American Cruise Lines v. HMS American Queen Steamboat - American Trademark Complaint PDF

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 1 of 62 PageID #: 2435
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
AMERICAN CRUISE LINES, INC.,
)
)
Plaintiff,
)
)
v.
)
)
HMS AMERICAN QUEEN STEAMBOAT
)
COMPANY LLC, and AMERICAN QUEEN )
STEAMBOAT OPERATING COMPANY,
)
LLC,
)
)
Defendants.
)
C.A. No. 13-324-RGA
FOURTH AMENDED COMPLAINT

Plaintiff American Cruise Lines, Inc. (Plaintiff or American Cruise Lines)
files this Fourth Amended Complaint for breaches of contract, trademark infringement, deceptive
trade practices, violation of the anti-cybersquatting act, and unfair competition against
Defendants HMS American Queen Steamboat Company LLC (Defendant HMS) and
American Queen Steamboat Operating Company, LLC (Defendant AQS). In support of its
complaint, Plaintiff states as follows:
INTRODUCTION
1.
The word American has been used for many years in association with
U.S. overnight passenger cruise ship services. American was used in the service mark
American Cruise Lines as early as 1974. Long ago American became distinctive in
association with overnight passenger cruise ship services through use of the service mark
American Cruise Lines.
2.
Recently, in late 2011, Defendants started advertising and using the word
American in their business services in connection with their overnight passenger cruise ship
services. Since Defendants arrived in the market, two things have happened: (a) Defendants
have intentionally traded off American Cruise Lines business and goodwill and are now
increasing their use of the word American to expand their trading off American Cruise Lines
business and goodwill; and (2) the public is confused because of the likelihood of confusion
deliberately created by Defendants.
Plaintiff brings the following causes of action:
3.
For Defendants breach of contract arising from (a) Defendants adoption
and use of the service mark AMERICAN QUEEN STEAMBOAT COMPANY in direct
competition with Plaintiffs overnight passenger cruise ship services in violation of the
agreement to cease using Great American Steamboat and derivatives thereof; (b) Defendants
adoption and use of, and depriving Plaintiff from using, certain internet domain names based on
Plaintiffs marks -- THE GREAT AMERICAN STEAMBOAT CRUISE, GREAT AMERICAN
STEAMBOAT COMPANY, and AMERICAN STEAMBOAT COMPANY (AMERICAN
STEAMBOAT marks):
greatamericansteamboatcompany.com,
greatamericansteamboatcompany.org,
greatamericansteamboatcompany.net,
greatamericansteamboatcompany.info, and
greatamericansteamboatcompany.biz;
(c) Defendants failure to take action to disassociate their cruise service business from the
American Steamboat marks.
4.
marks built around
For Defendants trademark infringement of following Plaintiffs registered

the word American that has become distinctive in association with
Plaintiffs overnight passenger cruise ship services (a) AMERICAN CRUISE LINES,
(b) AMERICAN STAR, AMERICAN GLORY, AMERICAN SPIRIT, and AMERICAN

EAGLE and (c) THE GREAT AMERICAN STEAMBOAT CRUISE. Defendants adoption and
use in commerce of the service mark American Queen Steamboat Company, and Defendants
other uses of the word American, in direct competition with Plaintiffs overnight passenger
cruise ship services is likely to cause confusion, mistake or deception, and further has caused
confusion mistake or deception as a result of such use by Defendants in violation of 15 U.S.C.
1114(1). In addition, Defendants infringing use of the AMERICAN CRUISE LINES and
AMERICAN EAGLE marks as adwords or as a paid search terms in nationwide advertising and
promotion in commerce of overnight cruise services is likely to cause confusion, mistake or
deception, and further, is causing actual confusion, mistake or deception in advertising over the
internet.
5.
For Defendants trademark infringement by using in commerce the
following Plaintiffs registered marks -- the QUEEN OF THE WEST, QUEEN OF THE
MISSISSIPPI, and MISSISSIPPI QUEEN that are associated with Plaintiffs overnight
passenger cruise ship services -- as adwords or as paid search terms in nationwide advertising
and promotion in commerce of overnight cruise services that is likely to cause confusion,
mistake or deception, and further, is causing actual confusion, mistake or deception in violation
of 15 U.S.C. 1114(1).
6.
For Defendants common law trademark infringement of unregistered
marks used by Plaintiff in the overnight passenger cruise ship services: AMERICA,
AMERICAN PRIDE, GREAT AMERICAN STEAMBOAT COMPANY, and AMERICAN
STEAMBOAT COMPANY. Defendants adoption and use of the service mark American Queen
Steamboat Company, and Defendants other uses of the word American, in direct competition
with Plaintiffs overnight passenger cruise ship services is likely to cause confusion, mistake or
deception, and further, has caused confusion, mistake or deception as a result of such use by
Defendants. In addition, Defendants use of the AMERICAN STEAMBOAT marks as adwords
or as paid search terms in nationwide advertising and promotion in commerce of overnight cruise
services is likely to cause confusion, mistake or deception, and further, is causing actual
confusion, mistake or deception.
7.
For Defendants false and misleading designations of origin and
descriptions causing confusion, mistake, and/or deception as to the affiliation or association of

Defendants cruise services with Plaintiffs overnight passenger cruise ship services using the
AMERICAN CRUISE LINES mark and Plaintiffs family of AMERICAN marks. Defendants
nationwide advertising and promotion misrepresents the nature, characteristics, and/or qualities
of Defendants services in violation of section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
8.
For Defendants violation of the federal anti-cybersquatting law by
registering, trafficking in, and using domain names that are identical or substantially similar to
Plaintiffs marks containing the word American that is distinctive in association with
American Cruise Lines and its overnight passenger cruise ship services.
9.
For Defendants deceptive practices and unfair competition under
Delaware Uniform Deceptive Trade Practice Act.

10.
For Defendants unfair competition under Delaware common law to the
extent Defendants conduct does not violate the Delaware Uniform Deceptive Trade Practice
Act and to the extent Delaware common law provides a remedy not available under the
Delaware Uniform Deceptive Trade Practice Act.
JURISDICTION AND VENUE

11.
This Court has subject matter jurisdiction over this action pursuant to
28 U.S.C. 1331, 1338(a), and 1338(b).

12.
This Court has jurisdiction over the related state law claims pursuant to
28 U.S.C. 1338(b) and 1367(a).

13.
On information and belief, Defendant HMS is subject to the personal
jurisdiction of this Court because it is organized under the laws of the State of Delaware.
14.
On information and belief, Defendant AQS is subject to the personal
jurisdiction of this Court because it is organized under the laws of the State of Delaware.
15.
Plaintiff and the Defendants in this suit also are subject to personal
jurisdiction in this Court by virtue of a Stipulation and Dismissal with Prejudice they filed in the
lawsuit styled as American Cruise Lines, Inc. v. HMS American Queen Steamboat Company LLC
et al., Civil Action No. 1:11-cv-00889-(JEI) (KW) (the Prior Suit), approved by this Court
February 22, 2012.
16.
Venue is proper under 28 U.S.C. 1391.

PARTIES
17.
Plaintiff, American Cruise Lines, is the leading travel company
specializing in overnight passenger cruise services along the inland and coastal waterways and
rivers of the United States. American Cruise Lines is a corporation organized under the laws of
Delaware with a principal place of business at 741 Boston Post Road, Suite 200, Guilford,
Connecticut 06437.
18.
American Cruise Lines offers cruises in the United States along more than
seventy-five (75) rivers in twenty-eight (28) states and on bays and other waterways in the
Eastern, Southeastern, and Northwest of the United States, including the coast and harbors of
5
Alaska. In advertising and promoting its overnight passenger cruise ship services, Plaintiff uses
its AMERICAN CRUISE LINES mark and its family of AMERICAN marks. Plaintiff advertises
and promotes its overnight passenger cruise ship services using its family of AMERICAN marks
-- AMERICAN CRUISE LINES, AMERICAN STAR, AMERICAN GLORY, AMERICAN
SPIRIT, AMERICAN EAGLE, AMERICA, AMERICAN PRIDE, THE GREAT AMERICAN
STEAMBOAT CRUISE, GREAT AMERICAN STEAMBOAT COMPANY, AMERICAN
STEAMBOAT COMPANY (AMERICAN marks).
19.
American Cruise Lines first began to operate cruises along Americas
rivers in April 2000, currently has eight (8) cruise ships, and plans to launch additional ships
over the next few years. American Cruise Line is senior in providing passenger cruise services in
the United States and in nationwide marketing and promotion of passenger cruise services.
20.
Beginning at least as early as 1974 the name American Cruise Lines was
used nationwide in marketing and advertising to indicate a source of overnight passenger cruise
ship services on the Mississippi River System and elsewhere, including in association with
overnight passenger cruise ship services. This company used American and America in its
passenger cruise business. Plaintiffs principal was a principal and the chief executive officer of
that company.
21.
On information and belief, Defendant HMS is a limited liability company
organized under the laws of Delaware with a principal place of business at 115 E. Market Street,
New Albany, Indiana 47150.
22.
On information and belief, Defendant AQS is a limited liability company
organized under the laws of Delaware with a principal place of business at 40 South Main Street,
21st Floor, Memphis, TN 38103.
23.
Defendants entered the passenger cruise services market in fall 2011. On
information and belief, Defendant AQS is owned by or affiliated with Defendant HMS. Prior to
changing its name pursuant to the Settlement Agreement (alleged and described in subsequent
paragraphs), Defendant AQS was named Great American Steamboat Company, LLC. On
information and belief, Defendant AQS licensed the Great American Steamboat Company
name from Defendant HMS. The two companies are believed now to do business together as the
American Queen Steamboat Company.
24.
Defendants purported to purchase the previously registered mark
AMERICAN QUEEN from the bankruptcy estate of the marks former owner in 2011 and
thereafter purchased a 1995-built paddlewheel riverboat named American Queen from the
United States Maritime Administration (MarAd). In 2012 Defendants began operation of the
American Queen on the Mississippi River offering overnight passenger cruising.
25.
Plaintiff, American Cruise Lines, operates two more recently built
paddlewheel riverboats on the Mississippi River offering overnight passenger cruising. Since
2012, Defendants have been direct competitors of American Cruise Lines in the overnight
passenger cruise ship services market in the United States.
26.
In 2009 American Cruise Lines, began marketing, and in 2010 began
operating, cruises on a recently refurbished paddlewheel riverboat on the Columbia River and
Snake River offering overnight passenger cruising, and American Cruise Lines will operate a
second riverboat on the Columbia River and Snake River this year. Defendants on or about May
22, 2013, announced that they have purchased a second overnight passenger paddlewheel
riverboat named Empress of the North from MarAd and plan to refurbish and operate on the
Columbia River and the Snake River offering overnight passenger cruising between Portland,
Oregon and Clarkson, Washington with the exact same ports of call as now used by Plaintiff.
Defendants have further announced that they plan to rename the American Empress.
Defendants have since purchased and refurbished the Empress of the North, changed its name
to American Empress and are offering overnight passenger cruising on the Columbia River
and Snake River at the exact same ports of call as Plaintiff. Defendants are marketing as direct
competitors of American Cruise Lines in the United States small ship overnight passenger
cruising market.
27.
Both American Cruise Lines and Defendants market their overnight
passenger cruise ship services in the United States primarily by direct mail, in magazines, to and
through travel agents, and on the Internet, in the same channels of commerce and both offer
information and make reservations by telephone. American Cruise Lines and Defendants are the
principal participants and prominent in the channels of commerce in the markets in which they
compete and will compete.
FACTS COMMON TO ALL COUNTS
PLAINTIFFS USE OF THE MARK AMERICAN CRUISE LINES AND AMERICAN MARKS
TO INDICATE A SOURCE OF CRUISE SERVICES
28.
Plaintiffs principal organized a company in 1973 named American
Cruise Lines, Inc. That company began advertising and marketing nationwide overnight
passenger cruise ship services under the name American Cruise Lines beginning at least as
early as 1974 and soon thereafter began providing cruise services under that name. The first
cruise services by American Cruise Lines used the name AMERICAN EAGLE. The company
also advertised cruise services using the name AMERICA.
29.
In the 1970s and 1980s American Cruise Lines marketed and advertised
nationwide its company and cruise services, and operated ships on the Mississippi River System,
other river systems, and along the East Coast of the United States.
30.
In November, 1988 the company then known as American Cruise Lines
filed a petition for bankruptcy. Soon thereafter, Plaintiff was organized as American Lines Ltd.
Approximately one month after the bankruptcy proceedings concluded, Plaintiffs name was
changed to American Cruise Lines, Inc. At all times during the pendency of the bankruptcy
proceeding, Plaintiffs principal intended to continue using the name American Cruise Lines
and names incorporating the term American and America in association with provision of
overnight passenger cruise ship services.
31.
Plaintiff has continued to market and advertise nationwide overnight
passenger cruise ship services on the Mississippi River System, other river systems and the
coasts of the United States under the service mark AMERICAN CRUISE LINES and its family
of AMERICAN marks.
AMERICAN CRUISE LINES AND THE FAMILY OF AMERICAN MARKS
32.
Since at least as early as 1999, American Cruise Lines has been
continuously using and developing the goodwill and prominence of its AMERICAN CRUISE
LINES mark in association with its family of AMERICAN marks in connection with overnight
passenger cruising on the inland and coastal waterways and rivers of the United States.
33.
Defendants selection and use of the AMERICAN QUEEN and American
Queen Steamboat Company in direct competition with American Cruise Lines overnight
passenger cruising services in the United States was intentionally designed to confuse and
deceive the public. Defendants intend to deceive and cause the public associate the
AMERICAN QUEEN and American Queen Steamboat Company marks with Plaintiff
overnight passenger cruise ship services advertised and provided by Plaintiff American Cruise
Lines using the AMERICAN CRUISE LINES registered mark and the other AMERICAN
marks, even though there is no connection or affiliation.
34.
Defendants selection and advertising of Defendants chosen new name of
American Empress for its paddlewheel riverboat Empress of the North is also intentionally
designed to confuse and deceive the public market into belief that the Defendants new boat has
a connection to or is affiliated Plaintiff American Cruise Lines overnight passenger cruise ship
services, the AMERICAN CRUISE LINES mark, and the Other AMERICAN marks, even
though there is no such connection or affiliation.
35.
Defendants filing of trademark applications for the names American
Countess and American Princess in a recent effort to create a nearly identical family of marks
further demonstrates that Defendants are acting intentionally to confuse and deceive the public
market into belief that Defendants future cruise services will have a connection or affiliation
with Plaintiff American Cruise Lines overnight passenger cruise ship services. These actions
also demonstrate Defendants bad faith intent to misappropriate the goodwill developed by
American Cruise Lines through its AMERICAN CRUISE LINES mark and Other AMERICAN
marks.
36.
Plaintiff American Cruise Lines has senior trademark rights in the
AMERICAN CRUISE LINES mark and its family of AMERICAN marks. As a result, Plaintiff
has priority relative to Defendants AMERICAN QUEEN and THE AMERICAN QUEEN
STEAMBOAT COMPANY marks and relative to any AMERICAN EMPRESS mark.
10
37.
American Cruise Lines invested millions of dollars in funding,
advertising, and promotion of its overnight passenger cruise ship services over many years.
Plaintiff has created wide recognition of American Cruise Lines and its AMERICAN family of
marks throughout the United States.
38.
Defendants did not acquire valid trademark rights in the AMERICAN
QUEEN mark by assignment from the prior owner. The AMERICAN QUEEN mark registered
in 1996 (Registration Nos. 1,953,532 and 1,953,533) had been abandoned prior to use by
Defendants.
Defendants are not entitled to priority based on the 1996 registration of the
AMERICAN QUEEN mark. The AMERICAN QUEEN mark was assigned to Defendants in
2011 without any associated goodwill. Defendants had no basis to claim acquired distinctiveness
in its application and prosecution of the THE AMERICAN QUEEN STEAMBOAT COMPANY
mark. Defendants own first use of the AMERICAN QUEEN in 2012 does not give priority over
Plaintiffs use extending back to the 1970s and at least back to 1999. Defendants are not
entitled to the 2013 registration of the mark THE AMERICAN QUEEN STEAMBOAT
COMPANY. The PTO improvidently and incorrectly granted registration of THE AMERICAN
QUEEN STEAMBOAT COMPANY name. Both registrations are invalid and should be
cancelled.
AMERICAN STEAMBOAT MARKS
39.
Plaintiff owns the valid and legally protectable service mark THE GREAT
AMERICAN STEAMBOAT CRUISE, and Plaintiff has prior rights to the service marks
GREAT
AMERICAN
STEAMBOAT
COMPANY
and
AMERICAN
STEAMBOAT
COMPANY by virtue of its intent-to-use applications. Further, by virtue of the Settlement

