Buffets, Inc. et al v. LVDC II Inc. et al
Filing
56
ORDER granting 54 Motion for Default Judgment as to Defendants Brandon Hometown Buffet, LLC, Dung Cao, LVDC II Inc., LVDC III LLC, Kinchat Patel, TVNP II LLC, TVNP, LLC, Thanh Hao Van Vo. Signed by Judge James S. Moody, Jr on 8/16/2011. (LN)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
Case No.: 8:11-cv-00035-T-30MAP
BUFFETS, INC., a Minnesota corporation,
and HOMETOWN BUFFET, INC.,
a Minnesota corporation,
Plaintiffs,
v.
LVDC II INC., a Florida corporation d/b/a
BRANDON HOMETOWN BUFFET; et. al;
Defendants.
_________________________________________/
ORDER GRANTING MOTION FOR DEFAULT JUDGMENT
THIS CAUSE is before the Court on Plaintiffs’ Motion for Default Judgment (the
“Motion”) [DE 54] against Defendants LVDC II INC.; BRANDON HOMETOWN BUFFET,
LLC; LVDC III LLC; TVNP, LLC; TVNP II LLC ((hereinafter “Corporate Defendants”);
KINCHAT PATEL, THANH HAO VAN VO, and DUNG CAO (hereinafter “Individual
Defendants”). Upon review of Plaintiffs’ Motion, together with the Memorandum of Law in
support thereof, and the other supporting materials submitted with the Motion or previously
filed with the Court and upon the proceedings previously had in this case, Plaintiffs’ Motion
is hereby GRANTED, and, in support of the default judgment, permanent injunction, and
request for attorneys fees, by default entered herein, the Court makes the following findings
of fact and conclusions of law:
1.
Plaintiffs are corporations organized and existing under the laws of the State
of Minnesota having their principal places of business at 405 Lancaster Avenue, Greer, South
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Carolina 29650. Plaintiffs own and operate 137 HomeTown® Buffet restaurants in 16 states,
including two HomeTown® Buffet restaurant locations in the state of Florida. Plaintiffs’
restaurants offer buffet-style dining at reasonable prices in a clean and pleasant atmosphere.
Plaintiffs have an interest in protecting their rights in their federally registered trademarks,
including “HomeTown®” and “HomeTown Buffet®” for restaurant services (“Buffets’
Registered Marks”). (See DE 1 at ¶¶ 4 and 30 – 34)
2.
Plaintiffs have continuously used Buffets’ Registered Marks for restaurant
services in commerce since at least as early as January 1, 1991. Plaintiffs have obtained four
separate federal registrations for these marks: Reg. No. 2,617,451 for the mark
HOMETOWN BUFFET, Reg. No. 3,343,752 for the mark HomeTown Buffet and design,
Reg. No. 3,311,656 for the mark HomeTown Buffet and design, and Reg. No. 3,339,237 for
the mark HomeTown. (See DE 1 at ¶¶35-40, and Compl. Ex. A, B, C, D).
3.
Registration No. 2,617,451 for the mark HOMETOWN BUFFET is more than
six years old and has been declared “incontestable” under Section 15 of the Lanham Act, 15
U.S.C. § 1065. Certificates of registration issued for Buffets’ Registered Marks constitute
conclusive evidence of (i) the registration of the marks; (ii) the validity of the registered
marks; (iii) Plaintiffs’ ownership of the marks; and (iv) Plaintiffs’ exclusive right to use the
marks in commerce in connection with the identified goods and services, as provided by
Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b). (See DE 1 at ¶ 36)
4.
The names that Defendants have used for their advertising and operations of
their area restaurant business are “Brandon Hometown Buffet,” “Plant City Hometown
Buffet,” and “St. Pete Hometown Buffet,” (the “Infringing Names”).
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5.
LVDC II INC. and BRANDON HOMETOWN BUFFET, LLC (collectively
referred to as “Brandon Defendants”) - Defendant LVDC II Inc. (“Brandon Defendant #1”) is
a dissolved Florida corporation with its principal place of business listed at 825 Brandon
Boulevard, Brandon, Hillsborough County, Florida 33511.
