DAVID A. BAKER, Magistrate Judge.
This cause came on for consideration without oral argument on the following motion filed herein:
The case presents with an odd history, which is pertinent to the instant motion. According to the Complaint (Doc. No. 1), Bureau of Dangerous Goods, Ltd. ("Plaintiff") sues Hazmat Software, LLC and Luis Zambrana ("Defendants"), for trademark infringement, unfair competition and false designation of origin, arising under the Lanham Act, 15 U.S.C. § 1051, et seq., and for unfair competition and deceptive and unfair trade practices, under Florida law.
Shortly after filing the Complaint, the Court issued an Order to Show Cause directed to Plaintiff, regarding Plaintiff's failure to timely respond to the Related Case Order and the Interested Persons Order (Doc. No. 7). Plaintiff responded that an attorney at the firm (who is not the attorney that has appeared for Plaintiff in this matter) was responsible for all filings for the firm, but he was suffering from injuries, was working out of his home, and inadvertently failed to respond to the Orders (Doc. No. 10). Plaintiff belatedly tendered the responses.
Defendants answered the Complaint, asserted affirmative defenses and pled a Counterclaim for a judgment declaring that Defendants do not violate the Lanham Act and declaring that Plaintiff's trademark is generic and/or descriptive without secondary meaning, and therefore invalid and unenforceable (Doc. No. 17). Plaintiff did not respond to the Counterclaim. Defendants filed a motion for entry of clerk's default (Doc. No. 19) and a motion for entry of default judgment (Doc. No. 20), but then withdrew the motion for entry of clerk's default (Doc. No. 21), but not the motion for entry of default judgment. No response was filed by Plaintiff to the motion for entry of default judgment. Meanwhile, the District Court issued its second show cause Order directed to Plaintiff, this time to show cause why the case should not be dismissed for lack of prosecution due to the failure to file the required Case Management Report (Doc. No. 22).
Although Plaintiff did not respond to the Counterclaim and did not respond to the motion for entry of default judgment, the Court denied the motion for entry of default judgment, based on the recommendation of the undersigned (Doc. No. 23, 30). Following issuance of the report and recommendation, Plaintiff finally replied to the Counterclaim (Doc. No. 24), and then moved for leave to do so, asserting an "isolated" calendaring error (Doc. No. 25). The Court granted the motion for leave, to the extent that it did not strike the untimely filing, but noted that it did so "reluctantly." (Doc. No. 26). The Court warned:
(Doc. No. 26).
Shortly thereafter, on September 9, 2011, Plaintiff filed its response to the outstanding Order to Show Cause, noting that the case was filed during a "tumultuous" time for the law firm, and advised the Court that "[t]he docketing errors have been corrected, the case is on track, and Plaintiff fully expects to satisfy its obligation to the Court by maintaining the time frame established in the Case Management Report." (Doc. No. 28). The Court was assured "that additional measures will be taken to ensure future compliance with the deadlines set in the Case Management Report." Id.
Four months later, Defendants filed the instant motion for summary judgment. The motion avers that Defendants served their first set of Discovery Requests, Request for Admissions and Interrogatories on Plaintiff on December 22, 2011, but Plaintiff failed to respond to the discovery. Defendants therefore deem admitted all of the matters in the Request for Admissions ("the Requests"), and move for summary judgment based on an absence of genuine issue of material fact. Defendants also contend that "even without deeming the Requests admitted" they are entitled to summary judgment as "Plaintiff has an extremely weak mark at best, Defendants have not used the mark and there is no likelihood of confusion among consumers." (Doc. No. 31). The motion is supported by the Declaration of Luis Zambrana (Doc. No. 31-3) and other exhibits, all attached to the motion.
Following the filing of the instant motion, the District Court issued a Milburn Order, which notified the parties that the Court would take the Motion for Summary Judgment under advisement on March 15, 2012, and "[p]rior to that date, the adverse party(ies) may file affidavits(s) within the purview of the Federal Rule of Civil Procedure 56 in opposition to the Motion." (Doc. No. 32). On February 13, 2012, Plaintiff filed its response to the motion (Doc. No. 33), which incorporates what purports to be an Affidavit of counsel, asserting that Plaintiff did not receive the discovery and has conducted none of its own, and thus "Plaintiff is not in a position to prosecute its claims against Defendants as set forth in the Complaint as Plaintiff has not had the opportunity to conduct any discovery, adduce any evidence or learn of any facts that are critical to its claims." Id. Defendants have filed a Reply (Doc. No. 35), with attached exhibits.
