MASONPRO, INC. v. MASON PRO ONE, LLC

Filing 9

OPINION. Signed by Judge Kevin McNulty on 1/7/2022. (sm)

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UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
MASONPRO, INC.,
a Michigan Corporation,

Civ. No. 21-01941 (KM)(ESK)

Plaintiff,
OPINION

v.
MASON PRO ONE, LLC,
a New Jersey limited liability company,
Defendant.

KEVIN MCNULTY, U.S.D.J.:
This matter comes before the Court on the motion of the plaintiff,
MasonPro, Inc. for a default judgment against the defendant, Mason Pro One,
LLC, pursuant to Fed. R. Civ. P. 55(b)(2). (DE 8) 1 This action arises from
defendant Mason Pro One’s alleged infringement of the plaintiff’s trademarks in
violation of the rights of MasonPro, Inc. under the Lanham Act. 2 For the
reasons set forth below, the motion is granted.
I.

STANDARD FOR ENTRY OF DEFAULT JUDGMENT
“[T]he entry of a default judgment is left primarily to the discretion of the

district court.” Hritz v. Woma Corp., 732 F.2d 1178, 1180 (3d Cir. 1984) (citing
Tozer v. Charles A. Krause Milling Co., 189 F.2d 242, 244 (3d Cir. 1951)).
Because the entry of a default judgment prevents the resolution of claims on
the merits, “this court does not favor entry of defaults and default judgments.”
1

Certain citations to the record are abbreviated as follows:
DE = docket entry number in this case
Compl. = Plaintiff’s Complaint for Trademark infringement (DE 1)

2

For clarify I refer to the parties as “plaintiff” and “defendant” throughout.

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United States v. $55,518.05 in U.S. Currency, 728 F.2d 192, 194 (3d Cir. 1984).
Thus, before entering default judgment, the Court must determine whether the
“unchallenged facts constitute a legitimate cause of action” so that default
judgment would be permissible. DirecTV, Inc. v. Asher, 03-cv-1969, 2006 WL
680533, at *1 (D.N.J. Mar. 14, 2006) (citing Wright, Miller, Kane, 10A Federal
Practice and Procedure: Civil 3d § 2688, at 58–59, 63).
“[D]efendants are deemed to have admitted the factual allegations of the
Complaint by virtue of their default, except those factual allegations related to
the amount of damages.” Doe v. Simone, CIV.A. 12-5825, 2013 WL 3772532, at
*2 (D.N.J. July 17, 2013). While “courts must accept the plaintiff’s well-pleaded
factual allegations as true,” they “need not accept the plaintiff’s factual
allegations regarding damages as true.” Id. (citing Chanel, Inc. v. Gordashevsky,
558 F. Supp. 2d 532, 536 (D.N.J. 2008)). Moreover, if a court finds evidentiary
support to be lacking, it may order or permit a plaintiff seeking default
judgment to provide additional evidence in support of the allegations. Doe,
2013 WL 3772532, at *2.
Before a court may enter default judgment against a defendant, the
plaintiff must have properly served the summons and complaint, and the
defendant must have failed to file an answer or otherwise respond to the
complaint within the time provided by the Federal Rules, which is twenty-one
days. See Gold Kist, Inc. v. Laurinburg Oil Co., Inc., 756 F.2d 14, 18–19 (3d Cir.
1985); Fed. R. Civ. P. 12(a).
After the prerequisites have been satisfied, a court must evaluate the
following three factors: “(1) whether the party subject to default has a
meritorious defense, (2) the prejudice suffered by the party seeking default, and
(3) the culpability of the party subject to default.” Doug Brady, Inc. v. N.J. Bldg.
Laborers Statewide Funds, 250 F.R.D. 171, 177 (D.N.J. 2008) (citing Emcasco
Ins. Co. v. Sambrick, 834 F.2d 71, 74 (3d Cir. 1987)); accord Gold Kist, 756 F.2d
at 19.

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II.

DISCUSSION
a. Service & Defendant’s Failure to Respond
This action was filed on February 5, 2021. After the defendant attempted

to avoid service, the court approved alternative service in the form of certified
mail, return receipt requested, and regular United States mail. (DE 5.) The
defendant was properly served on June 1, 2021, triggering the usual twentyone-day deadline to respond under Fed. R. Civ. P. 12(a). (DE 6.) Defendant did
not answer or otherwise respond to the complaint. On July 12, 2021, the Clerk
entered default. (Entry following DE 7.) On September 17, 2021, plaintiff moved
for entry of a default judgment. (DE 8.) The prerequisites to a default judgment
are therefore met. See Gold Kist, Inc., 756 F.2d at 18–19.
b. Gold Kist factors
I next evaluate the following factors: (1) whether the party subject to
default has a meritorious defense, (2) the prejudice suffered by the party
seeking default, and (3) the culpability of the party subject to default. Gold Kist,
756 F.2d at 19.
i. Meritorious defense
As to the first factor, my review of the record reveals no suggestion that
plaintiff’s claims are legally flawed or that there is a meritorious defense to
them. See Doe, 2013 WL 3772532, at *5.
Accepting the factual allegations as true, I find that the plaintiff has
stated a claim under the Lanham Act. Plaintiff markets and distributes
masonry-related goods and services and has done so for over three decades.
(Compl. ¶ 8–11.) The complaint, corroborated by affidavits, alleges causes of
action for trademark infringement and unfair competition under the Lanham
Act.
To prevail on its trademark infringement and unfair competition claims,
the plaintiff must prove three elements: 1) its ownership of the MasonPro
marks, which are 2) valid and legally protectable, and 3) defendants’ use of
those marks is likely to create confusion. See A & H Sportswear, Inc. v.