Defendant BRANDON
HOMETOWN BUFFET, LLC (“Brandon Defendant #2”), is a Florida limited liability
company with its principal place of business listed as 825 Brandon Boulevard, Brandon,
Hillsborough County, Florida 33511. (See DE 1 at ¶¶ 5, 6 and at Compl. Ex. E, F). Brandon
Defendant #1 registered a fictitious name and possesses a permanent food service license to
operate a business under the name “Brandon Hometown Buffet.” (See DE 2 at Verified
Motion Ex. 2, 3; Affidavit of John M. Hemenway) Brandon Defendants have operated a
restaurant under the name “Brandon Hometown Buffet” (See DE 1 at ¶¶ 8, 41, 42 and at
Compl. Ex O; Affidavit of Robert W. Bivins). The words “Hometown Buffet” in the
restaurant name used by the Brandon Defendants are confusingly similar to Buffets’
Registered Marks.
6.
Defendant LVDC III LLC - Defendant LVDC III LLC (the “Plant City
Defendant”) is a Florida limited liability company having its principal place of business at
1914 James Redman Parkway, Plant City, Hillsborough County, Florida. (See DE 1 at ¶ 9
and at Compl. Ex. H). The Plant City Defendant possesses a permanent food service license
to operate a restaurant business under the name “Plant City Hometown Buffet” at that same
location (See DE 2 at Verified Motion Ex. 4; Affidavit of John M. Hemenway). The Plant
City Defendant has operated a restaurant under the name “Plant City Hometown Buffet” (See
DE 1 at ¶ 9 and 43 and at Compl. Ex P; Affidavit of Robert W. Bivins). The words
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“Hometown Buffet” in the restaurant name used by the Plant City Defendant are confusingly
similar to Buffets’ Registered Marks.
7.
Defendant TVNP, LLC - Defendant TVNP, LLC (the “St. Pete-Bay Pines
Defendant #1”) is a Florida limited liability company with its principal place of business
listed as 8305 Bay Pines Boulevard, St. Petersburg, Pinellas County, Florida 33709. (See DE
1 at ¶13 and Comp. Ex. J). St. Pete-Bay Pines Defendant #1 has applied for a permanent food
service license to operate a restaurant business under the name “St. Pete Hometown Buffet”
at that same location (See DE 2 at Verified Motion Ex. 7; Affidavit of John M. Hemenway).
St. Pete-Bay Pines Defendant #1 has operated a restaurant under the name “St. Pete
Hometown Buffet” (See DE 1 at ¶ 15 and 48 and at Compl. Ex V; Affidavit of John M.
Hemenway). The words “Hometown Buffet” in the restaurant name used by the St. Pete-Bay
Pines Defendant #1 are confusingly similar to Buffets’ Registered Marks.
8.
Defendant TVNP II LLC - Defendant TVNP II LLC (the “St. Pete-34th Street
Defendant”) is a Florida limited liability company with its principal place of business at 3800
34th Street South, St. Petersburg, Pinellas County, Florida 33711. The St. Pete-34th Street
Defendant operates a restaurant business under the name “St. Pete Hometown Buffet” at that
same location (See DE 1 at ¶¶16, 17, 49 and at Compl. Ex L, W; Affidavit of John M.
Hemenway). The “St. Pete Hometown Buffet,” located at the same address as the St. Pete34th Street Defendant has registered for business tax purposes with the City of St. Petersburg
as a new business of as November 2, 2010 (See DE 2 at Verified Motion Ex. 8; Affidavit of
John M. Hemenway). The words “Hometown Buffet” in the restaurant name used by the St.
Pete-34th Street Defendant are confusingly similar to Buffets’ Registered Marks.
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9.
