonopka@pm-law.com, pgillman@pm-law.com, snickey@pm-law.com,
`mjohnston@pm-law.com, lchristian@pm-law.com
`/s/ Scott Konopka, Esq.
`07/03/2012
`2012 07 03 Respondents Notice of Action in Civil Litigation.pdf ( 27 pages
`)(1103573 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
`
`BARRY BIONDO, d/b/a
`TIPSY SPA AND SALON lNC.,
`
`V.
`
`_
`
`THANH NGUYEN, an individual,
`
`/
`
`Cancellation N0.: 92055403
`Serial N0.: 77093533
`
`RESPONDENT THANH NGUYEN’S NOTICE OF
`
`CONCLUSION OF PENDING LITIGATION
`
`I
`
`COMES NOW, Respondent, THANH NGUYEN, pursuant to lnterloctory Attorney
`
`George Pologeorgis’ June 12, 2012 Order, and hereby files this Notice of the Conclusion
`
`of Pending Litigation for which the Petition to Cancel was stayed, finding,
`
`in part, as
`
`follows:
`
`I
`
`I
`
`I
`
`On June 15, 2012, the Court in the civil matter, captioned Thanh Nguyen, an
`1.
`Individual, and L-uong Nguyen','an Individual, Plaintiffs, vs. BarryBiondo, an individual, and
`
`Tipsy Spa and Salon lnc., a Florida corporation, Case No.: 9:11—CV-81‘I56-l\/liddlebrooks,
`issued an Omnibus Order resolving the issues between the parties, including the parties
`named herein. A copy of the Omnibus Order is attached hereto as Exhibit “A.”
`
`2.
`
`The Orderfound that Claimant, Barry Biondo, intentionally infringed on Thanh
`
`I Nguyen’s federal “Tipsy” trademark underthe Lanham Act, created a false designation of I,
`
`origin. underthe Lanham Act, as well as common law trademark infringement, and use of
`
`the domain name “www.tipsyspa.com” constituted cybersquatting. See Ex.
`
`3.
`
`As a result of these findings, the Court exercised its “equitable powers to
`
`permanently enjoin Defendants from using the “Tipsy” mark. See EX.
`
`pg. 14'.
`
`
`PAGE MRACI-IEK FITZGERALD & ROSE P.A.
`
`Attorneys at Law
`Page 1 of 4
`
`

`

`4.
`
`The Court also found that Thanh Nguyen’s “Tipsy” trademark is distinctive
`
`and entitled to protection. See Ex.
`
`pg. 20. The Court previously dismissed with
`
`prejudice Barry Biondo’s Counterclaim for Federal Trademark Registration with False or
`
`Fraudulent Representations. A copy of the Order of Dismissal is attached hereto as
`
`Exhibit “B.”
`
`h 5.
`
`The Order is not yet final and non—appealable, although it does direct the .
`
`Clerk to issue a" Final Judgment. There is still outstanding the issue of the amount of
`
`attorney’sfees and additional damages under Florida common lawtrademark infringement
`
`and contractual late fees.
`
`Respectfully submitted,
`
`PAGE, MRACHEK, FITZGERALD 8; ROSE, P.A.
`1000 S.E. Monterey Commons Blvd., Suite 306
`Stuart, Florida 34996
`'
`Telephone (772) 221-7757
`Facsimile (772) 781-6886
`Counsel for THANH NYUGEN
`
`By:
`
`'
`/ Scott Konogka /
`SCOTT KONOPKA, ESQUIRE
`Florida Bar No. 080489
`
`E-mail: skonoQka@pm—law.com
`PAIGE GILLMAN, ESQUIRE ’
`Florida Bar No. 58967 ’
`
`E-mail: ggillman@gm-law.com
`
`PAGE, MILACHEK, ETZGERALD & ROSE, P.A.
`'
`Attorneys at Law
`Page 2 of 4
`
`

`

`CERTIFICATE OF SERVICE
`WE HEREBY CERTIFY that on the 3'“ day of July 201.2, vi/e electronically filed the
`
`foregoing document with the United States Patent and Trademark Office through the
`
`Trademark Trial and Appeal Board. We also certify that the foregoing document is being
`
`sewed this day on all counsel of record identified on the_attached Service List by email.
`
`Respectfully submitted,
`
`PAGE, MRACHEK, FITZGERALD & ROSE, P.A.
`1000 S.E. Monterey Commons Blvd., Suite 306
`Stuart, Florida 34996
`Tel (772) 221-7757 / Fax (772) 781-6886
`Counsel for Thanh Nguyen
`
`By:
`
`I
`/ Scott Konopkal
`SCOTT KONOPKA, ESQ.
`Florida Bar No. 080489
`
`.
`
`'
`
`'
`
`E-mail: skonooka@pm-law.com
`PAIGE GILLMAN, ESQ.
`Florida Bar No. 58967
`
`E-mail: pgillman@pm-law.com
`
`PAGE, MRACHEK, FITZGERALD & ROSE, P.A.
`Attorneys at Law
`Page 3 of 4
`
`

