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. )

Omnibus Order

This matter is before the Court on the parties’ cross-motions for

summary judgment, which have been fully briefed and are ripe for review. (ECF

Nos. 93, 97, 111, 114, 129, 130.) For the reasons below, the Court denies

Defendant United Yacht Transport LLC’s (“UYT”) motion for summary judgment

(ECF No. 97) and grants Plaintiff Spliethoff Bevrachtingskantoor B.V.’s

(“Spliethoff”) motion for summary judgment (ECF No. 93).

But before moving on, some housekeeping is appropriate. Also pending

before the Court is Spliethoff’s motion to take judicial notice of the following

(ECF No. 92): (1) filings in Trademark Trial and Appeal Board (“TTAB”)

Opposition No. 91219279, (2) United States Patent and Trademark Office

(“U.S.P.T.O.”) documents related to this matter, (3) the Port Everglades

Facilities Guide & Directory for 2020 and 2021-2022, and (4) printouts from

the current Port Everglades website.

The Court takes judicial notice of the U.S.P.T.O. files but declines to take

notice of the rest. The third and fourth sets of documents are of little import to

the legal inquiries before the Court, and Spliethoff presents the first set of

documents in support of its res judicata theory. (See ECF No. 106 at 1-2). As

discussed below, the Court finds that theory unconvincing. Accordingly, the

Court partially grants Spliethoff’s motion for judicial notice. (ECF No. 92).

1. Background

The undisputed facts are as follows: In 1992, two “heavy lift” maritime

transport companies named Dock Express Shipping and Wijsmuller Transport,

formed a joint venture called “UNITED YACHT TRANSPORT” to transport

yachts on semi-submersible vessels using a “float-on, float off” loading method.

(Pl.’s SOMF ¶ 1, ECF No. 94; Def.’s Resp. SOMF ¶ 1, ECF No. 112.) The joint

venture led to the creation of United Yacht Transport (USA), Inc., which carried

out its business from Port Everglades, Florida, and was the only company in

the world to offer semi-submersible yacht transport services on its massive,

distinctively colored, orange and white vessels. (Pl.’s SOMF 4 7A; Def.’s Resp.

SOMF 4 7A.) In June 2000, United Yacht Transport (USA), Inc. changed its

name to Dockwise Yacht Transport (USA), Inc. and in November of that year,

its parent company obtained a U.S. trademark registration for the stylized

mark below. (Pl.’s SOMF 7 13; Def.’s Resp. SOMF 4 13.)

LY.

UNITED

YACAT

TRANSPORT

In 2007, Dockwise Yacht Transport (USA), Inc. became Dockwise Yacht

Transport LLC (“Dockwise LLC’). (Pl.’s SOMF 4 12; Def.’s Resp. SOMF 4 12.)

And in August, the registration for the above mark was cancelled because the

“registrant did not file” a declaration required to maintain it. (ECF No. 113-4.)

Nevertheless, the Dockwise entities’ float-on, float-off services went listed under

“United Yacht Transport, Inc.” or “Dockwise/United Yacht Transport, Inc.” in

the Port Everglades Facilities Guide & Directory for the years 2001, 2003,

2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, and 2013. (Pl.’s SOMF 4 16;

Def.’s Resp. SOMF 4 16.)

In November 2011, Dockwise LLC announced that it was selling its yacht

transport business to an investor group known as Coby Enterprises. (Pl.’s

SOMF 4 24; Def.’s Resp. SOMF 7 24.) Among the investors in Coby Enterprises

was Dockwise LLC’s own president at the time, Mr. Clemens Van der Werf. □□□□□

In connection with the sale, the sidewalls of two company vessels were re-

painted to read “UNITED YACHT TRANSPORT” (the “Mark”) instead of

“DOCKWISE YACHT TRANSPORT,” as they read until then. (Pl.’s SOMF 4 25,

28; Def.’s Resp. SOMF □ 25, 28.) Bearing the Mark on their sidewalls from

2012 to 2013, the two vessels made over 50 voyages globally, which generated

tens of millions of dollars in revenue. (Pl.’s SOMF 9 4 32-34; Def.’s Resp. SOMF

32-34.) However, the deal with Coby Enterprises fell through. (Pl.’s SOMF

q 29; Def.’s Resp. SOMF 4 29.)

So, in June 2013, Dockwise LLC’s parent company entered negotiations

with Spliethoff to sell Dockwise LLC and its vessels. (Pl.’s SOMF 7 39; Def.’s

Resp. SOMF 4 39.) That sale materialized in October 2013, and by

consequence of it, Dockwise LLC assigned its interests in the Mark to

Spliethoff. (ECF No. 64-11.) While sales talks with Spliethoff were pending in

June 2013, a separate group of individuals acquired the assets of a yacht

transporting business that had gone bankrupt; they formed UYT. (Pl.’s SOMF 4

42; Def.’s Resp. SOMF 42.) On August 7, 2013, UYT filed an application to

register the Mark as its own and days later sent out an e-mail blast to over

1,000 yacht transport customers announcing its services from Port Everglades

to foreign ports. (Pl.’s SOMF ¶¶ 48, 50; Def.’s Resp. SOMF ¶¶ 48, 50.) On

August 18, 2013, Dockwise LLC’s parent company filed a competing

application for the Mark and sent UYT a cease-and-desist letter concerning its

use of the Mark. (Pl.’s SOMF ¶¶ 53, 54; Def.’s Resp. SOMF ¶¶ 53, 54.)

