# PayCargo, LLC v. CargoSprint LLC

> District Court, S.D. Florida · June 17, 2021

URL: https://www.frixlaw.com/law-library/cases/10119257

## Case

- **Court:** District Court, S.D. Florida
- **Decided:** June 17, 2021
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10119257

## How later opinions describe it (automated extraction)

- finding likelihood of confusion as a matter of law based on evidence of misdirected inquiries from distributors, suppliers, prospective customers, and misdirected billing inquiries

## Opinion text

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA

CASE NO. 1:19-CV-22995-LOUIS

PAYCARGO, LLC,

Plaintiff,
v.

CARGOSPRINT LLC, and
JOSHUA WOLF, an individual

Defendants.
/

ORDER ON PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT
THIS CAUSE comes before the Court upon Plaintiff PayCargo, LLC’s Motion for Partial
Summary Judgment (ECF No. 164). Defendants CargoSprint LLC and Joshua Wolf responded in
opposition (ECF Nos. 172, 173) and Plaintiff filed a Reply (ECF No. 186). At Plaintiff’s request,
oral argument was conducted on the Motion on June 2, 2021 (ECF No. 242).
Plaintiff contends that the undisputed facts warrant summary judgment as to liability on all
of its claims, and establish Plaintiff’s entitlement to a permanent injunction and disgorgement of
Defendants’ infringing profits. Plaintiff acknowledges the need for trial on the amount of profits
to be disgorged, attorney’s fees and prejudgment interest.
In opposition, Defendants contend that Plaintiff’s Motion mischaracterizes the evidence,
but they advance little contrary evidence to dispute Plaintiff’s side of the story. Defendants’
primary defense of Plaintiff’s Motion is their own motion for summary judgment, which asserts a
number of affirmative defenses to Plaintiff’s claims for breach of contract and trademark
infringement. I have, by separate order, denied Defendants’ Motion for Summary Judgment (ECF
No. 244), finding that Defendants failed to demonstrate entitlement to their affirmative defenses.
The facts here are, for the most part, not meaningfully in dispute. Which is to say, there is
no material dispute of fact supported by competent evidence by the party opposing the motion,
and I find summary judgment is warranted with respect to liability on Plaintiff’s claims of
trademark infringement and unfair competition based on federal law. Plaintiff has not, however,
demonstrated entitlement to its claim for breach of contract nor on its unfair competition claim

predicated on Florida law. Accordingly, the Motion is granted in part, and denied in part, as
follows.
I. BACKGROUND
Plaintiff PayCargo provides an electronic payment management system in the freight and
cargo shipping industry; its platform enables vendors, shippers, and other operators to pay for
goods shipped, thereby allowing quick release of the goods by the payee. PayCargo has existed
since 2008 and has been operating since at least 2009. PayCargo holds three trademarks: U.S.
Registration No. 3,519,112 (the “112 Registration”), U.S. Registration No. 3,347,315 (the “315
Registration”), and U.S. Registration No. 3,900,069 (the “069 Registration”) (collectively, the
“PayCargo Marks”).1

Defendant CargoSprint similarly provides a service to vendors and other operators in the
freight and cargo shipping industry. Defendant Joshua Wolf created the company, which he named
“PayAirCargo,” in 2012. At the time, he was well aware of Plaintiff PayCargo; indeed, he
registered on the PayCargo system as a client in relation to a prior entity he had founded. Though
Plaintiff and Defendant are competitors, they operate differently; for example, Defendants’
business relied at first on printed checks and couriers delivering them to the shippers, and the

1 The history of registration, assignment to Plaintiff, and incontestability are explained in more detail in the Order
denying Defendants’ Motion for Summary Judgment. Pertinent here, I found the fact of Plaintiff’s ownership of the
trademarks established pursuant to Fed. R. Civ. P. 56.
resulting time to complete payment, and amount for services charged, differs between the
competitors. They both serve the same or similar customers (and potential customers), and they
attend the same trade conferences in pursuit of those customers.
When PayAirCargo was still fairly new, customers seeking Plaintiff contacted Defendant
by mistake. In 2013, a client referred a potential customer to Defendant and corresponded with