`

`SERVICE LIST
`
`BARRY BIONDO,-dlb/a
`TIPSY SPA AND SALON lNC., a
`
`Florida Corporation
`vs.
`
`THANH NGUYEN, an individual
`
`Cancellation No.: 92055403
`Serial No.: 77093533
`
`UNITED STATES PATENT AND TRADEMARK OFFICE ’
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Wendy Peterson, Esq.
`Wsg@nigis.com
`Not Just Patents, LLC
`P.O. "Box 18716
`
`'
`Minneapolis, MN 55418
`Attorney for Petitioners, Barry Biondo an
`Tipsy Spa and Salon, Inc.
`-
`
`,
`
`W:\Stuart\CASES\T|PSY III - Objection to Trademark App\USPTO CANCELLATION\PLEADlNGS\2012 ‘O7 03 Respondents Notice
`-of Action in civil litigation.wpd
`
`PAGE, MRACHEK, FITZGERA.‘-LD & ROSE, P.A.
`Attorneys at Law b
`Page 4 of 4
`
`

`

`Case 9:ll—cv-81156-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 1 of 22
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO. 11-81156-CIV-MIDDLEBROOKS/BRANNON
`
`THANH NGUYEN, et al.,
`Plaintiffs,
`
`v.
`
`BARRY BIONDO, et al.,
`Defendants.
`
`OMNIBUS ORDER
`
`THIS CAUSE comes before the Court upon the following: (1) Plaintiffs’ Motions
`
`to Strike the Affidavits of Barry Biondo (DES 86; 93);
`
`(2) Plaintiffs’. Motion for
`
`Summary Judgment (DE 79), filed May l4,i 2012; and (3) Defendants’ Motion for
`
`Summary Judgment
`
`80), filed May 14, 2012.
`
`I have reviewed the record and am
`
`otherwise fully advised in the premises.
`
`I. Background '
`
`Plaintiffs Thanh Nguyen (“Thanh”) and Luong Nguyen (“Luong”) initiated this
`
`action against -Defendants Barry Biondo (“Biondo”) and "Tipsy Spa and Salon, lnc.,
`
`(“Tipsy, Inc.”) alleging Defendants both breached the terms of the Parties’ Business Sale
`
`Agreement (“Agreement") and violated state and federal trademark law by using the
`
`I “Tipsy” mark. Specifically, Plaintiffs assert claims for federal trademark infringement,
`
`false designation of origin, Florida common law trademark infringement (collectively,
`
`“Trademark Infringement Claims”), cybersquatting, dilution, unjust enrichment, and
`
`E)';H'IBIT I
`
`I
`
`

`

`Case 9:ll—cv—81156-DMIVI Document 99 Entered on FLSD Docket 06/15/2012 Page 2 of 22
`
`——
`
`breach of contract. Both Plaintiffs and Defendants move for summary judgment on all
`
`counts of Plaintiffs’ Amended Complaint.
`
`II. Standard of Review
`
`Pursuant to Federal Rule of Civil Procedure 56(c), a district court’s decision to
`
`grant summary judgment is appropriate where “the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show that
`
`there is no genuine issue» as to any material fact and that the moving party is entitled to a
`
`judgment as a matter of law.” Fed. R. Civ. P. 56(c). An issue of material fact is genuine
`
`‘where the evidence issuch that a reasonable jury could return a‘ verdict. in favor of the
`
`non-moving party. See Mize v. Jeflersan City Bd. of Educ, 93 F.3d 739, 742 (11th Cir.
`
`1996) (quoting Hairston v. Gainesville Sun Publ’g C0,, 9 F.3d 9.13, 919 (11th Cir.
`
`1993)).
`
`A district court’s central inquiry when determining whether it should grant a
`
`motion for
`
`summary judgment
`
`is
`
`“whether
`
`the evidence presents
`
`a sufficient
`
`disagreement to require submission to a jury or whether it is so one-sided that one party
`
`must prevail as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52,
`
`106 S. Ct. 2505, 2512, 91 L. Ed. 2d 202 (1986). After the parties have had adequate time
`
`to conduct discovery and a party files a motion for summary judgment, a district court
`
`must grant summary judgment against a party who fails to establish the existence of an
`
`element essential to his case that he bears the burden of proof on during trial. See Celotex
`
`Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552, 91 L. Ed. 2d 265 (1986).
`
`The moving party bears the initial burden of demonstrating to the court that the
`
`record does not contain any genuine issues of material fact to be determined at trial. See
`
`

