Spliethoff Bevrachtingskantoor B.V. v. United Yacht Transport LLC

United States District Court

for the

Southern District of Florida

Spliethoff Bevrachtingskantoor )

B.V., Plaintiff, )

)

v. )

Civil Action No. 21-61422-Civ-Scola

)

United Yacht Transport LLC, )

Defendant. )

Order Denying Motion to Dismiss

Plaintiff Spliethoff Bevrachtingskantoor B.V. (“Spliethoff”) brought this

action for a declaratory judgment against Defendant United Yacht Transport

LLC (“UYT”) alleging violations of Spliethoff’s intellectual property rights. (Am.

Compl., ECF No. 18.) UYT responded with a motion to dismiss arguing that

Spliethoff fails to allege the existence of a “controversy” as required by the

Federal Declaratory Judgment Act, 28 U.S.C. § 2201. (Mot., ECF No. 26.) For

the reasons below, the Court denies UYT’s motion. (ECF No. 26.)

1. Background

Spliethoff and UYT compete at transporting yachts around the world. Both

claim the exclusive right to use the mark UNITED YACHT TRANSPORT.

(Compl. ¶ 3.) Spliethoff alleges it acquired that mark from Dockwise Shipping,

B.V. (“Dockwise”) in October 2013, which had used the mark since at least

1993. (Compl. ¶¶ 23, 34-36.) Following the transaction, Spliethoff has

identified itself with the mark “UNITED YACHT TRANSPORT” and the name

“DYT.” (Compl. ¶ 60.)

UYT was formed in July 2013 by principals who apparently attempted to

acquire Dockwise unsuccessfully. (Compl. ¶ 39; Demand Letter 2, ECF No. 18-

5.) On August 7, 2013, UYT filed an application with the United States Patent

and Trademark Office (“USPTO”) to register “UNITED YACHT TRANSPORT” as

its trademark. (Compl. ¶ 48.) Days later, UYT publicly announced “United

Yacht Transport LLC as a premier yacht transportation company based in Fort

Lauderdale, Florida that would be providing yacht transportation services from

Port Everglades to various foreign ports.” (Compl. ¶ 49) (cleaned up).

On August 18, 2013, Dockwise filed a competing application with the

USPTO to register the same mark. Two days later, Dockwise sent UYT a cease-

and-desist letter demanding that UYT stop using the mark; it sent another to

UYT’s counsel a month after. (Compl. ¶ 51.) Spliethoff continued disputing

UYT’s claim to the mark after its transaction with Dockwise finalized. (Compl.

¶¶ 54, 59.)

In 2014, Spliethoff submitted a letter of protest to UYT’s trademark

application and filed an opposition to it as well. (Compl. ¶¶ 55-56.) The latter

triggered an opposition proceeding before the Trademark Trial and Appeal

Board (“TTAB”), which centered on each party’s priority of use over the mark.

(Compl. ¶¶ 56-58.) At some point, UYT abandoned its trademark application

before the USPTO. (Compl. ¶ 61.)

In 2021, the TTAB issued judgment against UYT and in favor of Splietoff as

to the mark’s usage, and the USPTO issued a trademark registration to

Spliethoff for “UNITED YACHT TRANSPORT.” (Compl. ¶¶ 62-63; Trademark

Registration, ECF No. 18-8.) Thereafter, Spliethoff wrote UYT a cease-and-

desist letter demanding that UYT abandon use of the mark. (Demand Letter 3.)

Nevertheless, UYT has continued to list itself on the Port Everglades website

under the mark “UNITED YACHT TRANSPORT” as a yacht transportation

services provider. (Compl. ¶ 64.) This suit follows.

2. Legal Standard

To sue for a declaratory judgment, a plaintiff must allege the existence of an

actual case or controversy as contemplated in Article III of the United States

Constitution. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126

(2007); Swiss Brand Ltd., Inc. v. Wenger S.A., No. 20-21095-CIV, 2020 WL

7059355, at *5 (S.D. Fla. Dec. 2, 2020) (Moreno, J.); Ion Audio, LLC v. MUSIC

Grp. Servs. US, Inc., No. 12-60201-CIV, 2013 WL 1023016, at *1 (S.D. Fla. Mar.

14, 2013) (Scola, J.).

In evaluating the existence of a controversy, courts consider “whether the

facts alleged, under all the circumstances, show that there is a substantial

controversy between parties having adverse legal interests, of sufficient

immediacy and reality to warrant the issuance of a declaratory judgment.”

MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127, 127 S. Ct. 764, 771,

166 L. Ed. 2d 604 (2007). Because the inquiry is fact-depdendent, “[n]o bright

line rule exists for distinguishing between declaratory-judgment actions that

satisfy the case-or-controversy requirement and those that do not.” See Owners

Ins. Co. v. Parsons, 610 F. App’x 895, 898 (11th Cir. 2015) (citing MedImmune,

Inc., 193 F.3d at 1347).

3. Discussion

UYT argues that Spliethoff fails to establish “a threat of sufficient

immediacy and reality” because Spliethoff relies on Dockwise’s cease-and-

desist letter of 2013 and the one it sent just prior to filing suit, which are eight

years apart. (Reply 3, ECF No. 34.) On the basis of time lapse, UYT seems to

suggest that Spliethoff’s contentions are moot by advancing that Spliethoff “is

attempting to create its own threat of sufficient immediacy and reality.” (Id.)

The facts indicate otherwise. First, Spliethoff’s allegations concerning UYT’s

continued use of the mark—now registered to Spliethoff—sufficiently establish

an actionable injury. The Lanham Act recognizes as follows:

“Any person who shall, without consent of the

registrant . . . use in commerce any reproduction,

counterfeit, copy or colorable imitation of a registered

mark in connection with the sale, offering for sale,

distribution, or advertising of any goods or services . . .

shall be liable in a civil action by the registrant for the

remedies hereinafter provided.”

15 U.S.C. § 1114(1). In that respect, “[t]here is little difficulty in finding an

actual controversy if all of the acts that are alleged to create liability already

have occurred.” 10B CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL

PRACTICE AND PROCEDURE § 2757 (4th ed. 2021).

Second, Spliethoff has disputed UYT’s use of the mark before the TTAB

since 2014. (Compl. ¶¶ 54, 56, 59.) This suit’s timing is explained by the TTAB

entering judgment on February 2, 2021 and the USPTO registering the mark to

Spliethoff on May 25, 2021. (Compl. ¶¶ 62, 63.) To be sure, Spliethoff sent UYT

its cease-and-desist letter on June 14, 2021, which instructed UYT to abandon

use of the mark no later than June 30, 2021. (Compl. ¶ 66.) In fact, Spliethoff

filed this suit on July 12, 2021 after accommodating UYT’s request for an

extension to reply to the letter. (Compl., ¶¶ 67-68.) Rather than pretextual, the

suit’s timing simply appears logical. The fact that several years have passed

since Spliethoff first disputed UYT’s use of the mark is not determinative. Cf.

Swiss Brand Ltd., Inc., 2020 WL 7059355 (finding a controversy involving a

dispute that lasted over five years and involved no express threat of litigation).

UYT also suggests that no controversy exists because UYT abandoned its

trademark application. (Reply 3.) It argues that the cases Spliethoff relies on to

defend the existence of a controversy are inapposite because they involve

instances where defendants sent cease-and-desist letters (not plaintiffs) and/or

involved TTAB proceedings that defendants did not abandon. (Id.) The Court is

not convinced.

The inquiry does not turn on which party instituted suit in court and which

party abandoned TTAB proceedings. It turns on whether a controversy exists in

light of “all the circumstances.” Spliethoff has pursued its claim for years and

this suit is a mere extension of those efforts. Cf’ HSI IP, Inc. v. Champion

Window Mfg. & Supply Co., 510 F. Supp. 2d 948, 956 (M.D. Fla. 2007) (finding

threat of suit and the filing of a TTAB action sufficient in a similar challenge).

“A court should permit a claim for declaratory judgment to proceed where

declaratory relief would (1) serve a useful purpose in clarifying and settling the

legal relations in issue, and (2) terminate and afford relief from the uncertainty,

insecurity, and controversy giving rise to the proceeding.” Mt. Hawley Ins. Co.

v. Tactic Sec. Enft, Inc., 252 F. Supp. 3d 1307, 1309 (M.D. Fla. 2017) (cleaned

up) (quoting Volvo Constr. Equip. N. Am., Inc. v. CLM Equip. Co., 386 F.3d 581,

994 (4th Cir. 2004)). A declaratory judgment from this Court would serve those

exact purposes—whether issued for UYT or Spliethoff. Without one, the parties

may well continue to face the uncertainty of the mark’s proper usage in light of

the status quo.

4. Conclusion

Given “all the circumstances,” the Court finds that a substantial controversy

exists among parties with adverse legal interests, which controversy is real and

immediate. Accordingly, the Court denies UYT’s motion to dismiss. (ECF No.

26.) This case will remain open.

Done and ordered at Miami, Florida, on April 4, 2022.

[se N. Scola, Jr.

United States District Judge