Land's End at Sunset Beach Community Association, Inc. et al v. Land's End Acquisition Corporation

MOTION to dismiss for failure to state a claim

M.D. Fla.August 5, 2016

IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA, TAMPA DIVISION _______________________________________ LAND’S END AT SUNSET BEACH COMMUNITY ASSOCIATION, INC., and RESORT RENTALS, INC., Plaintiffs, vs. CASE NO. 8:16-cv-00828-EAK-JSS LAND’S END ACQUISITION CORPORATION, Defendant. _______________________________________ LAND’S END ACQUISITION CORPORATION, Counterclaimant and Third Party Plaintiff, vs. LAND’S END AT SUNSET BEACH COMMUNITY ASSOCIATION, INC., and RESORT RENTALS, INC., Counter Defendants, and RODNEY MARQUARDT RICHARD MANNEN, KARIN MANNEN, et. al. Third Party Defendants. _______________________________________ PLAINTIFF LAND’S END AT SUNSET BEACH COMMUNITY ASSOCIATION, INC.’S, MOTION TO DISMISS ALL OF DEFENDANT’S AMENDED COUNTERCLAIMS PURSUANT TO FED. R. CIV. P. 12(b)(6) Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 1 of 27 PageID 633 1 DISPOSITIVE MOTION UNDER LOCAL RULE 3.01(h) Plaintiff and Counterclaim-Defendant Land’s End At Sunset Beach Community Association, Inc. (“Land’s End”) hereby moves the Court under Fed. R. Civ. P. 12(b)(6) to dismiss all of Defendant, Counterclaim-Plaintiff, and Third-Party Plaintiff [sic] Land’s End Acquisition Corporation (“LEAC”)’s Amended Counterclaims for failure to state a claim for the reasons set forth in the following Memorandum of Law. In the event the Court determines that matters outside the pleadings are pertinent to this motion, Land’s End respectfully requests the Court to treat it as a motion for summary judgment pursuant to Fed. R. Civ. P. 12(d). MEMORANDUM OF LAW INTRODUCTION All five counterclaims asserted by LEAC in this action are implausible and should be dismissed as a matter of law under Iqbal. Thirty five years ago, construction began of a condominium complex in Treasure Island, Florida. Before construction was even completed, a condominium association was formed, taking for itself, and the complex, the name “Land’s End,” a reference to its location at the tip of the island (i.e., at the “land’s end”). From then until the present day, owners advertise their units for rental locally, nationally, and internationally, including on the internet, using the term “Land’s End” to identify the name and location of their condos. Now, the owner of a hotel in Homer, Alaska, seeks to terminate such longstanding use, on the basis of questionable federal registrations that post-date Land’s End’s use by a decade or more. Land’s End’s prior use on the Gulf Coast of Florida is undenied, as is the overwhelming number of third-party uses because the term “land’s end” is descriptive in the realty industry. This compels a finding that no one could plausibly conclude there is any likelihood of confusion among an appreciable number of purchasing consumers created by Land’s End’s use with LEAC’s hotel in a geographically remote territory, on the end of a spit of land in Homer, Alaska. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 2 of 27 PageID 634 2 Moreover, on altogether independent grounds, LEAC’s claims are precluded as a matter of law because Land’s End pervasively used the mark for decades before LEAC registered its mark and before LEAC earned any distinctiveness in Florida, if it were ever possible to earn. Despite LEAC’s bald assertions of a possible likelihood of confusion it fails to reference a single instance of actual confusion despite decades of coexistence. LEAC’s counterclaims should therefore be dismissed. FACTUAL BACKGROUND A. Land’s End Land’s End is a Florida condominium association located at 7500 Bayshore Drive, Treasure Island, Florida, 33706. Complaint, ¶¶3, 4 & Ex A (Dkt. 1); Am .Counterclaim, ¶2 (Dkt. 44); Belair v. City of Treasure Island, 611 So. 2d 1285, 1287 (Fla. Dist. Ct. App. 1992).1 It is comprised of owners of approximately 177 residential waterfront condo units across 10 buildings and a common area clubhouse building, so named because it is located at the southern tip of Treasure Island, i.e., at the land’s end. Complaint, ¶¶3, 4, 16 & Exs. A & C (Dkt. 1); Belair, 611 So. 2d at 1287. Accordingly, the entry sign to the gated condo community reads “Land’s End”: Construction of the Land’s End condos began in 1981 and, that same year, Land’s End registered as a not-for-profit corporation with the Florida Department of State, Division of Corporations. Complaint, ¶4 & Ex. A (Dkt. 1). Buildings were built in succession with the final building completed in 1 Belair v. City of Treasure Island is a decision from the District Court of Appeal of Florida, Second District, in a previous civil action pertaining to the Land’s End condominium complex and its history, a true and accurate copy of which is appended hereto as Ex. A. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 3 of 27 PageID 635 3 1984. Complaint, ¶4 (Dkt. 1); Belair, 611 So. 2d at 1287. Since its inception, the condominium association has continuously and publicly referred to itself and the physical property as Land’s End, and it and its location are well known by its owners, guests, and regional community as Land’s End. Belair, 611 So. 2d at 1287-88; Complaint, ¶¶17, 19 & 22 & Ex. D (Dkt. 1). As is allowed in the bylaws, some Land’s End condominium owners rent their units to others, for durations of no less than one week. Belair, 611 So. 2d at 1287-88. They advertise availability of their units for rent by, for example, independent realty agents, online vacation rental websites, their own websites, or commercial online services such as VRBO® and HOMEAWAY®. Complaint, ¶5 (Dkt. 1). From its first construction until about 1990, an independently owned realty/rental agency was physically located on the site in the Land’s End clubhouse for use by the owners. Belair, 611 So. 2d at 1287-88. At one point in the 1980s, the City of Treasure Island attempted to limit the number of times per year Land’s End condos could be rented under its zoning laws, arguing in part that the condos fit the definition of a hotel. Id. The District Court of Appeal of Florida, Second District, disagreed, holding that Land’s End was not offering hotel services. Id., at 1289. In the course of its opinion, the court also detailed the extensive local, national, and international advertising Land’s End has engaged in for rental of its condos since the 1980s. Id., at 1288. Examples of national and international advertisements from that era and referred to in that case are included with the Belair decision in Ex. A appended hereto. Today, owners who rent out their condos and choose to use an agent use vacation rental organizations located off-site. Complaint, ¶5 (Dkt. 1). As the internet became an available medium for distributing information and advertisement in the early 1990s, Land’s End condos began to be advertised for rental on the internet. Complaint, ¶¶23-29 & Exs. E-G (Dkt. 1). Longstanding, continuous, extensive use of the term LAND’S END has resulted in recognition in the minds of Pinellas County/Tampa Bay-area residents and vacation renters of Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 4 of 27 PageID 636 4 the Land’s End condos. However, Land’s End is hardly the only proprietor to use the term LAND’S END to signify the location of realty for rent. Third parties all over the country, including elsewhere in Florida, use the term to refer to their rentals or rental services, often for properties, like the Land’s End condos, located at the end of an