`

`Case 9:11-cv—8ll56—'DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 3 of 22
`
`
`
`Clark v. Coats & Clark, Inc., 929 F.2d 604, 608 (11th Cir. 1991). Whether a fact is
`
`material or not is a question that requires the moving party to defer to substantive law,
`
`and “[o]n1y disputes over facts that might affect the outcome of the suit under the
`
`governing law will properly preclude the entry of summary judgment.” Anderson v.
`
`Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).
`
`Pursuant to Rule 56, a moving party may accompany its motion for summary judgment
`
`with supporting affidavits; however, the movant is not required to file any affidavits. See
`Fed. R. Civ. P. 56(a)-(b)..
`
`“When a moving party has discharged its burden, the non—moving party must then
`
`go beyond the pleadings, and by its own‘ affidavits, or by depositions, answers to
`
`interrogatories, and admissions on file, designate specific facts showing that there is a
`
`genuine issue for trial.” Jefiferjyv. Sarasota White Sox, Inc., 64 F.3d 590, 593-94 (11th
`
`Cir. 1995) (per curiam) (internal citation and quotations omitted). In addition, the dispute
`
`must have a ‘‘real basis in the record” in order to constitute a genuine dispute of fact.
`
`Pace v. Capobianco, 283 F.3d 1275, 1278 (11th Cir. 2002) (quoting Mize, 93 F.3d at
`
`742) (internal quotations omitted). Thus, “mere conclusions and unsupported factual
`
`allegations are legally insufficient
`
`to defeat a summary judgment motion.” Ellis v.
`
`England, .432 F.3d 1321, 1327 (11th Cir. 2005).
`
`While conclusions and unsupported facts alone are insufficient
`
`to oppose a
`
`summary judgment motion, a district court “must view all evidence and make all
`
`reasonable inferences in favor of the party opposing summary judgment.” Haves v. City
`
`of Miami, 52 F.3d 918, 921 (11th Cir. 1995) (citing Dibrell Bros. Im"l, S.A. v. Banca
`
`Nazionale Del Lavoro, 38 F.3d 1571, 1578 (11th Cir. 1994) (per curiam)). In order to
`
`

`

`Case 9:11-cv—81156-DMM Document 99’ Entered on FLSD Docket 06/15/2012 Page 4 of 22
`
`demonstrate a genuine issue,
`
`the party opposing entry of summary judgment must
`
`establish sufficient evidence upon which a jury could reasonably rule in his favor;
`
`therefore, a mere “scintilla of evidence” alone is insufficient. See Liberty Lobby, 477 US.
`
`at 252, 106 S. Ct. at 2512. If the party opposing summary judgment produces any
`
`evidence, a district court must accept it as true and draw “all justifiable inferences” in his
`
`favor. See id at 255, 106 S. Ct. at 2513.
`
`III. Motions to Strike
`
`Before addressing the merits of the Parties’ respective Motions for Summary
`
`Judgment, I must first resolve a preliminary issue raised by Plaintiffs in their Motions to
`
`Strike Defendant Barry Biondo’s Affidavits (DES 86; 93). Defendants failed to respond
`
`to the Motions to Strike, which “may be deemed sufficient cause for granting [a] motion
`
`by default.” See S.D. Fla. L.R. 7..l(c). After considering_ the record, and noting that
`
`Defendants’ failure to respond to Plaintiffs’ Motions to Strike is just another example of
`
`the pattern of misconduct which Defendants have engaged in throughout the course of
`
`this litigation,‘ I find sufficient cause exists to grant Plaintiffs’ Motions to Strike by
`
`default.
`
`Nevertheless, Plaintiffs’ Motions to Strike should also be granted on the merits.
`
`In their Motions to Strike, Plaintiffs argue that Biondo intentionally engaged in
`
`misconduct designed to impede their abilities to engage in meaningful discovery.
`
`Specifically, two days before discovery closed, Biondo produced a journal in which he
`
`recorded his recollections of the events that transpired prior to the time the Parties signed
`
`the Agreement. After they received the journal, Plaintiffs rushed to take Biondo’s
`
`continued deposition before discovery closed, but, during his deposition, Biondo claimed
`
`