While this happened, the repainted Dockwise/Spliethoff vessels

navigated the world transporting yachts and bearing the Mark on their

sidewalls through December 2013. (Pl.’s SOMF ¶¶ 63-64; Def.’s Resp. SOMF

¶¶ 63-64.) One was even featured on CNBC’s Secret Lives of the Super Rich.

(Pl.’s SOMF ¶ 65; Def.’s Resp. SOMF ¶ 65.) In January 2014, Spliethoff

removed the Mark from the vessels’ sidewalls. (Def.’s SOMF ¶¶ 29-30, ECF No.

95; Pl.’s Resp. SOMF ¶ 29, ECF No. 110.) It chose to conduct business using

“DYT” as its trade name. (Pl.’s SOMF ¶ 61.)

Nevertheless, on November 2014, Spliethoff filed an opposition to UYT’s

trademark registration before the TTAB after Dockwise LLC’s parent assigned it

its pending trademark application in July. (Pl.’s SOMF ¶¶ 69, 71; Def.’s Resp.

SOMF ¶¶ 69, 71.) Spliethoff’s opposition proceeding resulted in a default

judgment against UYT in February 2021, which led to the U.S.P.T.O.

registering the Mark to Spliethoff in May 2021. (Pl.’s SOMF ¶¶ 73-74; Def.’s

Resp. SOMF ¶¶ 73-74.)

As matters stand today, Spliethoff and UYT both offer yacht

transportation services out of Port Everglades and in many of the same

markets worldwide. (Pl.’s SOMF ¶¶ 76-77; Def.’s Resp. SOMF ¶¶ 76-77.)

Spliethoff sues UYT for a declaration of its superior rights to the Mark,

and UYT countersues for cancellation of Spliethoff’s trademark registration.

Both have moved for summary judgment.

2. Legal Standard

Summary judgment is proper if following discovery, the pleadings,

depositions, answers to interrogatories, affidavits, and admissions on file show

that there is no genuine issue as to any material fact and that the moving party

is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S.

317, 322 (1986); Fed. R. Civ. P. 56. “An issue of fact is ‘material’ if, under the

applicable substantive law, it might affect the outcome of the case.” Hickson

Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259–60 (11th Cir. 2004). “An issue

of fact is ‘genuine’ if the record taken as a whole could lead a rational trier of

fact to find for the nonmoving party.” Id. at 1260. All the evidence and factual

inferences reasonably drawn from the evidence must be viewed in the light

most favorable to the nonmoving party. Adickes v. S.H. Kress & Co., 398 U.S.

144, 157 (1970); Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1280 (11th

Cir. 2004).

Once a party properly makes a summary judgment motion by

demonstrating the absence of a genuine issue of material fact, whether or not

accompanied by affidavits, the nonmoving party must go beyond the pleadings

through the use of affidavits, depositions, answers to interrogatories, and

admissions on file, and designate specific facts showing that there is a genuine

issue for trial. Celotex, 477 U.S. at 323–24. The nonmovant’s evidence must be

significantly probative to support the claims. Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 249 (1986). The Court will not weigh the evidence or make

findings of fact. Id.; Morrison v. Amway Corp., 323 F.3d 920, 924 (11th Cir.

2003). Rather, the Court’s role is limited to deciding whether there is sufficient

evidence upon which a reasonable juror could find for the nonmoving party. Id.

3. Analysis

The Court begins by addressing Spliethoff’s preliminary argument that

the TTAB’s default judgment against UYT entitles it to judgment as a matter of

law under the doctrine of res judicata—both with respect to its own claim and

UYT’s counterclaim for cancellation.

After ruling that res judicata does not dispose of either party’s claims,

the Court turns to UYT’s counterclaim for cancellation, and then to Spliethoff’s

claim for declaratory relief.

A. Spliethoff’s Res Judicata Theory Fails

Spliethoff says that res judicata bars UYT from litigating the issues of

abandonment and non-use because UYT previously asserted them as

affirmative defenses in the TTAB opposition proceeding that UYT lost.

Res judicata traditionally referred to claim preclusion; however, the term

is now used to refer to both claim preclusion and issue preclusion, which

operate differently. Compare, e.g., Cmty. State Bank v. Strong, 651 F.3d 1241,

1263 (11th Cir. 2011 (“Res judicata comes in two forms: claim preclusion

(traditional res judicata) and issue preclusion (also known as ‘collateral

estoppel’)”) with In re Piper Aircraft Corp., 244 F.3d 1289, 1295 (11th Cir. 2001)

(“Under res judicata, also known as claim preclusion . . .”). Although Spliethoff

uses the term “res judicata” in its briefs, its arguments turn on claim

preclusion alone. (Pl.’s Reply 4, ECF No. 129) (“Spliethoff seeks summary

judgment based on res judicata, not collateral estoppel.”). So, the Court focuses

its analysis on claim preclusion.

Claim preclusion “bars the filing of a claim that was raised or could have

been raised in prior litigation where (1) there is a final judgment on the merits;

(2) rendered by a court of competent jurisdiction; (3) that involved the same

parties or individuals in privity with them; and (4) involved the same cause of

action.” Soro v. Citigroup, 287 Fed. App’x 57, 59 (11th Cir. 2008).