Defendant Wolf about the referral. He deduced from the inquiry that the customer had the
businesses confused, recognizing from her description of services offered that she had the Plaintiff
in mind. The referring client responded to Wolf with the question “[w]hy don’t you change your
name so it isn’t so similar?”2 Another customer in 2013 responded to solicitation by PayAirCargo
by stating it was an existing customer with an account, from which Defendant Wolf again deduced
that the customer “may be confusing” his company with PayCargo.3 The customer’s response
reveals his belief that there was an affiliation between PayCargo and PayAirCargo, which Wolf
dispelled with an explanation of the competitor’s services and pricing.
Over the years, customers continued to contact one mistaking it for the other, and expressed

confusion over whether the entities were the same or related. In 2016 for example, a customer
wrote to PayAirCargo asking if she could access the system through PayCargo, or if a new account
was required.4 Others sent communications intended for PayCargo to PayAirCargo—both had
email accounts beginning with “support@” followed by their respective domain names.5
Plaintiff first learned of Defendants’ existence in approximately 2015 (ECF No. 18-1 ¶ 13).
Over the course of a year, the Parties contemplated a sale of Defendant (then “PayAirCargo”) to

2 ECF No. 238-18
3 ECF No. 238-19.
4 ECF No. 238-21.
5 ECF No. 238-45.
Plaintiff. In August 2015, the Parties engaged in a “Cooperative Discussion”6 about working
together; Wolf, on behalf of Defendants, expressed interest in using the PayCargo system to
service an existing customer, for which he would pay Plaintiff’s fees like a customer. Indeed, Wolf
created an account for PayAirCargo on the PayCargo system. Two months later, apparently the
discussions had not resulted in any mutually beneficial business, and Plaintiff’s representative

warned Wolf that Plaintiff would be increasing the fees charged to Defendants for any transaction
on its system. Plaintiff’s representative explained that because Defendants were essentially a
competitor, his colleagues had wanted to close Defendants’ account on Plaintiff’s system, but he
convinced them not to. Six months after that communication, Wolf suggested an in-person meeting
when he traveled to Miami sometime in the unknown future. Plaintiff’s representative responded
affirmatively and followed up the next month again to see when Wolf would be traveling to Miami.
Three months later, in August 2016, Plaintiff sent a cease and desist letter demanding
Defendants cease use of the name “PayAirCargo.” The letter notes the Plaintiff’s present intention
not to pursue judicial intervention and requests written confirmation of receipt and compliance by

Defendants. Eventually, the Parties resolved their dispute by entering into a settlement agreement.
On December 2, 2016, Plaintiff and Defendants entered into a Settlement Agreement that
required Defendants to cease all use of the infringing name “PayAirCargo” (ECF No. 100-1).
Among the recitals in the Settlement Agreement were the facts that “PAYCARGO” was a
registered trademark, owned by Plaintiff PayCargo, and that the Parties held opposing beliefs as
to whether Defendants had infringed on Plaintiff’s trademarks. Indeed, the Parties expressly
included a provision that neither the Agreement nor anything therein was to be construed as
evidence of any liability or unlawful conduct.

6 Not my characterization; it’s the subject line of the email (ECF No. 164-64).
The Parties agreed, as the first term and condition of their Settlement Agreement, that
PayAirCargo would formally change its name and cease conducting business using the
“PayAirCargo” name. Defendants agreed not to seek any intellectual property protection for the
name “PayAirCargo,” or any confusingly similar name—the Parties expressly agreed that the
name “CargoSprint” was acceptable to both. Defendants agreed to cease all forms of advertising

under the name “PayAirCargo,” the term advertising having been intricately defined under the
Settlement Agreement.
As a term of the settlement, Defendants were to cease sending emails from, but not
receiving emails at, the email address support@payaircargo.com and to cease all use of the
“Payaircargo.com” domain. Defendants were to announce its new corporate name on the old
website and transfer the domain “payaircargo.com” to a third-party escrow, acceptable to both
Parties, who would split the fees owed to the escrow agent.
The Settlement Agreement contemplated a period of interim use of the “PayAirCargo”
name: between January 1 and May 31, 2017, the “PayAirCargo.com” landing page would direct