`

`Case 9:ll—cv-81156-DMM Document 99. Entered on FLSD Docket 06/15/2012 Page 5 of 22
`
`
`
`he could not recall the events that he recorded in his journal. (See, e.g., Biondo ‘Depo.
`
`308:8-9).
`
`Despite his numerous representations that he could not recall the events he wrote
`
`about in his journal because of his “very bad memory” (Biondo Depo. 290:3), Biondo
`
`submitted sworn affidavits that include excerpts from his journal, that he previously
`
`could not recall, verbatim. (Compare Biondo Aff. at fil 6 with Biondo Depo. 308:7-25).
`
`Notably, Biondo failed to explain how he triggered his “very bad memory” between the
`
`time Plaintiffs took his deposition and the time he submitted his affidavits.
`
`After comparing Biondo’s affidavits with his deposition, I am, left to conclude
`
`Biondo either (1) remembered the events he recorded in his journal and intentionally
`
`failed to answer Plaintiffs’ questions during his deposition or (2) copied the entries into
`
`his affidavit even though he did not remember the events he recorded in his journal.
`
`Regardless, under either alternative, Biondo’s affidavits must be excluded. Accordingly,
`
`Plaintiffs’ Motions to Strike are granted, and, I will not consider Biondo’s affidavits
`
`when determining whether either Party is entitled to judgment as a matter of law.
`
`IV. Discussion
`
`1. Trademark Infringement Claims Under Federal and Florida Law
`
`A. Plaintzfifr’ Claims for Federal Trademark Infringement, False
`Designation of Origin, and Florida Common Law Trademark
`Infringement
`
`“The term ‘trademark’
`
`includes any word, name, symbol, or device, or any
`
`combination thereof-- (1) used by a person, or (2) which a person has a bona fide
`
`intention to use in commerce and applies to register .
`
`.
`
`.
`
`, to identify and distinguish his or
`
`her goods, including a unique product, from those manufactured or sold by others and to
`
`

`

`Case 9:ll—cv—81156-DMIVI Document 99 Entered on FLSD Docket 06/15/2012 Page 6 01°22
`
`
`
`indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. In
`
`order for a registrant to prevail on a federal trademark infiringement claim under 15
`
`U.S.C. § 1114 or Florida law, the registrant must show (1) its mark has priority and (2)
`
`the alleged infringer’s unauthorized use was likely to cause consumer confusion. See_
`
`Optimum Techns., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1241 (11th
`
`Cir. 2007) (setting forth the elements of a federal claim for trademark infringement); see
`
`Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 F. App’): 252, 256 (11th Cir. 2006)
`
`(providing “that
`
`the analysis of the Florida statutory and common law claims of
`
`trademark infringement .
`
`.
`
`.
`
`is the same as under the federal trademark infringement
`
`claim”) (additional citation omitted). If a party prevails on his section 1 1l4(a)(1) claim of
`
`trademark infringement, he will also recover on his false designation of origin claim
`brought “pursuant to Section 1125 .
`.
`. because Section 1125(a) is broader than Section
`
`1114 in that it covers false advertising or description whether or not it involves trademark
`
`infringement.” Babbit Elecs, Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir. 1994)
`(internal citations omitted).
`I
`
`Plaintiffs are in the business of owning and operating full service hair and nail
`
`salons that serve alcohol to patrons. (Thanh Affl at 11 2; Luong Aff. at 1] 2). Thanh first
`
`used the “Tipsy” mark on or about December 15, 2006. (Thanh Aff. at 11 5). In January of
`
`2007, Plaintiffs opened the Tipsy salon located at 1037 State Road 7, Suite 112,
`
`Wellington, Florida, 33414 (“Wellington Tipsy”). (Thanh Aff. at 11 6). Shortly thereafter,
`
`Thanh applied to register the “Tipsy” mark with the United States Patent and Trademark
`Office (“USPTO”) (Thanh Aff. at 11 7), which the USPTO granted on November 11, 2008
`
`(see DE 79- Attachment 1 at 2). Thanh owns the rights to use the registered “Tipsy” mark
`
`