Default judgments rendered by the TTAB satisfy the first two elements,

see, e.g., Vernon v. Ziel, No. 18-24054-CIV, 2020 WL 4501802, at *4 (S.D. Fla.

June 15, 2020) (McAliley, Mag. J.), and the parties here were those before the

TTAB. Thus, only the last of these elements remains in true contention.

In that regard, UYT argues that the TTAB proceeding is distinct from this

one because the TTAB proceeding was aimed at determining UYT’s right to

register the Mark whereas this case is meant to determine its alleged

infringement. Spliethoff does not deny this but says that the Court must look

to the “the substance of the actions, not their form[,]” to decide whether they

are, in fact, the same. See Soro, 287 Fed. App’x at 59.

The “principal test for determining whether the causes of action are the

same is whether the primary right and duty are the same in each case.” Id.

(cleaned up) (citing Ragsdale v. Rubbermaid, Inc., 193 F.3d 1235, 1239 (11th

Cir. 1999)). Before applying that test here, the Court notes that its evaluation

of the TTAB judgment must account for the TTAB’s limited jurisdiction as an

administrative body. The TTAB “is empowered to determine only the right to

register . . . . [it] is not authorized to determine the right to use, nor may it decide

broader questions of infringement or unfair competition.” TRADEMARK TRIAL &

APPEALS BOARD MANUAL § 102.01 (2022) (emphasis added). Because it was

rendered in the context of an opposition proceeding to UYT’s application, any

“right and duty” generated by the TTAB judgment must be understood to

concern UYT’s application alone.

Against that backdrop, the Court surmises that the TTAB judgment

established Spliethoff’s “right” to prevent UYT’s registration of the Mark and

created UYT’s “duty” to abstain from pursuing registration. But here, the right

and duty implicated by UYT’s counterclaim concerns Spliethoff’s registration.

And separately, Spliethoff’s claim implicates the right and duty to use/not use

the Mark. Thus, although related to the TTAB proceeding, these causes of

action are distinct such that the TTAB judgment has no preclusive effect here.

This ruling is not inconsistent with Vernon, 2020 WL 4501802, which

Spliethoff cites to in support of its res judicata theory. There, this Court found

that claim preclusion barred a defendant’s counterclaim for the cancellation of

a plaintiff’s registration because the defendant’s counterclaim turned on

arguments she raised in a predecessor TTAB opposition proceeding that

concluded in a default judgment against her. Id. at *1, *6.

However, a crucial difference is that Vernon involved only one

application—the plaintiff’s. Because the TTAB allowed the plaintiff’s application

to move forward by dismissing defendant’s opposition, the TTAB’s judgment

there—unlike the one here—acknowledged the plaintiff’s right to register the

mark despite the defendant’s claim to it. The defendant’s subsequent

counterclaim to cancel the plaintiff’s registration before this Court sought to

relitigate the same matter and was appropriately barred.

This case, by contrast, involves two competing applications—one by UYT

and another by Spliethoff. Spliethoff’s opposition proceeding blocked UYT’s

registration, but Spliethoff later had to finalize its own, separate application.

Unlike the scenario in Vernon, the TTAB judgment here only had the effect of

preserving Spliethoff’s right to pursue its own separate registration. It did not

establish Spliethoff’s right to registration. UYT or another party could have

opposed Spliethoff’s application. Had Spliethoff’s application been successfully

opposed, neither it nor UYT would have obtained a right to registration.

As such, Vernon does not mandate a different outcome. And notably, in

Vernon this Court limited the preclusive effect of the TTAB judgment to the

defendant’s counterclaim. It did not preclude the infringement claim, as

Spliethoff argues should be done here.

This raises the consideration that although Spliethoff says it does not

purport to invoke collateral estoppel (issue preclusion), using the TTAB

judgment to preclude UYT from re-litigating the issues of abandonment and

non-use in the contexts of UYT’s counterclaim and Spliethoff’s claim would

necessarily require an exercise of collateral estoppel. The Court is not

convinced the doctrine is applicable. See In re Bush, 62 F.3d 1319, 1323 (11th

Cir. 1995) (where federal common law applies, “a default judgment will not

support the application of collateral estoppel[.]”); 32 FED. PROC., L. ED. § 74:556

(“If the TTAB does not consider the marketplace usage of the parties’ marks,

the TTAB’s decision should have no later preclusive effect in a suit where

actual usage in the marketplace is the paramount issue.”).

Seeing no basis for preclusion, the Court turns to the merits of the

parties’ claims.

B. UYT’s Counterclaim for Cancellation Fails

UYT posits that the Court should exercise its power under 15 U.S.C.

§ 1119 to cancel Spliethoff’s registration of the Mark because it was

erroneously granted. (ECF No. 47 at 15.) Although UYT asserted multiple

grounds for cancellation in its countercomplaint, it now limits itself to arguing

that Dockwise LLC abandoned the Mark prior to assigning it to Spliethoff and

thus had no interest in it to convey. It also argues that Spliethoff independently

abandoned the Mark after the sale of Dockwise LLC’s business to UYT.