Agreement, Defendants agreed to transfer and did transfer to American Cruise Lines any and all
11
rights they had in the GREAT AMERICAN STEAMBOAT CRUISE, AMERICAN

STEAMBOAT COMPANY, and derivatives thereof. These marks are themselves derivative of
Plaintiffs AMERICAN CRUISE LINES registered mark and Plaintiffs family of AMERICAN
marks.
40.
Since as early as March 25, 2011, American Cruise Lines has used THE
GREAT AMERICAN STEAMBOAT CRUISE mark in arranging, advertising, and promoting its
river cruises, and has a constructive first use date of March 1, 2011, for the service marks,
GREAT
AMERICAN
STEAMBOAT
COMPANY
and
AMERICAN
STEAMBOAT
COMPANY. These marks are a subset in the family of AMERICAN marks and are referred in
this Complaint as Plaintiffs AMERICAN STEAMBOAT marks. Plaintiff marketed and
promoted its cruise services under Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY
mark after the expiration of the forbearance period, as per the Settlement Agreement.
Defendants intentionally adopted without Plaintiffs permission the confusingly similar service
mark American Queen Steamboat Company to benefit from and to trade on Plaintiffs
goodwill in its AMERICAN STEAMBOAT marks.
41.
Defendants, without American Cruise Lines permission, incorporated
Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark into various domain names
that are identical or confusingly similar with Plaintiffs marks, and then registered these domain
names with domain name registrars. Each of these marks contains the word American that has
become and is distinctive in association with Plaintiffs overnight passenger cruise ship
services through use of the service mark American Cruise Lines. Defendants have offered for
sale a domain name incorporating Plaintiffs identical or confusingly similar marks. Defendants
have used and may still be using Plaintiffs marks in Defendants domain names to direct
12
interstate commerce to Defendants website and away from American Cruise Lines, thereby
substantially benefitting Defendants and causing great damage and detriment to American Cruise
Lines. Defendants actions with respect to these domain names were taken in bad faith with the
intent to profit from the use of Plaintiffs marks.
42.
Defendants, without American Cruise Lines permission, also refused to
disassociate their business telephone number in 411 telephone directory assistance systems
with Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark as they agreed to do,
thereby substantially benefitting Defendants and causing great damage and detriment to
43.
Defendants, without American Cruise Lines permission, incorporated
Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark into various domain names
and registered various domain names, and is offering a domain name incorporating Plaintiffs
GREAT AMERICAN STEAMBOAT COMPANY mark for sale and is using the name GREAT
AMERICAN STEAMBOAT COMPANY, the Plaintiffs mark, to direct interstate commerce to
Defendants website and away from American Cruise Lines.
44.
Defendants use of the service mark American Queen Steamboat
Company and domain name greatamericansteamboatcompany.com is creating and is likely to

create confusion or mistake, or to deceive consumers in this judicial district and elsewhere as to
the origin, affiliation, connection, or association of Defendants services with Plaintiffs
AMERICAN CRUISE LINES mark and AMERICAN STEAMBOAT marks.
45.
Plaintiff has no control over the quality of services that will be offered by
Defendants under the name and Domain Name confusingly similar to Plaintiffs marks. Plaintiff
believes, and therefore alleges, that the quality of service offered aboard Defendants passenger
13
cruise riverboat is substantially inferior to that provided by Plaintiff American Cruise Lines
overnight passenger cruise ship services. As a result, the goodwill associated with the Plaintiffs
AMERICAN Marks, including the GREAT AMERICAN STEAMBOAT COMPANY mark and
derivatives thereof, has been and is being tarnished by Defendants unlawful and improper use of
the GREAT AMERICAN STEAMBOAT marks and derivatives thereof, including in the
Domain Name and other domain names.
PLAINTIFFS AMERICAN MARKS
46.
Plaintiff American Cruise Lines advertised and promoted its overnight
passenger cruise ship services for many years using its family of AMERICAN marks that include
the following federally registered marks: (a) AMERICAN CRUISE LINES, Registration No.
3,019,486, issued November 29, 2005 on the Principal Register in Class 39 (the 486
Registration); this mark has distinctive status on the Principal Register pursuant to 15 U.S.C.
1052(f); (b) AMERICAN GLORY, Registration No. 2,908,064 issued December 7, 2004 on the
Principal Register in Class 39 (the 064 Registration); (c) AMERICAN SPIRIT, Registration No.
2,987,886 issued August 23, 2005 on the Principal Register in Class 39 (the 886 Registration);
(d) AMERICAN STAR, Registration No. 3,409,555 issued April 8, 2008 on the Principal
Register in Class 39 (the 555 Registration); and (e) AMERICAN EAGLE, Registration No.
4,777,732 issued July 21, 2015 on the Principal Register in Class 39 (the 732 Registration).
47.
A copy of the 486 Registration is attached hereto as Exhibit A; copy of
the 064 Registration is attached hereto as Exhibit B; a copy of the 886 Registration is attached
hereto as Exhibit C, a copy of the 555 Registration is attached hereto as Exhibit D; a copy of
the 732 Registration is attached hereto as Exhibit E.
48.
American Cruise Lines has built a national marketing program through the
expenditure of tens of millions of dollars around its family of AMERICAN marks. The
14
AMERICAN EAGLE mark was first used in interstate commerce by American Cruise Lines in
1999. American Cruise Lines continuously used the AMERICAN EAGLE mark in interstate
commerce in connection with overnight passenger cruising on inland and coastal waterways and
rivers of the United States for about a dozen years until the AMERICAN EAGLE was no
longer marketed. The AMERICAN EAGLE mark is distinctive, and Plaintiff expended
substantial sums of money over the course of those years promoting goodwill under the
AMERICAN EAGLE mark and confirming the distinctive and secondary meaning of
American as a source of overnight passenger cruise ship services provided by American Cruise
Lines. In 2014, Plaintiff renewed use of AMERICAN EAGLE and continues to develop
goodwill in the mark. The AMERICAN EAGLE mark is a valuable and protectable mark with
associated goodwill; it is an asset used associate and distinguish American Cruise Lines services
from those provided by others.
49.
The AMERICAN CRUISE LINES service mark (the 486 Registration)
has been continuously in use since at least as early as 1999 by Plaintiff American Cruise Lines in
interstate commerce in connection with overnight passenger cruise ship services associated with
the AMERICAN marks and related marks on inland and coastal waterways and rivers of the
United States and is currently in use.
American Cruise Lines has used and is using its
AMERICAN CRUISE LINES mark in combination with its registered AMERICAN marks and
related marks to identify and distinguish its overnight passenger cruise ships from services
provided by others and to indicate the source of those services. Pursuant to 15 of the Lanham
Act, 15 U.S.C. 1065, the 486 Registration became incontestable as of March 9, 2011. The
486 Registration did not grant exclusive rights to the words cruise lines, but it does grant
exclusive rights to the word American to Plaintiff in overnight passenger cruise ship services.
15
The AMERICAN CRUISE LINES mark is a valuable and protectable mark with associated
goodwill; it is an asset used associate and distinguish American Cruise Lines services from those
provided by others.
50.
The AMERICAN GLORY service mark (the 064 Registration) has been
continuously in use since at least as early as 1999 by American Cruise Lines in interstate
commerce in connection with overnight passenger cruise ship services. Pursuant to 15 of the
Lanham Act, 15 U.S.C. 1065, the 064 Registration became incontestable as of March 11, 2011.
The AMERICAN GLORY mark is a valuable and protectable mark with associated goodwill; it
is an asset used associate and distinguish American Cruise Lines services from those provided by
others.
51.
The AMERICAN SPIRIT service mark (the 886 Registration) has been
continuously in use since at least as early as May, 2005 by American Cruise Lines in interstate
Lanham Act, 15 U.S.C. 1065, the 886 Registration became incontestable as of March 11, 2011.
The AMERICAN SPIRIT mark is a valuable and protectable mark with associated goodwill; it is
an asset used associate and distinguish American Cruise Lines services from those provided by
others.
52.
The AMERICAN STAR service mark (the 555 Registration) has been
continuously in use since at least as early as June, 2007 by American Cruise Lines in interstate
Lanham Act, 15 U.S.C. 1065, the 555 Registration became incontestable as of June 14, 2013.
The AMERICAN STAR mark is a valuable and protectable mark with associated goodwill; it is
16
an asset used associate and distinguish American Cruise Lines services from those provided by
others.
53.
The AMERICAN PRIDE service mark (application pending on Serial
Number 86763248) has been continuously in use since at least as early as October 2015 by
American Cruise Lines in interstate commerce in connection with overnight passenger cruise
ship services. The AMERICAN PRIDE mark is a valuable and protectable mark with associated
goodwill; it is an asset used associate and distinguish American Cruise Lines services from those
provided by others.
54.
The AMERICA service mark (application pending on Serial Number
86367655) has been continuously in use since at least as early as July 2015 by American Cruise
Lines in interstate commerce in connection with overnight passenger cruise ship services. The
AMERICA mark is a valuable and protectable mark with associated goodwill; it is an asset used
associate and distinguish American Cruise Lines services from those provided by others.
55.
American Cruise Lines has also long advertised and promoted its
overnight passenger cruise ship services with (a) its federally registered service mark
INDEPENDENCE (Registration No. 3506365 issued September 23, 2008 on the Principal
Register in Class 39 (the 365 Registration); (b) its federally registered service mark QUEEN OF
THE WEST (Registration No. 3895030 issued December 21, 2010 on the Principal Register in
Class 39 (the 030 Registration), which is licensed by Plaintiff from a related entity that owns the
mark; (c) its federally registered service mark QUEEN OF THE MISSISSIPPI (Registration No.
4283450 issued January 29, 2013 on the Principal Register in Class 39 (the 450 Registration).
56.
The INDEPENDENCE service mark (the 365 Registration) has been
continuously in use since at least as early as June 2007 by American Cruise Lines in interstate
17
commerce in connection with overnight passenger cruise ship services. The INDEPENDENCE
mark is a valuable and protectable mark with associated goodwill; it is an asset used associate
and distinguish American Cruise Lines services from those provided by others.
57.
The QUEEN OF THE WEST service mark (the 030 Registration) has
been continuously in use since at least as early as August 2010 by American Cruise Lines in
interstate commerce in connection with overnight passenger cruise ship services. The QUEEN
OF THE WEST mark is a valuable and protectable mark with associated goodwill; it is an asset
used associate and distinguish American Cruise Lines services from those provided by others.
58.
The QUEEN OF THE MISSISSIPPI service mark (the 450 Registration)
has been continuously in use since at least as early as August 2012 by American Cruise Lines in
interstate commerce in connection with overnight cruise services.
The QUEEN OF THE
MISSISSIPPI mark is a valuable and protectable mark with associated goodwill; it is an asset
used associate and distinguish American Cruise Lines services from those provided by others.
59.
A copy of the 365 Registration is attached hereto as Exhibit F; a copy of
the 030 Registration is attached hereto as Exhibit G; a copy of the 450 Registration is attached
hereto as Exhibit H.
60.
American Cruise Lines has become, upon information and belief, well
recognized in the United States for its overnight passenger cruise ship services and as the
primary source in the industry for overnight passenger cruise ship services in this country. In the
course of this growth, Plaintiff has extensively promoted its AMERICAN CRUISE LINES mark
and its family of AMERICAN marks as high quality overnight passenger cruise ship services.
Plaintiffs AMERICAN CRUISE LINES mark and its family of AMERICAN marks have
18
achieved widespread public recognition throughout the United States in connection with
American Cruise Lines overnight passenger cruise ship services.
61.
Families of marks are common in the cruise industry, particularly in
association with the names of ships, to designate a single source of cruise services. Norwegian
Cruise Lines uses the term Norwegian to designate the services it offers on each of its ships,
including the Norwegian Epic, Norwegian Sky, and Norwegian Jewel, for instance.
Royal Caribbean Lines uses Of the Seas for the same purpose with respect to services aboard
its Oasis of the Seas, Allure of the Seas, Voyager of the Seas, and Quantum of the Seas.
Other cruise lines also build a family of marks, just as American Cruise Lines has done with its
family of AMERICAN marks, in order to use the common elements in the marks to identify and
distinguish their overnight passenger cruise ship services from services provided by others and to
indicate the source of those services.
AMERICAN CRUISE LINES AMERICAN STEAMBOAT MARKS
62.
American Cruise Lines also has advertised and marketed nationwide its
overnight passenger cruise ship services with two AMERICAN STEAMBOAT marks:
(a) federally registered service mark THE GREAT AMERICAN STEAMBOAT CRUISE
(Registration No. 4130763 issued April 24, 2012 on the Principal Register in Class 39 (the 763
Registration), and (b) the service mark GREAT AMERICAN STEAMBOAT COMPANY
(application pending Serial No. 85254474, Notice of Allowance issued September 17, 2013, in
Class 39). A copy of the 763 Registration is attached hereto as Exhibit I
63.
THE GREAT AMERICAN STEAMBOAT CRUISE service mark (the
763 Registration) has been continuously in use since at least as early as March 25, 2011,by
American Cruise Lines in interstate commerce in connection with overnight cruise services. THE
19
GREAT AMERICAN STEAMBOAT CRUISE mark is a valuable and protectable mark with
associated goodwill; it is an asset used associate and distinguish American Cruise Lines services
from those provided by others.
64.
Plaintiff American Cruise Lines has used since at least as early as
February 25, 2013, the GREAT AMERICAN STEAMBOAT COMPANY mark in commerce on
promotional and advertising of overnight passenger cruise ship services.
The GREAT
AMERICAN STEAMBOAT COMPANY mark is a valuable and protectable mark with