`

`Case 9:11-cv—8ll56—DMl\/I Document 99 Entered on FLSD Docket 06/15/2012 Page 7 of 22
`
`
`
`(Reg. No. 3,529,699) in connection with bar services. The state of Florida also granted
`
`Thanh a “Tipsy” trademark on November 19, 2009. (See DE 79- Attachment 2 at 2).
`
`In between the time that Thanh applied for and was granted the rights to use the
`
`“Tipsy” mark, Thanh and Defendant Barry Biondo (“Biondo”) orally agreed that Thanh
`
`would sell Biondo a 50% interest in the Wellington Tipsy. (Thanh Aff. at 11 14). The
`
`Parties’ relationshiplrapidly deteriorated, and, on March 11, 2010, Plaintiffs and Biondo
`
`entered into an agreement (“Agreement”). (Thanh Aff. at 11 21; Agreement at 11 1).
`Plaintiffs agreed to sell Biondo their remaining interest in the Wellington Tipsy for
`
`$164,000 (Thanh Aff. at 11 21; Agreement at 11 1) and authorized Biondo to use the
`
`“Tipsy” mark until March 11, 2011 (Thanh Aff. at 11 24; Agreement at 11 8). Biondo did
`
`not purchase the right to the use the “Tipsy” name “or any mark associated with that
`
`business name.” (Agreement at 11 8). Since March 11, 2011, Defendants have continued
`
`using the “Tipsy” mark. (Thanh Aff. at 1111 30; .32). In fact, on March 21, 2011, Biondo
`
`filed a federal
`
`trademark application for his own mark that incorporates the name
`
`“Tipsy.” (Biondo Depo. 171 :5-24).
`
`Plaintiffs contend Defendants’ use of the “Tipsy” mark has led to consumer
`
`confusion. In her sworn statement, Catherine Hasson (“Hasson”), the manager of Tipsy
`of Jupiter Spa and Salon (“Jupiter Tipsy”), represented that at list five (5) times a week
`
`an individual will mistakenly book an appointment at the Wellington Tipsy instead of the
`
`Jupiter Tipsy, and, vice versa. (Hasson Aff. at 1111 9-10). Additionally, Hasson stated that
`
`individuals often try to pay for the services they receive at the Jupiter Tipsy with coupons
`
`or gift cards issued by the Wellington Tipsy. (Hasson Aff. at 11 1 1).
`
`

`

`Case 9:11-cv—8l156-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 8 01°22
`
` \
`
`After considering this evidence, I conclude Plaintiffs bore their initial burden of
`
`demonstrating that they are entitled to summary judgment on their claim for trademark
`
`infringement under the Lanham Act. Thanh’s prior registration of the “Tipsy” mark gives
`
`rise to a presumption of the mark’s validity and priority. See Coach House Rest. v. Coach
`
`and Six Rest, 934 F.2d 1551, 1562 (1 1th Cir. 1991). When determining whether two
`
`marks are likely to cause consumer confusion, district courts apply a seven-factor test to
`
`assess whether a consumer is likely to confuse the marks. A court will consider (1) the
`
`type of mark; (2) the similarity of the marks; (3) the similarity of the products the marks
`represent; (4) the similarity of the parties’ stores and customers; (5) the similarity of
`
`advertising media; (6) the defendant’s intent; and (7) actual consumer confusion. See‘
`
`Frehling Enterps., Inc. V. Int ’l Select Grp., Inc., 192 F.3d 1330,1335 (11th Cir. 1999).
`
`Through Hasson, Plaintiffs
`
`submitted numerous
`
`examples of actual
`
`confusion
`
`experienced by both Wellington Tipsy’s and Jupiter Tipsy’s customers. Evidence of
`
`actual confusion is strong evidence that Defendants’ unauthorized use of the “Tipsy”
`
`mark is likely to cause consumer confusion. See Dieter v. B & H Indus. of Southwest
`
`FZa., Inc., 880 F.2d 322, 326 (11th Cir. 1989).
`
`Defendants do not dispute that Thanh registered the “Tipsy” mark with the federal
`
`and state government (See DE 90_ at 5; see also DE 97 (“Defendants are not challenging
`
`the Plaintiffs’ [sic] ownership of the Tipsy mark, but they are challenging they [sic]
`
`quality control of services and goods produced under the Tipsy mark for the Tipsy stores
`
`[sic] located in Wellington[,] which has resulted in their abandonment to the exclusivity
`
`of their mark for this geographic area.”)) or that Defendants’ use of the “Tipsy” mark is
`
`likely to cause consumer confusion.
`
`