traffic to the new webpage, and during the same period, Defendants’ invoices were to include an
explanatory note regarding its new name.
The Settlement Agreement contains reciprocal contingent releases. Plaintiff’s release
states as follows:
Contingent upon the faithful completion by the Wolf Entities of their obligations under this
Agreement, PayCargo, LLC hereby releases, discharges and covenants not to sue the Wolf
Entities … for and from any and all claims, demands, rights, damages, claims for liquidated
damages, costs, expenses, attorneys’ fees, subrogation rights, compensation, lawsuits,
obligations, promises, administrative actions, charges and causes of action known by
PayCargo or otherwise disclosed by PayAirCargo prior to the execution of this Agreement,
in law or in equity, or any kind whatsoever… including but not limited to: any and all
claims and causes of action arising out of the use of the marks in the Trademark
Registrations or the name PayAirCargo….
(Id. ¶ 9) (emphasis in original). Defendants were represented by legal counsel in the negotiation,
drafting, and execution of the Settlement Agreement (ECF No. 171-5, Wolf Deposition Transcript
120:13-122:14). That legal counsel is board certified in intellectual property law (ECF No. 171-
6).
Even after Defendant changed its name, some customers continued to mistake the two

companies7 and direct communication for PayCargo to CargoSprint,8 or would simply copy both
companies on the same email inquiry at their respective email address domains of “paycargo.com”
and “cargosprint.com.”9
In 2018, Plaintiff learned Defendants had not ceased use of the PayAirCargo name on its
invoices but continued to include the explanatory note that “PayAirCargo” had evolved and is now
known as “CargoSprint.” Plaintiff sent a cease and desist letter to Defendants on July 10, 2018
demanding that Defendants cease use of the infringing name (ECF No. 100-6). Defendants
responded to Plaintiff’s letter on July 25, 2018 providing the assurance requested (ECF No. 100-
7). Defendants received no further complaints from Plaintiff until a July 3, 2019 cease and desist

letter from Plaintiff that alleged further violations of the Settlement Agreement (ECF No. 100-8).
This suit followed shortly thereafter.
II. APPLICABLE LAW
Under Rule 56, “[t]he court shall grant summary judgment if the movant shows that there
is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). The movant “bears the initial responsibility of informing the district
court of the basis for its motion, and identifying those portions of [the record] which it believes

7 ECF Nos. 238-43, 238-86.
8 ECF No. 238-87.
9 ECF No. 238-113.
demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). To discharge this burden, the movant must identify an absence of evidence to
support the nonmoving party’s case. Id. at 325.
After the movant has met its burden under Rule 56(c), the burden of production shifts, and
the nonmoving party “must do more than simply show that there is some metaphysical doubt as to

the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
The nonmoving party must support its assertion that a genuine material fact remains in dispute by
citing to specific parts of the record. Sutton v. Royal Caribbean Cruises Ltd., 285 F. Supp. 3d 1349,
1351 (S.D. Fla. 2018) (“In opposing a motion for summary judgment, the non-moving party may
not rely solely on the pleadings, but must show by affidavits, answers to interrogatories, and
admissions that a specific fact exist demonstrating a genuine issue for trial.”), aff’d, 774 F. App’x
508 (11th Cir. 2019). The Court’s function at the summary judgment stage is not to “weigh the
evidence and determine the truth of the matter but to determine whether there is a genuine issue
for trial.” It's a 10, Inc. v. Beauty Elite Grp., Inc., No. 13-60154-CIV, 2013 WL 6834804, at *2

(S.D. Fla. Dec. 23, 2013) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986)). A
fact or issue is material for purposes of summary judgment only if it might affect the outcome of
the suit under the governing law. Webb v. Carnival Corp., No. 15-CV-24230, 2017 WL 10795681,
at *2 (S.D. Fla. Jan. 13, 2017).
In considering a motion for summary judgment, a court must evaluate the evidence and
make all inferences in the light most favorable to the nonmoving party. Sutton, 285 F. Supp. at 135
(citing Matsushita Elec. Indus. Co., 475 U.S. at 586). However, the nonmoving party may not
merely point to a scintilla of evidence that creates a metaphysical doubt about an issue; instead,
the evidence must be sufficient to allow a rational trier of fact to find for the nonmoving party.
Matsushita Elec. Indus. Co., 475 U.S. at 586-87. Evidence is required; conclusory and
unsubstantiated averments will not do, Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1217 (11th Cir.
2000), and citations to specific record evidence are necessary, Fitzpatrick v. City of Atlanta, 2 F.3d
1112, 1116-17 (11th Cir. 1993).
III. ANALYSIS