island, peninsula, or spit of land, including via internet advertisements, making LAND’S END a commonly used term for properties so situated. Complaint, ¶¶64 & 65 & Ex. P (Dkt. 1). Attached hereto as Ex. B is a listing of 44 websites, of which this Court is entitled to take judicial notice, where such properties, located in 30 different U.S. states, are advertised as LAND’S END. B. LEAC LEAC is an Alaska corporation located in Homer, Alaska. Am Counterclaim, ¶1 (Dkt. 44). There it owns and operates a motel/hotel referred to online variously as “Land’s End” or “Land’s End Resort,” located at the very tip of a spit of land jutting out into Kachemak Bay, at the end of Homer Spit Road. Complaint, ¶¶11, 59 & Exs. B & O (Dkt. 1): By its own admission, LEAC obtained the hotel in a foreclosure sale and began operating it in 1988, the year LEAC was formed, at which point it purports to have obtained its predecessor’s common law rights to the LAND’S END mark.2 Complaint, ¶11 & Ex. B (Dkt. 1); Am. Counterclaim, ¶38 (Dkt. 44). This hotel, near the Arctic Circle, is located approximately 5,000 miles away from the Land’s End condos, on the Gulf Coast, at the opposite corner of the 2 LEAC’s allegation in this regard lacks plausibility. LEAC asserts that it is a “successor in interest” only “since its purchase of the hotel in 1988.” Therefore, it is unclear whether LEAC is actually alleging that it lawfully acquired the prior goodwill and trademark rights (if any) of the prior operator of the hotel or whether LEAC’s rights attach only “since” its purchase in 1988. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 5 of 27 PageID 637 5 North American continent, requiring over eighty-three hours of travel by automobile. Complaint, ¶12 (Dkt. 1). Land’s End is located in the Eastern Time Zone while LEAC’s hotel is located four time zones away in the Alaskan Time Zone. Id. LEAC is the purported owner of the following three trademark registrations: Reg. No. Mark Services App. Date Reg. Date 1,672,200 LAND’S END Hotel Services Aug. 1, 1990 Jan. 14, 1992 2,301,790 LAND’S END RESORT Resort Hotels Aug. 3, 1998 Dec. 21, 1999 4,005,465 LAND’S END Online Travel Registration and Software Services Nov. 30, 2010 Aug. 2, 2011 (“Cited Registrations”). Complaint, ¶49, Ex. I. Significantly, LEAC was neither created nor were its trademark applications even filed until long after Land’s End had adopted its name and advertised condos’ availability for rental, etc. Belair, 611 So. 2d at 1287-88; Complaint, ¶¶4, 17, 19 23-29 & 49 & Exs. A, E-G (Dkt. 1). On the following page is a timeline highlighting some critical dates of relevance. C. Dispute Between Land’s End and LEAC In September, 2015, LEAC sent Land’s End a letter alleging infringement of the Cited Registrations. Complaint, ¶31 & 32 & Ex. H (Dkt. 1). LEAC offered to license to Land’s End its supposed trademark rights in the Cited Registrations, but only if Land’s End would do business with LEAC by booking rental reservations using its Alaska-based website business that was about to be “rolled-out”.3 Otherwise, LEAC demanded Land’s End cease what LEAC 3 Curiously, LEAC has a pending application to again register LAND’S END for hotel services, reservation services, and online trip and travel and related software services, on the basis of its future intent to use the mark for these services, calling into question whether its existing registrations for such services based on present use are faulty or fraudulent. Complaint, ¶¶53-58 & Ex. N (Dkt. 1). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 6 of 27 PageID 638 6 characterized as trademark infringement. Id. LEAC subsequently repeated these assertions in a series of threatening telephone calls and emails. Complaint, ¶¶33-38 & Exs. J & K (Dkt. 1). In December, 2015, Land’s End sent LEAC a letter explainig the lack of infringement given, among other things, Land’s End’s priority of use over LEAC’s applications for registration. Complaint ¶38 & Ex. L (Dkt. 1). In a series of further correspondences, LEAC continually repeated its demand that Land’s End (and its condo owners and realty agents who advertise its condos for rental) agree to do business with LEAC of Alaska or risk “expensive” trademark infringement litigation. It insisted on directly contacting individual condo owners and the board to present its threat on the one hand with its offer to do business on the other. Complaint, ¶P34- 40 (Dkt. 1). To support its threat, LEAC wrongfully claimed Land’s End was “frozen” from using the term LAND’S END on the internet merely on the basis of LEAC’s 1990 application to register the term for use with Hotel Services. Complaint, ¶¶39-42 & Ex. M (Dkt. 1). Unable to disabuse LEAC of its erroneous position and under threat of infringement litigation, on April 6, 2016, Land’s End and co-plantiff Resort Rentals, Inc., commenced this lawsuit seeking a declaration of noninfringement. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 7 of 27 PageID 639 7 C. LEAC’s Amended Counterclaims On May 13, 2016, LEAC served an Answer, Counterclaim, and Third-Party Complaint [sic] and, in an attempt to cause chaos and an unworkable litigation, attempted to join in the action all 100+ individual owners of Land’s End condos, naming four individuals, including Richard and Karin Mannen, and “Does 1-100,” etc. Dkt. 12. Land’s End, Resort Rentals, and the Mannens each responded with motions to dismiss (Dkts. 37, 38 & 43) but, rather than opposing the motion, LEAC instead mooted these motions (Dkt. 46) by filing its Amended Counterclaims and Third Party Claims [sic] (Dkt. 44), asserting the following Counterclaims/Third-Party Claims [sic]: (1) Trademark Infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a); (2) False Designation of Origin under the Lanham Act, 15 U.S.C. § 1125(a)(1); (3) Trademark Infringement under Florida Common Law; (4) Unfair Competition under Florida Common Law; and (5) Declaratory Judgment That Land’s End Lacks Common Law Rights. Incredibly, in its Amended Counterclaim, LEAC boldly ignored the Mannens’ motion to dismiss despite being confronted with the case law stating that joinder of individual condo owners for a tort involving a common asset is not allowed under Florida law. Instead it doubled down and named an additional 42 individuals as Third Party Defendants [sic], in addition to “Does 1-100”, intensifying its efforts to complicate these proceedings with its prolixity of improperly named parties.4 As set forth below, each of LEAC’s counterclaims, long on impermissible legal conclusions and bald assertions but woefully short on plausible substantiating details, are legally insufficient and should be dismissed for failure to state a claim 4 Land’s End also hereby joins in the refilled, co-pending motion to dismiss all of its members/unit owners as advanced by Counterclaim Defendants Richard and Karin Mannen (Dkt. 91). See Cooley v. Pheasant Run Condo. Ass’n, 781 So.2d 1182 (Fla. 5th DCA 2001). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 8 of 27 PageID 640 8 under Fed. R. Civ. P. 12(b)(6) with prejudice, and without leave for LEAC to yet again amend, having failed to cure its deficient pleadings when filing its Amended Counterclaims in response to the former motions to dismiss, D. Permissible Support for Rule 12(b)(6) Motion to Dismiss On a motion to dismiss, “courts must consider the complaint in its entirety, as well as . . . documents incorporated into the complaint by reference, and matters of which a court may take judicial notice.” Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S. Ct. 2499, 2509 (2007). A court may also consider extrinsic documents central to a party’s claim whose authenticity is not challenged and take judicial notice of certain facts and documents. U.S. ex rel. Osheroff v. Humana Inc., 776 F.3d 805, 811 (11th Cir. 2015). Judicial notice may be taken of facts not subject to reasonable dispute because they can be ascertained “from sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). For example, courts may take judicial notice of public records, court documents, and newspaper articles. Odion v. Google Inc., 628 F. App'x 635, 638 (11th Cir. 2015), cert. denied, 136 S. Ct. 1495 (2016); U.S. ex rel. Osheroff, 776 F.3d at 811; Se. Clinical Nutrition Centers, Inc. v. Mayo Found. for Med. Educ. & Research, 135 F. Supp. 3d 1267, 1271 (N.D. Ga. 2013). Courts also commonly take judicial notice of archival internet websites that demonstrate the historical existence of material online. See, e.g., Marten Transp., Ltd. v. Plattform Advert., Inc., 2016 WL 1718862, at *3 (D. Kan. 2016) (taking judicial notice of internet archival material whose authenticity was not reasonably challenged and citing cases from numerous federal district courts with similar holdings); cf. Se. Clinical Nutrition Centers, Inc., 135 F. Supp. 3d at 1271 (holding that “[c]ourts can . . .take judicial notice of a publication date” and doing so in granting Rule 12(b)(6) motion to dismiss trademark infringement claim). Land’s End herein relies on LEAC’s Amended Counterclaims and Third Party Claims Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 9 of 27 PageID 641 9 [sic] and the assertions contained therein--or, more particularly, their deficient character--to show that LEAC failed to state a claim, requiring dismissal of its counterclaims. Also relied upon are undenied factual matters contained in Land’s End’s complaint5 and attachments6 or whose authenticity is not reasonably challenged and are matters of which this court may take judicial notice. These include public records (e.g., Land’s End’s registration with the Florida Department of State, Division of Corporations (Complaint, ¶4 & Ex. A (Dkt. 1)) and LEAC’s registration with the State of Alaska Department of Commerce and newspaper article (Complaint, ¶11 & Ex. B (Dkt. 1))), and archival internet material demonstrating Land’s End’s internet usage of the term LAND’S END since the 1990s (e.g., Complaint, ¶¶23-29 & Exs. E-G (Dkt. 1)). Land’s End, in its complaint and by signing the present memorandum, avers that exhibits attached to its complaint are true and accurate copies of the materials represented thereby. Land’s End also relies herein on court records, specifically the appended Belair v. City of Treasure Island decision and the related judicial fact-finding described therein. See Fed. R. Evid. 201(b)(2); e.g., Ebeh v. St. Paul Travelers, 2010 WL 5553687, at *3 (M.D. Fla. 2010), report and recommendation adopted, 2011 WL 53028 (M.D. Fla. 2011) (where the text and existence of state court opinion is not in dispute and is capable of ready and accurate determination, federal court must take judicial notice of adjudicative fact); Ruetz v. Preiss, 2008 WL 2201767, at *1 (M.D. Fla. 2008) (taking judicial notice of facts derived from prior litigation). Notwithstanding the propriety of considering the foregoing when considering a Rule 12(b)(6) motion, Land’s End conditionally requests conversion of the present motion to one for 5 Here, LEAC’s counterclaims for trademark infringement and a declaratory judgment are essentially mirror images of Land’s End’s claim for a declaration of non-infringement. 6 Exhibits attached to a pleading are considered part thereof. Fed. R. Civ. P. 10(c). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 10 of 27 PageID 642 10 summary judgment if required by the Court for consideration of and reliance on these sources, in accordance with Fed. R. Civ. P. 12(d). ARGUMENT LEAC’s COUNTERCLAIMS SHOULD BE DISMISSED UNDER FED. R. CIV. P. 12(b)(6) FOR FAILURE TO STATE A CLAIM A. The Legal Standard for Dismissal under Fed. R. Civ. P. 12(b)(6) To survive a motion to dismiss, factual allegations “must be enough to raise a right to relief above the speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 554, 555 (2007). The plaintiff must allege well-pleaded factual matter and more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements,” to state a claim plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). While allegations are taken as true, legal conclusions are not sufficient. Jacobs v. Tempur-Pedic Int'l, Inc., 626 F.3d 1327, 1333 (11th Cir. 2010). Formulaic recitation of a cause of action’s elements and unwarranted inferences are insufficient to survive a motion to dismiss. Id.; Franklin v. Curry, 738 F.3d 1246, 1251 (11th Cir. 2013); NCC Bus. Servs., Inc. v. Lemberg & Associates, LLC, 2014 WL 5510892, at *2 (M.D. Fla. 2014), report and recommendation adopted, 2014 WL 5514247 (M.D. Fla. 2014). B. LEAC’s First and Second Counts of Trademark Infringement and False Designation of Origin under the Lanham Act are Implausible LEAC’s claims of infringement and false designation of origin under the Lanham Act are implausible and should be dismissed under Iqbal. The legal standards governing § 1114(1)(a) and § 1125(a) claims are identical. Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 935 n.15 (11th Cir. 2010). To state a claim of either trademark infringement or false designation of origin under the Lanham Act, a plaintiff must allege use of its mark in commerce, without consent, which was likely to cause confusion as to an appreciable Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 11 of 27 PageID 643 11 number of relevant consumers. Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007). “Although likelihood of confusion is a question of fact, it may be decided as a matter of law.” Tana v. Dantanna’s, 611 F.3d 767, 775, n.7 (11th Cir. 2010) (where the court found, as a matter of law, that there was no likelihood of confusion between two geographically remote restaurants named DAN TANA’S and DANTANNA’S). A likelihood of confusion means a probability of confusion; it is not the Court’s job to eliminate all possibility of confusion. Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261, 1265 (S.D. Fla. 1999) (stating that “‘[l]ikelihood of confusion’ means probable confusion rather than mere possible confusion,” court found no trademark infringement). Here, LEAC’s generalized, conclusory assertions that Land’s End’s conduct is likely to confuse consumers as to the origin of Land’s End’s services are not supported by any plausible factual pleading or any examples of actual confusion over almost four decades of use by Land’s End and must be dismissed. See World Triathlon Corp. v. Dawn Syndicated Prods., 2007 WL 2875456, at *8 (M.D. Fla. Sept. 28, 2007), aff'd, 303 F. App'x 808 (11th Cir. 2008) (finding no likelihood of confusion as a matter of law where “the evidence is so one-sided that there can be no doubt about whether customer confusion is likely”); Ahmed v. GEO USA LLC, 2015 WL 1408895, at *3 (S.D.N.Y. 2015) (granting 12(b)(6) motion, stating that “a motion to dismiss may be granted for failure to plead likelihood of confusion if no reasonable factfinder could find a likelihood of confusion on any set of facts that plaintiff could prove.” (internal quotation marks omitted)). In this Circuit, several factors are considered in determining a likelihood of confusion: (1) type, or strength, of mark; (2) whether there has been actual confusion; (3) similarity of the products the marks represent; (4) alleged infringer’s intent; (5) similarity of the parties’ retail outlets and customers; (6) similarity of advertising media; and (7) similarity of mark. Custom Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 12 of 27 PageID 644 12 Mfg. & Eng'g, Inc., 508 F.3d at 648. “Of these, the type [or strength] of mark and the evidence of actual confusion are the most important.” Alaven Consumer Healthcare, Inc. v. DrFloras, LLC, 399 F. App'x 545, 547 (11th Cir. 2010). On the basis of LEAC’s threadbare counterclaims, it is implausible that consideration of these factors indicates any likelihood of confusion. As to the type of mark, LEAC’s mark is weak and its scope of protection correspondingly limited. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1361 (11th Cir. 2007) (weak mark deserving of narrow protection, diminishing likelihood of confusion). Use of a mark by third parties strongly signifies that a mark is weak and should be afforded only limited protection. Mango's Tropical Cafe, Inc. v. Mango Martini Rest. & Lounge, Inc., 844 F. Supp. 2d 1246, 1253 (S.D. Fla. 2011) (widespread third-party use considerably weakened mark). Where numerous unrelated entities use similar marks, the likelihood that consumers would think use by any two of them confusingly signifies common origins is slim. Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261, 1266 (S.D. Fla. 1999) (holding that third-party use of similar marks weakened mark).7 Here, there is extensive use of the phrase “land’s end” by third parties in relation to realty or real estate businesses, including on the internet--in many such cases, in relation to property located at the tip of a spit, island, or peninsula, just as with LEAC’s resort and Land’s End’s condos, and including several entities here in Florida, over 40 examples of which are identified in Ex. B hereto. Complaint, ¶¶64 & 65 & Ex. P (Dkt. 1). Widespread, third-party use of this descriptive term means the mark is weak and all but eliminates any possibility, let alone likelihood, of confusion. 7 “Third-party use of a mark must be considered in assessing the strength of all marks,” including those with registrations that have attained “incontestable” status under 15 U.S.C. § 1065. World Triathlon Corp., 2007 WL 2875456, at *4 (finding no likelihood of confusion where third-party use of mark rendered it weak irrespective of incontestable status); HBP, Inc. v. Am. Marine Holdings, Inc., 290 F. Supp. 2d 1320, 1328 (M.D. Fla. 2003), aff'd sub nom. HBP, Inc. v. Am. Marine Holdings, 129 F. App'x 601 (11th Cir. 2005) (same). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 13 of 27 PageID 645 13 As to actual confusion, LEAC’s failure (i.e., inability) to allege any incidences of consumers mistaking Land’s End’s use as indicating a relationship to LEAC is unsurprising in view of the other factors relevant to a likelihood of confusion inquiry, and significantly renders LEAC’s claim implausible. Although a demonstration of actual confusion is not necessary to prevail on a trademark infringement claim, the lack of evidence of an appreciable number of relevant consumers suffering actual confusion, together with the absence of other indicia necessary to demonstrate a likelihood of confusion, fatally undercuts LEAC’s allegation of trademark infringement. MPS Entm't, LLC v. Abercrombie & Fitch Stores, Inc., 2013 WL 3288039, at *10 (S.D. Fla. 2013) (finding no likelihood of confusion as a matter of law appropriate when there is “little evidence of actual confusion”); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261, 1268 (S.D. Fla. 1999) (“[T]he Court must give substantial weight to the fact that the [claimant] is unable, at this time, to prove actual confusion.”). Since there is no allegation of even one instance of confusion, let alone an appreciable amount of confusion, in almost 40 years of co-existence, it is implausible there will ever be a significant amount. Land’s End’s and LEAC’s services also differ from each other, further diminishing any chance of consumer confusion. LEAC’s registrations are for hotel and resort services and for software and internet-based trip and travel reservation services, whereas Land’s End uses the term in relation to condominiums.8 A Florida state court of appeals definitively held that Land’s End’s services are not hotel services. Belair, 611 So. 2d at 1289. LEAC’s statement to the 8 To the extent that realty agents’ websites contain the term “Land’s End,” not used in a trademark sense but merely to identify the Land’s End condos offered for rental (Complaint, ¶¶17 & 22-29 & Exs. D-G (Dkt. 1)), this is a classic example of a fair use that is shielded by law from trademark infringement liability. Int'l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1274 (11th Cir. 2006) (finding fair use and no infringement where party used mark not in a trademark sense but merely as a description of its product, in good faith). Land’s End hereby joins in Resort Rentals’ motion to dismiss LEAC’s Amended Counterclaims filed herewith based, in part, on Resort Rentals’ fair use. (Dkt. 98.) Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 14 of 27 PageID 646 14 contrary in its answer and counterclaims, despite being aware of this holding and the defects in LEAC’s counterclaims it reveals, violates LEAC’s obligations under Fed. R. Civ. P. 11. Even LEAC itself emphasizes the differences between its services and Land’s End’s. See Am. Counterclaim, ¶5 (Dkt. 44) (quoting Resort Rentals’ website as stating “Why go for a hotel when you can enjoy . . . beach condo rentals?”). In any event, even smaller differences than those between LEAC’s hotel and the Land’s End condos weigh heavily against finding a likelihood of confusion. Tana, 611 F.3d at 777-78 (finding no likelihood of confusion in view of “overwhelming” differences between parties’ services, even though both were high-end restaurants). As to intent, Land’s End adopted use of the term LAND’S END to describe the location of its condominium complex, without any knowledge of or intent to copy use by LEAC’s predecessor in interest. LEAC, which did not even exist until many years after Land’s End’s use commenced, makes no allegation to the contrary and does not dispute Land’s End’s good faith in adopting use of the term LAND’S END. It would be particularly disingenuous for LEAC to allege that, in 1981, Land’s End chose its name in Treasure Island, Florida, because of a desire to trade on the goodwill of a small hotel located in Homer, Alaska. For this reason, LEAC quite correctly does not make such an outlandish allegation. The absence of any allegation or factual support provided by LEAC of intent by Land’s End to mimic LEAC in using the term LAND’S END further demonstrates the implausibility of LEAC’s claims and supports dismissal. Finally, as to the similarity of the parties’ customers and advertising media, LEAC has also failed to plead any way in which these factors plausibly support its claims. To the contrary, these factors strongly cut against a likelihood of confusion. LEAC’s hotel is in Homer, Alaska, at the opposite corner of the North American continent from the Land’s End condos. Furthermore, the Land’s End condos are high end properties, rented by sophisticated, discerning Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 15 of 27 PageID 647 15 consumers who bring a heightened degree of analysis to bear in their purchasing decisions. Welding Servs., Inc., 509 F.3d at 1361. It is laughably implausible that such discerning