`

`Case 9:11-cv—81l56-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 9 01°22
`
`
`
`Instead, Defendants assert they are entitled to summary judgment on Plaintiffs’
`
`claim for trademark infringement under the La.nham Act because Thanh abandoned his
`
`rights to the “Tipsy” mark in “the geographical area of Wellington, Florida.” (See DE 90
`
`at 5). “Abandonment is trademark law's way of recognizing that “[t]rademark rights flow
`
`from use.”’ Cumulus Media, Inc. v. Clear Channel Commc ’ns, Inc., 304 F.3d 1167, 1173
`
`(llth Cir. 2002) (quoting in part AmBrit, Inc. v. Kraft, Inc., 812 F .2d 1531, 1550 (1 1th
`
`Cir. 1987)).
`
`Defendants’ legal argument is difficult to parse. However, it appears Defendants
`
`believe Thanh abandoned his rights to the “Tipsy” mark because he engaged in naked
`
`licensing by failing to maintain sufficient control over the mark from May 2008 until the
`
`present.
`
`(See DE 80-Attachment 2 at 3-4). “The owner of a trademark has not only a
`
`right to license the use of his trademark to others, but also a concurrent duty to exercise
`
`control and supervision over the licensee's use of the mark.” Sheila ’s Shine Prods., Inc. v.
`
`Sheila Shine, Inc. 486 F.2d 114, 123-24 (5th Cir. 1974). (citation, omitted).
`
`In order to
`
`prove a trademark holder abandoned his rights to a mark due to naked licensing, a
`purported infringer must show that the mark holder failed “to properly supervise its
`
`licensee’s use of themark.” Prof’l Golfers Ass’n ofAm. v. Bankers Life & Cas. Co, 514
`
`F.2d 665, 671 (5th Cir. 1975). A former trademark “licensee is estopped from contesting
`
`the validity of the licensor’s title during the course of the licensing arrangement”;
`
`however, a former licensee can challenge a licensor’s rights to the mark based upon facts
`
`that occurred after the license expired. Id.
`
`As set forth in the Agreement, Defendants’ license to use the “Tipsy” mark
`
`expired on March 11, 2011. Defendants failed to include any evidence establishing that
`
`

`

`Case 9:11-cv-81156-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 10 of 22
`
`Thanh engaged in naked licensing after March 11, 2011, which could serve as a basis to
`
`support their affirmative defense of abandonment. Thus, Plaintiffs, not Defendants, are
`
`entitled to summary judgment on Plaintiffs’ claim for trademark infringement under the
`
`Lanham Act because Defendants failed to establish a prima facie case of abandonment———
`
`let alone demonstrate that a genuine issue of material fact exists with respect to Plaintiffs’
`
`claim for trademark infringement. As discussed above, since Plaintiffs are entitled to
`
`judgment as a matter of law on their claim for trademark infringement under the Lanham
`
`Act, Plaintiffs are also entitledto judgment as a matter of law on their claims for false
`
`designation of origin under the Lanham Act and common law trademark infringement.
`
`B. Cybersquatting
`
`To prevail under the Anti-Cybersquatting Consumer Protections Act, see 15
`
`U.S.C. § ll25(d), a plaintiff must prove that “(l) its mark is distinctive or famous and
`
`entitled to protection; (2) the defendant's domain name is identical or confusingly similar
`
`to the plaintiffs mark; and (3) the defendant registered or used the domain name with a
`
`bad faith intent to profit.” Bavaro Palace,
`256 (1 1th Cir. 2006).
`
`v. Vacation Tours, Inc., 203 F. App’x 252,
`i
`
`As discussed above, Plaintiffs presented unrebutted evidence that Thanh owned
`
`the exclusive rights to the distinctive “Tipsy” mark by submitting evidence showing that
`
`the mark is registered with the USPTO. Also, by introducing examples of actual
`
`consumer confusion, Plaintiffs demonstrated that Defendants’ nearly-identical domain
`
`D name,
`
`“www.tipsyspa.com”
`
`is
`
`confusingly
`
`similar
`
`to
`
`their
`
`domain
`
`name
`
`“www.tipsyjupiter.corn.” Plaintiffs proved Defendants’ bad faith intent to profit off their
`
`infringing activities by introducing evidence of both Defendants’ ongoing willful
`
`l0
`
`