associated goodwill; it is an asset used to associate and distinguish American Cruise Lines
services from those provided by others.
65.
On March 1, 2011, American Cruise Lines filed an intent to use
application with the PTO for the service mark AMERICAN STEAMBOAT COMPANY
(application pending, Serial No. 85254464 for use in Class 39).
DEFENDANTS ARRIVAL ON THE MISSISSIPPI RIVER
AND USE OF AMERICAN QUEEN
66.
The American Queen ship was originally constructed by the Delta
Queen Steamboat Company and was operated under a royalty theme as part of a Queen family
of marks. The names used by the Delta Queen Steamboat Company were the Delta Queen,
Mississippi Queen, Columbia Queen, and American Queen.
67.
The Delta Queen Steamboat Company used the name American Queen
exclusively to identify a ship, not a provider of cruise services. The word American never
became distinctive in association with the cruise services offered by Delta Queen Steamboat
Company and its fleet of Queen named vessels.
68.
The AMERICAN QUEEN mark refers, collectively, to five registrations
issued in 1996 which include the words American Queen used in connection with five
20
different classes of goods and services, as follows: (a) U.S. Service Mark Registration
No. 1,953,532, registered in connection with transporting passengers and goods by steamers in
International Class 39; (b) U.S. Service Mark Registration No. 1,953,533, registered in
connection with hotel, restaurant and bar services provided onboard a riverboat in International
Class 42; (c) U.S. Trademark Registration No. 1,951,681, registered in connection with shirts,
T-shirts, hats and sweaters in International Class 25; (d) U.S. Trademark Registration
No. 1,953,534, registered in connection with glassware; namely, cups, mugs, drinking glasses
and serving trays in International Class 21; and (e) U.S. Trademark Registration No. 1,960,672,
registered in connection with jewelry in International Class 14.
69.
On information and belief, in 2006 the AMERICAN QUEEN mark was
registered in the name of Ambassadors Cruise Group, LLC, a subsidiary of Ambassadors

International, Inc., an international cruise and related services company. On information and
belief, the mark was then used in connection with the paddlewheel riverboat American Queen,
which, beginning in 2006, was owned by AQ Boat LLC, another subsidiary of Ambassadors
International, Inc. (Ambassadors).
70.
On information and belief, in or about March 2008 Ambassadors
announced its intention to discontinue providing passenger cruise services, including the
AMERICAN QUEEN, and discontinued marketing cruises on the AMERICAN QUEEN.
71.
On information and belief, in or about March 2008 AQ Boat LLC notified
the United States Maritime Administration (MarAd) that it intended to abridge its Fall/Winter
2008 sailing schedule, would not make its payments due on obligations to MarAd, and would
surrender the ship American Queen to MarAd in the Fall of 2008.
21
72.
AQ Boat
LLC surrendered
American Queen to
MarAd on
November 15, 2008. In January of 2009 American Queen was taken for safe keeping and layup in Beaumont, TX, where it was arrested by MarAd in a federal court mortgage foreclosure
proceeding. MarAd purchased the American Queen on August 4, 2009 in a U.S. Marshals sale
in the federal court foreclosure.
73.
On information and belief, Ambassadors International, Inc. and its
subsidiaries, including AQ Boat LLC, ceased use of the name American Queen as a trademark
before the ship was surrendered to MarAd in November, 2008.
74.
Meanwhile, before and during the time the name American Queen was
not in use as a trademark, Plaintiff American Cruise Lines invested tens of millions of dollars
advertising and promoting nationally its family of AMERICAN marks, AMERICAN CRUISE
LINES mark associated with overnight passenger cruise ship services.
75.
In 2009, when an affiliate of Plaintiff purchased the paddlewheel riverboat
Queen of the West from a subsidiary of Ambassadors International, Inc., Plaintiffs affiliate
also received assignment of the QUEEN OF THE WEST mark, associated goodwill, and the
customer lists and other passenger mailing lists and past passengers inquiries held by
Ambassadors International, Inc. subsidiaries, including passengers on Queen of the West,
Columbia Queen, Empress of the North, Delta Queen, Mississippi Queen, and
American Queen cruises.
76.
On February 25, 2011, while MarAd still owned the American Queen
and Plaintiffs affiliate still owned the referenced customer lists, on information and belief,
Defendant HMS and Ambassadors Cruise Group, LLC entered into an agreement for
Defendants purchase of certain valuable passenger reservation and booking software, certain
22
creative works, and purportedly, the AMERICAN QUEEN mark and another mark. In the
agreement, Ambassadors Cruise Group, LLC, expressly disclaimed title and validity to the
marks purportedly assigned. The agreement recites the sum of only $15,000 paid by Defendant
HMS as consideration.
77.
Defendants acquisition by assignment of the abandoned mark
AMERICAN QUEEN without associated goodwill did not transfer any valid use rights to
Defendants. Because of this and other facts, Defendants acquired no priority of use from this
transaction.
78.
On April 1, 2011, about one month after the date of the assignment
agreement, Ambassadors International, Inc. and its subsidiaries, including Ambassadors Cruise
Group, LLC, filed for protection in bankruptcy.
79.
On April 26, 2011, Defendant HMS filed a service mark application with
the United States Patent and Trademark Office (the PTO), U.S. Application Serial No.
85305162, for THE AMERICAN QUEEN STEAMBOAT COMPANY mark for use in Classes
39 and 43. Defendant HMS alleged first use of the mark on June 20, 2012. The AMERICAN
QUEEN mark had been abandoned in 2008, and even before abandonment the mark was
associated with a royalty-themed family of Queen marks, not with the word American.
Defendant HMS claimed that the word American had acquired distinctiveness based on two
prior registrations for the mark AMERICAN QUEEN, U.S. Service Mark AMERICAN
QUEEN registrations (Nos. 1,953,532 and 1,953,533). The AMERICAN QUEEN marks were
not distinctive because of the word American, as Defendants wrongly claimed; instead, the
AMERICAN QUEEN mark was a royalty-themed mark in a family of QUEEN marks. The
PTO improvidently granted registration on February 5, 2013 (Registration No. 4,286,568).
23
Defendants did nothing to cause the word American to become distinctive in association with
overnight passenger cruise ship services.
A claim of distinctiveness regarding the word
American could legitimately be based only on the distinctiveness of the word American in
overnight passenger cruise ship services, the distinctiveness resulted only because of Plaintiffs
persistent and long-term investment in advertising, promotion, and providing of such services to
the public for many years. Defendants have hijacked the word American in order to trade off
American Cruise Lines business and goodwill in the AMERICAN CRUISE LINES mark and in
its family of AMERICAN marks. Registration No. 4286568 should be cancelled.
80.
On about July 28, 2011, Defendant HMS purchased the American
Queen from MarAd. On information and belief, Defendants did not begin to operate the
riverboat American Queen until 2012, however, and only began to use the AMERICAN
QUEEN mark in connection with those operations.
81.
American Cruise Lines is the leader in the small ship overnight passenger
cruising market and is well respected in the industry having won many awards relating to its
exceptional cruise services. Based on Plaintiffs stellar reputation in the industry and
longstanding relationships with many consumers, it is reasonably probable that American Cruise
Lines would continue to receive repeat business from its customers. Historically, many
consumers who have experienced American Cruise Lines services have purchased tickets for
passage on one or more additional cruises.
82.
Defendants have adopted and use as their own Plaintiffs service marks in
Defendants Sponsored Link Ads Internet marketing program and have adopted and use marks
confusingly similar to Plaintiffs marks in other forms of advertisements to indicate that
Defendants are Plaintiff and/or are affiliated with Plaintiff in order to benefit from Plaintiffs
24
goodwill and to appropriate Plaintiffs customers. On information and belief, Defendants use
Plaintiffs service marks and confusingly similar marks in their advertisements to initiate contact
with Plaintiffs customers in order to lure them away from Plaintiff and to cajole and/or coerce
them into buying Defendants cruise services.
83.
On information and belief, Defendants use of Plaintiffs service marks in
their Sponsored Link Ads and use of confusingly similar marks in other forms of advertisements
have resulted in Plaintiffs past passengers not booking an additional cruise with Plaintiff and
instead, booking a cruise with Defendants. Defendants intentional acts have also resulted in
Plaintiffs loss of prospective customers who booked a cruise with Defendants after searching
the Internet using Plaintiffs service marks that Defendants have adopted and use in their
Sponsored Link Ads program. Plaintiff generates a substantial amount of business through the
Internet. Consumers searching the Internet using Plaintiffs service marks create reasonable
prospects of future business for Plaintiff, of which Defendants are depriving Plaintiff.
84.
Defendants adoption and use of the AMERICAN QUEEN mark and THE
AMERICAN QUEEN STEAMBOAT COMPANY mark in connection with overnight passenger