To prove abandonment, UYT must show that “the plaintiff [ ] ceased

using the mark in dispute, and that [it did so] with an intent not to resume its

use.” Cumulus Media, Inc. v. Clear Channel Comm., Inc., 304 F.3d 1167, 1174

(11th Cir. 2002). This Court, along with the majority of federal courts, has

required that abandonment be proven by “clear and convincing evidence.” See

Navaka, LLC v. South Pacific Elixir Co., No. 19-cv-81128, 2020 WL 4601641, at

*6 (S.D. Fla. Aug. 10, 2020) (Singhal, J.); 1 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 17:2 (5th ed. 2022) [hereinafter

“MCCARTHY”] (“The majority of courts have interpreted the ‘strictly proved’ rule

to mean that evidence of the elements of abandonment must be clear and

convincing.”); see also Cumulus, 304 F.3d at 1174 (“Federal courts uniformly

agree that defendants asserting an abandonment defense face a ‘stringent,’

‘heavy,’ or ‘strict’ burden of proof.”).

Intent “may be inferred from circumstances” but a mark’s nonuse for

three “consecutive years shall be prima facie evidence of abandonment.” 15

U.S.C. § 1127. The “use” of a mark means “the bona fide use of such mark

made in the ordinary course of trade, and not made merely to reserve a right in

a mark.” Id. A mark is used in commerce “when it is used or displayed in the

sale or advertising [of a service.]” Id.

(1) Dockwise’s Alleged Abandonment

According to UYT, there “is simply no record evidence of any bona fide

use of the Mark by Dockwise from at least 2003 to present.” (Def.’s MSJ at 3,

ECF No. 97 (emphasis in original).) For proof, it points to the statements of the

André Goedée who served as the CEO of Dockwise LLC’s Netherlands-based

parent company from 2003 to 2013. He represented to a Dutch Court that

Dockwise LLC “never operated under the name United Yacht Transport.” (ECF

No. 96-1 at ¶ 4.) UYT also relies on the testimony of Catalina Bujor, who was

Dockwise LLC’s marketing officer from April 2006 to January 2015. She

testified that when she started at the company no marketing materials

exhibiting the Mark were used with clients, and that “[f]or the most part” the

company had stopped using United Yacht Transport as its name. (Depo. of

Catalina Bujor 10:14-17, ECF No. 96-2.)1 UYT additionally proffers the

testimony of Jonathan Zier who served as Dockwise LLC’s loading master from

2005 to 2010. He testified that when he started working with the company, it

1 The parties have only filed partial depositions transcripts. For ease of reference, the Court’s

citations are to the page numbers assigned by the CM/ECF filing system for all depositions.

did not use the Mark or any other name. (See Depo. of Jonathan Zier 6:13-22,

ECF No. 96-3.)

Assuming the above testimony is true, UYT successfully invokes the

statutory presumption in favor of the Mark’s abandonment in the early 2000s.

(See Def. MSJ 6.) But even if the Mark had been abandoned “in the early

2000s, and certainly by 2007,” (Def.’s MSJ 6), such abandonment would be

irrelevant because it predates the 2013 registration filing date here. (ECF No.

64-13.) See MCCARTHY § 17:3 (“[p]ossible abandonment by the registrant during

a time period prior to a challenged registration’s filing date is irrelevant to the

validity of that registration.” (emphasis in original)); see also Brewski Beer Co.

v. Brewski Bros, Inc., No. 21735, 1998 WL 416757, 47 U.S.P.Q. 2d 1281

(T.T.A.B. May 6, 1998) (“respondent’s registration of BREWSKI BROTHERS for

sportswear could not be challenged on the basis of this earlier period of

purported abandonment inasmuch as the application to register said mark was

not filed until [after the alleged abandonment.]”) (emphasis in original).

Spliethoff argues that the Mark was never abandoned—including in 2013

when Dockwise LLC’s parent applied to register the Mark. As evidence of the

Mark’s use, it points to the consistent annual listings of “United Yacht

Transportation” in the Port Everglades print and online directories dating as far

back as 2001. (Pl.’s Opp. 4, 9, ECF No. 111.) Those listings qualify as

“advertisement” of the company’s services and “commercial use” under 15

U.S.C. § 1127, it says. Spliethoff also points to the Mark’s use on the sidewalls

of the company’s vessels in 2012 and 2013. During that period, the vessels

conducted dozens of voyages worldwide, and one was even featured on national

television bearing the Mark.

UYT retorts that Spliethoff’s “phone book” listings amount to nothing

more than “token use” aimed at reserving an interest in the name. (See Def.’s

Opp. 5, ECF No. 114.) It also challenges the relevance of the Mark’s use on the

vessels sidewalls by asserting that Dockwise LLC’s parent company never

authorized the vessels’ re-painting to bear the Mark. In fact, UYT suggests that

Mr. Van der Werf, president of Dockwise LLC at the time, illicitly advanced the

re-painting project at Dockwise LLC’s expense so that Coby Enterprises, in

which he was invested, could assume use of the Mark after the then-pending

sale to his entity. (See id. at 7.)

UYT advances this theory by relying on Mr. Goedée’s statement that the

parent company “did not give [Dockwise LLC] official permission to use another

name for the ongoing business.” (Statement of André Goedée ¶ 20, ECF No.

113-1.)2 It also points to his representation that the vessels’ repainting “may

have been [suggested] . . . but if so I am sure it was officially rejected to prevent

the company from making unnecessary cost prior to the proposed transaction

[between Dockwise LLC and Coby Enterprises.]” (Id. ¶ 24.)