`

`Case 9:11-cv-81156-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 11 of 22
`
`unauthorized use of the “Tipsy” mark and Biondo’s attempt to register his own mark
`
`using the “Tipsy” name. Finally,‘P1aintiffs further established Defendants acted in bad
`
`faith by introducing evidence that Defendants failed to abide by the express terms of the
`
`Agreement which explicitly precluded Defendants from using “Tipsy” in their domain
`
`name after March 11, 2011 (Agreement at 1] 8). Defendants failed to rebut any of these
`facts;
`thus, Plaintiffs are entitled to entry of summary judgment on their claim for
`
`cybersquatting.
`
`C. Remedies
`
`i. Damages Under Lanham Act
`
`Plaintiffs seek statutory damages for their federal trademark infringement claim
`
`under 15 U.S.C. § 1ll7(c) and for their cybersquatting claim under 15 U.S.C. § 1117(d).
`
`When awarding statutory damages, a district court enjoys wide discretion. See
`
`Cable/Home Cammc ’n Corp. v. Network Prods. Inc., 902 F.2d 829, 852 (11th Cir. 1990).
`
`1. Section 1411730)
`
`In lieu of seeking actual damages arising from Defendants’ unauthorized use of
`the “Tipsy” mark, Plaintiffs opt to recover statutory damages pursuant to 15 U.S.C. §
`
`1117(c). In 1995, Congress added section 1117(c), the statutory damage provision of the
`
`Lanham Act, because “counterfeit records are frequently nonexistent,
`
`inadequate, or
`
`deceptively kept .
`
`.
`
`. making proving actual damages in these cases extremely difficult if
`
`not impossible.” Pez‘Med Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d 1213,
`
`1219-20 (S.D. Fla. 2004) (quoting Tzflany Inc. v. Luban, 282 F. Supp. 2d 123, 124
`
`(S.D.N.Y. 2003). Section 1117(0) provides:
`
`In a case involving the use of a counterfeit mark (as defined in section
`1116(d) of this title) in connection with the sale, offering for sale, or
`
`11
`
`

`

`Case 9:l1—cv—8l156-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 12 of 22
`
`distribution of goods or services, the plaintiff may elect, at any time before
`final judgment is rendered by the trial court, to recover, instead of actual
`damages and profits under subsection (a) of this section, an award of
`statutory damages for any such use in connection with the sale, offering
`for
`sale,
`or
`distribution
`of
`goods
`or
`services.
`
`15 U.S.C. § 1117(c). “[T]he term counterfeit mark means .
`
`.
`
`. a counterfeit of a mark that
`
`is registered on the principal register in the United States Patent and Trademark Office
`
`for such goods or services sold, offered for sale, or distributed and that is in use, whether
`or not the person against whom relief is sought knew such mark was so registered.” 15
`
`Ui.S.C. § lll6(d)(l)(B)(i). As previously discussed, Plaintiffs proved Defendants are
`liable for federal
`trademark infringement pursuant to 15 U.S.C.
`§ 11l4(l)(a) by
`
`demonstrating that Defendants’ unauthorized use of the “Tipsy” mark at the Wellington
`
`Tipsy and in its domain name caused consumer confusion.
`
`The range of potential statutory damages that a court may award under section
`l1l7(e) varies depending upon whether or not the use of the mark was willful. The
`
`statute provides in pertinent part that a plaintiff may be awarded statutory damages in the
`
`amount of:
`
`(1) not less than $1,000 or more than $200,000 per counterfeit mark per
`type of goods or services sold, offered for sale, or distributed, as the court
`considers just; or
`
`(2) if the court finds that the use of the counterfeit mark was willful, not
`more than $2,000,000 per counterfeit mark per type of goods or services
`sold, offered for sale, or distributed, as the court considers just.
`
`15 U.S.C. § 11l_7(c)(l)-(2). Plaintiffs contend they are entitled to recover as much as
`
`$2,000,000 percounterfeit mark because Defendants use of the “Tipsy” mark was willful.
`
`Willful infringement occurs “when the infringer acted with actual knowledge or reckless
`
`12
`
`