Defendant KINCHAT PATEL - Defendant Kinchat Patel (“Defendant Patel”),
who is also known as Nick Patel, is a resident of the State of Florida. Defendant Patel holds
various offices with the Corporate Defendants, including Registered Agent for the Plant City
Defendant, Registered Agent for St. Pete-Bay Pines Defendant#1, Vice President of the St.
Pete-34th Street Defendant, and Registered Agent of the St. Pete-34th Street Defendant. (See
DE 1 at ¶18, 19, 54 and Compl. Ex. H, J, L.)
10.
Defendant THANH HAO VAN VO - Defendant Thanh Hao Van Vo
(“Defendant Vo”), who is also known as Howie Vo, is a resident of the State of Florida.
Defendant Vo holds various offices with the various corporate defendants, including
Registered Agent for Brandon Defendant #2, President of the St. Pete-34th Street Defendant
(See DE 1 at ¶¶ 20, 21, 54 and at Compl. Ex. F, L).
11.
Defendant DUNG CAO - Defendant Dung Cao (“Defendant Cao”), is a
resident of the State of Florida. Defendant Cao holds various offices with the Corporate
Defendants, including President of Brandon Defendant #1, and Manager of the Plant City
Defendant (See DE 1 at ¶¶ 23, 24, 25 and Compl. Ex. E, H.)
12.
Defendant Patel and Defendant Vo are the owners and operators of the
“Brandon Hometown Buffet,” “Plant City Hometown Buffet,” and the two “St. Pete
Hometown Buffet” restaurants. (DE 1 at ¶54 and Compl. Ex. N; Affidavit of John M.
Hemenway.) In addition, Defendant Cao is the operator of the Plant City Hometown Buffet
(DE 1 at ¶24).
13.
The Corporate Defendants and Individual Defendants are all residents of
Florida or legal entities organized under the laws of the state of Florida, and all Corporate
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Defendants and Individual Defendants are residents of and conduct business operations in the
state of Florida.
Accordingly, this Court accordingly has personal jurisdiction over
Corporate Defendants and Individual Defendants.
14.
In August 2010, Plaintiffs became aware of the infringing location “Brandon
Hometown Buffet” when Plaintiffs’ customer service department received a complaint
concerning the quality of the restaurant operated by the Brandon Defendants.
When
Plaintiffs’ customer service department discovered that Plaintiffs did not operate any
restaurants in the Brandon area, the customer service department referred the matter to
Plaintiffs’ corporate headquarters.
Plaintiffs investigated further and discovered the
existence of both the Brandon Defendants, the Plant City Defendant, as well as the Individual
Defendants. Plaintiffs subsequently communicated directly to both the Brandon Defendants
the Plant City Defendant via mail, with multiple letters addressed to the Brandon Defendants,
the Plant City Defendants and to the attention of the Individual Defendants requiring that
each cease and desist their infringement of Buffets’ Registered Marks. Neither the Brandon
Defendant nor the Plant City Defendant, nor any of the Individual Defendants, responded to
or complied with Plaintiffs’ demands. (See DE 1 at ¶¶ 41-44, 50-51 at Compl. Ex. Q, R, S;
Affidavit of Scott E. Irwin)
15.
In December, 2010, Plaintiffs became aware of the St. Pete-Bay Pines
Defendants, operated by Individual Defendants Patel and Vo.
The St. Pete-Bay Pines
Defendants opened their location on or about October 17, 2010. The Individual Defendants
Patel and Vo were aware, by virtue of their operation of the Brandon location and the Plant
City location, had notice concerning the infringement of Buffets’ Registered Marks.
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According to its Internet presence on restaurant review websites, the St. Pete-Bay Pines
Defendant erodes Plaintiffs’ valuable goodwill and the value of Buffets’ Registered Marks.
(See DE 1 at ¶¶ 48, 50, 51, 53-57; and Affidavit of Scott E. Irwin)
16.
Plaintiffs also became aware of the St. Pete-34th Street Defendant in
December 2010.
The St. Pete-34th Street Defendant opened its location on or about
November 2, 2010. The Individual Defendants Patel and Vo were aware, of by virtue of
their operation of the Brandon location and the Plant City location, and had notice
concerning the infringement of Buffets’ Registered Marks.