Spliethoff vehemently opposes UYT’s “token use” argument, and Mr. Van

der Werf himself testified that the re-naming project was authorized by

Dockwise LLC’s parent company. (See Depo. of Clemens Van der Werf 53-54,

ECF No. 59-1.) Yet Spliethoff also posits that the authorization of the sidewalls’

painting is irrelevant to the question of whether Dockwise LLC actually used

the Mark in commerce. (Pl.’s Reply 8-9.) The Court agrees.

UYT cites no authority to support its theory that the law requires a

parent company to sanction its subsidiary’s use of a mark for that use to be

cognizable in this context. And even then, Mr. Goedée represented that the

parent company gave Dockwise LLC “a large amount of freedom to manage its

own business in Ft. Lauderdale.” (Statement of André Goedée ¶ 39.) It is

textbook law that the origination of trademark rights must be objectively

measured: “[t]rademark rights flow from use, not from intent to protect rights.”

AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1550-51 (11th Cir. 1986) (emphasis

added); see also Nat. Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d

1325, 1330 (11th Cir. 2008). Intent, as more thoroughly discussed below, only

becomes relevant when evaluating whether those rights have been abandoned.

Objectively, then, the undisputed facts show that from 2012 to 2013, two

of Dockwise LLC’s vessels bore the Mark as they transported yachts to and

from ports around the world, including Port Everglades, and generated millions

in doing so. (Pl.’s SOMF ¶¶ 63-64; Def.’s Resp. SOMF ¶¶ 63-64; Depo. of Laura

Tempest, 31-35, 40-41, 46-47, 51; ECF No. 66-1; ECF No. 66-3 at 1, 50.) This

indisputably constitutes statutorily defined “use in commerce.” 15 U.S.C.

§ 1127. And logically, the Mark’s use cannot also be evidence of Dockwise

LLC’s intent to abandon it. For that reason, it is irrelevant that Dockwise LLC

continued to carry out its business under the “Dockwise” name while the

vessels bore the Mark, as UYT is keen on pointing out (See Def.’s SOMF ¶ 22).

That does not change the fact that Dockwise LLC still actually used the Mark

in commerce.

Moreover, there is no evidence in the record that Dockwise LLC’s use of

the Mark was not “bona fide.” A mark’s use is not “bona fide” where it is “made

merely to reserve a right in a mark.” See 15 U.S.C. § 1127. UYT cannot

2 UYT refers to ECF No. 113-1 as Mr. Goedée’s “deposition.” That document seems to consist

of, among others, a “report of the hearing of witness” before a court in the Netherlands that has

appended to it Mr. Goedée’s written answers to a list of questions that seem to have been

provided to him by that court. This Court’s citations are to those responses.

reasonably show that the Mark was painted on the vessels’ sidewalls to “merely

to reserve a right” in the Mark and preempt UYT. The decision to use the Mark

was made as early as 2011 in contemplation of Dockwise LLC’s sale to Coby

Enterprises. (See Depo. of Clemens Van Der Werf 29-30, 40-41 62, 98; Pl.’s

SOMF ¶ 24; Def.’s Resp. SOMF ¶ 24.) UYT was not in the picture. And even

then, the Mark was painted on the vessels’ sidewalls in 2012—well before

UYT’s claimed first use of the Mark in July 2013. (ECF No. 65-6.)

So, even assuming that it had abandoned use of the Mark earlier in the

2000s then, Dockwise LLC’s bona fide use of the Mark in 2012 would it make it

the priority user. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 30 cmt. a

(1995) (“If the original owner resumes use of a designation that has been

abandoned under the rules stated in this Section, the owner's priority [ ] is

determined solely on the basis of the subsequent use.”).

That conclusion is directly supported by the Court of Custom and Patent

Appeals’ ruling in Income Tax Service Company v. Fountain, 475 F.2d 655

(C.C.P.A. 1975). There, Bruce Fountain began engaging in the business of

preparing tax returns under the name of Income Tax Services Company in

1964. Fountain acquired the business from a man named Ziegelhofer, who, in

turn, acquired it from another named MacNiel. MacNiel registered a mark

containing an “ITS” logo for the business in 1950 and allegedly conveyed it to

Ziegelhofer. In 1956, however, the registration was cancelled for failure to file

an affidavit of continuing use. In 1965, a competitor named Income Tax Service

Company (“ITS Co.”) obtained registration of the trademark “ITS,” which

prompted Fountain to file a petition for cancellation. ITS Co. argued that it was

a successful intervening user. It said that its mark should not be cancelled

because Fountain’s predecessors had abandoned their mark and thus

Fountain, at best, only had a common law interest in it. Id. at 657.

However, the court found that Fountain’s use of the mark in 1964 made

him the priority user regardless of any past abandonment by his predecessors-

in-interest. The Court reasoned: “we do not find [ITS Co.’s] argument based

upon abandonment to be appropriate since all of the facts which allegedly

resulted in appellee’s having abandoned the mark took place prior to the

earliest date of use relied upon by [ITS Co.] and there is no question that

appellee was continuously using the mark from a time at least two years before

the filing of the petition to cancel.” Id. (emphasis in original). Thus, Fountain’s

resumed use of the mark in 1964 gave him priority use over ITS Co., which

applied to register the mark in 1965.

