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Rumfish Y Vino Corporation v. Fortune Hotels, Inc.

United States District Court, M.D. Florida, Tampa Division

July 31, 2019

RUMFISH Y VINO CORPORATION and JPL PARTNERS #1 LP, Plaintiffs,
v.
FORTUNE HOTELS, INC., RIA-SANDPIPER, INC., RESORT INNS OF AMERICA, INC., TRADEWINDS ISLAND RESORT and DOES 1-10, Defendants.

          ORDER

          CHARLENE EDWARDS HONEYWELL UNITED STATES DISTRICT JUDGE.

         This 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.

         I. RELEVANT BACKGROUND

         This litigation stems from Plaintiffs' and Defendants' disagreement over the right to use the name “Rumfish” in United States commerce.

         Plaintiff 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.

         Plaintiff 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.

         In May 2012, Defendants Fortune Hotels, Inc. (“Fortune”), Ria-Sandpiper, Inc. (“Sandpiper”), Resort Inns of America, Inc. (“Tradewinds”)[1] (collectively, “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.

         Defendants 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 ¶¶ 12-13.

         On or 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 Exh. R.

         In the spring of 2014, Plaintiffs learned[2] 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.

         Defendants 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.

         Defendants 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.

         Plaintiffs 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 ¶ 23.

         Plaintiffs 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. ...


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