According to its Internet
presence on restaurant review websites, the St. Pete-34th Street Defendant continues to erode
Plaintiffs’ valuable goodwill and the value of Buffets’ Registered Marks. (See DE 1 at ¶¶
49-51, 53-57; and Affidavit of Scott E. Irwin)
17.
Individual Defendants Patel, Vo, and Cao, continued to form business entities,
seek permanent food service licenses, and open and operate additional restaurants using
names that infringe upon Buffets’ Registered Marks and which interfere with Plaintiffs’
goodwill associated with their registered marks. Specifically, the principals of the St. Pete34th Street location have represented that they intend to open two additional HomeTown
Buffet locations in the St. Petersburg area. (See DE 1 at ¶¶ 53-57 and at Compl. Ex. N;
Affidavit of John M. Hemenway)
18.
In February 2011, prior to the hearing on Plaintiffs’ motion for permanent
injunction, Defendant Cao contacted Plaintiffs’ counsel by telephone stating the restaurant
name for the Plant City location would be changed. Defendant Cao did not participate in the
hearing and a Clerk’s Default was entered on March 1, 2011. After entry of the Default,
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Defendant Cao again telephoned Plaintiffs’ counsel to state the restaurant name for the Plant
City location had been changed. (See Affidavit of Kelly D. Haywood)
19.
In March 2011, following entry of the Clerk’s default, Defendant Vo
contacted Plaintiffs’ counsel via mail claiming that restaurant names would be changed. No
listing of the name change was noted in the correspondence. (See Affidavit of Kelly D.
Haywood)
20.
Due to Plaintiffs’ efforts, the names HomeTown® and HomeTown Buffet®
have become well-known throughout the country as brand names that stand for quality,
convenience, and cleanliness in connection with restaurant services. The areas of Pinellas
County, Hillsborough County and the I-4 corridor are populated, especially in the winter,
with part-time residents, retirees, and vacationing visitors who are familiar with the
HomeTown Buffet restaurants in southeast Florida and other parts of the country, and the
existence of Defendants’ restaurants damages Plaintiffs’ brand as a result of the transient
and/or temporary resident population that Defendants’ restaurants serve.
21.
Defendants have eroded Plaintiffs’ hard-earned reputation and goodwill
through their infringement of Buffets’ Registered Marks in the I-4 corridor. Defendants
operation of locations using Infringing Names, and advertising using the Hometown Buffet
name, interfere with and erode the goodwill associated with Buffets’ Registered Marks (See
DE 1 at ¶¶ 60-73.)
22.
On January 6, 2011, Plaintiffs filed a Verified Complaint with this Court
against Defendants, alleging six claims: (1) trademark infringement; 15 U.S.C. § 1051, et
seq.; (2) federal unfair competition; 15 U.S.C. § 1125(a); (3) false designation of origin under
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the Lanham Act; (4) misappropriation of goodwill; (5) false, misleading, deceptive, and
unfair business practices in violation of Section 501.201, et seq., Florida Statutes; and (6)
conversion. Plaintiffs attached twenty-three exhibits, labeled A through W in support of their
Verified Complaint. Plaintiffs also sought a temporary restraining order on an emergency, ex
parte, basis. Plaintiffs attached eleven exhibits in support of the Motion for Temporary
Restraining Order (“Motion for TRO”).
23.
On January 19, 2011, Plaintiffs filed their Notice of Compliance with this
Court’s Order [DE 7], requiring that all defendants be served with this Court’s Order as well
as the Verified Complaint (DE 1), the Motion for TRO (DE 2), and the Court’s Order
denying a temporary restraining order (DE 4). A hearing on the Motion for TRO, now
converted to Motion for Preliminary Injunction, was held on February 8, 2011.
24.
Corporate Defendants and Individual Defendants were served in the Verified
Complaint and Motion for TRO and executed Returns of Service were filed with the Court
[DE 10, 11, 13, 14, 15, 21, 23, 24].