cruise ship services in the United States has caused likelihood of public confusion, mistake, and
deception and actual confusion, mistake, and deception. Defendants use of American in its
advertising and promotion suggests that Defendants offer cruise services that originate from or
are associated with the same source as the cruise services provided by American Cruise Lines
under its family of AMERICAN marks, including the AMERICAN CRUISE LINES mark.
85.
American Cruise Lines has senior common law and registered trademark
rights in its AMERICAN CRUISE LINES mark and its family of AMERICAN marks in
association with overnight passenger cruise ship services.
25
Plaintiff has priority relative to
Defendants AMERICAN QUEEN mark because the AMERICAN QUEEN mark was
abandoned as a trademark prior to its use by Defendants. Ambassadors International, Inc. and its
subsidiaries had totally ceased use of the AMERICAN QUEEN mark for an extended period of
time and intended not to resume use of the mark. In April 2008 Ambassadors Cruise Group, LLC
announced its intention to abridge its 2008 sailing season, in November 2008 it surrendered the
American Queen to MarAd, and in 2009 it sold the American Queen customer and other
mailing lists to Plaintiffs affiliate. On information and belief, Defendants first began advertising
American Queen cruises in the fall 2011 under brand name The Great American Steamboat
Company almost three and a half years after the AMERICAN QUEEN mark had been last used
by Ambassadors Cruise Group, LLC.
86.
American Cruise Lines also has senior common law and registered
trademark rights in its AMERICAN CRUISE LINES mark and its family of AMERICAN marks
in association with overnight passenger cruise ship services because the purported assignment of
the AMERICAN QUEEN mark to Defendant HMS was in fact devoid of associated goodwill; it
was an assignment in gross, and conveyed no trademark rights to Defendants. Ambassadors
International, Inc. and its subsidiaries had no business or goodwill associated with the mark in
2011 because in 2008 Ambassadors International, Inc. stopped the sailing season, surrender the
AMERICAN QUEEN to MarAd, and sold the AMERICAN QUEEN customer and mailing lists.
The AMERICAN QUEEN mark had no value when assigned in February 2011. Ambassadors
International, Inc. and its subsidiaries did not have a live AMERICAN QUEEN mark to sell or
transfer. The purported assignment itself included the transfer of other assets that represented the
value that was transferred for the consideration paid. Ambassadors International, Inc. expressly
26
disclaimed both title to, and the validity of, the marks purportedly assigned. The 2011
assignment on which Defendants rely is not effective.
87.
Defendants never created a family of American marks based on the
AMERICAN QUEEN mark. It was not until 2013, a year or more after the February 2012
settlement with Plaintiff, that Defendants changed the name of the Empress of the North to
American Empress. Also, it was in 2014 when Defendants filed applications to register the
names American Countess and American Princess, which is recent and late compared to
Plaintiff long-term used of the AMERICAN CCRUISE LINES mark and other AMERICAN
marks.
88.
With respect to Defendants AMERICAN QUEEN STEAMBOAT
COMPANY mark, Plaintiff also has senior common law and registered trademark rights and
priority in its AMERICAN CRUISE LINES mark and its family of AMERICAN marks used in
association with overnight passenger cruise ship services.
89.
Defendants initiated their use of AMERICAN QUEEN and THE
AMERICAN QUEEN STEAMBOAT COMPANY in bad faith, intending to deceive and cause
confusion with American Cruise Lines directly competitive cruise services, knowing that would
result in customers and revenue for Defendants. Defendants have unlawfully capitalized on the
enormous goodwill and prominence of American Cruise Lines overnight passenger cruise ship
services. As a result, American Cruise Lines has lost goodwill, business, and significant profits it
otherwise would have earned from its paddlewheel riverboat and other overnight passenger
cruise ship services.
27
FIRST LAWSUIT AND SETTLEMENT THEREOF WHEREBY DEFENDANTS

SURRENDERED THE RIGHTS TO AMERICAN CRUISE LINES
90.
On September 30, 2011, American Cruise Lines filed the Prior Suit in this
Court against Defendant HMS and Defendant AQS (then named Great American Steamboat
Company LLC) for trademark infringement of American Cruise Lines GREAT AMERICAN
STEAMBOAT service marks arising from, inter alia, Defendants use of the name Great
American Steamboat Company. Great American Steamboat Company is a derivative of the
AMERICAN CRUISE LINES mark and Plaintiffs family of AMERICAN marks.
91.
Plaintiffs complaint filed in the Prior Suit (the Prior Complaint) alleged
in part that:
a.
American Cruise Lines owns rights in the service mark THE
GREAT AMERICAN STEAMBOAT CRUISE for use in connection with cruise services, that
on March 30, 2011, American Cruise Lines filed a service mark application with the PTO for the
use of the mark in connection with arranging and organizing of cruises, that since at least as early
as March 25, 2011, American Cruise Lines had been using that mark in commerce in the United
States;
b.
American Cruise Lines owns prospective rights to, and on
March 1, 2011, filed with the PTO applications for, the service marks GREAT AMERICAN
STEAMBOAT COMPANY and AMERICAN STEAMBOAT COMPANY for use in connection
with cruise ship services, transportation of passengers by ship; and arranging and conducting
cruises for others;
c.
On May 2, 2011, Defendant HMS filed a service mark application
with the PTO on an intent-to-use basis for the mark THE GREAT AMERICAN STEAMBOAT
COMPANY in connection with transporting goods and services by riverboat; hotel, restaurant
28
and bar services provided onboard riverboats, U.S. Application Serial No. 85,309,538. On
August 4, 2011, the PTO issued an Office Action, citing Plaintiffs pending GREAT
AMERICAN STEAMBOAT service mark applications against Defendants U.S. Application
Serial No. 85,309,538, stating that Applicants mark may [in the future] be refused registration .
. . because of a likelihood of confusion.
d.
Defendants use of the GREAT AMERICAN STEAMBOAT
COMPANY name is likely to cause, and is causing, confusion or mistake as to the origin, source,
sponsorship, or affiliation of Defendants future services; and
e.
Defendants use of the GREAT AMERICAN STEAMBOAT
COMPANY name (i) constitutes trademark infringement, false association and unfair
competition pursuant to 15 U.S.C. 1125 (a); (ii) violates the Delaware Uniform Deceptive
Trade Practices Act; and (iii) constitutes unfair competition under common law.
92.
On November 7, 2011, Defendants filed their Answer to Complaint,
Affirmative Defenses and Counterclaim (the Counterclaim) alleging, inter alia, in relevant part
that American Cruise Lines infringed Defendants trademark because on or about July 4, 2010,
Defendant
HMSs
predecessor
in
interest
registered
the
domain
name
www.greatamericansteamboatcompany.com (the Domain Name).

93.
Defendants further alleged that they had operated and advertised
extensively using the GREAT AMERICAN STEAMBOAT COMPANY mark and that the mark
had acquired significant value and substantial goodwill.
94.
Defendants prayers for relief in their Counterclaim requested, inter alia,
in relevant part that American Cruise Lines be enjoined from using the GREAT AMERICAN
29
STEAMBOAT COMPANY mark, or any colorable imitation, inter alia, as an internet domain
name.
95.
Based on the allegations in both the Prior Complaint and Counterclaim,
use of the GREAT AMERICAN STEAMBOAT COMPANY mark, including its use as a
domain name, indicating a source of services with associated goodwill, was squarely at issue in
the Prior Suit as a matter in controversy between American Cruise Lines and Defendants.
Further, Defendants were on notice that Plaintiff had exclusive rights to the word American in
the passenger cruise ship services.
96.
In due course, on February 9, 2012, the parties settled the Prior Suit and
their dispute concerning the use of the GREAT AMERICAN STEAMBOAT Marks, including
the GREAT AMERICAN STEAMBOAT COMPANY mark, as memorialized by that certain
Settlement and Compromise Agreement, January 31, 2012 (the Settlement Agreement). A
copy of the Settlement Agreement is attached as Exhibit J. Drafted by Defendants, among other
things the Settlement Agreement called for Defendants to surrender the Rights. The Rights
are defined in the Settlement Agreement as the rights to the GREAT AMERICAN
STEAMBOAT trademarks and derivatives thereof.
97.
Defendants drafted the Settlement Agreement and presented it to
American Cruise Lines to settle the Prior Suit and the matters in controversy in it, requesting that
American Cruise Lines select one of two options to address the ownership and use of the
GREAT AMERICAN STEAMBOAT trademarks and derivatives.
In summary, under the
Settlement Agreement presented by Defendants, Option A would require American Cruise

Lines to surrender its Rights to Defendants in exchange for a fee to be paid by Defendants
30
whereas Option B would require Defendants to surrender their Rights to American Cruise
Lines in exchange for a fee to be paid by American Cruise Lines.
98.
American Cruise Lines entered into the Settlement Agreement with
Defendants by selecting Option B requiring Defendants to surrender and cease use of their
rights to the GREAT AMERICAN STEAMBOAT trademarks and derivatives thereof, in
exchange for payment of a fee. The GREAT AMERICAN STEAMBOAT trademarks are
themselves derivatives of Plaintiffs AMERICAN CRUISE LINES mark and Plaintiffs other
AMERICAN marks.
99.
The Settlement Agreement specifies the parties obligations under Option
B in relevant part as:

