United States District Court, M.D. Florida, Tampa Division
CHARLENE EDWARDS HONEYWELL UNITED STATES DISTRICT JUDGE.
matter comes before the Court upon the Report and
Recommendation (“R&R”) filed by Magistrate
Judge Anthony Porcelli on April 24, 2019 (Doc. 51). In the
R&R, the Magistrate Judge recommends that the Court deny
Plaintiffs' Motion for Preliminary Injunction (Doc. 17).
Plaintiffs filed two objections (the
“Objections”) (Doc. 55) to the R&R on May 8,
2019. Defendants filed a response in opposition (Doc. 61) to
Plaintiffs' Objections. Upon consideration of the R&R
and the parties' submissions, the Court will overrule
Plaintiffs' Objections and adopt, confirm, and approve
the R&R in all respects.
litigation stems from Plaintiffs' and Defendants'
disagreement over the right to use the name
“Rumfish” in United States commerce.
Rumfish Y Vino Corporation (“RYV”) owns and
operates the “RUMFISH y vino” restaurant in
Palencia, Belize, which has been in operation since November
2008. Doc. 17 at p. 3. Plaintiffs created domain names and
trademark registration in connection with the Belize
restaurant. Doc. 17 at pp. 3-4; Doc. 2 at Exh. 2, Declaration
of Pamela Solomon (“Solomon Decl.”) at
¶¶ 5, 9.
JPL Partners #1 LP (“JPL1”) owns and operates the
“RUMFISH y vino” restaurant in Ventura,
California, which has been in operation since November 2016.
Doc. 17 at p. 3. RYV and JPL1 (collectively,
“Plaintiffs”) are both owned by John Solomon and
Pamela Solomon (the “Solomons”). Solomon Decl. at
¶ 3. The Ventura, California restaurant came about after
the Solomons began to consider expanding their business into
the United States in early 2013. Doc. 17 at p. 4; Solomon
Decl. at ¶ 10. On October 7, 2013, Plaintiffs filed U.S.
Trademark Application Serial No. 86/084, 571 for
“RUMFISH y vino” for use with bar and restaurant
services. Doc. 17 at p. 4; Solomon Decl. at ¶ 11.
Plaintiffs later filed a petition to amend to bona fide
intention to use, which petition was granted. Solomon Decl.
¶ 12. The “RUMFISH y vino” mark was
registered on January 17, 2017 as U.S. Trademark Registration
No. 5, 124, 613. Doc. 17 at p. 4; Solomon Decl. at ¶ 28.
2012, Defendants Fortune Hotels, Inc.
(“Fortune”), Ria-Sandpiper, Inc.
(“Sandpiper”), Resort Inns of America, Inc.
“Defendants”) entered into a licensing agreement
with Guy Harvey Outpost to rebrand a former hotel, then
called the Sandpiper Beach Resort, as the “Guy Harvey
Outpost.” Doc. 39, Exh. 1, Declaration of Keith Overton
(“Overton Decl.”) at ¶ 5. In February 2013,
Defendants collaborated with Guy Harvey Outpost to open a new
restaurant at the Guy Harvey Outpost. Overton Decl. at
¶¶ 5-6. While more than 70 names were considered,
the name “RumFish” was coined and chosen for the
restaurant concept. Overton Decl. at ¶¶ 6-7.
purchased the domain name www.rumfishgrill.com on March 14,
2013. Overton Decl. at ¶ 8. Defendants began marketing
and advertising the “RumFish Grill” in early
2014. Overton Decl. at ¶ 12. Defendants created a
Facebook page for the RumFish Grill on February 18, 2014 and
issued a press release on April 2, 2014 regarding the planned
opening of the RumFish Grill in May 2014. Overton Decl. at
about May 1, 2014, Defendants filed U.S. Trademark
Application Serial No. 86/269, 370 for “RUMFISH
GRILL” for use with clothing and restaurant and bar
services upon an intent to use. Solomon Decl. at ¶ 17;
Solomon Decl. at Exh. P. That application was registered on
October 13, 2015 as U.S. Trademark Registration No. 4, 832,
829. Solomon Decl. at ¶ 18; Solomon Decl. at Exhs. B, P.
On or about January 16, 2015, Defendants filed U.S. Trademark
Application Serial No. 86/505, 726 for a “RUMFISH
GRILL” logo for use with clothing and restaurant and
bar services. Solomon Decl. at ¶ 25; Solomon Decl. at
spring of 2014, Plaintiffs learned of Defendants' plan to
open a restaurant called “Guy Harvey's
Rumfish” in May 2014. Solomon Decl. at ¶ 14. In
May 2014, Plaintiffs and Defendants entered into negotiations
concerning their respective rights to use and register their
respective marks incorporating the term
“RUMFISH.” Solomon Decl. at ¶ 20.
Ultimately, the parties reached an agreement and executed a
binding consent and settlement agreement with an effective
date of May 23, 2014. Solomon Decl. at ¶ 20; Solomon
Decl. at Exh. C.
opened the RumFish Grill in May 2014 as planned. Overton
Decl. at ¶ 17. Defendants knew that its license with Guy
Harvey Outpost was set to expire in March 2019 and began to
consider a number of rebranding options in the spring and
summer of 2018. Overton Decl. at ¶ 18. Defendants
decided to rebrand the resort as the RumFish Beach Resort and
further decided to expand the use of “RumFish” to
variations such as “RumFish Charters.” Overton
Decl. at ¶ 18.
contacted Plaintiffs on or about September 2018 to discuss a
proposed addendum to the settlement agreement. Solomon Decl.
at ¶ 29; Overton Decl. at ¶ 20. The parties were
unable to reach an agreement on the addendum. Solomon Decl.
at ¶ 30; Overton Decl. at ¶ 22.
understood that Defendants would go in a different direction
for their branding because the parties were unable to come to
an agreement. Solomon Decl. at ¶¶ 29-30.
Defendants, however, determined that Plaintiffs'
objections to Defendants' rebranding were baseless and
decided to proceed with their plan. Overton Decl. at ¶
became aware of additional trademark applications filed by
Defendants. Solomon Decl. at ¶ 31. On or about August 6,
2018, Defendants filed: (1) U.S. Trademark Application Serial
No. 88/066, 454 for “RUMFISH” for use with
clothing, towels, hotel and resort services, online
reservations and bookings, and fishing services; (2) U.S.
Trademark Application Serial No. 88/066, 480 for
“RUMFISH BEACH RESORT” for use with clothing,
towels, hotel and resort services, and online reservations
and bookings; and (3) U.S. Trademark Application Serial No.