consumers, seeking an expensive vacation rental in Florida, would see a realty listing or internet posting for condos on the Gulf Coast called “Land’s End” and somehow mistakenly believe that they were affiliated with an Alaskan hotel or a totally separate website advertising it. Tana, 611 F.3d at 778 (holding that the fact that both parties merely used the internet to advertise their services “dispel[led] rather than cause[d] confusion . . . because the websites are separate and distinct, suggesting two completely unrelated business entities.”); MPS Entm't, LLC, 2013 WL 3288039, at *9 (S.D. Fla. 2013) (finding no likelihood of confusion where “the only similarity in the advertising channels used by the parties is their maintenance of websites on the Internet”); HBP, Inc., 290 F. Supp. at 1335, n.5 (“If use of the Internet were enough to find commercial outlets to be similar, nearly all goods and services would be considered as being marketed together.”). In short, no reasonable person, let alone an appreciable number of consumers, could mistake Land’s End’s condos as being somehow affiliated with or sponsored by LEAC given the sparse allegations in LEAC’s counterclaims. LEAC’s claim of a likelihood of consumer confusion is not only implausible, it’s inconceivable. Accordingly, LEAC’s First and Second Counterclaims for infringement and false designation of origin under the Lanham Act should be dismissed. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 16 of 27 PageID 648 16 C. LEAC’s Third and Fourth Counts for Trademark Infringement and Unfair Competition under Florida Common Law Should be Dismissed for Failure to State a Claim 1. Lack of Likelihood of Confusion Eliminates Counts III & IV Based on Florida Common Law Without adding any further substantiating allegations, LEAC also casts its allegations as constituting trademark infringement (Count III) and unfair competition (Count IV) under Florida common law. However, these causes of action do not differ from LEAC’s Lanham Act claims of Counts I and II: both require plausible allegations of a likelihood of consumer confusion. Custom Mfg. and Engineering, Inc. v. Midway Services, Inc., 508 F.3d 641, 652–653, 84 U.S.P.Q.2d 2009 (11th Cir. 2007) (holding that a court can use federal law analysis to evaluate the merits of trademark infringement and unfair competition claims under Florida common law, as the laws are the same); Suntree Technologies, Inc. v. Ecosense Intern., Inc., 693 F.3d 1338, 1345, 104 U.S.P.Q.2d 1307 (11th Cir. 2012) (holding that federal trademark law applies to trademark infringement claim under Florida common law). Because LEAC’s federal claims of trademark infringement and false designation of origin claims must fail for implausibility under Iqbal, so too must its claims of trademark infringement and unfair competition under Florida common law. Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1332-33 (11th Cir. 2008) (failure of federal Lanham Act trademark infringement and false advertising claims necessitated failure of trademark infringement and unfair competition claims under Florida common law). 2. Absence of Assertions of Fraud or Deception Requires Dismissal of Count IV Under Rule 12(b)(6) and Rule 9 Furthermore, “[t]o state a claim for unfair competition under Florida common law, counter-claimant must allege (1) deceptive or fraudulent conduct of a competitor and (2) likelihood of consumer confusion.” Whitney Info. Network, Inc. v. Gagnon, 353 F. Supp. 2d Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 17 of 27 PageID 649 17 1208, 1212 (M.D. Fla. 2005).9 LEAC has not pleaded any deceptive or fraudulent conduct by LEAC. For this reason alone, Count IV must be dismissed for failure to state a claim. Id. (dismissing counterclaim for unfair competition under Florida common law under Rule 12(b)(6)); Minsurg Int'l, Inc. v. Frontier Devices, Inc., 2011 WL 1326863, at *5 (M.D. Fla. 2011) (Florida common law unfair competition claim dismissed for failure “to allege any facts as to . . . falsity or deceptiveness”). D. As a Matter of Law, LEAC’s Trademark Registrations Cannot Displace Land’s End’s Undisputedly Prior Use, Necessitating Dismissal Even if LEAC’s allegations of a likelihood of confusion were plausible, LEAC’s claims still must all also fail for the simple reason that Land’s End was using the term LAND’S END to refer to itself and its condominiums, in local, national, and international advertising, and on the internet, many years before LEAC ever applied for registration of its geographically distant use. Because common law rights to use of a mark cannot be extinguished by another’s subsequent filing of an application to register, Land’s End’s rights to use that were obtained before LEAC’s registrations are unaffected thereby, requiring dismissal of LEAC’s claims. 15 U.S.C. § 1057(c). Tana, 611 F.3d at 780, 781, n.10 (stating that obtaining a registration does not displace a geographically remote user’s rights obtained before registration); Allard Enterprises, Inc. v. Advanced Programming Res., Inc., 249 F.3d 564, 572 (6th Cir. 2001) (“The territorial rights of a holder of a federally registered trademark are always subject to any superior common law rights acquired by another party through actual use prior to” registration.); 5 McCarthy on Trademarks and Unfair Competition § 26:53 (“Neither application for nor registration of a mark at the federal 9 “In alleging fraud . . . a party must state with particularity the circumstances constituting fraud . . . .” Fed. R. Civ. P. 9(b). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 18 of 27 PageID 650 18 level wipes out the prior non-registered, common law rights of others.”).10 According to the seminal trademark doctrine of Tea Rose-Rectanus, Land’s End obtained common law rights to use of the phrase LAND’S END, which cannot be extinguished by LEAC’s subsequent registrations. 5 McCarthy on Trademarks and Unfair Competition § 26:2. Under Tea Rose-Rectanus, a user of an unregistered trademark is entitled to exclusive use of the mark within the territory where potential customers recognize the mark’s meaning. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415-416, 36 S. Ct. 357 (1916); Tana, 611 at 780. That is, a senior user of an unregistered mark in one territory cannot displace a junior in another, geographically remote territory in which the junior user was the first to use the mark, even if the remote senior user registers its mark after the junior user begins use. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 100, 39 S. Ct. 48 (1918); Uber Promotions, Inc. v. Uber Techs., Inc., 2016 WL 617450, at *5 (N.D. Fla. 2016) (holding that common-law trademark rights obtained before another’s registration were not displaced by the registration); Se. Clinical Nutrition Centers, Inc., 135 F. Supp. 3d 1267, 1274-75 (N.D. Ga. 2013) (Rule 12(b)(6) motion granted absent trademark registrant’s allegation that it could predate movant’s geographically distant use in the movant’s territory). On the basis of its hotel and office in Alaska, LEAC applied for trademark registration for hotel and resort services in the 1990s and for on-line travel and reservation services in 2010. Thus, Land’s End’s common law rights attained before those dates could not be diminished because of LEAC’s applications to register. Land’s End commenced use at least as early as 1981, when it registered with the Florida Secretary of State. Complaint, ¶4 & Ex. A (Dkt. 1). 10 “This is true even if the registration has achieved ‘incontestable’ status.” 