Option B.
ACL shall pay the Rights Fee to HMS in exchange for HMS surrendering
its Rights. Additionally, within 30 days of the Acceptance Date, HMS will
voluntarily withdraw any pending trademark applications concerning the
Rights and shall change the name of its Delaware limited liability
company [i.e., Great American Steamboat Company LLC]. If ACL
selects Option B., it shall forbear from the use of any trade names or
trademarks concerning the Rights for a period of one year from the
Acceptance Date; and, HMS will, in a forthright but non-disruptive
manner, cease to use the Rights and fully complete that process in not
more than 270 days of the Acceptance Date and shall not use the Rights in
the future.
The Rights Fee shall be One Hundred Twenty Five Thousand Dollars
($125,000.00) and shall be payable within 180 days of the Acceptance
Date.
The Acceptance Date is defined as the 9th day of February, 2012, the date American Cruise
Lines signed the Settlement Agreement.
100.
American Cruise Lines has fully performed all its obligations under the
Settlement Agreement. On July 27, 2012, American Cruise Lines made timely payment to
Defendants of the Rights Fee of $125,000.00, which was acknowledged. American Cruise Lines
31
has refrained from using the GREAT AMERICAN STEAMBOAT name and derivatives thereof,
including trade names and domain names, for a period of one year from the Acceptance Date
(i.e. to February 9, 2013). At no time has American Cruise Lines failed to fully comply with all
terms of the Settlement Agreement.
101.
The effect of the Settlement Agreement was to create a gap or cooling
off period from November 5, 2012 until February 9, 2013 during which neither party was
entitled to use the GREAT AMERICAN STEAMBOAT trademarks and derivatives thereof.
The Settlement Agreement was made February 9, 2012, and Defendants agreed to surrender
the Rights and in a forthright manner to cease to use the Rights and fully complete that
process in not more than 270 days thereafter, or by November 5, 2012. American Cruise Lines
agreed to forbear from using any trade names or trademarks concerning the Rights until
February 9, 2013.
102.
During the gap or cooling off period from November 5, 2012 until
February 9, 2013, it was intended that the GREAT AMERICAN STEAMBOAT trademarks and
derivatives would not be associated with either Defendants or Plaintiff and that prospective
customers conducting searches on the Internet and making inquiry to 411 telephone directory
assistance systems using the GREAT AMERICAN STEAMBOAT trademarks and derivatives,
including domain names, would be directed to no website and connected to no business. Neither
the Domain Name, nor any other domain names using the Rights, would be pointed to
Defendants website.
103.
As a result of the Settlement Agreement, after February 9, 2013, American
Cruise Lines, as owner, is clearly entitled to all ownership and full use of the GREAT
AMERICAN STEAMBOAT Company name and derivatives thereof. This included all the
32
AMERICAN STEAMBOAT marks and domain names, including the Domain Name which was
in controversy in the Prior Lawsuit.
104.
Defendants did change the name of Great American Steamboat Company
LLC to American Queen Steamboat Operating Company, LLC, which continued Defendants
use of the word American, did not end the confusion, and was contrary to the terms of the
Settlement Agreement. . Defendants did not cease using the GREAT AMERICAN
STEAMBOAT name derivatives, or domain names using the Rights, including the service mark
American Queen Steamboat Company and the Domain Name, and have not completely
surrendered the Rights. Despite demand Defendants have not ceased using the Rights, including
Defendants specific refusal to fully complete the process by surrendering the Domain Name
incorporating the GREAT AMERICAN STEAMBOAT COMPANY mark to American Cruise
Lines as Defendants promised and agreed to do.
DEFENDANTS BREACH OF THE SETTLEMENT AGREEMENT, THE LIKELIHOOD
CONFUSION, AND CONTINUING CONFUSION CAUSED BY DEFENDANTS CONDUCT
105.
OF
Defendants agreed to cease using and to surrender to Plaintiff the GREAT
AMERICAN STEAMBOAT trademarks and derivatives. Approximately five months after the
Settlement Acceptance Date, however, Defendants, without Plaintiffs permission, began to
advertise cruise services in direct competition to Plaintiff under the name American Queen
Steamboat Company, a derivative of Plaintiffs registered marks AMERICAN CRUISE LINES
and GREAT AMERICAN STEAMBOAT CRUISE. Defendants intentionally chose a
confusingly similar service mark to trade off and to benefit from Plaintiffs goodwill developed
over the years by Plaintiffs nationwide advertising and promotion of overnight passenger cruise
ship services using the AMERICAN CRUISE LINES mark and the family of AMERICAN
marks (including GREAT AMERICAN STEAMBOAT COMPANY). Further, Defendants
33
conduct has forced Plaintiff to forego using the Rights that Plaintiff purchased from Defendants
to avoid further confusion in the marketplace regarding source of cruise services.
106.
Defendants and American Cruise Lines are direct competitors prominent
in their market and active in the same channels of commerce in that market, including internet
and telephone call response marketing. Defendants have caused actual confusion in that market
in violation of their promises in the Settlement Agreement, and Defendants have continued their
unlawful infringement and unfair and deceptive acts. Defendants have damaged Plaintiff by
depriving it of business what otherwise would have resulted in additional customers and
goodwill and substantial profits for Plaintiff.
107.
registration
of the
Upon information and belief, Defendant HMSs predecessor in interests

Domain
Name,
www.greatamericansteamboatcompany.com,
that
incorporates the GREAT AMERICAN STEAMBOAT COMPANY mark to be surrendered to

Plaintiff under the Settlement Agreement, extended for a two year term from the original July
2010 registration date. Notwithstanding Defendants agreement to cease using the Rights in a
forthright manner, on information and belief on March 21, 2012, soon after entering the
Settlement Agreement in February of 2012, Defendants re-registered the Domain Name for a
new ten year term. Defendants re-registered the Domain Name intending to benefit from
continued use of the Domain Name while depriving American Cruise Lines from using the
Domain Name incorporating the GREAT AMERICAN STEAMBOAT COMPANY mark.
108.
Soon after Defendants entered into the Settlement Agreement, Defendants
launched a new effort to trade off Plaintiffs business and goodwill by targeting one of Plaintiffs
AMERICAN STEAMBOAT marks, i.e., GREAT AMERICAN STEAMBOAT COMPANY.
Upon information and belief, between March 12 and March 19, 2012, Defendants updated the
34
registrations of two other domain names incorporating the GREAT AMERICAN STEAMBOAT
mark which Defendants were to surrender under the Settlement Agreement -- namely
greatamericansteamboatcompany.biz and greatamericansteamboatcompany.net. This was
done with the intent to further freeze-out Plaintiff and to diminish Plaintiffs ability to benefit
from online use of the GREAT AMERICAN STEAMBOAT COMPANY mark. With the same
intent, on November 20, 2012 Defendants updated the registrations of two unlawful domain
names -- greatamericansteamboatcompany.org and greatamericansteamboatcompany.info -further depriving Plaintiff of the benefit of making the GREAT AMERICAN STEAMBOAT
COMPANY mark an internet domain name.
109.
At no time has either Defendant ever disclosed to American Cruise Lines
that it is the holder of any of the .net, .org, .info, or .biz domain names.
110.
Upon information and belief, Defendants caused to be associated, and
since entering into the Settlement Agreement have failed to cease to associate, their business
telephone number with the GREAT AMERICAN STEAMBOAT trademarks and derivatives in
one or more 411 telephone directory assistance systems and with travel agent websites.
111.
As of late October, 2012, notwithstanding that, pursuant to the Settlement
Agreement, Defendants were to surrender the Rights in a forthright manner after February 9,
2012 and cease to use the Rights and fully complete that process by November 5, 2012,
Defendants nevertheless continued to use certain Rights, including at least (i) incorporating the
GREAT
AMERICAN STEAMBOAT
marks and derivatives in the domain
name
www.greatamericansteamboatcompany.com, which directed internet traffic to Defendants

website with the domain name www.americanqueensteamboatcompany.com, (ii) embedding
the Domain Name incorporating the GREAT AMERICAN STEAMBOAT COMPANY mark in
35
the source code of Defendants website to enhance search engine optimization, and (iii) using
411 telephone directory assistance in Memphis, Tennessee to continue to provide Defendants
telephone number in response to inquiry for the Great American Steamboat Company.
112.
Because Defendants continued to use the GREAT AMERICAN
STEAMBOAT marks and derivatives notwithstanding the Settlement Agreement, Plaintiff,

through counsel, sent Defendants a letter dated October 26, 2012 demanding that Defendants
cease their use of the Rights. Defendants made changes to address only some more obvious
violations of the Settlement Agreement. Thereafter American Cruise Lines, through counsel,
again requested that Defendants relinquish ownership of the Domain Name on or before the
close of business on November 5, 2012. Defendants have failed and refused to do so.
113.
After November 5, 2012, during the gap or cooling off period until
February 9, 2013, and thereafter, Defendants continued to refuse to surrender the Rights they
agree to surrender and made use of those Rights for their own benefit and to damage American
Cruise Lines. During this time (a) Defendants marketed and operated cruises and received
payments trading on the name American Queen Steamboat Company, a derivative of the
GREAT AMERICAN STEAMBOAT COMPANY mark which in turn is itself a derivative of
Plaintiffs AMERICAN CRUISE LINES mark and other AMERICAN mars, (b) the Domain
Name incorporating Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark was
pointed to Defendants website, (c) Defendants paid internet advertising associated Plaintiffs
GREAT AMERICAN STEAMBOAT COMPANY and other marks with Defendants and their
website; and (d) Defendants information provided to 411 telephone directory assistance
programs associated Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark with
36
Defendants business telephone number so that Defendants telephone number would be

provided in response to inquiries for the Great American Steamboat Company.
114.
As a result, during the gap or cooling off period a significant portion
of Defendants business derived from their continued improper use of Plaintiffs GREAT
AMERICAN STEAMBOAT COMPANY mark in the Domain Name. Upon information and
belief, as of late December, 2012, (i) approximately fifteen (15%) of the search traffic to
Defendants website derived from searches of Plaintiffs GREAT AMERICAN STEAMBOAT
COMPANY mark; (ii) when entering Plaintiffs mark, GREAT AMERICAN STEAMBOAT
COMPANY, in the Google search engine, the search results showed a paid advertisement for
Defendants website followed by other links directing the user to Defendants website; and
(iii) when entering the Domain Name in Google search, the results showed links directing the
user to Defendants website. As a result, prospective customers, travel agents, and others using
Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark or Domain Name to search
for American Cruise Lines on the Internet in fact were being directed to Defendants website, not
to the website of American Cruise Lines, the owner of the GREAT AMERICAN STEAMBOAT
COMPANY mark, or to no website at all.
115.
Defendants improper use of the name American Queen Steamboat
Company and the Domain Name during the gap or cooling off period has resulted in
substantial improper benefit to Defendants and substantial losses to American Cruise Lines. If
Defendants had not been improperly trading off the AMERICAN CRUISE LINES mark and
using the GREAT AMERICAN STEAMBOAT COMPANY name and derivatives, including the
Domain Name, during the gap or cooling off period, many prospective customers using the
GREAT AMERICAN STEAMBOAT COMPANY name or the Domain Name or alternatives
37
would have located American Cruise Lines. Defendants improper virtually ensured that such
prospective customers would not locate American Cruise Lines as a result of such a search.
Defendants kept American Cruise Lines obscured from prospective customers searching via the
Internet, a principal means of marketing in this market. As a result, Plaintiff lost the business of
prospective customers who, but for the improper breaches and illegal acts of Defendants, would
have located American Cruise Lines and received information and taken cruises with American
Cruise Lines.
116.
Also during the gap or cooling off period, Defendants refused to
disassociate their business telephone number with the GREAT AMERICAN STEAMBOAT
COMPANY mark in 411 telephone directory assistance programs and with travel agent
websites. As a result, prospective customers, travel agents and others seeking Great American
Steamboat Company through 411 telephone directory assistance systems and travel oriented
websites were being directed to Defendants in lieu of being directed to American Cruise Lines or
being directed to no one at all.
117.
Since February 9, 2013, the end of the gap or cooling off period,
Defendants have continued to benefit from the Rights they were to surrender, including inter
alia, the registration of the Domain Name and the registration of other domain names
incorporating the GREAT AMERICAN STEAMBOAT marks and derivatives, having Google
and travel websites, such as Mississippi River Cruises (i.e. www.mississippirivercruises.com),
continue to associate Defendants with the GREAT AMERICAN STEAMBOAT COMPANY
mark online because Defendants had only recently discontinued paid advertisements, and
redirecting to their website internet traffic using the Domain Name incorporating the GREAT
AMERICAN STEAMBOAT mark.
As of February 25, 2013, Google search results for
38
GREAT AMERICAN STEAMBOAT COMPANY continue to show a picture of Defendants

riverboat and a map and directions to Defendants office and a paid ad by Mississippi River
Cruises advertising Defendants riverboat cruises notwithstanding Defendants agreed to
surrender all rights to the GREAT AMERICAN STEAMBOAT mark and derivatives. Further,
as of February 1, 2016 Google search results for GREAT AMERICAN STEAMBOAT
COMPANY (i) continue to list Defendants advertisements, photographs, and contact
information and (ii) list an advertisement of Mississippi River Cruises, a travel agent who places
a significant amount of business with Plaintiff, incorporating the term Great American
Steamboat.
118.
Since February 9, 2013, the end of the gap or cooling off period,
Defendants also continued to benefit from associating their business telephone number with
Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark in 411 telephone directory
assistance programs. As an example, as of 8:49 AM on February 25, 2013, when calling 411
directory assistance for Memphis, Tennessee, an inquiry for Great American Steamboat
Company resulted in the caller being connected to Defendants.
119.
Defendants use of the name American Queen Steamboat Company is a
derivative of GREAT AMERICAN STEAMBOAT COMPANY. Its use by Defendants violates

the parties Settlement Agreement and infringes on American Cruise Lines trademarks and
trademark rights.
120.
Because of Defendants ongoing violations of the Settlement Agreement,
infringement, and unfair and deceptive acts, American Cruise Lines damages are increasing
every day.
Such damages are currently estimated to amount to over three million dollars
($3,000,000.00).
39
DEFENDANTS ADOPTION AND USE OF PLAINTIFFS AMERICAN MARKS

IN ADWORDS AND PAID SEARCHES
121.
In order to market their competing services, Defendants have maintained
and continue to maintain websites which can be accessed through a number of different URL
addresses,
including
www.greatamericansteamboatcompany.com
and
www.americanqueensteamboatcompany.com (collectively Defendants website).