The matter has been referred to the undersigned, the time for filings in accordance with the Milburn Order has expired, and the matter is ripe for review. For the following reasons, it is
Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure (2011)
The party seeking summary judgment bears the initial burden of demonstrating, by reference to the record, that there are no genuine issues of material fact to be determined at trial. Bell v. Madan, No. 3:09-cv-202-J-34MCR; 2012 WL 394552, *1 (M.D. Fla. Feb. 7, 2012); Celotex Corp. v. Cartrett, 477 U.S. 317, 323 (1986). Once the movant has satisfied this burden, the non-movant is then similarly required to cite to portions of the record which show the existence of a material factual dispute. Celotex, 477 U.S. at 324. In doing so, the non-movant "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 parties must support their assertions "that a fact cannot be or is genuinely disputed" by "citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations[ ], admissions, interrogatory answers, or other materials" or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the non-movant "fails to properly address another party's assertion of fact" as required by Rule 56(c), then the Court may "consider the fact undisputed for purposes of the motion" and "grant summary judgment if the motion and supporting materials—including the facts considered undisputed—show that the movant is entitled to it." Fed.R.Civ.P. 56(e)(2) & (3).
In determining whether a genuine issue for trial exists, the court must view all the evidence in the light most favorable to the non-movant. McCormick v. City of Fort Lauderdale, 333 F.3d 1234, 1243 (11th Cir. 2003).
Applied here, Defendants contend that they are entitled to summary judgment as: 1) the failure to respond to the Request for Admissions deems all of the assertions therein admitted, including assertions sufficient to defeat the causes of action; and 2) even without relying on the Requests, the Declaration of Defendant Zambrana is sufficient to show an absence of material fact.
In response, Plaintiff contends that: 1) it did not receive the Requests and 2) it has not had an opportunity to undertake discovery. As Defendants' showing is sufficient to shift the burden to Plaintiff, and Plaintiff has presented no evidence whatsoever in support of its Complaint, the motion for summary judgment with respect to Plaintiff's claims should be granted.
For purposes of analysis the Court reviews the allegations of the Complaint, but notes that the allegations, which are not verified, are not evidence. Plaintiff alleges that it filed for and obtained a federal trademark registration for the mark "ShipHazmat" and, since February 1, 2005, has used in commerce the trademark "ShipHazmat" on software for the preparation of shipping documents for hazardous materials. Plaintiff avers that "the consuming public has come to identify the mark with the goods of Plaintiff" and its use "has been extensive, continuous, open and notorious." (Allegations 7-10). Plaintiff alleges that it is the senior user of the "ShipHazmat" mark, and it was the first to use the mark in commerce on software products. Plaintiff asserts that it has used the mark extensively on the internet in the promotion and sales of its software products. It alleges that it uses and owns the domain names www.shiphazmat.net. and www.shiphazmat.com. and offers its goods and services through these, and other websites. Plaintiff states that it has invested substantial sums in the promotion of its software products under the "ShipHazmat" trademark, and has generated substantial revenues such that the mark has acquired a secondary meaning in the marketplace as a source of premium, informed, and reliable products relating to the shipping and regulation of dangerous goods (Allegations 11-16). Plaintiff contends that the public "associates the "ShipHazmat" trademark with Plaintiff . . .and the use of the "ShipHazmat" trademark by Defendants is confusing the consuming public into believing that the goods and services offered by Defendants are those of Plaintiff." (Allegation 19).
Plaintiff asserts that "upon information and belief," since 2010, Defendants began using the designation "shiphazmatonline." Defendants sell similar software goods and services under the designation and on the internet through the website www.shiphazmatonline.com. "Upon information and belief," Defendants allegedly registered the domain name www.shiphazmatonline.com in 2010, and began using the designation "shiphazmatonline" well after Plaintiff first used its "ShipHazmat" trademark, making Defendants the junior user of the "ShipHazmat" designation. Plaintiff alleges that Defendants were notified of Plaintiff's objection to their use of the "ShipHazmat" designation, and the demand to cease was ignored. According to Plaintiff, "upon information and belief," since 2010, Defendants have misappropriated the "ShipHazmat" trademark by using the designation in its domain name. Plaintiff contends that Defendants' use of Plaintiff's "ShipHazmat" trademark in its domain name, and on its website is likely to cause confusion, initial interest confusion, and/or actual confusion with Plaintiff's "ShipHazmat" registered trademark. (Allegations 20-26). Plaintiff specifically alleges that it "
Defendants contend that they served their first set of Discovery Requests, Request for Admissions and Interrogatories on Plaintiff as set forth in the documents executed certificates of service. Defendants present the Declaration of Barbie Mahan, attesting (under penalty of perjury) that she sent the discovery requests via U.S. Mail on December 22, 2011, to Plaintiff's counsel of record — Louis R. Gigliotti (Doc. No. 31-1 and 31-2). The Court notes that the address specified by Ms.
