AFFCO New Zealand, Ltd. v. Am. Fine Foods Corp.
| Decision Date | 20 December 2012 |
| Docket Number | CASE NO. 12-21325-CIV-KING |
| Parties | AFFCO NEW ZEALAND, LTD, a foreign corporation, Plaintiff, v. AMERICAN FINE FOODS CORP., a U.S. corporation, Defendant. |
| Court | U.S. District Court — Southern District of Florida |
THIS MATTER comes before the Court upon Defendant's Motion for Summary Judgment (DE #25), filed July 31, 2012. Therein, Defendant seeks summary judgment on all four counts in Plaintiff's Complaint (DE #1). The Court is fully briefed on the matter.1 Upon careful consideration of the record and the briefings, the Court finds that Defendant's Motion should be granted as to Counts II and IV and denied as to Counts I and III.
This is an action for breach of contract arising from an agreement the parties entered into during a trademark opposition proceeding. Plaintiff AFFCO New ZealandLtd. ("AFFCO"), a New Zealand corporation, has exported meat and meat products since the early 1900s and has been selling lamb, mutton, and beef in Saudi Arabia for three decades. Since the late 1980s, Defendant American Fine Foods Corp. ("American"), a New York corporation with its principal place of business in Florida, has sold a variety of food products overseas, including canned fish and chicken in Saudi Arabia. The following facts are undisputed.2
On September 24, 2002, American filed with the United States Patent & Trademark Office ("USPTO") U.S. Trademark Application No. 76/463,007 for the mark "AFFCO & Design." The application sought protection for use of the mark in connection with services and export services related to certain food products.3 The application alleged that American had used the mark for services related to the export of food products since at least 1988. AFFCO, which owned the trademark "AFFCO"4 in connection with "meat and meat products, processed meat, beef jerky and meat balls" opposed the application. To settle the opposition, AFFCO and American entered into an agreement—known as the Undertaking—on January 10, 2006.
In the Undertaking, American expressly agreed to exclude meat, fowl, or fish products from its services and to amend Application No. 76/463,007 accordingly.Additionally, American agreed, in Paragraph E(3)(iv), that "no later than January 23, 2006" it would amend its foreign applications and registrations in countries where AFFCO held a valid mark. Those territories, identified in Exhibit H to the Undertaking, included all countries in North America, Europe, Russia, Northern Asia, Southeast Asia, and the South Pacific Islands, and also New Zealand, the United Arab Emirates, Jordan, and Saudi Arabia. The Undertaking further compelled American to cease all use of the mark AFFCO in those territories, Paragraph E(4); to "never in the future distribute, market or sell meat, fowl or fish" products in those territories and to destroy all nonconforming packaging and advertising, Paragraph E(5); to "never in the future use or register the mark AFFCO" in the United States or any Exhibit H territory, Paragraph E(6); and "not to challenge or hinder AFFCO's use, continuing use; or registration of the mark AFFCO (either by itself or in conjunction with a logo) in the Middle East in relation to meat, fowl or fish, or products containing meat, fowl or fish." Paragraph 14. (DE #6-1). In return, and upon American amending its federal application, AFFCO promised to drop its opposition before the USPTO Trial and Appeal Board. In the event the agreement was breached, the Undertaking indicated that Florida law would govern.
Pursuant to the Undertaking, AFFCO withdrew its opposition, and, on March 30, 2006, the USPTO issued U.S. Trademark Registration No. 3,097,027 to "American Fine Food Corp., United States Individual." After the required five years of use, American filed Combined Declarations of Use and Incontestability on February 28, 2012. The United States Patent & Trademark Office acknowledged and accepted the declarations on March 30, 2012.
American, however, did not amend its Saudi Arabian Trademark Registration No. 671-12 for goods in International Class 29.5 Also, though American's counsel asserted in a March 13, 2006 letter to AFFCO's counsel that American had "destroyed of [sic] all packaging, advertising and promotional materials of any kind bearing the trademark AFFCO for meat and meat products" (DE #42-9), American's distributor in Saudi Arabia continued to sell meat and meat products there under the AFFCO mark.