122.
Search engines such as Google, Bing, and Yahoo, in addition to listing
internet search results based on relevancy in relation to the search terms used, also prominently
display sponsored links advertisements on search results pages (Sponsored Link Ads).
Sponsored Link Ads are a form of advertising which enable the advertiser to bypass the search
engines usual relevancy factors and prominently display that advertisers caption and text along
with an accompanying link to a website specified by the advertiser. Sponsored Link Ads are
triggered by the entry of certain keywords or phrases that may be entered by computer users.
123.
When an advertiser initiates a Sponsored Link Ads campaign through a
program such as Google AdWords, the advertiser has the opportunity to designate and
purchase keywords which serve to trigger the paid advertisement created by the advertiser.
124.
Beginning in fall 2011, when Defendants first began to market their cruise
services, Defendants launched a Sponsored Link Ads internet program marketing their services
through Sponsored Link Ads whereby Defendants used and purchased keywords incorporating
Plaintiffs service marks, including Plaintiffs marks AMERICAN CRUISE LINES,
AMERICAN STEAMBOAT COMPANY, QUEEN OF THE WEST and QUEEN OF THE
MISSISSIPPI. Defendants continue to use and purchase American Cruise Lines service marks
in their Sponsored Links Ads. See, e.g., Google Search results showing Defendants recent use of
Plaintiffs service mark American Cruise Lines as an exact term in their Sponsored Link Ad.
40
Upon information and belief, Defendants have recently expanded use of Plaintiffs service marks
in their Sponsored Link Ads program, including use of Plaintiffs service marks AMERICAN
EAGLE and MISSISSIPPI QUEEN. Defendants use of Plaintiffs service marks in their
Sponsored Link Ads program creates infringing sponsored link ads containing highlighted
captions that comprise in whole or in part the ACL Marks and having a link to Defendants
website where consumers can obtain Defendants brochures and reserve passage.
125.
On information and belief, Defendants infringing Sponsored Link Ads
have already caused thousands of internet users searching for Plaintiffs cruise services using the
ACL Marks to be directed to Defendants website. As a result, existing and prospective
customers of ACL searching for Plaintiffs cruise ship services on the Internet using the ACL
Marks have ordered hundreds of Defendants brochures and have, on information and belief,
arranged cruises with Defendants through Defendants website, depriving Plaintiff of business
opportunities and profits.
126.
Defendants adoption and use of the AMERICAN marks as part of their
infringing Sponsored Link Ads is likely to cause confusion and is likely to deceive, and is further
causing actual confusion, mistake, and deception of the consuming public and travel agents as to
the source, origin or affiliation of Defendants services. Actual and potential customers for small
ship overnight passenger cruising services are likely to believe, and have believed, that
Defendants services are Plaintiffs services, or originate from Plaintiff, or that Defendants
services are endorsed, sponsored by or approved by Plaintiffs, or that there is some affiliation or
connection between the two companies.
127.
Defendants conduct has and will lure away from Plaintiff to Defendants
potential customers of Plaintiff by initially passing off Defendants services as those of Plaintiff.
41
This initial interest confusion results in consumers choosing Defendants competing services
based on the reputation built up by Plaintiff due to either the belief that there is a connection
between Plaintiffs services and those of Defendants, or because Defendants have acquired initial
credibility through the use of Plaintiffs AMERICAN marks. Even if confusion is dissipated, the
potential customer is now considering or using the services of Defendants rather than those of
Plaintiff.
128.
Defendants have adopted and are intentionally using the AMERICAN
marks to interfere with Plaintiffs business relationships and to trade upon the reputation and
goodwill and consumer trust associated with Plaintiffs services, and to give Defendants
services customer appeal and salability which they would not otherwise have in the absence of
the confusing similarity to the AMERICAN marks.
129.
Defendants unfair and deceptive acts are threatening Plaintiffs ability to
hold and continue to attract high quality employees. Plaintiff employs many individuals who
perform cruise services and who work in Plaintiffs land-based facilities. Employee turnover in
the cruise industry is relatively high requiring constant advertising, recruiting, and training of
employees. Plaintiff relies heavily on the Internet and its website to identify new employees and
to provide information to existing employees, including advertising job positions, providing
information on Plaintiffs recruiting process, and enabling people to research and apply for jobs
with Plaintiff online. Defendants know Plaintiff is a desired employer of people interested in the
cruise industry and that Plaintiff relies heavily on internet advertising to attract and retain
employees, including advertising job openings on Plaintiffs website.
130.
On information and belief, Defendants former Chief Executive Officer
promoted a strategy to coerce Plaintiff into abandoning its rights to certain tradenames and
42
trademarks by threatening, if the marks were not abandoned by Plaintiff, that Defendants would
(i) engage in predatory marketing to hurt Plaintiff; (ii) have Defendants travel agent network
offer Plaintiffs booked customers a refund of their deposit paid to Plaintiff, onboard credits and
amenities if Plaintiffs customers would rebook cruises with Defendants; (iii) seed and fuel a
viral blogging network to discredit Plaintiff and create bad public relations for Plaintiff in a way
that could not be traced back to Defendants, all in order to hurt Plaintiff nationally across all of
its cruise itineraries. On information and belief, Defendants have implemented the strategy
promoted by its CEO to disparage Plaintiff, cause Plaintiffs customers to cancel reservations
and rebook cruises with Defendants, and otherwise harm American Cruise Lines.
DEFENDANTS AND THEIR PROPOSED
USE AND USE OF AMERICAN EMPRESS
131.
American Cruise Lines has since at least 2010 operated a paddlewheel
riverboat named Queen of the West on the Columbia River and Snake River in Oregon and
Washington. American Cruise Lines also currently provides overnight passenger cruise service
using AMERICAN SPIRIT on seven day routes between the states of Washington and Alaska.
As a result, American Cruise Lines has become the industry leader in overnight passenger
cruising on inland and coastal waterways and rivers of the Northwestern United States as well as
other parts of the country.
132.
Upon purchasing from MarAd a paddlewheel riverboat named Empress
of the North, Defendants selected American Empress as the new name for that riverboat.
Defendants sought, in a bad-faith attempt to capitalize on American Cruise Lines substantial
prior efforts and expenditures to develop the goodwill existing in the associated marks
AMERICAN CRUISE LINES and the AMERICAN marks, to cause confusion in the market for
43
overnight passenger cruising on inland and coastal waterways and rivers of the Northwestern
United States.
133.
Plaintiff American Cruise Lines lost sales because of the false consumer
impression generated by Defendants intentionally deceptive choice of a name confusingly

similar to Plaintiffs AMERICAN CRUISE LINES mark and to its family of AMERICAN
marks.
DEFENDANTS CONDUCT HAS CAUSED DAMAGES
134.
Defendants breaches of contract, infringement of Plaintiffs registered
and common law marks, their false and misleading commercial advertising and promotion, their
deception and misrepresentation seeking to trade off a connection or association with Plaintiffs
business and goodwill, their unlawful conduct and bad faith in registering and trafficking in
domain names incorporating Plaintiffs AMERICAN marks, their unfair competition under
federal, state and common law have caused damages to Plaintiff. Defendants conduct against
Plaintiff has resulted in revenues and profits to which Defendants are not entitled, ill-gotten gains
through misrepresentations and deception of the public and harm to Plaintiff.
135.
Defendants wrongful conduct is intentional and willful and has persisted
despite Plaintiffs request to cease.

136.
Defendants misconduct has damaged Plaintiff, American Cruise Lines in
an amount to be determined at trial and believed to be over three million dollars ($3,000,000.00).
Damages are increasing each day as Defendants conduct continues.
COUNT I
BREACH OF CONTRACT
137.
Plaintiff, American Cruise Lines, incorporates by reference and re-alleges
each and every allegation contained in the foregoing paragraphs 1 through 136.
44
138.
Defendants breached their obligations under the Settlement Agreement by
adopting and using the service mark American Queen Steamboat Company, a derivative of
GREAT AMERICAN STEAMBOAT COMPANY, causing the likelihood of confusion.
The
GREAT AMERICAN STEAMBOAT COMPANY service mark is itself derivative of the

AMERICAN CRUISE LINES mark.
139.
re-registering, registering and failing to surrender their registered domain names incorporating
the
GREAT
AMERICAN
STEAMBOAT
COMPANY
mark,
i.e.
greatamericansteamboatcompany.info,
and
greatamericansteamboatcompany.biz;
140.
failing to take action to disassociate their business and business telephone number with
Plaintiffs service marks with travel agents, including travel agent websites, and in 411
telephone directory assistance systems as they agreed to do.
141.
Defendants breaches have damaged Plaintiff in an amount to be
determined at trial, estimated at over three million dollars ($3,000,000.00). By reason of

Defendants acts alleged, Plaintiff has and will suffer damage to its business, reputation and
goodwill and has lost sales and profits Plaintiff would have made but for Defendants breaches.
Defendants actions in breach of the Settlement Agreement are continuing. Defendants have
been and are unjustly enriched and unlawfully deriving profits and gains off Plaintiffs reputation
and goodwill.
Plaintiff is entitled to award of actual damages and/or lost profits and its
reasonable attorneys fees and costs.
45
142.
Defendants breaches have caused and will continue to cause irreparable
injury to Plaintiff if Defendants are not restrained by this Court. Plaintiffs have no adequate
remedy at law and therefore seek injunctive relief from this Court pursuant to 15 U.S.C. 1116.
COUNT II
INFRINGEMENT OF PLAINTIFFS FEDERALLY REGISTERED
AMERICAN TRADEMARKS
(15 U.S.C. 1114)
143.
each and every allegation of the foregoing paragraphs 1 through 136.

144.
Defendants use of the American Queen Steamboat Company service
mark, and Defendants other use of the word American, infringes Plaintiffs registered
AMERICAN CRUISE LINES mark, registered AMERICAN marks -- AMERICAN STAR,
AMERICAN GLORY, AMERICAN SPIRIT, and AMERICAN EAGLE -- and registered
GREAT AMERICAN STEAMBOAT CRUISE mark in interstate commerce without the consent
of Plaintiff in direct competition with Plaintiffs overnight passenger cruise ship services is likely
to cause confusion, mistake or deception, and further, has caused confusion, mistake or
deception as a result of such use by Defendants in violation of 15 U.S.C. 1114. Defendants
use of American Queen Steamboat Company and Defendants other uses of the word
American in commerce is in violation of 15 U.S.C. 1114. Defendants infringement is
continuing.
145.
Defendants use of the term American Cruise Lines in connection with
its business and cruise services in connection with advertisements generated through Internet
search engines triggered by the use of paid search terms (or adwords/keywords) is without
permission from Plaintiff and constitutes infringement in violation of 15 U.S.C. 1114.
Defendants infringement is continuing.
46
146.
By reason of Defendants acts, Plaintiff has been damaged and will suffer
damage to its business, reputation and goodwill and the loss of sales and profits in an amount to
be determined at trial, estimated at over three million dollars ($3,000,000.00).
147.
Defendants infringement will cause irreparable and substantial damage to
Plaintiff. On information and belief, Defendants ongoing violations of 32 of the Lanham Act
against Plaintiff are committed willfully, intentionally, knowingly and in bad faith. This has and
will result in Defendants being unjustly enriched and unlawfully deriving profits and gains.
Plaintiff is entitled to monetary damages pursuant to 15 U.S.C. 1117, including treble actual
damages and reasonable attorneys fees.
148.
Plaintiff is entitled to an award of treble its actual damages and/or lost
profits and Defendants profits in an amount to be determined at trial, estimated at over nine
million dollars ($9,000,000.00), as well as Plaintiffs reasonable attorneys fees and costs.
149.
Plaintiffs have no adequate remedy at law and therefore seek injunctive
relief from this Court pursuant to 15 U.S.C. 1116.

COUNT III
INFRINGEMENT OF PLAINTIFFS FEDERALLY REGISTERED
QUEEN TRADEMARKS
(15 U.S.C. 1114)
150.