25.
On March 1, 2011, the Clerk of the Court entered a Default against Corporate
Defendants and Individual Defendants [DE 40, 41, 42, 43, 44, 45, 46, 47], who are eight of
the remaining eleven defendants.
26.
On March 7, 2011, after issuing a Report and Recommendation [DE 31], this
Court entered an Order, including Corporate Defendants and Individual Defendants, that
preliminarily enjoined infringement on Plaintiffs’ Registered Marks [DE 48]. Plaintiffs duly
paid the cash bond as required by the Court’s Order [DE 49].
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27.
This Court finds that Plaintiffs own the superior rights in the Buffets’
Registered Marks, and the unauthorized use of Buffets’ Registered Marks by the Corporate
and Individual Defendants cause customer confusion as to the source, origin, or affiliation of
services provided by the Corporate Defendants and Individual Defendants.
28.
Plaintiffs’ have established a prima facie case against the Corporate
Defendants and Individual Defendants of infringement of Buffets’ Registered Marks, in
violation of 15 U.S.C. § 1051, et. seq. Specifically, (1) Plaintiffs hold certificates of federal
registration for their Registered Marks; (2) Defendants use confusingly similar marks; (3)
there is a high likelihood of consumer confusion; (4) consumers have been confused; (4)
Plaintiffs are suffering irreparable injury by Defendants’ infringement. A right to injunctive
relief is expressly provided by 15 U.S.C. § 1116(a). See Dunkin’ Donuts Franchised Rests.,
LLC v. D & D Donuts, Inc., 566 F.Supp. 2d, 1350, 1360 (M.D. Fla. 2008) (citing Dieter v. B
& H Indus. of Southwest Fla., Inc., 880 F.2d 322, 326 (11th Cir. 1989)).
29.
Plaintiffs have also established a prima facie case of false designation of
origin under the Lanham Act, 15 U.S.C. §1125(a) and that Corporate Defendants and
Individual Defendants have engaged in federal unfair competition. Lanham Act § 43(a)
covers traditional cases of infringement in interstate commerce of trademarks, service marks,
trade dress, and trade names as well as other forms of false advertising and deceptive
conduct. The right to injunctive relief provided in 15 U.S.C. § 1116(a) applies to § 43(a)
claims as well as claims of infringement of registered marks. See Babbit Elecs., Inc. v.
Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir. 1994) (citing Marathon Mfg. Co. v. Enerlite
Prods. Corp., 767 F.2d 214, 217 (5th Cir. 1985)).
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30.
Plaintiffs have also established a pima facie case of both a Federal and Florida
deceptive and unfair trade practices cause of action against Corporate Defendants and
Individual Defendants because: (1) Defendants engaged in false, misleading, and deceptive
actions in misrepresenting that their restaurants were entitled to use Buffets’ Registered
Marks; (2) Defendants’ false, misleading, and deceptive actions violated and continue to
violate 15 U.S.C. § 1125(a), Federal Unfair Competition and FDUTPA, § 501.201, et seq.,
Fla. Stat.; and (4) as a result of such activities, Plaintiffs have suffered and continue to suffer
irreparable harm.
31.
In defaulting, the Corporate Defendants and the Individual Defendants admit
the Plaintiffs’ well-pleaded allegation of fact. Petmed Express, Inc. v. Medpets.com, Inc.,
336 F.Supp. 2d 1213, 1217 (S.D. Fla. 2004); Buchanan v. Bowman, 820 F.2d 359 (11th Cir.
1987). The undisputed facts establish the counts set forth in Plaintiffs’ Verified Complaint.
32.
The Lanham Act authorizes injunctive relief to protect against infringement,
dilution and misuse of Buffets’ Registered Marks. Under the statute, if Plaintiffs succeed on
the merits of their claims and if the equities favor injunctive relief, then Plaintiffs are entitled
to a permanent injunction. See 15 U.S.C. § 1116(a); See PetMed Express, Inc., 336 F.Supp.