2 McCarthy on Trademarks and Unfair Competition § 16:18.50. See 15 U.S.C. § 1065 (stating that incontestable registrations cannot cut off common law rights that arose from use predating registration). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 19 of 27 PageID 651 19 Furthermore, in the 1980s, Land’s End, through realty agents, “embarked upon a national and international marketing campaign,” advertising, by name, the availability of Land’s End condos for rental, examples of which are included in Ex. A hereto. Belair v. City of Treasure Island, 611 So. 2d at 1288. Once the internet became available in the 1990s, advertisement and rental of Land’s End condos, again with the assistance of realty agencies, became available online. Complaint, ¶¶23-29, Exs. E-G (Dkt. 1). It is undisputed by LEAC that Land’s End’s use of the phrase LAND’S END occurred before LEAC applied for its registrations for hotel and resort services in the 1990s, and online use by Land’s End and its condo owners’ realty agents commenced before LEAC applied for its registration for on-line travel and reservation services in 2010. As a matter of law, the uses by Land’s End from a time prior to LEAC’s applications to register is fatal to LEAC’s claims, which must be dismissed. Tana, 611 F.3d at 780, 781, n.10. The implausibility of LEAC’s allegations is made clear by the Eleventh Circuit’s analysis in Tana v. Dantanna's, 611 F.3d 767 (11th Cir. 2010). There the owner of a Los Angeles restaurant named DAN TANA’S sued an Atlanta restaurant named DANTANNA’S for infringement. Albeit in a summary judgment context, the court explicitly held as a matter of law that the plaintiff could never demonstrate rights to use of its mark in Atlanta over defendant’s mark.11 The Court held that DAN TANA’S was a relatively weak mark outside of Los Angeles and that the proper inquiry was on the strength of Plaintiff’s DAN TANA’S mark in Atlanta, of which there was none. Here, LEAC’s LAND’S END is weak outside of Homer, Alaska, and has never possessed strength in Treasure Island, Florida--not in 1981 and not now. The Tana court also recognized the importance of considering the geographical proximity of the two restaurants. Id. at 780. Given that the plaintiff, like LEAC here, operated only one restaurant in Los Angeles 11 Like whatever rights LEAC must rely on as of 1981 when Land’s End commenced its pervasive use, rights to the plaintiff’s mark in Tana v. Dantanna’s were common law rights. 611 F.3d at 781. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 20 of 27 PageID 652 20 and Defendant operated one restaurant in Atlanta, the geographical remoteness of the two restaurants prevented finding that the Los Angeles plaintiff’s territory included Atlanta. If Los Angeles and Atlanta are geographically remote, it is implausible for LEAC to suggest that Homer, Alaska, and Treasure Island, Florida, are not. Thus, it is totally implausible on the basis of LEAC’s allegations to conclude that Land’s End’s use from as far back as 1981 could ever have been subjugated to the name of an isolated Alaskan hotel. LEAC tries to paper over this gaping hole in its pleadings with a futile exercise in bootstrapping, referring to national recognition supposedly attained by LEAC’s predecessor in interest. LEAC states that it obtained its predecessor’s goodwill in the LAND’S END mark by nature of having bought the Alaskan hotel in 1988, the year LEAC was formed. Complaint, ¶11 & Ex. B (Dkt. 1); Am Counterclaim, ¶38 (Dkt. 44). But the Alaskan hotel was in foreclosure when LEAC bought it, meaning LEAC’s predecessor in interest was not the prior hotelier but a creditor. Complaint, Ex. B (Dkt. 1). LEAC does not state or demonstrate whether or how the goodwill of the LAND’S END mark was obtained by the creditor, let alone transferred to LEAC, without which LEAC cannot rely on the former hotelier’s supposed name recognition from seven years before LEAC even existed. In re Impact Distributors, Inc., 260 B.R. 48, 54 (Bankr. S.D. Fla. 2001) (stating that transfer of goodwill required for enforcement of mark); Brown Bark II, L.P. v. Dixie Mills, LLC, 732 F. Supp. 2d 1353, 1358 (N.D. Ga. 2010) (foreclosure sale without transfer of goodwill defeated claim of trademark infringement). Thus, LEAC has not plausibly alleged that it can rely on any purported advertising by the former hotelier to demonstrate recognition of its mark in Land’s End’s geographically remote territory. In essence, LEAC, born in 1988, is trying to push its priority date back in time to stand in the shoes of a third-party, former owner of a foreclosed hotel, which is the only way it can hope to succeed over Land’s End’s prevalent use since the early 1980s and online use since the Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 21 of 27 PageID 653 21 1990s. Whether bootstrapping or shoehorning, LEAC’s counterclaims fail because it cannot plausibly allege the requisite facts to connect the temporal dots. Even if LEAC could rely on its predecessor’s activity from 1980, LEAC makes only bald, threadbare statements of advertising efforts, without any substantiating description or evidence thereof or the slightest demonstration of any recognition of its LAND’S END mark on the Gulf Coast. Am. Counterclaim, ¶¶39, 40 (Dkt. 44). LEAC also states that “[s]ince approximately 1980, [LEAC’s Alaskan hotel] has hosted guests from the Middle District of Florida.” Am Counterclaim, ¶41 (Dkt. 44). This assertion is totally unavailing. To begin with, “approximately 1980” is not definitively before 1981, which would be required in order to satisfy Tea Rose-Rectanus. Furthermore, LEAC’s president stated that, even as of 1988, its Alaskan hotel was “a very summer-only destination for primarily Alaskans.” Complaint, ¶11 & Ex. B (Dkt. 1); Am Counterclaim, ¶38 (Dkt. 44). Thus, it seems implausible that it could plead even so much as any “guests from the Middle District of Florida” at the hotel seven or eight years previous. And even if true, the assertion that LEAC’s predecessor in interest in 1981 simply hosted perhaps as few as one guest traveling from Florida at a hotel in Alaska is irrelevant to commercial recognition in Land’s End’s territory as of that date. This temporal shortcoming constitutes an equally monumental failing for LEAC’s state law allegations. To prevail on a claim of Florida common law trademark infringement or unfair competition, a party must also prove that it: “[F]irst adopted and used a certain name (or mark ...) in a certain market or trade area, as a means of establishing good will and reputation and to describe, identify or denominate particular services rendered or offered by [it] ... and to distinguish them from similar services rendered or offered ... by others.” Anderson v. Upper Keys Business Group, Inc., 61 So.3d 1162, 1167 (Fla. 3d DCA 2011). Thus, as with its federal Lanham Act claims, to state a claim under Florida state law LEAC must Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 22 of 27 PageID 654 22 plausibly allege that it adopted the LAND’S END mark in the Tampa Bay area before Land’s End did. In a further attempt at obfuscation of this historical timeline and its fatality to LEAC’s claims, LEAC makes an unavailing argument that advertising Land’s End condos for rental on the internet represents an “expansion” of Land’s End’s longstanding prior use and thereby infringes the rights conferred by LEAC’s registration. Complaint, Exs. K & M (Dkt. 1). This argument fails even if it were legally accurate because Land’s End, through its realty agents, advertised and