151.
Defendants use of the terms QUEEN OF THE WEST, QUEEN OF
THE MISSISSIPPI, and MISSISSIPPI QUEEN in connection with its business and in
connection with advertisements generated through Internet search engines triggered by the use of
paid search terms (or adwords/keywords) is without permission from Plaintiff and constitutes
infringement. Defendants use of these terms is likely to cause confusion, mistake or deception
47
of the public in interstate commerce in violation of Section 32(1) of the Lanham Act, 15 U.S.C.
1114(1). Defendants infringement is continuing.
152.
153.
Plaintiff. On information and belief, Defendants ongoing violations of 32 of the Lanham Act
against Plaintiff are committed willfully, intentionally, knowingly and in bad faith. This has and
will result in Defendants being unjustly enriched and unlawfully deriving profits and gains.
Plaintiff is entitled to monetary damages pursuant to 15 U.S.C. 1117, including treble actual
damages and reasonable attorneys fees.
154.
As a result of Defendants willful wrongful acts, Plaintiff is entitled to an
award of treble its actual damages and/or lost profits and Defendants profits in an amount to be
determined at trial, estimated at over nine million dollars ($9,000,000.00), as well as Plaintiffs
155.
relief from this Court pursuant to 15 U.S.C. 1116.

COUNT IV
COMMON LAW INFRINGEMENT OF PLAINTIFFS USED
BUT UNREGISTERED AMERICAN TRADEMARKS
156.

157.
Defendants use of the American Queen Steamboat Company service
mark, and Defendants other use of the word American, infringes the following common law,
48
unregistered marks AMERICA, AMERICAN PRIDE, GREAT AMERICAN STEAMBOAT

COMPANY, and AMERICAN STEAMBOAT COMPANY. Defendants infringement are in
direct competition with Plaintiffs overnight passenger cruise ship services in commerce and is
likely to cause confusion, mistake or deception, and further, has caused confusion, mistake or
deception as a result of such use by Defendants. Defendants infringement is continuing.
158.
Defendants use of the term American Steamboat Company in
connection with its business and in connection with advertisements generated through Internet
search engines triggered by the use of paid search terms (or adwords/keywords) is without
permission from Plaintiff and constitutes common law infringement. Defendants infringement is
continuing.
159.
160.
Plaintiff. On information and belief, Defendants ongoing infringement of Plaintiffs marks is

committed willfully, intentionally, knowingly and in bad faith. This has and will result in
Defendants being unjustly enriched and unlawfully deriving profits and gains.
Plaintiff is
entitled to monetary damages and reasonable attorneys fees.

161.
49
162.
relief from this Court.

COUNT V
FALSE AND MISLEADING DESIGNATIONS OF ORIGIN AND DESCRIPTIONS CAUSING
CONFUSION, MISTAKE, AND/OR DECEPTION, (15 U.S.C. 1125(A))
163.
164.
Defendants adoption and use of the service mark American Queen
Steamboat Company, and Defendants other uses of the word American, are false designations
of origin, false and misleading descriptions, and false and misleading representations by
Defendants that are likely to cause confusion, mistake and to deceive the public as to the
affiliation, connection, and/or association of the Defendants with American Cruise Lines and
American Cruise Lines overnight passenger cruise ship services in violation of section 43(a) of
the Lanham Act, 15 U.S.C. 1125(a).
165.
In addition to Defendants false and misleading statements and false
descriptions of origin, Defendants infringement of Plaintiffs American marks -- AMERICAN

CRUISE LINES, AMERICAN STAR, AMERICAN GLORY, AMERICAN SPIRIT,
AMERICAN EAGLE, AMERICA, AMERICAN PRIDE, THE GREAT AMERICAN
STEAMBOAT CRUISE, GREAT AMERICAN STEAMBOAT COMPANY, AMERICAN
STEAMBOAT COMPANY contributes to the false and misleading descriptions and
representations by Defendants that are likely to cause confusion, mistake and to deceive the
public as to the affiliation, connection, and/or association of the Defendants with American
Cruise Lines and American Cruise Lines overnight passenger cruise ship services in violation of
section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
50
166.
Defendants deceptive use of Adwords or paid search terms also
constitutes false designations of origin, false and misleading descriptions, and false and
misleading representations of fact. Defendants have used and are using the AMERICAN
CRUISE LINES, QUEEN OF THE MISSISSIPPI, QUEEN OF THE WEST, MISSISSIPPI
QUEEN marks as an adwords or as a paid search terms in nationwide advertising and promotion
of overnight cruise services in a manner that is likely to cause the public to be confused,
mistaken or deceived as to Defendants affiliation and association with AMERICAN CRUISE
LINES and with American Cruise Lines overnight passenger cruise ship services.
167.
Defendants have caused and are leading purchasers to be confused,
mistaken, or deceived as to the approval, certification, connection, or sponsorship of the services

advertised and sold by Defendants.
168.
On information and belief, Defendants have acted willfully and in bad
faith in violation of section of 43(a) of the Lanham Act, 15 U.S.C. 1125(a). Defendants
wrongful and unfair conduct has persisted despite Plaintiffs request to cease.
169.
170.
Plaintiff is entitled to an award of treble its actual damages and/or lost
profits and Defendants profits in an amount to be determined at trial, estimated at over nine
million dollars ($9,000,000.00), as well as its reasonable attorneys fees and costs.
171.
Defendants willful false statements, misrepresentations, and deceptions
justify an award of prejudgment interest pursuant to 15 U.S.C. 1117(b) in an amount to be
51
determined at trial, presently estimated at over one hundred ninety thousand dollars
($190,000.00).
172.

COUNT VI
VIOLATION OF THE ANTI-CYBERSQUATTING ACT
(15 U.S.C. 1125(D))
173.

174.
--
The domain names registered by Defendants with domain name registrars
greatamericansteamboatcompany.info,
and
greatamericansteamboatcompany.bizis -- are identical or confusingly similar to Plaintiffs

AMERICAN STEAMBOAT marks (GREAT AMERICAN STEAMBOAT COMPANY,
GREAT AMERICAN STEAMBOAT CRUISE, and AMERICAN STEAMBOAT COMPANY).
Each of these marks contains the word American that has become and is distinctive in
association with overnight passenger cruise ship services through use of the service mark
175.
Defendants registration of these domain names with the registrars were in
bad faith and they intend to profit from Plaintiffs marks. Defendants used and trafficked in
these domain names in bad faith with an intent to profit from Plaintiffs marks. Defendants also
offered to sell these domain names to Plaintiff.
176.
By reason of Defendants misconduct, Plaintiff has been damaged and will
suffer damage to its business, reputation and goodwill and the loss of sales and profits in an
amount to be determined at trial, estimated at over three million dollars ($3,000,000.00).
52
177.
178.
Defendants willful violation of the Anti-Cybersquatting Act justifies an
award of prejudgment interest pursuant to 15 U.S.C. 1117(b) in an amount to be determined at

trial.
179.
Plaintiff has no adequate remedy at law and is further entitled to a
preliminary and permanent injunction against Defendants infringing misconduct and other
injunctive relief. Pursuant to 15 U.S.C 1125(d), Plaintiff is entitled to have the domain names
based on Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY, GREAT AMERICAN
STEAMBOAT CRUISE, and AMERICAN STEAMBOAT COMPANY marks transferred to
American Cruise Lines, together with other relief as is just and equitable in the circumstances.
180.
Defendants misconduct in specific violation of the Settlement Agreement
and Defendants knowing demand that Plaintiff negotiate to purchase the Domain Name from
Defendants establishes Defendants bad faith intent to profit from registering, trafficking in or
using domain names identical and substantially similar to Plaintiffs marks.
COUNT VII
VIOLATION OF DELAWARE UNIFORM DECEPTIVE TRADE PRACTICES ACT
(6 DEL. C. 2531 ET SEQ.)
181.
182.
Defendants misconduct, as alleged, causes likelihood of confusion or of
misunderstanding as to the source, sponsorship, approval, or certification of goods or services;
53
and causes likelihood of confusion or misunderstanding as to affiliation, connection, or

association with, or certification by, Plaintiff.
183.
Such misconduct violates the Uniform Deceptive Trade Practices Act as
adopted by Delaware, 6 Del. C. 2531 et seq.

184.
On information and belief, Defendants have willfully engaged in the
aforementioned deceptive trade practices.

185.
As a result of Defendants wrongful acts, Plaintiff is entitled to an award
of reasonable attorneys fees and costs, damages of three million dollars ($3,000,000.00), and the
trebling of actual damages awarded in violation of Delaware common law in an amount to be
determined at trial, estimated at over nine million dollars ($9,000,000.00).
186.
Defendants misconduct has caused, and is continuing to cause,
irreparable injury to Plaintiff by leading purchasers to be confused, mistaken, or deceived as to

the approval, certification, connection, sponsorship, or affiliation of the services advertised and
sold by Defendants. Pursuant to the Uniform Deceptive Trade Practices Act, as adopted by
Delaware, Plaintiff is entitled to injunctive relief against Defendants deceptive trade practices as
well as such other remedies available under that act as are just and equitable and permitted by
law. 6 Del. C. 2533.
COUNT VIII
COMMON LAW UNFAIR COMPETITION
187.
188.
Defendants misconduct, as alleged, constitutes unfair competition under
the common law of Delaware. Plaintiff seeks relief under Delaware common law to the extent
Defendants conduct does not violate the Delaware Uniform Deceptive Trade Practice Act and
54
to the extent Delaware common law provides a remedy not available in the Delaware Uniform
Deceptive Trade Practice Act.
189.
Plaintiffs and Defendants provide cruise services and advertise and
promote these services. Defendants have diverted patronage from Plaintiff American Cruise
Lines by using the various acts and methods of fraud and deception alleged in this complaint.
Plaintiff has a reasonable expectancy of entering into valid business relationships with customers
and potential customers without Defendants wrongful interference based on misappropriation,
false and misleading statements and deception. Defendants have caused damages to Plaintiff by
preventing Plaintiff American Cruise Lines from legitimately earning revenue by syphoning off
business using its unfair, false, and deceptive actions, as alleged in this complaint, in an amount
to be determined at trial, estimated to be three million dollars ($3,000,000.00).
190.
This Court has the legal and equitable power to protect Plaintiff in its
business and cruise services against the unfair competition by Defendants by applying Delaware
common law principles to protect fair trade and provide remedies for unfair competition.
191.

PRAYER FOR RELIEF ALL COUNTS
WHEREFORE, Plaintiff, American Cruise Lines, Inc., prays that the Court enter
judgment in Plaintiffs favor and against Defendants on all Counts, and:
A.
Adjudge and decree that Defendants breached the parties Settlement
Agreement by (i) adopting an using the service mark American Queen Steamboat Company, a
derivative of Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark, and Plaintiffs
AMERICAN CRUISE LINE mark, (ii) failing to surrender the domain names based on and
incorporating Plaintiffs GREAT AMERICAN STEAMBOAT mark and derivatives as agreed,
55
and/or, (iii) continuing to associate their business telephone number with Plaintiffs GREAT
AMERICAN STEAMBOAT mark and derivatives in 411 directory assistance systems, and/or
(iv) using and benefiting from the Rights transferred to Plaintiff and/or (v) depriving Plaintiff of
the use and benefit of the GREAT AMERICAN STEAMBOAT Marks, Domain Name and other
domain names using the Rights for which Plaintiff paid the Rights Fee;
B.
Adjudge and decree that Plaintiffs AMERICAN CRUISE LINE, and
THE GREAT AMERICAN STEAMBOAT CRUISE and GREAT AMERICAN STEAMBOAT