a. Breach of Contract
Plaintiff alleges that Defendants materially breached the Settlement Agreement by failing
to cease use of the “PayAirCargo” name by May 31, 2017 (ECF No. 100 ¶ 118). Defendants
dispute that the conduct complained of by Plaintiff constitutes a breach of the agreement.
Defendants further advance an affirmative defense of accord and satisfaction to challenge
Plaintiff’s claim, to the extent the claim is predicated on Defendants’ continued use of the
infringing name on invoices until July 2018.
Under Florida law, the elements of a breach of contract claim are: “(1) the existence of a
contract, (2) a breach of the contract, and (3) damages resulting from the breach.” Rollins, Inc. v.

Butland, 951 So. 2d 860, 876 (Fla. 2d DCA 2006). “In addition, in order to maintain an action for
breach of contract, a claimant must also prove performance of its obligations under the contract or
a legal excuse for its nonperformance.” Id. As the party seeking summary judgment on a factual
issue with respect to which it bears the burden of proof, Plaintiff must present evidence on each
element so decisive that no reasonable fact finder could find for Defendants. Fitzpatrick, 2 F.3d at
1115.
Under Florida law, the question of whether a valid contract exists is a threshold question
of law that may be properly decided by the court. Kolodziej v. Mason, 774 F.3d 736, 740 (11th
Cir. 2014). “To prove the existence of a contract, a plaintiff must plead: (1) offer; (2) acceptance;
(3) consideration; and (4) sufficient specification of the essential terms.” Id. Plaintiff attached to
its Second Amended Complaint a copy of the Settlement Agreement it alleges Defendants
breached. Defendants raise a number of defenses to Plaintiff’s contract claim, but no challenge to
the validity of the Settlement Agreement.
In its Second Amended Complaint, Plaintiff alleges that it either performed each of its

obligations under the Settlement Agreement or was excused from doing so (ECF No. 100 ¶ 117).
On summary judgment, Plaintiff offers no evidence that it performed in any respect, and indeed,
the only thing Plaintiff was required to do by the Settlement Agreement was release its claims
against Defendants. Plaintiff argues that it was excused from performing on the release because it
was a contingent release, and Defendants’ failure to faithfully perform—i.e. Defendants’
continued use of the infringing name—means the contingency never came to pass.
Plaintiff’s reliance on Belcher v. Imp. Cars, Ltd., 246 So. 2d 584, 586 (Fla. 3d DCA 1971)
is interesting. Cited for the proposition that a release is not valid if a condition precedent is not
first met, Belcher indeed held that the releasor was not bound by the release, but it also found that

the agreement on which plaintiff sued was unenforceable: “It is our view that the letter of March
21, 1969, was not enforceable because it was subject to a condition precedent which was not
fulfilled.” Id. Applied here, Belcher would seem to suggest by Plaintiff’s own terms that the very
contract on which Plaintiff’s claims are premised is not enforceable because it was subject to a
contingency that never occurred—that contingency being Defendants’ faithful completion of its
performance. Nonetheless, and as noted above, the existence of an enforceable contract was not
challenged by Defendants. Because summary judgment must be denied on another basis, however,
the Court need not resolve this issue at this time.
Plaintiff alleges that Defendants materially breached the Settlement Agreement by
continuing to use the infringing name, for example, in correspondence to a common customer of
both Plaintiff and Defendants, describing the communication as relating to the
“CargoSprint/PayAirCargo Account.”10 In 2018, approximately one year after Defendants were to
have ceased all use of the PayAirCargo name, Defendants continued to include the explanatory
language on its invoices that “PayAirCargo has evolved! We are now CargoSprint.” Following

another cease and desist letter from Plaintiff, in July 2018, Defendants ceased inclusion of the
explanatory note and any use of the infringing name from its invoices. However, Defendants
continued to send and receive emails at the support@payaircargo.com address as late as December
of 2018, a full two years after executing the settlement agreement.11 Inspection of the Defendants’
software system further revealed other uses of the name, including a default designation of the
support@payaircargo.com email address internally for customers who failed to provide an email
address, which use was displayed to the customer in correspondence from Defendants.12
Plaintiff argues that summary judgment is warranted because the continued uses of the
infringing name—which are not disputed—are material breaches that went to the “essence of the