By corollary, because Dockwise LLC indisputably used the Mark in 2012

(Pl.’s SOMF ¶¶ 32-34; Def.’s Resp. SOMF ¶¶ 32-34) before UYT’s first claimed

use (ECF No. 65-6), Dockwise LLC would still be the priority user even if it, or

its predecessors, had abandoned the Mark before then. And, naturally,

Dockwise LLC’s priority interests in the Mark transferred to Spliethoff by way of

the assignment agreement in October 2013. (ECF No. 64-11.)

The Eleventh Circuit’s decision in AmBrit, Inc. v. Kraft, Inc. is also

instructive. 812 F.2d 1531 (11th Cir. 1986). That case involved a product

packaging trademark that Kraft acquired in 1929 but had not used for

decades. Seeking to compete with the Klondike Bar in the 1980s, Kraft

introduced the Polar B’ar. It bore packaging that Kraft asserted was protected

by its decades-old mark, but the packaging was similar to the Klondike Bar’s,

which was protected by a its own mark. The similarity in the ice cream

products’ packaging resulted in an infringement suit between their

manufacturers. Although the Klondike Bar bore the later-in-time registration,

the Eleventh Circuit upheld its petition to cancel the Polar B’ar’s. It ruled that

the Polar B’ar’s “registered trademark, once abandoned [by non-use], [could] be

cancelled even after [Kraft resumed] use of the mark” because the Klondike

Bar’s rights “flow[ed] . . . from [Kraft’s] abandonment.” See id. at 1551. Thus,

the Eleventh Circuit recognized that an intervening user could be entitled to

priority use of a mark where its previous holder abandoned it.

The difference between AmBrit and this case is that UYT is not in the

position of the Klondike Bar. That is, the Klondike Bar was a successful

intervening user of the mark at issue because the Klondike Bar initiated its use

before the Polar B’ar resumed its use of the abandoned packaging mark. Thus,

the Klondike Bar became the priority user. Here, even assuming that Dockwise

LLC did abandon the Mark at some relevant point, the record indisputably

shows that it resumed use of the Mark before UYT used it by painting the Mark

on its vessels’ sidewalls. Although Dockwise LLC’s reuse of the Mark in 2012

would not “retroactively cure its [purported] past abandonment,” AmBrit, 812

F.2d at 1150, it certainly would allow Dockwise LLC to claim rights in the Mark

beginning in 2012 because there was no intervening use before then.

In sum, UYT cannot reasonably show that Dockwise LLC abandoned the

Mark at a time relevant to this case. Instead, Dockwise LLC’s use of the Mark

in 2012 and 2013 lays the foundation for Spliethoff’s status as its priority user

vis-à-vis UYT.

(2) Spliethoff’s Alleged Abandonment

But UYT also argues that Spliethoff separately “abandoned the Mark in

January 2014 when Spliethoff permanently removed the ‘UNITED’ name from

its recently purchased vessels and made the decision to use ‘DYT’ going

forward.” (Def.’s Reply 9, ECF No. 130.)

Again, to prove abandonment, UYT must show that Spliethoff “ceased

using the mark in dispute, and that [it did so] with an intent not to resume its

use.” Cumulus, 304 F.3d at 1174 (emphasis added). UYT cannot reasonably do

so. Even assuming that Spliethoff’s removal of the Mark on the vessels’

sidewalls is evidence that it “ceased using the mark in dispute,” UYT does not

establish that Spliethoff did so “with an intent not to resume” use of the Mark.

Spliethoff says it only removed the Mark from its vessels to avoid having

its ships serve as marketing units for UYT. (Pl.’s MSJ 7; Depo. of Richard

Klabbers 42-43, ECF No. 64-1.) And with good reason, it suggests. Dennis

Cummings, a consultant hired by UYT’s principal in the company’s early days,

testified that UYT personnel joked that the Mark’s use on Spliethoff’s ships

served as free advertising for UYT. (Depo. of Dennis Cummings 35, ECF No. 65-

1.) It was Cummings who at least partially masterminded the strategy behind

UYT’s use of the Mark. He testified: “I chose the color orange, which was very

similar to the Dockwise color orange, to design a website [for UYT] . . . . the

orange in that shade was chosen to mimic the website of Dockwise which used

the orange . . . . we chose it for familiarity and to try to sneak under the radar,

if you want to call it that, and hope that we can maybe have people that we

were somehow associated with Dockwise Yacht Transport.” (Id. at 47-49.) Thus,

Spliethoff’s “free advertising” concern was reasonable, at minimum.

Additionally, the managing director of Spliethoff’s yacht transportation

unit testified that the company originally considered its rebranding to “DYT” to

be temporary solution to UYT’s use of the Mark, and that the company revisited

the matter at least once per quarter into 2015. (See Depo. of Richard Klabbers

43, 44, 47, 59:20-23.) Paired with that, the record shows that Spliethoff acted

diligently to protect its interests in the Mark. It filed a letter of protest to UYT’s

trademark application only two days after being assigned Dockwise LLC’s

pending trademark application, it filed a formal opposition to UYT’s application,

and it has been litigating its rights to the Mark for more than half a decade.

(See Pl.’s SOMF ¶¶ 70-73; Def.’s SOMF ¶¶ 70-73.)

Spliethoff has continued to list itself annually as “DYT/Dockwise/United

Yacht Transport” or “Dockwise/United Yacht Transport” in the Port Everglades

directory since 2014. (Pl.’s MSJ 7.) But perhaps most importantly, Spliethoff

has repeatedly asserted its intent to resume commercial use of the Mark when

able to do so. (Pl.’s MSJ 8; Depo. of Richard Klabbers 47:4-20; ECF No. 113-14

at 4-7.)