2d at 1223.
The Lanham Act permits issuance of injunctive relief to prevent future harm.
Proof of future harm is not required where defendants have infringed on a registered mark.
See Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135-36 (9th Cir. 1986); Vuitton
Et Fils, S.A. v. Crown Handbags, 492 F. Supp. 1071, 1077 (S.D.N.Y. 1979) ("mere
possibility of infringement is sufficient to warrant a permanent injunction"), aff'd, 622 F.2d
577(2d Cir. 1980). Plaintiffs are entitled to a permanent injunction based on the following:
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a.
As set forth in Plaintiff’s Verified Complaint, the names that
Defendants initially used for their restaurant businesses violate Plaintiffs’ rights in
their federally registered trademarks, including “HomeTown®” and “HomeTown
Buffet®” for restaurant services. “In trademark infringement actions, injunctive relief
is appropriate because it is generally recognized that 1) there is not an adequate
remedy at law to redress infringement and (2) infringement by its nature causes
irreparable harm.” Tally-Ho, Inc. v. Coast Community College. Dist., 889 F.2d 1018,
1029 (11th Cir. 1989). The owner of a federally registered service mark enjoys the
unlimited right to use the mark nationwide, and federal registration affords the
registrant priority over all future users of confusingly similar marks.
Tana v.
Dantanna’s, 611 F.3d 767 (11th Cir. 2010).
b.
Defendants’ Infringing Names essentially adopted Buffets’ Registered
Marks in their entireties and merely added descriptive geographic designations. The
addition of a geographically descriptive word or phrase does not avoid confusion with
a senior mark. Trump Plaza of Palm Beaches Condominium Ass’n, Inc. v. Rosenthal,
2009 WL 1812743, (S.D. Fla. 2009) (citing Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d
636 (D.C. Cir. 1982) (where registrant owns exclusive rights to mark, second comer
cannot gain rights in substantially same mark by merely adding geographic
identifier)).
c.
Corporate Defendants and Individual Defendants deliberately and
willfully used the Infringing Marks for selling goods and services substantially
similar to Plaintiffs’ goods and services in order to trade upon the reputation and
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goodwill Plaintiffs have established in their Registered Marks. Further, Corporate
Defendants and Individual Defendants continued to use Infringing Marks even after
receiving Plaintiffs’ written demands.
d.
Plaintiffs suffer irreparable harm through disruption of their business
operations, damage to their goodwill, and/or saturation of the I-4 corridor market with
advertising featuring the Infringing Names. Defendants’ poor reputation and negative
reviews will negatively affect Plaintiffs’ ability to pursue business opportunities in
this market area. These harms will be severe and irreparable. See Southeastern
Mechanical Services, Inc. v. Brody, No. 8:08-CV-1151-T-30EAJ, 2008 WL 4613046
at *15 (M.D. Fla. Oct. 15, 2008) (“The loss of customers and goodwill is an
irreparable injury and is difficult to measure.”); see also, e.g., American Television
and Communications Corp. v. Floken, Ltd., 629 F. Supp. 1462, 1472 (11th Cir. 1986)
(holding that injury to commercial reputation and interference with business can
constitute irreparable injury).
e.
Plaintiffs have well-founded fears that Individual Defendants Vo,
Patel, and Cao will continue to form business entities, seek permanent food service
licenses, and open and operate additional restaurants using names that infringe upon
Buffets’ Registered Marks and which interfere with Plaintiffs’ goodwill associated
with their registered marks. The harm likely to be suffered by Plaintiffs as a result of
continued misconduct is not readily calculable in terms of concrete damages.
Without injunctive relief, Plaintiffs have no adequate legal remedy for the
infringement on Plaintiffs’ Registered Marks. See Westin v. McDaniel, 760 F. Supp.
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1563, 1569 (11th Cir. 1991). The Individual Defendants are personally liable for
Lanham Act violations because they actively and knowingly cause the infringement.
See Chanel, Inc. v. Italian Activewear of Florida, Inc., 931 F.2d 1472, 1477 (11th Cir.