contract.” Plaintiff here does not shun its burden to demonstrate the materiality of the breaches
alleged, arguing that Defendants’ failures to comply with their obligations were numerous and
serious, thus entitling Plaintiff to summary judgment.
Whether or not Defendants’ continued use of the infringing name under the circumstances
constitutes a material breach of the Settlement Agreement is a question of fact to be determined
by the trier of fact. See Hall of Fame Assocs. v. 550 Seabreeze Dev., LLC, No. 08-60043-CIV,
2008 WL 11331652, at *2 (S.D. Fla. Sept. 11, 2008) (denying plaintiff’s motion for summary

10 Second Amended Complaint ¶ 53. This incident is not described in Plaintiff’s statement of material facts in support
of the Motion for Partial Summary Judgment.
11 ECF No. 238-116.
12 ECF No. 238-76.
judgment, notwithstanding failure of defendant to even file response, finding plaintiff had failed
to demonstrate that breach alleged was material). The line of cases Plaintiff cites to support its
contention that the breach here is material recognize as much, with most of them rejecting the
contention that materiality can be decided as a matter of law. See, e.g., Hamilton v. Suntrust Mortg.
Inc., 6 F. Supp. 3d 1300, 1309 (S.D. Fla. 2014) (denying motion to dismiss and noting that

“[w]hether a particular breach is material raises an issue of fact,” not appropriate for resolution by
the court on a motion to dismiss). Though the evidence is largely not in dispute, the question of
whether Defendants’ use of the infringing name rises to the level of material is less clear.
Compare, for example, the stark contrast between the circumstances here and those present in Am.
Diabetes Ass’n v. Friskney Fam. Tr., LLC, 177 F. Supp. 3d 855, 868 (E.D. Pa. 2016), a case also
advanced by Plaintiff. The court in Friskney found the defendant’s active and intentional use of a
confusingly similar name, which included actively posting on social media and registering the
name as a domain name with GoDaddy just days after signing a settlement agreement, went
directly to the essence of the contract such that no reasonable jury could conclude that his actions

did not rise to the level of a material breach. Id. Applying the factors enumerated in the
Restatement (Second) of Contracts for determining the materiality of breach, the court relied on
substantial evidence of defendant’s lack of good faith effort to hold up his end of the bargain. Id.
Defendants’ use of the infringing name after entering into the Settlement Agreement is not
disputed. However, this alone does not satisfy the Plaintiff’s burden to prove materiality. The
essence of the Settlement Agreement here captured, in part, Defendants’ willingness to meet
Plaintiff’s terms and cease using the name PayAirCargo. Indeed, Defendants argue not only that
they had strong incentives to stop using the name but also no desire to continue using it. And
Defendants’ behavior subsequent to the Settlement Agreement does not contradict this;
Defendants, for example, changed the corporate Defendant’s name and implemented the stipulated
changes to their invoices, noting that their name had changed and was no longer PayAirCargo.
The fact that their invoices reflected this note longer than the agreed-upon transition period violates
the Settlement Agreement, it is true, and the Court recognizes the evidence advanced by Plaintiff
of other examples of post-settlement use of the infringing name, including use of the domain name

on email correspondence and on social media. Notwithstanding this, “violation” is not inherently
synonymous with “material.” And it certainly cannot be said that Defendants flagrantly
disregarded the terms of the bargain. Cf. Friskney Fam. Tr., LLC, 177 F. Supp. 3d at 868. Put
more simply, the Parties disagree regarding the essence of the Settlement Agreement, with Plaintiff
essentially arguing that because Defendants agreed to stop using the name, the fact that they did
not ipso facto betrays the heart of the contract. But this oversimplifies the analysis and is too
cursory to support a finding of materiality. To find for Plaintiff on this Motion, the evidence would
have to be such that no reasonable jury could conclude that the Defendants’ breach was immaterial.
Plaintiff has not advanced evidence sufficient to compel that conclusion here, and thus the factual