took rental reservations for condos online in the 1990s, long before LEAC applied to register for on-line travel and reservation services in 2010. Complaint, ¶¶23-29 & Exs. E-G (Dkt. 1). Even if, as LEAC submits, LEAC’s 2010 application for online services “froze” Land’s End’s use, preventing subsequent “expansion,” Land’s End was already using LAND’S END online long before LEAC’s registration.12 Continuing such use does not, of course, constitute “expansion” and under conventional application of Tea Rose-Rectanus, as above, such prior online use by Land’s End eliminates LEAC’s invented “internet expansion” theory as a basis for its claims. Even if that argument were availing, which it is not, LEAC’s expansion theory is still wrong--as a matter of law--and its claims still must fail. LEAC wrongly argues as though the internet is a geographical territory, and use of the term LAND’S END in a website constitutes instantaneous expansion of its use in commerce to everywhere that the internet is accessible. That is not the law. Dudley v. Healthsource Chiropractic, Inc., 883 F. Supp. 2d 377, 394 (W.D.N.Y. 2012) (“The rights of concurrent users would be substantially harmed if one user were able to monopolize the internet to the exclusion of other lawful users of the same mark.”). 12 On July 29, 2016, Land’s End and Resort Rentals filed with the U.S. Patent and Trademark Office a petition to cancel this most recent of LEAC’s registrations based, in part, on their prior use. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 23 of 27 PageID 655 23 Although the internet is a globally accessible medium for advertising and transacting business, a mark’s use on a website is not tantamount to global use in commerce. Professor McCarthy, a leading authority on trademark law, succinctly dismissing LEAC’s position, states that the “internet (or cyberspace) is not a ‘territory.’” 5 McCarthy on Trademarks and Unfair Competition § 26:30.50 (stating, without particular reference to this case, that accessibility of a website bearing a trademark “on computers from Florida to Alaska” does not mean it is being used in commerce in those territories); 3 McCarthy on Trademarks and Unfair Competition § 20:85.50 (4th ed.) (explaining that concurrent use of similar marks on the internet is permissible). Thus, LEAC is fundamentally wrong that Land’s End’s use in advertising rental of its Gulf Coast condos on the internet constitutes any territorial “expansion” of its pre-internet use. To the contrary, Land’s End’s use, on the internet and otherwise, is consistent with the rights obtained before LEAC applied for its registrations, which registrations cannot displace such rights. E. LEAC’s Claims Fail Because Its Mark Had Not Acquired Distinctiveness in Land’s End’s Territory By the Time Land’s End Commenced Use And if all that were not enough, even if LEAC’s counterclaims somehow survived the foregoing infirmities (which they cannot), LEAC would still fail, because it cannot plausibly allege recognition of its LAND’S END mark in Florida as of 1981, separate from its faulty statements of mere use. For descriptive marks, which require acquisition of recognition by the consuming public before they are deserving of protection (known as “acquired distinctiveness” or “secondary meaning”), a senior user’s territory of exclusive use is restricted to areas in which the mark was not only used but in which it had acquired secondary meaning (i.e., famousness). If a senior user’s descriptive mark had not only been used but also acquired secondary meaning in a territory wherein and when a good faith junior user commenced use, the senior user cannot Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 24 of 27 PageID 656 24 displace the junior user. Tana, 611 F.3d at 776. LEAC’s use of the phrase Land’s End is descriptive because it describes the location of its hotel: at the very end of a thin, jutting peninsula in Homer, Alaska, known as Homer’s Spit. Complaint, ¶¶ 10, 59 & 60 & Exs. B & O. Although eventual attainment by LEAC’s registrations of incontestable status may signify possession of some secondary meaning someplace(s) as of the dates attained such status,13 it does not mean secondary meaning had been established in the territory of Land’s End’s prior use, when Land’s End’s prior use began, on the Gulf Coast of Florida. Because LEAC’s mark is descriptive, it cannot displace a junior user merely by use in a territory if the mark had not attained secondary meaning there when the junior user commenced use. Even if LEAC’s empty statements as to the former hotelier’s advertising efforts in the 1980s saved its counterclaims, LEAC does not allege that its mark had acquired secondary meaning in Land’s End’s territory as of 1981, plausibly or otherwise, requiring dismissal. Tana, 611 F.3d at 776. F. Because LEAC Has Not Demonstrated Imminent Entry Into Land’s End’s Geographical Territory, It Cannot Enjoin Land’s End’s Use Even without the foregoing protections, Land’s End’s right to use the phrase LAND’S END is protected by the Dawn Donut rule. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 121 U.S.P.Q. 430 (2d Cir. 1959); Continente v. Continente, 378 F.2d 279, 282 (9th Cir. 1967); John R. Thompson Co. v. Holloway, 366 F.2d 108, 114 (5th Cir. 1966).14 According to Dawn Donut, a registrant (such as LEAC) has no right to enjoin a junior user’s (such as Land’s End’s) use of a mark in the junior user’s geographically remote territory until there is a present likelihood of the registrant’s (e.g., LEAC’s) entry into the junior user’s territory. Until there is a likelihood of confusion between the registrant’s and junior user’s uses of the mark triggered by 13 Incontestability of LEAC’s registrations could not have been attained until at least five years after they were registered. 15 U.S.C. § 1065. 14 Decisions of the former Fifth Circuit handed down prior to close of business on September 30, 1981, are binding in this Circuit. Bonner v. City of Prichard, Ala., 661 F.2d 1206, 1209 (11th Cir. 1981). Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 25 of 27 PageID 657 25 the registrant’s likely entry into the junior user’s territory, there is no basis for enjoining the defendant’s use. LEAC has not alleged any present likelihood of entry into Florida from Alaska.15 There is therefore no basis for enjoining Land’s End’s use of the mark in Florida, and LEAC’s claims must be dismissed. G. Evidence of Land’s End’s Common Law Rights to Use the LAND’S END is Overwhelming Astonishingly, LEAC now newly asserts a fifth counterclaim for a declaration eliminating or, in the alternative, delineating the scope of Land’s End common law rights in LAND’S END. See, e.g., Complaint, ¶¶5, 17, 19 & 22-29 & Exs. A & D-G (Dkt. 1); Ex. A hereto. LEAC makes no plausible allegation to counter the overwhelming evidence of Land’s End’s longstanding public use requiring dismissal of this fifth counterclaim. Furthermore, the failure of LEAC’s first four counterclaims necessitates dismissal of this one as well, because their dismissal removes any justiciable controversy to support the fifth counterclaim for a declaration of the scope of Land’s End’s rights to use the term Land’s End. Knights Armament Co. v. Optical Sys. Tech., Inc., 568 F. Supp. 2d 1369, 1375 (M.D. Fla. 2008) (dismissing declaratory judgment claim from amended counterclaims where the parties’ trademark dispute would be fully addressed by other claims). CONCLUSION For the foregoing reasons, it is respectfully submitted that Land’s End’s motion should be granted and all of LEAC’s Counterclaims be dismissed with prejudice for failure to state a claim under Rule 12(b)(6) or, in the alternative, 12(d). 