1991); Rolex Watch U.S.A., Inc. v. Bonney, 546 F.Supp. 2d 1304, 1306 (M.D. Fla.
2008).
f.
Even if one or more of the Corporate Defendants or Individual
Defendants have indicated a willingness to change the name of a restaurant, any
change would have occurred not after Plaintiffs’ repeated written notifications of use
of Infringing Names, but only after Plaintiffs filed the instant suit. As the Corporate
Defendants and Individual Defendants have not participated in the case, Plaintiffs
cannot be assured that infringement on Buffets’ Registered Marks will not occur in
the future.
g.
Corporate Defendants and Individual Defendants, as subsequent users
of a mark, have a duty to adopt a mark that does not infringe existing marks such as
Buffets’ Registered Marks. Advantus Capital Mgmt. v. Aetna, Inc., 2006 U.S. Dist.
LEXIS 77448, 81 U.S.P.Q.2d (BNA) 1743 (D. Minn. 2006) (“One entering a field
already occupied by another has a duty to select a trademark that will avoid
confusion.”). The permanent injunction will thus impose on Defendants no greater
obligation than what is required of them by law.
h.
Especially because of the nature of the Individual Defendants Patel,
Vo, and Cao’s systematic plan of expansion, the facts of this case weigh strongly in
favor of issuing injunctive relief. Eleventh Circuit case law recognizes that the public
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interest relevant to the issuance of an injunction in trademark cases is the public’s
interest in avoiding unnecessary confusion. Angel Flight of Ga., Inc. v. Angel Flight
Am., Inc., 522 F.3d 1200 (11th Cir. 2008), citing Davidoff & CIE, S.A. v. PLD Intern.
Corp., 263 F.3d 1297, 1304 (11th Cir. 2001) (“[T]he public interest is served by
preventing consumer confusion in the marketplace.”); SEC v. Asset Recovery &
Mgmt. Trust, S.A., 340 F. Supp. 2d 1305, 1311 (M.D. Ala. 2004) (“It is in the public
interest to protect against fraud and to make victims of fraud whole, while preventing
wrongdoers from benefiting from their deceit”).
33.
Because Federal law and Florida law expressly authorizes injunctive relief to
enjoin (1) trademark infringement in violation of 15 U.S.C. § 1051, et. seq., (2) federal unfair
competition and false designation of origin in violation of the Lanham Act, 15 U.S.C.
§ 1125(a), and (3) deceptive and unfair trade practices in violation of both 15 U.S.C.
§ 1125(a), Federal Unfair Competition and FDUTPA, § 501.201, et seq., Fla. Stat., it is
appropriate for the Court to grant permanent injunctive relief.
34.
Plaintiffs’ also seek an award of attorneys fees. Pursuant to 15 U.S.C. §
1117(a), Defendants intentional infringement on Buffets’ Registered Marks entitles
Plaintiffs’ to recover reasonable attorneys fees and costs. The Lanham Act at § 1117(a)
provides for the award of attorneys fees and costs in exceptional cases for violations of (1)
section 1051, et. seq., trademark infringement, (2) section 1125(a), false designation of
origin; and (3) section 1125(a) federal unfair competition.
The Eleventh Circuit has
described exceptional cases and those cases where defendants have engaged in malicious,
15
fraudulent, deliberate, or willful conduct. Burger King Corp. v. Pilgrim’s Pride Corp., 15
F.3d 166, 168 (11th Cir. 1994).
35.
In this case, the Corporate Defendants and Individual Defendants willful,
deliberate and knowing use of the Infringing Marks entitle Plaintiffs to an award of attorneys
fees. By default, the Corporate Defendants and Individual Defendants admitted Plaintiffs’
well-pled allegations, including Plaintiffs’ allegations that each deliberately and willfully
used the Infringing Marks for selling goods and services substantially similar to Plaintiffs’
goods and services in order to trade upon the reputation and goodwill Plaintiffs have
established in their Registered Marks (See DE 1 at ¶ 84).