`

`Case 9:ll~cv—8:L156-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 13 of 22
`
`....:
`
`disregard for whether its conduct infringed upon the plaintiffs” trademark. See Arista
`
`Records, Inc. v. Beker Em‘er., Inc., 298 F. Supp. 2d 1310, 1312 (S.D. Fla. 2003).
`
`The evidence demonstrates that Defendants’
`
`infringement was willful. In the
`
`Agreement, Biondo acknowledged that Thanh owned the rights to the “Tipsy” mark and
`
`that he was only entitled to use the mark until ,March 11, 2011. Furthermore, Biondo
`
`promised to stop using the “Tipsy” mark at the Wellington Tipsy and in the Wellington
`
`Tipsy’s domain name after March 11, 2011. Nevertheless, Defendants continue to use the
`
`“Tipsy” mark. Since Defendants’
`
`infringement was willful, Plaintiff is entitled to
`
`statutory damages under section lll7(c)(2). l5 U.S.C. § ll17(c)(2). Plaintiffs request an
`
`award of $800,000 to compensate them for Defendants’ use of the Tipsy mark at the
`
`Wellington Tipsy and in itheir domain name, an award of $400,000 per violation. After
`
`considering the record and taking into account the fact that Defendants’ numerous
`
`discovery violations prevented Plaintiffs from calculating their actual damages, I find an
`
`award of $800,000 ($400,000 per infringing mark) is reasonable and will compensate
`
`Plaintiffs for the damage they suffered as a result of Defendants’ infringement and deter
`
`other individuals from infringing upon a protected trademark.
`
`2. Section lll7§ dz
`
`Since Plaintiffs prevailed on their claim under the ‘Anti-Cybersquatting Consumer
`
`Protection Act, Plaintiffs seek and are entitled to recover damages under 15 U.S.C. §
`
`lll7(d), which provides: “[i]n a case involving a violation of section l1.25(d)(l) of this
`
`title, the plaintiff may elect, at any time before final judgment is rendered by the trial
`court, to recover, instead of actual damages and profits,:an award of statutory damages in
`
`the amount of not less than $1,000 and not more than $100,000 per domain name, as the
`
`13
`
`

`

`Case 9:11-cv-8l156—DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 14 of 22
`
`_
`
`court considers just.” See 15 U.S.C. § ll17(d). Plaintiffs seek an award of $50,000. I find
`
`an award of $50,000 is reasonable considering Defendants’ intentional infringement.
`
`ii.
`
`Inj unctive Relief under Lanham Act
`
`Plaintiffs are further entitled to an order enjoining Defendants from further
`
`infringing upon the “Tipsy” mark pursuant to 15 U.S.C. § 11l6(a), which provides in
`
`pertinent part that this Court “shall have power to grant injunctions, according to the
`
`principles of equity and upon such terms as the court may deem reasonable, to prevent
`
`the violation of any right of the registrant of a mark registered in the Patent and
`
`Trademark Office or to prevent a violation under subsection (a), (c), _or (d) of section A
`
`1125 of this title.” 15 U.S.C. § 1l16(a). Plaintiffs are entitled to injunctive relief because
`
`they successfully demonstrated Defendants willfitlly infringed upon the “Tipsy” mark.
`
`Thus, I opt to exercise this Court’s equitable powers to permanently enjoin Defendants
`
`from using the “Tipsy” mark.
`
`iii. Florida Common Law Trademark Infringement
`
`Plaintiffs are entitled to judgment as a matter of law on their claim forcommon
`
`law trademark infringement. In their Complaint, Plaintiffs allege they are entitled to
`
`damages, attorneys fees, costs, and punitive damages due to Defendants’ intentional
`
`infringement of the “Tipsy” mark. (See DE 1 at ‘H 93). Yet, in their Motion for Summary
`
`Judgment,
`
`they fail
`
`to quantify the actual damages they incurred or suggest an
`
`appropriate amount of punitive damages. If Plaintiffs seek actual or punitive damages,
`
`they must file a motion within thirty (30) days from the date of this Order that sets forth
`
`the amount of damages they seek to recover under this claim.
`
`iv. Attorneys Fees
`
`14
`
`

`

`Case 9:11-cv—8ll56-DMM Document 99 Entered on FLSD Docket 06/15/2012 Page 15 of 22
`
`Plaintiffs move the Court to award them their attorneys fees; however, only “in
`
`exceptional cases may [the court] award reasonable attorney fees to the prevailing party.”
`
`15 U.S.C. § l117(a). “The legislative history indicates that a court should only award
`
`attorney fees
`in cases‘ ‘characterized as malicious,
`fraudulent,
`deliberate
`and
`willfu1.”’Dieter v. B & H Indus. ofSW Fla., Inc., 880 F.2d 322, 329 (11th Cir. 1989)
`
`(quoting in part St. Charles Mg. Co. v. Mercer, 797 l*“.2d 891, 894 (llth Cir. 1983)). Due
`
`to Defendants’ intentional infringement, I find Plaintiffs, as the prevailing party, are
`
`entitled to recover their reasonable attorneys fees and costs.
`
`2. Breach of Contract
`
`Defendants and Plaintiffs both move for summary judgment on Plaintiffs’ claim
`
`for breach of contract. To succeed on a breach of contract claim, Florida law requires a
`
`plaintiff to plead and establish: (1) the parties entered into a contract; (2) the defendant
`
`materially breached the contract; and (3) the plaintiff

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