On September 20, 2008, AFFCO filed an application in Saudi Arabia to register AFFCO as a trademark for meat and meat products, milk and other dairy products, oils, and fats. AFFCO's application was rejected by the Saudi Arabian trademark office on February 2, 2009 because of American's existing registration of the AFFCO mark. AFFCO alleges that this date was the first time it learned that American had not amended its Saudi Arabian trademark registration as required by the Undertaking. Previously, AFFCO "assumed" that American had amended its applications and registrations. (PI. SOF, DE #41).
AFFCO unsuccessfully sought relief in Saudi Arabia. Then, on November 16, 2010, AFFCO sued American in the Southern District of Florida, alleging causes of action for trademark infringement, breach of contract, and specific performance. See AFFCO New Zealand Ltd. v. American Fine Food Corp., No. 10-24105-CIV-KING ("Dismissed Action"). Thirteen months later, AFFCO sought leave to amend that complaint by adding a new trademark cancellation claim against American and tosupplement facts regarding the trademark infringement claim to plead around issues raised in American's motion for partial summary judgment. On January 26, 2012, the Court denied AFFCO's motion as untimely (Dismissed Action, DE #24) and, on February 23, 2012, also denied AFFCO's motion to extend all scheduling deadlines (Dismissed Action, DE #28). On April 2, after the March 30 deadline to file the pre-trial stipulation passed without the parties' compliance, the Court dismissed the case without prejudice. (Dismissed Action, DE #30).
AFFCO filed the above-styled action four days later, on April 6, 2012, and amended its complaint once on May 8, 2012. Plaintiff's Amended Complaint (Am. Compl., DE #6) pleads four claims against American: breach of contract (Count I), specific performance pursuant to the Undertaking (Count II), declaration that American no right of action in Saudi Arabia (Count III), and cancellation of U.S. Trademark Registration No. 3,097,027 (Count IV). Defendant American seeks summary judgment on all counts.
Summary judgment is appropriate where the pleadings and supporting materials establish that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses." Celotex, 477 U.S. at 323-24.
The moving party bears the burden of pointing to the part of the record that showsthe absence of a genuine issue of material fact. See Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970); Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir. 1997). Once the moving party establishes the absence of a genuine issue of material fact, the burden shifts to the nonmoving party to go beyond the pleadings and designate "specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324; see also Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477 (11th Cir. 1991) ().
"Summary judgment may be inappropriate even where the parties agree on the basic facts, but disagree about the factual inferences that should be drawn from these facts." Warrior Tombigbee Transp. Co., Inc. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir. 1983). On a motion for summary judgment, the court must view the evidence and resolve all inferences in the light most favorable to the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). However, a mere scintilla of evidence in support of the nonmoving party's position is insufficient to defeat a motion for summary judgment. See id. at 252. If the evidence offered by the nonmoving party is merely colorable or is not significantly probative, summary judgment is proper. See id. at 249-50.
Defendant's Motion for Summary Judgment makes three primary arguments. First, Defendant claims that Counts I, II, and III of Plaintiff s Complaint are barred by the applicable statutes of limitations. Second, Defendant argues that the Court lacks subjectmatter jurisdiction over Count III and, alternatively, should not adjudicate Plaintiff's claim based on comity and equity. Third, Defendant alleges that Defendant's U.S.-registered mark has obtained incontestable status and thus Plaintiff cannot seek cancellation (Count IV). The Court addresses each argument in turn.
Counts I, II, and III each plead causes of action related to Defendant's alleged breach of the Undertaking. Count I seeks damages for breach of contract; Count II seeks specific performance against American; and Count III seeks a declaration of AFFCO's rights in Saudi Arabia under the agreement. The Florida Statutes expressly indicate that the limitations period is five years for a breach of contract claim, Fla. Stat. § 95.11(2)(b), and one year for specific performance against a party to a contract, Fla. Stat. § 95.1 l(5)(a). Because AFFCO's request for declaratory relief seeks a declaration of its rights under the Undertaking, there is a five-year statute of limitations for this claim.6
The statute of limitations for...
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