Top Tracking System LLC v. Castellanos

CourtDistrict Court, S.D. Florida
DecidedFebruary 13, 2025
Docket1:23-cv-24891
StatusUnknown

This text of Top Tracking System LLC v. Castellanos (Top Tracking System LLC v. Castellanos) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Top Tracking System LLC v. Castellanos, (S.D. Fla. 2025).

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Case No. 1:23-CV-24891-JB

KVC ESTATES IV, LLC, a Florida limited liability company, and CARLOS A. HERRERA, an individual

Plaintiffs,

v.

PEDRO FIGUEREDO LOPEZ, an individual, ALEJANDRO RUBINOS, an individual, and LUIS RAVELO, an individual

Defendants. __________________________________/

REPORT AND RECOMMENDATIONS THIS CAUSE is before the Court upon Defendants’ Motion to Dismiss Plaintiffs’ Complaint. (ECF No. 80). Plaintiffs filed a Response (ECF No. 82), to which Defendants filed a Reply (ECF No. 96). This matter was referred to the undersigned United States Magistrate Judge, pursuant to 28 U.S.C. § 636(b)(1) and the Magistrate Judge Rules of the Local Rules of the Southern District of Florida, for a report and recommendation. (ECF No. 86). Having considered the Motion, Response, Reply, and being otherwise fully advised in the premises, the undersigned respectfully RECOMMENDS that the Motion be GRANTED in part and DENIED in part for the reasons stated below. I. BACKGROUND This is an action pertaining to the trademark rights and use of the “TOP TRACKING” mark (the “Mark”). Plaintiffs KVC Estates IV, LLC (“KVC”) and Carlos Herrera instituted this suit against Herrera’s business partners, Pedro Figueredo Lopez, Alejandro Rubinos, and Luis Ravelo—collectively, the Defendants—alleging numerous violations of state and federal law. (ECF No. 1).1 Herrera generally alleges that he created the brand “Top Tracking,” in 2016, after years in the trucking industry. He claims to then have formed the company Top Tracking System, LLC, to

which he licensed use of the mark for its business. He further alleges that, as the sole officer of the company with experience in the trucking business, the company’s client base was formed from his personal connections and relationships; as a result, he alleges, the “public’s association with the ‘Top Tracking’ brand is inextricably intertwined with his personal identity, reputation, and expertise.” (ECF No. 1 at ¶ 14). Accordingly, he claims to be the sole owner of the TOP TRACKING mark, in his individual capacity (as opposed to in his capacity as an officer of Top Tracking Systems). Herrera similarly alleges that he “has continuously used the ‘TOP TRACKING’ Mark in connection with business consulting services” in the relevant field of vehicle tracking, throughout the United States. (Id. at ¶ 17). The Complaint alleges that Plaintiffs have marketed goods and

services under the TOP TRACKING mark, which has acquired substantial goodwill and recognition by the public as a symbol of and assurance of the quality of Plaintiffs’ goods and services. (Id. at ¶¶ 17–21). In November of 2023, the members of Top Tracking System had a falling out and change in control, which led to this suit and the related suit filed by Top Tracking System against Herrera. Top Tracking System, which is not a party hereto, is owned by five individuals in equal shares: Herrera and Maria Castellanos (who is also not a named party) each own twenty percent, as do

1 The subject Complaint was filed in the related matter pending in this District, Case No. 1:24-cv-20012 (the “2024 Case”). The cases have since been consolidated into the present matter. For clarity of the record, citations to the Complaint and its exhibits at (ECF No. 1) refer to docket entry no. 1 of the 2024 Case’s docket. All other citations to docket entries herein correspond to the docket for the present matter. each of the three named Defendants, Figueredo, Rubinos, and Ravelo. (Id. at ¶ 22). The Complaint alleges that on November 1, 2023, the Defendants executed a “sham” consent agreement purporting to remove Herrera and Castellanos as managers, naming Figueredo as the company’s sole manager. (Id. at ¶ 25). The Complaint alleges a variety of facts to show that neither Rubinos

nor Ravelo in fact had voting power at the time the consent agreement was executed, which facts were known to Figueredo; yet under his new authority, it is alleged that he terminated Castellanos and Herrera’s employment with Top Tracking System and wrested control of the company from them. See (id. at ¶ 31). Herrera alleges here that Top Tracking System’s authority to use the TOP TRACKING Mark ended in November of 2023, when he assigned the rights to the Mark to a newly formed holding company, Plaintiff KVC Estates IV LLC. KVC filed a trademark application with the United States Patent & Trademark Office in November of 2023 to register “TOP TRACKING SYSTEM.” (ECF No. 1-2). Yet, the Complaint alleges that Defendants have continued to use the TOP TRACKING

mark. For example, it is alleged that the Defendants registered an infringing domain, “TOPTRACKING.COM,” created a website that replicates “the content of Plaintiff’s2 official website,” and created copies of the company’s social media accounts. (ECF No. 1 at ¶ 33). Plaintiffs claim that these actions have “misled consumers into believing that the infringing website and accounts are affiliated with or endorsed by Plaintiffs.” (Id. at ¶ 34). The Complaint claims that Defendants used the “infringing domain” to redirect customer activity, leading to a

2 This is one of several confusing uses of the term “plaintiff” or “plaintiffs” in the Complaint, which fails to meaningfully appreciate the separateness of Herrera individually from either Top Tracking System or his newly formed entity KVC. In this example, it appears that the allegedly infringing website mimics the content of Top Tracking System’s website, as the Complaint does not allege that either KVC or Herrera maintain an official website or social media accounts. disruption in services to customers, and confusion and concerns about the “legitimacy and security of the Plaintiffs’ goods/services.” (Id. at ¶ 37). On November 22, 2023, Plaintiffs and Castellanos sent a cease-and-desist letter to Defendants, claiming that KVC owns the trademark rights in TOP TRACKING SYSTEM and

demanding that Defendants cease use of the mark “in connection with the business” they stole from Herrera and Castellanos—that is, Top Tracking Systems. (ECF No. 1-8). Such use of the mark has created confusion among consumers, diverted customers away from Plaintiffs, created a false association between the infringing website and Plaintiffs’ goods and services, and caused irreparable financial and reputational harm to Plaintiffs. (ECF No. 1 at ¶¶ 42–43). Because Defendants have not ceased their use of the mark, Plaintiffs initiated the present suit for damages and injunctive relief. Plaintiffs assert claims for Trademark Infringement (Count 1) and Unfair Competition (Count 2) under the Lanham Act, 15 U.S.C. § 1125(a) et seq.; violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), Fla. Stat. § 501.204 et seq. (Count 3); Unfair

Competition (Count 4) and Trademark Infringement (Count 5) under Florida common law; and Violation of Anticybersquatting Consumer Protection Act (“ACPA”) (Count 6). See generally (ECF No. 1). Among other things, Plaintiffs seek to enjoin Defendants’ use of the Mark and damages resulting from its use. (Id. at 16–18). Defendants now move to dismiss the Complaint. (ECF No. 80). II. LEGAL STANDARD Federal Rule of Civil Procedure 8(a)(2) requires “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2).

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