question of materiality will have to be determined at trial. Accordingly, Plaintiff’s Motion is
denied with respect to its breach of contract claim.
b. Trademark Infringement
A plaintiff bringing a claim for infringement of a registered trademark under 15 U.S.C.
§ 1114 must plead and establish “that the infringer (1) used the mark in commerce, without
consent; and (2) that the use was likely to cause confusion.” Aronowitz v. Health–Chem Corp.,
513 F.3d 1229, 1239 (11th Cir. 2008) (per curiam). Although likelihood of confusion is a question
of fact, Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 839 n.16 (11th Cir. 1983);
it may be decided as a matter of law, All. Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222 F.3d
895, 907 (11th Cir. 2000).
In determining whether a likelihood of confusion exists, the Court should look to the
following factors: “(1) type of mark, (2) similarity of mark, (3) similarity of the products the marks
represent, (4) similarity of the parties’ retail outlets and customers, (5) similarity of advertising
media used, (6) defendant’s intent and (7) actual confusion.” Lone Star Steakhouse & Saloon, Inc.

v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.1997) (per curiam). The Court should
consider all of the factors together, and no single factor is dispositive. It’s a 10, Inc., 2013 WL
6834804, at *3 (granting summary judgment, in part, on trademark infringement claims). The
district court must evaluate the weight to be accorded to the individual subsidiary facts and then
make its ultimate fact decision. Jellibeans, Inc., 716 F.2d at 840 n.17.
Defendants challenge only two of the seven factors: type of the mark and Defendants’
intent. The first challenge reiterates Defendants’ previous arguments on validity and strength of
the Marks, containing as well a predicate challenge to Plaintiff’s ownership of the marks. The fact
of Plaintiff’s ownership has been deemed established (ECF No. 244), and it will not be revisited

here. In addition to evaluating the two factors challenged by Defendants, the Court considers the
evidence of confusion.
To be valid, a trademark must be “distinctive”—that is, it must “serve the purpose of
identifying the source of ... goods or services,” not just the goods and services themselves.
Engineered Tax Servs., Inc. v. Scarpello Consulting, Inc., 958 F.3d 1323, 1327 (11th Cir. 2020).
Distinctiveness is a function of strength, and there are four categories, in descending order of
strength: (1) ‘fanciful’ or ‘arbitrary,’ (2) ‘suggestive,’ (3) ‘descriptive,’ and (4) ‘generic.’” Royal
Palm Properties, LLC v. Pink Palm Properties, LLC, 950 F.3d 776, 783 (11th Cir. 2020).
Defendants challenge the Marks as generic and are thus not entitled to protection under the
Lanham Act. The case on which Defendants rely for this proposition is inapposite and has no
applicability to this infringement dispute; the Court there evaluated the standards to be applied by
the Patent and Trademark Office in determining eligibility to register a mark, noting that a generic
mark is ineligible for registration. United States Pat. & Trademark Off. v. Booking.com B. V., 140
S. Ct. 2298, 2303 (2020).

Defendants here bear the burden to disprove inherent distinctiveness, given that registration
with the PTO entitles a mark’s holder to a presumption of either inherent or acquired
distinctiveness, depending on the ground on which registration was obtained. See Royal Palm, 950
F.3d at 784. When the registrant registered “PayCargo,” it was not required to—and did not—
provide evidence of any acquired secondary meaning. Accordingly, and as a result of the PTO’s
registration, the mark is presumed to be inherently distinctive and thus at least suggestive.
Engineered Tax Servs., Inc., 958 F.3d at1328. Defendants’ challenge to the validity of the marks
has been rejected, and in advancing this as an affirmative defense, Defendants have failed to offer
evidence sufficient to raise a material dispute as to the validity of the marks.

Plaintiff’s proof of actual confusion resulting from Defendants’ use of a confusingly
similar mark constitutes such strong evidence of likely confusion as to preclude any reasonable
finding otherwise. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1515 (11th Cir. 1984) (finding
likelihood of confusion as a matter of law based on evidence of misdirected inquiries from
distributors, suppliers, prospective customers, and misdirected billing inquiries). Plaintiff has
adduced many instances over several years of customers contacting Defendants in the stated
mistaken belief that the communication was reaching Plaintiff, one going so far as to suggest that
Defendants should change their name to something less similar; other customers expressed their
belief that the two companies were the same and “CargoSprint” was the new name of “PayCargo.”
Plaintiff’s Motion also attaches a variety of other sample communications from customers that,
taken in the light most favorable to the non-movant, do not support the inference that the customer
was confused by the similarity in the names. Notwithstanding the deluge of ambiguous exhibits
attached to Plaintiff’s motion, the evidence of actual confusion is so strong no other finding may
be reasonably supported.