Mahan is the same as that provided by counsel in his response to the instant motion. Plaintiff did not respond to the discovery requests. As such, Defendants contend that the failure to respond to the Requests for Admissions results in admission of the following facts, pursuant to Federal Rule 36 and controlling law:
(Doc. Nos. 31 and 31-1).
Federal Rule 36(a)(3) provides that a matter is admitted unless, "within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney." Fed. R. Civ. P. 36(a)(3). See also Anheuser-Bush, Inc. v. Philpot, 317 F.3d 1264, 1265, fn. 1 (11th Cir. 2003). Pursuant to Rule 5, service on a represented party is made by, among other methods, mailing it to the person's last known address, and service is "complete upon mailing." Fed. R. Civ. P. 5(b)(1) and (2) (c). Thus, Defendants sworn evidence shows that the discovery requests were, indeed, properly served on December 22, 2011. No written answer or objection was served on Defendants.
In response brief here, Plaintiff offers only an unsworn "Affidavit" of its counsel, Louis R. Gigliotti, stating that "neither Plaintiff nor Plaintiff's counsel, nor any staff member of Plaintiff's counsel ever received any discovery requests from Defendants" (Doc. No. 33). This "Affidavit," however, is not evidence, as it is not sworn nor was it tendered under penalty of perjury. See Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1248, n.8 (11th Cir. 2009) (unsworn statements do not meet the requirements of Federal Rule of Civil Procedure 56(a) and cannot be considered by a district court in ruling on a summary judgment motion, citing Carr v. Tatangelo, 338 F.3d 1259, 1273 n. 26 (11th Cir. 2003)). Moreover, even if the Court were to accept the defective form of the Affidavit, counsel can only attest as to matters in his personal knowledge. Fed. R. Civ. P. 56(c)(4). Here, Mr. Gigliotti purports to speak for Plaintiff, the law firm, and all staff members, without any evidentiary foundation showing that such matters are within his personal knowledge.
Supporting this conclusion is the fact that the response brief is unaccompanied by any evidence or even a proffer of evidence as to the merits of the matters set forth in the Requests. Nowhere does Plaintiff offer any evidence to dispute the factual matters set forth in the Requests; there is no motion to extend time to answer the discovery; nor is there any other indication that, if given an opportunity to answer the Requests on the merits, the Answers would be different than admissions. This, although the motion for summary judgment with the propounded discovery attached was filed January 30, 2012, and the Milburn Order gave Plaintiff until March 15, 2012 in which to file opposing affidavits. Rather than disputing the factual basis of Defendants' motion, Plaintiff's only response is to claim that the motion is premature and to state that it needs to take discovery in order to prosecute its claims. This position is completely untenable.
Under the local rules, the parties may commence discovery following the case management meeting, which occurred here on September 9, 2011 (Doc. No. 27). See Local Rule 3.05. While Plaintiff complains that it "has obviously not been afforded any opportunity to discover even the most basic facts and evidence that any plaintiff would necessarily require in order to marshal the merits of its case" (Doc. No. 33). This is plainly untrue. In addition to the normal pre-filing investigation counsel was required to undertake in accordance with his professional obligations, Plaintiff has had over five months in which to conduct discovery.
Moreover, Plaintiff's statement is at odds with its own pleading. As noted above, Plaintiff alleges in its Complaint that it "
Turning to the merits of the motion, the Court notes that in addition to the matters deemed admitted via the Requests, Defendants have tendered the Declaration of Luis Zambrana (Doc. No. 31-3), the manager and owner of Hazmat, which provides, in pertinent part, the following unrebutted facts:
(Doc. No. 31-3).
Defendants claim that the facts admitted and uncontested establish no genuine issue for trial in that "Plaintiff's Lanham Act claim is extremely weak based on the fact that its mark is on the Supplemental, rather than the Principal Register; Defendant has never used Plaintiff's logo; Defendants' use of SHIP and HAZMAT is in a descriptive manner; and, there is no likelihood of confusion among consumers." Absent any evidence to the contrary, the Court agrees.