COMPANY, and AMERICAN STEAMBOAT COMPANY marks have been infringed by
Defendants use of American Queen Steamboat Company and use of the word American in
connection with overnight passenger cruise ship services in the United States, and further
infringement is threatened, as a direct, proximate, and/or contributory result of the acts of
Defendants as set forth in this complaint, in violation of Plaintiffs rights under the Lanham Act,
15 U.S.C. 1114, and that Defendants infringement and other actions in connection with
Defendants advertising and promotion of their services create a false association with Plaintiff
and unfairly competes with Plaintiff in violation of the Lanham Act, 15 U.S.C. 1125(a);
C.
Adjudge and decree that Plaintiffs AMERICAN marks, namely, the
AMERICAN STAR, AMERICAN GLORY, AMERICAN SPIRIT, and AMERICAN EAGLE

registered marks, and Plaintiffs AMERICA and AMERICAN PRIDE common law
(unregistered) marks, constitute a valid and protectable family of marks associated with
Plaintiffs registered AMERICAN CRUISE LINES mark and American Cruise Lines overnight
passenger cruise ship services in the United States;
D.
Adjudge and decree further that Plaintiffs family of AMERICAN marks,
and each of them, have been infringed by Defendants use of American Queen Steamboat
56
Company and use of the word American in connection with overnight passenger cruise ship
services in the United States and related goods, and further infringement is expressly threatened,
as a direct, proximate and/or contributory result of the acts of Defendants as set forth in this
complaint, in violation of Plaintiffs rights under the Lanham Act, 15 U.S.C. 1114 and under
common law trademark rights, and that Defendants infringement and other actions in
connection with Defendants advertising and promotion of their services create a false
association with Plaintiff and unfairly competes with Plaintiff in violation of the Lanham Act,
15 U.S.C. 1125(a);
E.
Adjudge and decree that Plaintiffs QUEEN OF THE MISSISSIPPI and
QUEEN OF THE WEST registered marks in connection with overnight passenger cruise ship
services in the United States and related goods, and each of them, have been infringed by
Defendants use of those marks in Defendants advertising and promotion of their services and
further infringement is expressly threatened, as a direct, proximate and/or contributory result of
the acts of Defendants as set forth in this complaint, in violation of Plaintiffs rights under the
Lanham Act, 15 U.S.C. 1114, and that Defendants infringement and other actions in
connection with Defendants advertising and promotion of their services create a false
association with Plaintiff and unfairly competes with Plaintiff in violation of the Lanham Act,
15 U.S.C. 1125(a);
F.
Adjudge and decree that the Plaintiffs common law (unregistered) marks,
namely AMERICAN PRIDE, GREAT AMERICAN STEAMBOAT COMPANY, AMERICAN

STEAMBOAT COMPANY, and MISSISSIPPI QUEEN, have been infringed by Defendants
use of American Queen Steamboat Company and Defendants other uses of the words
American in connection with overnight passenger cruising services in the United States and
57
related goods in violation of common law trademark rights and that Defendants infringement,
and further adjudge and decree that Defendants other actions in connection with Defendants
advertising and promotion of their services infringe Plaintiffs marks, create a false association
with Plaintiff, and unfairly compete with Plaintiff in violation of the Lanham Act, 15 U.S.C.
1125(a).
G.
Adjudge and decree that Defendants use of the terms American Queen,
and American Empress, in connection with overnight passenger cruise ship services in the
United States and related goods infringes Plaintiffs federal trademark registrations in violation
of the Lanham Act, 15 U.S.C. 1114 and infringe Plaintiffs common law (unregistered) marks
in violation of common law trademark rights.
H.
Adjudge and decree that the mark AMERICAN QUEEN was abandoned
by Ambassadors Cruise Group, LLC, a subsidiary of Ambassadors International, Inc., prior to

the purported assignment of that mark to Defendant HMS.
I.
Adjudge and decree that the mark AMERICAN QUEEN was assigned in
gross, devoid of associated goodwill and conveyed no trademark rights when that mark was
purportedly assigned to Defendant HMS by Ambassadors Cruise Group, LLC, a subsidiary of
Ambassadors International, Inc.
J.
Order that Defendants surrender and transfer to Plaintiff all domain name
extensions of greatamericansteamboatcompany and any derivatives thereof or of any of the

other the GREAT AMERICAN STEAMBOAT Marks that they may hold;
K.
Order that Defendants surrender and transfer to Plaintiff all prospective
customer names and other names, addresses and contact information of persons obtained after
November 5, 2012 resulting from internet searches and telephone directory assistance system
58
inquiries involving any of the GREAT AMERICAN STEAMBOAT Marks or colorable variants
thereof, including Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY mark and
derivatives thereof;
L.
Order that Defendants shall not in the future contact any prospective
customers or customers or other persons whose names, addresses and contact information were
obtained after November 5, 2012 resulting from internet searches and telephone directory system
inquiries involving any of the GREAT AMERICAN STEAMBOAT Marks, AMERICAN Marks
or colorable variants thereof, including Plaintiffs GREAT AMERICAN STEAMBOAT
COMPANY mark and derivatives thereof;
M.
Order that Defendants take all necessary actions to immediately
discontinue paid advertisements on Google and other internet websites linking or associating
the GREAT AMERICAN STEAMBOAT COMPANY mark or service mark and Domain Name,
the AMERICAN Marks, and derivatives thereof to Defendants website;
N.
Order that Defendants take all necessary actions to discontinue the
association of any business telephone number of theirs with any of the GREAT AMERICAN
STEAMOBAT Marks, including Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY
mark and derivatives thereof, in any and all 411 or other telephone directory assistance
systems;
O.
Order that Defendants and all officers, directors, agents, servants,
employees, affiliates, attorneys, successors, and assigns of Defendants, and all persons in active
concert or participation therewith, be preliminarily and permanently enjoined from committing
any further acts of trademark infringement, unfair competition, and false association, and from
using any of the Rights, including the GREAT AMERICAN STEAMBOAT COMPANY name,
59
or any name that is likely to cause consumer confusion, unfair competition, or false association
with Plaintiffs GREAT AMERICAN STEAMBOAT COMPANY, THE GREAT AMERICAN
STEAMBOAT CRUISE and/or AMERICAN STEAMBOAT COMPANY marks;
P.
Order that the registrations of the marks AMERICAN QUEEN and THE
AMERICAN QUEEN STEAMBOAT COMPANY in Defendant HMSs name in the PTO,

including in all classes, be cancelled in accordance with 15 U.S.C. 1119 and certify the order to
the Director of the PTO to make appropriate entry upon the records of that office and be
controlled thereby;
Q.
Order that Defendants be prohibited and enjoined, preliminarily and
permanently, from prosecution of the application for registration of the mark AMERICAN
EMPRESS in connection with overnight passenger cruising services and order that the
application for that registration currently pending before the PTO be abandoned and certify the
order to the Director of the PTO to make appropriate entry upon the records of that office and be
controlled thereby;
R.
permanently, from use of the mark AMERICAN QUEEN and the mark THE AMERICAN
QUEEN STEAMBOAT COMPANY and the mark AMERICAN EMPRESS or any similar mark
beginning with the term American or otherwise so as to be confusingly similar to, infringe on,
or cause consumer confusion, unfair competition, or false association with Plaintiff American
Cruise Lines overnight passenger cruise service, Plaintiffs AMERICAN CRUISE LINES mark,
and Plaintiffs AMERICAN marks;
S.
Order that Defendants to deliver up and destroy all labels, signs, prints,
packages, wrappers, receptacles and advertisements in the possession of Defendants bearing the
60
mark or name AMERICAN QUEEN and the mark or name THE AMERICAN QUEEN
STEAMBOAT COMPANY and the mark or name AMERICAN EMPRESS or any
reproduction, or copy, or colorable imitation thereof and all plates, molds, matrices, and other
means of making the same;
T.
Order that Defendants change the name of the paddlewheel riverboat
currently bearing the name American Queen to a name not beginning with the term
American or otherwise so as not to be confusingly similar to or infringe on, or cause consumer
confusion or deception, unfair competition, or false association with respect to Plaintiffs
AMERICAN CRUISE LINES mark, Other AMERICAN marks, overnight passenger cruise ship
services;
U.
permanently, from renaming the paddlewheel riverboat Empress of the North as American
Empress or any other name beginning with the term American or otherwise so that there will
be confusing similarity, or infringement, that could cause consumer confusion or deception,
unfair competition, or false association with Plaintiff American Cruise Lines overnight passenger
cruise service, Plaintiffs AMERICAN CRUISE LINES mark, and Plaintiffs AMERICAN
marks;
V.
Award Plaintiff, American Cruise Lines, its compensatory damages in an
amount to be determined at trial, but at least three million dollars ($3,000,000.00), together with
lost profits, and an accounting of Defendants profits, advantages, and gains derived from their
unlawful activities pursuant to 15 U.S.C. 1117 and 1125(d), 6 Del. C. 2531 et seq. and the
common law of Delaware;
61
W.
Award Plaintiff, American Cruise Lines, treble its damages and lost profits
pursuant to 15 U.S.C. 1117 and the common law of Delaware in amount to be determined at
trial, but at least nine million dollars ($9,000,000.00);
X.
Award Plaintiff, American Cruise Lines, prejudgment interest pursuant to
15 U.S.C. 1117(b) in an amount to be determined at trial;

Y.
Award Plaintiff, American Cruise Lines, its taxable costs and reasonable
attorneys fees pursuant to 15 U.S.C. 1117(a) and 6 Del. C. 22531, et seq.; and
Z.
Order all other relief as the Court deems just and proper.
JURY DEMAND
Plaintiff, American Cruise Lines, Inc., respectfully demands a trial by jury of all
matters to which it is entitled to a trial by jury pursuant to Fed. R. Civ. P. 38.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
/s/ Stephen J. Kraftschik
OF COUNSEL:
David McI. Williams
Michael R. Naccarato
GORMAN & WILLIAMS
36 South Charles Street, Suite 900
Baltimore, MD 21201-3114
(410) 528-0600
Mary B. Graham (#2256)

Stephen J. Kraftschik (#5623)
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
(302) 658-9200
mgraham@mnat.com
skraftschik@mnat.com
Attorneys for Plaintiff American Cruise Lines, Inc.
February 26, 2016
62

American Cruise Lines v. HMS American Queen Steamboat - American Trademark Complaint PDF

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Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 1 of 62 PageID #: 2435

IN THE UNITED STATES DISTRICT COURT

C.A. No. 13-324-RGA

FOURTH AMENDED COMPLAINT

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 2 of 62 PageID #: 2436

For Defendants breach of contract arising from (a) Defendants adoption

For Defendants trademark infringement of following Plaintiffs registered

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 3 of 62 PageID #: 2437

(b) AMERICAN STAR, AMERICAN GLORY, AMERICAN SPIRIT, and AMERICAN

For Defendants trademark infringement by using in commerce the

For Defendants common law trademark infringement of unregistered

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 4 of 62 PageID #: 2438

For Defendants false and misleading designations of origin and

descriptions causing confusion, mistake, and/or deception as to the affiliation or association of

For Defendants violation of the federal anti-cybersquatting law by

For Defendants deceptive practices and unfair competition under

Delaware Uniform Deceptive Trade Practice Act.

For Defendants unfair competition under Delaware common law to the

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 5 of 62 PageID #: 2439

JURISDICTION AND VENUE

28 U.S.C. 1331, 1338(a), and 1338(b).

28 U.S.C. 1338(b) and 1367(a).

On information and belief, Defendant HMS is subject to the personal

On information and belief, Defendant AQS is subject to the personal

Venue is proper under 28 U.S.C. 1391.

Plaintiff, American Cruise Lines, is the leading travel company

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 6 of 62 PageID #: 2440

American Cruise Lines first began to operate cruises along Americas

On information and belief, Defendant HMS is a limited liability company

On information and belief, Defendant AQS is a limited liability company

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 7 of 62 PageID #: 2441

Defendants entered the passenger cruise services market in fall 2011. On

Defendants purported to purchase the previously registered mark

Plaintiff, American Cruise Lines, operates two more recently built

In 2009 American Cruise Lines, began marketing, and in 2010 began

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 8 of 62 PageID #: 2442

Both American Cruise Lines and Defendants market their overnight

Plaintiffs principal organized a company in 1973 named American

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 9 of 62 PageID #: 2443

In November, 1988 the company then known as American Cruise Lines

Plaintiff has continued to market and advertise nationwide overnight

Since at least as early as 1999, American Cruise Lines has been

Defendants selection and use of the AMERICAN QUEEN and American

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 10 of 62 PageID #: 2444

Defendants selection and advertising of Defendants chosen new name of

Defendants filing of trademark applications for the names American

Plaintiff American Cruise Lines has senior trademark rights in the

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 11 of 62 PageID #: 2445

American Cruise Lines invested millions of dollars in funding,

Defendants did not acquire valid trademark rights in the AMERICAN

COMPANY by virtue of its intent-to-use applications. Further, by virtue of the Settlement

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 12 of 62 PageID #: 2446

rights they had in the GREAT AMERICAN STEAMBOAT CRUISE, AMERICAN

Defendants, without American Cruise Lines permission, incorporated

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 13 of 62 PageID #: 2447

Defendants, without American Cruise Lines permission, also refused to

Defendants, without American Cruise Lines permission, incorporated

Defendants use of the service mark American Queen Steamboat

Company and domain name greatamericansteamboatcompany.com is creating and is likely to

Case 1:13-cv-00324-RGA Document 129 Filed 03/31/16 Page 14 of 62 PageID #: 2448

Plaintiff American Cruise Lines advertised and promoted its overnight

A copy of the 486 Registration is attached hereto as Exhibit A; copy of