Defendants’ Opposition offers no counter whatsoever to Plaintiff’s evidence of actual
confusion. Rather, Defendants proffer the evidence of Defendants’ intent to migrate from use of
the infringing name, including their entry into the Settlement Agreement in 2016, cooperation in
construing the language for the preliminary injunction in this case, and retention of an expert to
assist in correction of third-party usage of the infringing name. As discussed above, while this
evidence may be relevant for consideration in the context of whether Defendants breached the
essence of the Settlement Agreement, it does not materially rebut the proposition that customers
were likely to be confused, and indeed were confused, by Defendants’ use of the infringing name.
Defendants have failed to refute the evidence advanced by Plaintiff that indisputably

demonstrates Plaintiff’s entitlement to summary judgment on its Lanham Act claims. Similarly,
Defendants’ argument against entry of summary judgment on claims against individual Defendant
Wolf is predicated on success of its arguments herein and raises no independent grounds to avoid
the entry of judgment against Wolf. Accordingly, Plaintiff’s Motion for Summary Judgment on its
trademark infringement claims are granted as to both Defendants.
Defendants have acknowledged Plaintiff’s entitlement to a permanent injunction that
mirrors the language of the Court’s preliminary injunction order should liability be found in favor
of Plaintiff on these claims. That injunction will be entered by separate order. Similarly,
Defendants have raised no argument against Plaintiff’s entitlement to seek disgorgement of profits,
with that amount to be determined at trial.
c. Unfair Competition
Plaintiff alleges that Defendants’ use of the infringing name constitutes false designation
of origin likely to cause confusion and deceive customers into believing Defendants are associated
with Plaintiff. Plaintiff’s Federal unfair competition claims are predicated on 15 U.S.C. § 1125(a).

Plaintiff argues, and Defendants do not meaningfully dispute, that the requirements for Plaintiff’s
Federal unfair competition claim are the same as its trademark infringement claim; the satisfaction
of the latter being sufficient to find in favor of Plaintiff on the former. On the undisputed facts
described above, summary judgment is warranted on Plaintiff’s Federal unfair competition claim.
Plaintiff additionally brings a claim under Florida common law for unfair competition,
alleging that Defendants “exploited their status as users of the PayCargo System to obtain
information on PayCargo’s operations that Defendants would not have been able to obtain
otherwise” (ECF No. 100 ¶ 134). In its Motion, Plaintiff argues that by establishing entitlement to
judgment on the Federal claim it has satisfied the requirements for the Florida law claim. In

Opposition, Defendants note that Plaintiff’s state claim for unfair competition is predicated on
conduct that differs from its federal claim. In Reply, Plaintiff offers only that its Florida unfair
competition claim (Count VI) incorporated the same allegations from previous paragraphs in the
complaint as did the Federal claim. Though technically true, the argument is nonetheless
unavailing.
First it bears noting that every Count re-alleged and incorporates by reference all 80
paragraphs preceding its claims, so every claim is predicated on the same conduct.
Notwithstanding, Plaintiff’s claim for Florida unfair competition makes no allegation arising from
Defendants’ use of the infringing name. Plaintiff has advanced no other basis for summary
judgment on this Count, and its Motion is denied with respect to Count VI.
IV CONCLUSION
For the foregoing reasons, Plaintiff's Motion for Partial Summary Judgment is GRANTED
in part and DENIED in part. Summary judgment is granted with respect to Plaintiff's trademark
infringement claims (Counts I-HI) and its claim for unfair competition under federal law (Count
V). The Motion is DENIED with respect to Plaintiff's claim for breach of contract (Count IV) and
unfair competition under Florida law (Count VI). Plaintiff shall submit a proposed order for entry
of the permanent injunction after conferral with Defendants over same.
DONE and ORDERED in chambers in Miami, Florida this 17" day of June, 2021.

UNITED STATES MAGISTRATE JUDGE

17

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10119257. Public record. Not legal advice.