15 If LEAC contends that the simultaneous presence of advertising on the internet constitutes “entry” by LEAC into Florida for purposes of Dawn Donut, then such entry occurred over fifteen (15) years ago. Thus, LEAC has “sat on its hands” for over a decade and is barred from relief under the doctrine of laches. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 26 of 27 PageID 658 Respectfully Submitted, August 5, 2016 /s/ Susan E. Farley ______________ Susan E. Farley, pro hac vice E-Mail: sef@hrfmlaw.com HESLIN ROTHENBERG FARLEY & MESITI, P.C. 5 Columbia Circle Albany, NY 12203 Tel: 518/452-5600 Fax: 518/452-5579 Frank R. Jakes, FBN 372226 E-Mail: frankj@jpfirm.com JOHNSON, POPE, BOKOR, RUPPEL & BURNS, LLP 403 E. Madison Street, 4th Floor Tampa, FL 33602 Tel: 813/225-2500 Fax: 813/223-7118 Attorneys for Plaintiff Land’s End at Sunset Beach Community Association, Inc. Case 8:16-cv-00828-EAK-JSS Document 100 Filed 08/05/16 Page 27 of 27 PageID 659 EXHIBIT A Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 1 of 14 PageID 660 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 2 of 14 PageID 661 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 3 of 14 PageID 662 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 4 of 14 PageID 663 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 5 of 14 PageID 664 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 6 of 14 PageID 665 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 7 of 14 PageID 666 Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 8 of 14 PageID 667 ibMMMMMMN Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 9 of 14 PageID 668 ibMMMMMMO Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 10 of 14 PageID 669 ibMMMMMMP Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 11 of 14 PageID 670 ibMMMMMMQ Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 12 of 14 PageID 671 ibMMMMMMR Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 13 of 14 PageID 672 ibMMMMMMS Case 8:16-cv-00828-EAK-JSS Document 100-1 Filed 08/05/16 Page 14 of 14 PageID 673 EXHIBIT B Case 8:16-cv-00828-EAK-JSS Document 100-2 Filed 08/05/16 Page 1 of 6 PageID 674 Page 2 of 6 ONLINE THIRD-PARTY USES OF LAND’S END 1. TripAdvisor – Gulf Shores, ALABAMA https://www.tripadvisor.com/VacationRentalReview-g30582-d10382305-Land_s_End- Gulf_Shores_Alabama.html 2. CitySeeker – Scott, ARKANSAS http://cityseeker.com/little-rock/816091-land-s-end-plantation 3. Lands End Apartments – Pacifica, CALIFORNIA http://www.landsendapts.com/ 4. Lands End Oceanside – Oceanside, CALIFORNIA http://landsendoceanside.com/rates/ 5. Zillow – Fairfield, CONNECTICUT http://www.zillow.com/homedetails/4145-Congress-St-Fairfield-CT-06824/57299118_zpid/ 6. Patterson Schwartz Real Estate – Rehobeth Beach, DELAWARE http://www.kgrube.psre.com/Listings/706277 7. PalmIslandProperties.com – Cape Haze, FLORIDA http://palmislandproperties.com/property/lands-end-cottage-18-2/ 8. Historic Hideaways – Duval Street, FLORIDA https://www.historichideaways.com/key-west-vacation-rental/lands-end#.V6JHDaK2GFX 9. Remax – Perdido, FLORIDA http://www.condoinvestment.com/lands-end-condo-perdido-key-fl.php Case 8:16-cv-00828-EAK-JSS Document 100-2 Filed 08/05/16 Page 2 of 6 PageID 675 Page 3 of 6 10. Royal Shell Vacations – Sanibel Island, FLORIDA https://royalshell.com/vrp/unit/SSeasLE1668 11. St Mary’s Luxury Homes – St. Mary’s, Canton County, GEORGIA https://hotpads.com/lands-end-saint-marys-ga/homes-for-sale 12. Homeaway.com – Goat Island, MAINE https://www.homeaway.com/vacation-rental/p102461 13. Manor on the Bay – Grasonville, MARYLAND https://www.tripadvisor.com/Hotel_Review-g41176-d77506-Reviews- Lands_End_Manor_on_the_Bay-Grasonville_Maryland.html 14. Tripadvisor.com – Chatman, MASSACHUSETTS https://www.tripadvisor.com/LocationPhotoDirectLink-g41499-d89650-i116075338- Chatham_Bars_Inn_Resort_and_Spa-Chatham_Cape_Cod_Massachusetts.html 15. TripAdvisor.com – Provincetown, MASSACHUSETTS https://www.tripadvisor.com/Hotel_Review-g41778-d226471-Reviews-Land_s_End_Inn- Provincetown_Cape_Cod_Massachusetts.html 16. Land’s End Marina – Harrison Township, MICHIGAN http://landsendyachtsales.com/ 17. AirBNB- Ausable Point, MICHAGIN https://www.airbnb.com/rooms/6408101 18. Hotpads.com – Vergas, MINNESOTA http://www.trulia.com/property/3226021565--Lands-End-Vergas-MN-56587 Case 8:16-cv-00828-EAK-JSS Document 100-2 Filed 08/05/16 Page 3 of 6 PageID 676 Page 4 of 6 19. Beach.com Destinations – Long Beach, MISSISSIPPI http://www.beach.com/vacation-rental-reviews-exquisite-lands-end-condominium-right-by- outlet-mall-best-of-best 20. Lands End Properties – Osage Beach, MISSOURI http://www.landsendproperties.com/contact_us.asp 21. Land’s End of Emerald Isle -- Emerald Isle, NORTH CAROLINA http://landsendemeraldisle.com/ 22. Hatteras Realty – Avon, NORTH CAROLINA http://www.hatterasrealty.com/rental/house.html?ID=280 23. Paramount Destinations – Corolla, NORTH CAROLINA http://www.paramountdestinations.com/booking/land-s-end-finisterre/1332-43331 24. Resort Realty – Corolla, NORTH CAROLINA http://www.resortrealty.com/booking/lands-end/1068 25. Roche Realty Group – Moultonborough, NEW HAMPSHIRE http://www.rocherealty.com/lands-end 26. Cape May Times – Cape May, NEW JERSEY http://www.capemaytimes.com/rentals/mcfalls.htm 27. Finger Lakes Premier Properties – Canandaigua Lake, NEW YORK http://www.fingerlakespremierproperties.com/rental/house.html?ID=278 Case 8:16-cv-00828-EAK-JSS Document 100-2 Filed 08/05/16 Page 4 of 6 PageID 677 Page 5 of 6 28. Street Easy – Clinton, NEW YORK http://streeteasy.com/building/lands-end 29. Westlake Ohio Homes – Westlake, OHIO http://www.westlakeohiohomes.com/lands_end 30. Landsendonlakemurray.com – Lake Murray, OKLAHOMA http://www.landsendonlakemurray.com/ 31. Lands End – Cannon Beach, OREGON http://www.landsendcb.com/ 32. AirBNB – Portsmouth, RHODE ISLAND https://www.airbnb.com/rooms/8796502 33. Delman Real Estate – Narangassett, RHODE ISLAND http://www.liladelman.com/lands-end-787-ocean-road-unit-10-narragansett 34. Southern Coast Realty – St Helena Island, SOUTH CAROLINA http://www.southerncoastrealty.com/lands-end-beaufort-sc-homes-and-lots-sale/ 35. Lands End Resort – SOUTH CAROLINA http://www.landsendresort.com/ 36. Brannan Resort Rentals – Surfside, TEXAS http://www.brri.com/Unit/Details/14767 Case 8:16-cv-00828-EAK-JSS Document 100-2 Filed 08/05/16 Page 5 of 6 PageID 678 Page 6 of 6 37. Zillow – White Pine, TENNESSEE http://www.zillow.com/homedetails/Lands-End-LOT-31-White-Pine-TN- 37890/2101840511_zpid/ 38. Vermont Real Estate – Reading, VERMONT http://property.darkhorserealty.com/idx/details/homes/a027/4495028/Reading%ADVermont%A DVT%AD050621/7 39. Rose and Womble Realty – Virginia Beach, VIRGINIA https://roseandwomble.com/Real_Estate/VA/VIRGINIA_BEACH/LANDS_END_CONDO 40. Realtor.com – Virginia Beach, VIRGINIA http://www.realtor.com/realestateandhomes-detail/1019-Lands-End-Way_Virginia- Beach_VA_23451_M68106-62181 41. Seabrook Cottage Rentals – Seabrook, WASHINGTON http://www.seabrookcottagerentals.com/vacation-rental-home.asp?PageDataID=101909 42. SnowShoe Vacation Rentals – Snowshoe, WEST VIRGINIA http://www.snowshoevacationrentals.com/vacation-rental-home.asp?PageDataID=33770 43. VRBO – Long Beach, WASHINGTON https://www.vrbo.com/508927# 44. Rent Wisconsin Cabins – Minocqua, WISCONSIN http://www.driftwood-lodge.com/suites/lands-end/ Case 8:16-cv-00828-EAK-JSS Document 100-2 Filed 08/05/16 Page 6 of 6 PageID 679