36.
Further, the Corporate Defendants and Individual Defendants continued to
use Infringing Marks even after receiving Plaintiffs’ written demands that the infringing
behavior cease, acknowledged that continued use in their advertising via an interview to the
local press, and opened additional locations using Infringing Names after having received
Plaintiffs’ written demands (See DE 1 at ¶¶ 53, 54). In addition, the Corporate Defendants
and Individual Defendants failed to respond to Plaintiffs’ Verified Complaint and a clerk’s
default was entered against each. See PetMed Express, Inc. v. Medpets.com, Inc., 336
F.Supp. 2d 1213, 1217 (S.D. Fla. 2004) (holding that conduct was willful because defendant
(1) intended to confuse the public through the use of confusingly similar mark, (2) continued
to use the mark even after notification of infringement on a registered mark, and (3) default
created an inference of willfulness)
37.
The facts alleged by Plaintiffs demonstrate intentional conduct and bad faith
supporting the default judgment requested herein on Plaintiffs’ Lanham Act claims. The
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granting of a default judgment in this case allows Plaintiffs the right under the Lanham Act to
recover their attorneys fees on all claims advanced in the Verified Complaint, which all
involve a common set of facts and which are premised on related legal theories.
Accordingly, IT IS HEREBY:
ORDERED AND ADJUDGED that Plaintiffs’ Motion for Default Judgment is
GRANTED and that a Permanent Injunction is Ordered, and that Plaintiffs’ are entitled to an
award of attorneys fees, as follows:
1. Permanent Injunction
Corporate Defendants LVDC II INC.; BRANDON HOMETOWN BUFFET, LLC;
LVDC III LLC; TVNP, LLC; and TVNP II LLC, their officers, directors, employees,
representatives, agents, subsidiaries, and all persons (including corporations, entities, and/or
trusts) in active concert or participation with any of them; and individual Defendants
KINCHAT PATEL, THANH HAO VAN VO, and DUNG CAO, their employees,
representatives, agents, servants, attorneys, and all persons who act in privity or participation
with any of them are HEREBY ENJOINED FROM:
a.
Advertising or operating any restaurant or other business under the
Infringing Names or any other name confusingly similar to Buffets’
Registered Marks;
b.
Using signage depicting the Infringing Names or any other name
confusingly similar to Buffets’ Registered Marks;
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c.
Opening additional restaurant locations using the Infringing Names or
any other name confusingly similar to Buffets’ Registered Marks;
d.
Directly or indirectly infringing Buffets’ Registered Marks;
e.
Directly or indirectly using Buffets’ Registered Marks, or any mark
phonetically or otherwise substantially or confusingly similar to
Buffets’ Registered Marks, in connection with the offer and sale of
restaurant services or related products and services; and
f.
Engaging in further false, misleading, or deceptive practices, including
misrepresentations, pursuant to Section 501.201, et seq., Florida
Statutes; and
in addition, Corporate Defendants LVDC II INC.; BRANDON HOMETOWN BUFFET, LLC;
LVDC III LLC; TVNP, LLC; and TVNP II LLC, their officers, directors, employees,
representatives, agents, subsidiaries, and all persons (including corporations, entities, and/or
trusts) in active concert or participation with any of them; and individual Defendants
KINCHAT PATEL, THANH HAO VAN VO, and DUNG CAO, their employees,
representatives, agents, servants, attorneys, and all persons who act in privity or participation
with any of them are HEREBY ORDERED TO:
g. Destroy Defendants’ counterfeit or infringing products bearing the
Plaintiffs’ marks.
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2. Attorneys Fees
The Court retains jurisdiction over the Corporate Defendants and Individual
Defendants to award attorneys fees and costs upon proper Motion pursuant to Local Rule
4.18 and Rule 54, Fed.R.Civ.P.
DONE and ORDERED in Tampa, Florida on August 16, 2011.
Copies to: All Counsel of Record
S:\Odd\2011\11-cv-35 motion 54.doc
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