Although none of these factors alone proves dispositive, the Court finds

that, given the circumstances, UYT cannot reasonably show that Spliethoff

ceased using the Mark with an intent to not resume its use. And indeed, the

law allows for intent to be “inferred from the circumstances.” See 15 U.S.C.

§ 1127; RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 30 cmt. b (1995) (“The

reason for the cessation of use is relevant in assessing the intentions of the

former user. Forced suspensions of use due to temporary factors beyond the

control of the trademark owner such as natural disasters, war, or temporary

legal prohibitions are ordinarily not sufficient to justify an inference that the

owner does not intend to resume use of the designation.”).

Further, even assuming that UYT has sufficiently established Spliethoff’s

non-use of the Mark over a three-year period so as to trigger the statutory

presumption in favor of abandonment, see 15 U.S.C. § 1127, the Court finds

that Spliethoff meets its burden in rebutting that presumption given the above.

See Cumulus, 304 F.3d 1167 (“once a defendant establishes a case of prima

facie abandonment, the burden of proof then shifts to the mark holder to

demonstrate that circumstances do not justify the inference of intent not to

resume use.”) (cleaned up); see also AmBrit, 812 F.2d at 1176. It simply is not

reasonable to infer that Spliethoff intended to not resume use of the Mark.

Because UYT cannot reasonably show that neither Dockwise LLC nor

Spliethoff abandoned the Mark, the Court denies UYT’s motion for summary

judgment on its cancellation counterclaim and proceeds to considering the

merits of Spliethoff’s claim.

C. Spliethoff Prevails on its Claim for a Declaratory Judgment

Spliethoff asks the Court to enter a judgment that declares its rights in

the Mark to be superior to UYT’s and recognizes its right to preclude UYT’s use

of the Mark. (Am. Compl. 14, ECF No. 18.) The Federal Declaratory Judgment

Act allows the Court to “declare the rights and other legal relations of any

interested party” in a “case of actual controversy within its jurisdiction[.]” See

28 U.S.C. § 2201. The Court already found this case to present an “actual

controversy” in its Order of April 4, 2022, which denied UYT’s motion to

dismiss (ECF No. 36). So, all that remains are the merits.

(1) Trademark Infringement

Spliethoff advances its claim on a trademark infringement theory. (Pl.’s

MSJ 3.) “[T]o prevail on a federal trademark infringement claim under [15

U.S.C.] § 1114, [a plaintiff must] demonstrate (1) that its marks had priority

over [the defendant’s] and (2) that [the defendant’s] marks were likely to cause

consumer confusion.” Fla. Int’l Univ. Bd. of Tr.’s v. Fla. Nat’l Univ., Inc., 830

F.3d 1242, 1255 (11th Cir. 2016).

The Court has already made a finding of Spliethoff’s priority over the

Mark stemming from at least 2012. And the record is clear that Spliethoff now

holds the Mark’s registration. (ECF No. 92-2.) As such, the only remaining

consideration turns on the test’s second prong, which looks to the risk of

consumer confusion.

Courts typically consider seven factors in assessing the likelihood of

consumer confusion. Those are: “(1) the strength of the allegedly infringed

mark; (2) the similarity of the infringed and infringing marks; (3) the similarity

of the goods and services the marks represent; (4) the similarity of the parties’

trade channels and customers; (5) the similarity of advertising media used by

the parties; (6) the intent of the alleged infringer to misappropriate the

proprietor’s goodwill; and (7) the existence and extent of actual confusion in the

consuming public.” Fla. Int’l, 830 F.3d at 1255.

The first four factors go easily established. First, UYT does not contest

Spliethoff’s assertion that the Mark is best classified as an “arbitrary” one (Pl.’s

MSJ at 10), which implies the strongest of trademark protections. See Boigris v.

EWC P&T, LLC, No. 19-21148-CIV, 2020 WL 1695462, at *6 (S.D. Fla. Feb. 25,

2020) (Scola, J.), aff'd, 7 F.4th 1079 (11th Cir. 2021) (“marks are classified, in

order of increasing strength, as generic, descriptive, arbitrary, or fanciful.”).

Second, similarity is a given because there is only one Mark at issue. Third, the

parties indisputably overlap in customer base; and fourth, both provide yacht

transportation services in many of the same regions globally.

Fifth, although UYT denies that Mr. Cummings served as its agent (Def.’s

Resp. SOMF ¶ 44), his testimony unequivocally establishes that he—at least in

designing UYT’s website—intended to create a false impression of UYT’s being

related to Dockwise LLC:

Q: So the intention was to create the impression that

United Yacht Transport, the new company that bought

the Yacht Path assets, was somehow connected with

Dockwise, United Yacht Transport, you were trying to

create some kind of message there?

A: I don’t know that I was trying to create a message.

What I was trying to do was capitalize with the colors

that Dockwise Yacht Transport had chosen in their

media pieces, in their ships, in everything they did

[. . .] so the answer to your question is, we chose it for

familiarity and to try to sneak under the radar, if you

want to call it that, and hope that we can maybe have

people think that we were somehow associated with

Dockwise Yacht Transport.

Q: Did it work?