1) Any person who shall, without the consent of the registrant—
(a) 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 on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
15 U.S.C.A. § 1114 (emphasis added).
"In a trademark infringement action, the plaintiff must show, first, that its mark is valid and, second, that the defendant's use of the contested mark is likely to cause confusion." Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.1989) (citations omitted). Although there is no evidence proffered by Plaintiff with respect to the mark, Defendants assert that it is "undisputed that Plaintiff's "SHIPHAZMAT" logo is registered on the Supplemental, rather than the Principal Register" (Doc. No. 31 at p. 8). For present purposes, the Court accepts this as stipulated fact. The Court also accepts that Defendants used the terms Ship Hazmat, although not the logo itself, as set forth in the unrebutted Declaration and the Admissions. However, Plaintiff has not presented any evidence that Defendants' use of the mark is likely to cause confusion. Although "a mere scintilla of evidence in support of the non-moving party's position is insufficient to defeat a motion for summary judgment," Kesinger ex rel. Estate of Kesinger v. Herrington, 381 F.3d 1243, 1247 (11th Cir.2004), Plaintiff offers even less than that here. The only evidence before the Court is that there have been no incidents of confusion and such is unlikely, in that the businesses are dissimilar. As Plaintiff has failed to meet its burden of countering this evidence with citation to record evidence establishing a genuine issue for trial, summary judgment is appropriate in Defendants' favor on this count.
This section provides, in part:
15 U.S.C.A. § 1125
As above, there is no evidence of likely confusion or deception here. Moreover, Defendants have shown by unrebutted evidence that the terms "ship" and "hazmat" are descriptive within the industry. Thus, there is no evidence of false or misleading representations sufficient to present a genuine issue of fact as to this claim. Summary Judgment in Defendants' favor should be granted on this count, as well.
"To prevail on a claim under Fla. Stat. § 495.151, a plaintiff must demonstrate: 1) the plaintiff's mark is famous; 2) the defendant used the plaintiff's mark after the plaintiff's mark became famous; 3) the defendant's use was commercial and in commerce; and 4) the defendant's use of the plaintiff's mark has likely caused dilution." Z Productions, Inc. v. SNR Productions, Inc., No. 8:10-cv-966-T-23MAP; 2011 WL 3754693, *5 (M.D. Fla. Aug. 18, 2011), citing RainBird Corp. v. Taylor, 665 F.Supp.2d 1258 (N.D. Fla. 2009) and Great Southern Bank v. First Southern Bank, 625 So.2d 463, 471 (Fla.1993). Even if the Court were to assume that the mark is more than the logo (which the Court cannot find on this record) and that Defendants' use was commercial despite the free nature of the website, there is no evidence of any likely dilution.
Similarly, to establish a violation of the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.201 et seq., Plaintiff must prove: 1) a deceptive act or unfair practice; 2) causation; and 3) actual damages. Z Productions, supra, citing Rollins, Inc. v. Butland, 951 So.2d 860, 869 (Fla. 2d DCA 2006). A cause of action alleging a violation of FDUTPA arising from a trademark infringement claim requires proof that the plaintiff's mark has priority, that the competitor used the mark in commerce, and that the competitor's use of the mark is likely to cause consumer confusion. Z Productions, supra, citing Pepsico, Inc. v. Distribuidora La Matagalpa, Inc., 510 F.Supp.2d 1110, 1114 (S.D. Fla. 2007). As above, Plaintiff presents no evidence that use of the mark is likely to cause confusion. Summary Judgment should be granted in Defendants' favor on the state law claims.
To the extent the Counterclaim seeks a declaration that Defendants have not infringed the mark, it should be granted, for the reasons set forth above. The Court finds that there is no genuine issue of material fact regarding Defendants' appropriate use of its website and the domain name www.shiphazmatonline.com. While Defendants go further and urge the Court to find that Plaintiff has no rights to the ShipHazmat logo, the Court need not reach such a conclusion on the record before it. Defendants aver that they are not and have never used the logo and have removed all use of the term on the website. As such, there is no active controversy regarding Plaintiff's rights to its logo. Thus, the Court finds that the motion for summary judgment on the counterclaim should be granted only in part.
Defendants contend that this is an exceptional case under 15 U.S.C.§ 1117(a), and that they are entitled to attorney's fees as the prevailing party, citing, among other things, Tire Kingdom, Inc. v. Morgan Tire & Auto, Inc., 253 F.3d 1332 (11th Cir. 2001). In Tire Kingdom, however, the Eleventh Circuit noted:
253 F. 3d at 1335.
Applied here, there is no evidence of maliciousness or bad faith. Rather, it appears that Plaintiff and/or its counsel have chosen to prosecute this action in slip-shod fashion. For that, the entry of judgment against it on all claims and in favor of Defendants with respect to the counterclaim (to the extent it seeks a declaration that it has not violated the mark) is a fitting enough result. There is no basis for finding this case exceptional, and the Court does not recommend an award of fees.
For the reasons set forth above, it is
Failure to file written objections to the proposed findings and recommendations contained in this report within fourteen (14) days from the date of its filing shall bar an aggrieved party from attacking the factual findings on appeal.
Recommended in Orlando, Florida on March 30, 2012.
