Spliethoff Bevrachtingskantoor B.V. v. United Yacht Transport LLC

Filing 139

ORDER denying 122 Motion for Leave to File Amended Counterclaim. Signed by Judge Robert N. Scola, Jr. See attached document for full details. (eau)

Case 0:21-cv-61422-RNS Document 139 Entered on FLSD Docket 11/17/2022 Page 1 of 3

United States District Court
for the
Southern District of Florida
Spliethoff Bevrachtingskantoor
B.V., Plaintiff,
v.
United Yacht Transport LLC,
Defendant.

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Civil Action No. 21-61422-Civ-Scola
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Order Denying Motion to Amend
This matter is before the Court upon United Yacht Transport LLC’s
(“UYT”) motion for leave to amend its counterclaim (Mot., ECF No. 122), which
has been fully briefed. (ECF Nos. 122, 135, 137.) After careful consideration,
the Court denies the motion. (ECF No. 122.)
Before filing this motion, UYT moved the Court for summary judgment on
its counterclaim to cancel Plaintiff Spliethoff Bevrachtingskantoor B.V.’s
(“Spliethoff”) U.S. Trademark Registration No. 6,358,639. In that motion, UYT
argued for cancellation on the basis that Spliethoff’s application for the
trademark’s registration defrauded the U.S.P.T.O. twice—once in 2013 and
once more in 2021. However, UYT did not plead these fraud theories in its
countercomplaint, and it is well-settled that parties may not assert unpled
theories for relief on summary judgment. See, e.g., Cruz v. Advance Stores Co.,
Inc., 842 F. Supp. 2d 1356, 1360 (S.D. Fla. 2012) (Zloch, J.). To cure its
pleading defect, UYT filed the instant motion for leave to retroactively include
its fraud theories in its countercomplaint.
Federal Rule of Civil Procedure 15 gives the Court ample discretion in
ruling on a motion for leave to amend a pleading. “Although leave to amend
shall be freely given when justice so requires, a motion to amend may be
denied on numerous grounds such as undue delay, undue prejudice to the
defendants, and futility of the amendment.” Brewer-Giorgio v. Producers Video,
Inc., 216 F.3d 1281, 1284 (11th Cir. 2000) (cleaned up). Spliethoff argues that
the Court should deny the motion because the amendment would be futile.
The Court agrees. A proposed amendment is futile when the claim, as
amended, would still properly be dismissed. See Coventry First, LLC v. McCarty,
605 F.3d 865, 870 (11th Cir. 2010). UYT points to no record evidence that
suggests Spliethoff acted deceitfully either in 2013 or in 2021.
Concerning 2013, UYT purports to argue that Spliethoff’s predecessor-ininterest—Dockwise Yacht Transport LLC (“Dockwise LLC”)—fraudulently

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applied for a use-based trademark registration while not actually using the
mark in commerce. That theory would fail as a matter of law. It is undisputed
that from 2012 to 2013, two of Dockwise LLC’s vessels bore the mark as they
transported yachts to and from ports around the world while generating
millions in doing so. (ECF No. 94 ¶¶ 63-64; ECF No. 112 ¶¶ 63-64.) This, by
statutory definition, constitutes “use in commerce.” 15 U.S.C. § 1127.
Next, UYT’s 2021 fraud theory is based on its reading of 37 C.F.R.
§ 2.56(a), which requires applications for trademark registrations to include a
specimen of the relevant “mark as actually used in commerce on or in
connection with the goods or services identified.” 1 UYT reads this provision to
mean that “Spliethoff was required to show the Mark as ‘actually used,’ not as
it had been used seven years prior.” (ECF No. 137 at 3.)
To understand UYT’s position it is important to appreciate the dynamics
at play here. Spliethoff and UYT both claim the exclusive right to use the mark
UNITED YACHT TRANSPORT. Spliethoff’s predecessor-in-interest filed a usebased application before the U.S.P.T.O. to register that mark in 2013, but so
did UYT. The U.S.P.T.O. suspended the application filed by Spliethoff’s
predecessor when its predecessor initiated an opposition proceeding against
UYT’s competing application. Spliethoff took over that opposition proceeding
and won in 2021, thereby successfully blocking UYT’s application. Soon after,
Spliethoff asked the U.S.P.T.O. to un-suspend and adjudicate the application
originally filed by its predecessor but left appended to it a photograph of the
mark painted on its vessel’s sidewall that Spliethoff’s predecessor attached to
the application in 2013 to show the mark’s use in commerce. But Spliethoff
removed the mark from the vessel in 2014. Thus, says UYT, Spliethoff
committed fraud by not removing the photograph from the application in 2021.
UYT purports to rest on the current record to prove this fraud theory (see
Mot. 4), and the parties have already briefed it merits (see Def.’s MSJ 7-8, ECF
No. 97; Pl.’s Resp. 15-21, ECF No. 111), but the Court readily holds that
allowing the amendment would be a futile exercise. Proving fraud “requires a
purpose or intent to deceive the PTO in the application for the mark” to be
established by clear and convincing evidence. See Sovereign Military v. Florida
Priory of Knights, 702 F.3d 1279, 1289 (11th Cir. 2012).
UYT points to no record evidence to indicate that that Spliethoff acted
deceitfully. It only proffers its interpretation of regulations and a U.S.P.T.O

Similarly, 37 C.F.R. § 2.56(b)(2) requires the specimen of a service mark to “show the mark as
used in the sale of the services, including use in the performance or rendering of the services,
or in the advertising of the services.”
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form submitted in 2021, but argument alone cannot reasonably establish that
Spliethoff acted with an intent to deceive by clear and convincing evidence.
The regulation governing use-based trademark applications requires that
a mark be in use “as of the application filing date.” 37 C.F.R. § 2.34(a)(1). For
such registrations, an applicant may substitute the specimen accompanying
his application if he also submits “a verified statement that the substitute
specimen was in use in commerce at least as early as the filing date of the
application.” Id. at § 2.59(a) (emphasis added). Additionally, the 2021 form that
Spliethoff submitted to the U.S.P.T.O. required it to certify that: “the mark is in
use in commerce and was in use in commerce as of the application filing date.”
(ECF No. 122-2 at 18 (emphasis added).) It also required Spliethoff to certify
that the “originally submitted [specimens] was/were in use at least as early as
the filing date of the application[.]” (Id. at 19 (emphasis added).)
The application filing date here is August 18, 2013. (ECF No. 64-13.) And
filing dates are assigned to applications by the U.S.P.T.O.—not an applicant.
See TRADEMARK MANUAL OF EXAMINING PROCEDURE §§ 201, 202.
Thus, even assuming that UYT’s reading of Section 2.56(a) is reasonable
(i.e., requiring a specimen to reflect a mark’s present use), it would be equally
reasonable to read the regulations and form to only require applicants to
ensure an application’s representations as of the filing date. That is, indeed,
what Spliethoff suggests. (ECF No. 135 at 6.) Against this backdrop, the Court
concludes that Spliethoff may have reasonably understood it was not required
to substitute its application to reflect a specimen reflecting mark’s use in 2021.
Competing reasonable interpretations of guidelines, without more,
cannot amount to clear and convincing evidence of an intent to deceive. UYT’s
2021 fraud theory would fail on summary judgment and is thus futile.
UYT’s motion (ECF No. 122) is denied.
Done and ordered at Miami, Florida, on November 17, 2022.

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Robert N. Scola, Jr.
United States District Judge