A: I believe it worked, yes.

(Depo. of Dennis Cummings 48:16-49:10.)

Sixth, in even suggesting to UYT’s principal that the company use the

Mark, Mr. Cummings knew from his experience in the industry that customers

had historically associated the Mark with Dockwise LLC.

Q: Can you expand on why you believe [sic] that the

name United Yacht Transport would be a successful

name to be used by the new entity that was being

headed up by Paul Haber?

A: [. . .] The name was very familiar to me, the name

was very familiar to the industry, and my basis for

claiming that it was familiar to the industry is based

upon the phone calls that we used to receive at Yacht

Path International from yacht brokers and yacht

captains saying they had received another quote from

United Yacht Transport.

Q: They were referring to Dockwise?

A: They were referring to Dockwise. We did not correct

them, because we knew, my staff, myself knew, that

they had meant Dockwise Yacht Transport.

Q: Is it fair to say that even after Dockwise began

operating the “Yacht Express” and the “Super Servant

4” semi-submersible vessels that in the yacht

transport industry captains, brokers, yacht owners,

port agents and others in the industry would refer to

Dockwise as Dockwise, United Yacht Transport or

Dock Express kind of interchangeably?

A: Yes, that was correct [. . .]

(Depo. of Dennis Cummings 29:2-30:12.) Importantly, Mr. Cummings said he

made sure to disclose these facts to UYT’s principal. (Id. at 31:22.)

Against that backdrop, the Court turns to the last and perhaps the most

important of the seven factors: “the existence and extent of actual confusion in

the consuming public.” See Fla. Int’l, 830 F.3d at 1265 (“[e]vidence of confusion

by actual or potential customers is, of course, the best evidence of a likelihood

of confusion.”). Laura Tempest, the general manager of Spliethoff’s yacht

transportation business, testified that she “actually had people walk into the

office thinking we’re United Yacht Transport.” (Depo. of Laura Tempest 71:3-4,

ECF No. 66-1.) She also testified that she had interactions with customers

asking about sailing schedules or asking her when their yachts would be

delivered only to later realize these customers were UYT’s. (Id. at 72:3-9.)

Although “the quantum of evidence needed to show actual confusion is

relatively small,” Fla. Int’l, 830 F.3d at 1265 (cleaned up), the record readily

establishes it here.

On balance, the Court has no trouble finding that UYT’s use of the Mark

implicates a likelihood of confusion among the parties’ customers.

(2) UYT’s Affirmative Defenses

UYT’s affirmative defenses do not change the Court’s conclusions. It

asserts the following against Spliethoff’s claim: (1) abandonment,

(2) unclean hands, (3) invalidity, and (4) inequitable conduct. (ECF No. 47 at 8.)

The Court has extensively examined the abandonment issue above and need

not revisit it.

As to unclean hands, UYT baldly asserts that Spliethoff “has no

legitimate interest in the United Yacht Transport mark and only seeks to

prevent [UYT]” from using the mark. (Id.) That does not establish an unclean

hands defense. To successfully avail itself of the doctrine, a defendant must

“demonstrate that the plaintiff’s wrongdoing is directly related to the claim

against which it is asserted” and that the “plaintiff’s wrongdoing does not bar

relief unless the defendant can show that it was personally injured by her

conduct.” Calloway v. Partners Nat’l Health Plans, 986 F.2d 446, 451 (11th Cir.

1993). UYT only complains that Spliethoff is suing it. The Court does not see

how bringing a lawsuit can alone qualify as “wrongdoing.” This defense fails.

Next, UYT says that Spliethoff’s claim is barred as invalid because it

“never acquired valid rights and goodwill in the mark from Boskalis.” (ECF No.

47 at 8.) This argument also fails. Boskalis “is the company that sold Dockwise

Yacht Transport LLC and all of its subsidiaries to Spliethof[f]” after acquiring

Dockwise LLC’s parent company. (See Statement of André Goedée ¶ 56;

ECF No. 109-8 at 9-10.) UYT does not dispute that Dockwise LLC’s parent

company (i.e., the entity acquired by Boskalis) assigned its interests in the

Mark to Spliethoff. (See ECF No. 64-11.) Nor does UYT point to anything in the

record concerning Boskalis’s consent/non-consent of the assignment, or the

relevance of such consent. Thus, this defense goes unsupported.

Last, UYT says that Spliethoff acted in bad faith when it filed its

trademark application while allegedly knowing “that any rights had been

abandoned and/or were not acquired in its acquisition from Boskalis.” There is

simply nothing in the record that would reasonably substantiate that assertion.

All of UYT’s affirmative defenses fail.

4. Conclusion

For these reasons, the Court enters summary judgment in Spliethoff’s

favor, thereby granting Spliethoffs motion (ECF No. 93) and denying UYT’s

(ECF No. 97). Noting Spliethoff’s request for a supplemental order to this

declaratory judgment pursuant to 28 U.S.C. § 2202, the Court orders

Spliethoff to file with the Court a proposed version of the same no later than

ten days from the date of this Order. Spliethoff is instructed to

contemporaneously provide a courtesy copy of that proposed order in Word

(.docx) format to the Court via e-mail at scola@flsd.uscourts. gov.

The Clerk is directed to close this case.

Done and ordered in Miami, Florida, on November 17, 2022. 7

Robert N. Scola, Jr.

United States District Judge