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Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). To establish
elements 1) and 2), a USPTO-issued trademark registration suffices. E.A.
Sween Co., Inc. v. Deli Exp. Of Tenafly, LLC, 19 F. Supp. 3d 560, 568 (D.N.J.
2014); see also Luxottica Group, S.p.A. v. Shore Enuff, 2019 WL 4027547 at *4
(D.N.J. Aug. 27, 2019). Here, plaintiff presented registration certificates of its
MasonPro marks. (Compl., Ex. A.) Further, the USPTO records show that the
marks are unchallenged, the required renewal registrations have been duly
paid, and the registered classes of the marks cover the products plaintiff
alleges were sold by defendants. On their face, the marks appear valid; and
thus, the first two elements are satisfied.
I therefore move to the third factor: use of confusingly similar marks.
This factor will be found when ordinary consumers are likely to conclude that
the marks used in commerce by the defendant and the plaintiff’s registered
marks identify a common source, affiliation, connection, or sponsorship. See
A&H Sportswear, 237 F.3d at 216. In a contested matter, courts have looked to
the ten so-called “Lapp factors.” See Interpace Corp. v. Lapp, Inc., 721 F.2d 460,
462 (3d Cir. 1983). Because the defendant has failed to respond, the Court
lacks a sufficient basis for a full analysis. The most important factor, however,
is the first Lapp factor, the similarity of the marks. A&H Sportswear, 237 F.3d
at 216. Plaintiff includes in its complaint printouts of the defendant’s website.
(Compl., Ex. B.) These printouts reveal that defendant provides masonryrelated goods and services under the name “Mason Pro,” which is nearly
identical to the trademark owned and registered by the plaintiff for nearly thirty
years. I find it plausible that the New Jersey homeowner/consumers targeted
by the defendant for masonry goods and services would be confused by the
similarity of the marks.
The Lanham Act cause of action is amply established. The materials
before the Court do not suggest any meritorious defense.
ii. Prejudice suffered by party seeking default & culpability
of the parties subject to default
The second and third factors also weigh in favor of default.
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Defendant has failed to appear and defend itself in any manner. As a
result, the plaintiff, unless default judgment is entered, will be unable to
vindicate its rights. See Teamsters Pension Fund of Philadelphia & Vicinity v.
Am. Helper, Inc., CIV. 11-624 JBS/JS, 2011 WL 4729023, at *4 (D.N.J. Oct. 5,
2011) (finding that “Plaintiffs have been prejudiced by the Defendants’ failure
to answer because they have been prevented from prosecuting their case,
engaging in discovery, and seeking relief in the normal fashion.”).
Absent any evidence to the contrary, “the Defendant’s failure to answer
evinces the Defendant’s culpability in [the] default. There is nothing before the
Court to show that the Defendant’s failure to file an answer was not willfully
negligent.’” Id. (citing Prudential Ins. Co. of America v. Taylor, No. 08–2108,
2009 WL 536403, at *1 (D.N.J. Feb. 27, 2009) (finding that when there is
nothing before the court to suggest anything other than that the defendant’s
willful negligence caused the defendant to fail to file an answer, the defendant’s
conduct is culpable and warrants default judgment)).
The only possible conclusion based on this record is that the defendant
violated the plaintiff’s rights under the Lanham Act; that the defendant, not the
plaintiff, is culpable both for the underlying conduct and for the failure to
answer the complaint; and that the plaintiff was prejudiced as a result.
Accordingly, I find that the entry of a default judgment is appropriate.
c. Injunctive Relief
The plaintiff seeks a permanent injunction.
The Lanham Act, 15 U.S.C. § 1116(a), authorizes injunctive relief to
restrain acts of infringement. The court’s discretion is guided by the four
traditional equitable factors: (1) irreparable injury; (2) inadequacy of legal
remedies; (3) the balance of hardships as between the plaintiff and defendant;
and (4) the public interest. See Shore Enuff, at *9 (citing eBay Inc. v.
MercExchange, LLC, 547 U.S. 388, 391 (2006)).
Infringement based on a likelihood of confusion is tantamount to a
finding of irreparable injury. See id. (citing Pappan Enters., Inc. v. Hardee’s

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Food Sys., Inc., 143 F.3d 800, 805 (3d Cir. 1998)). I have already made such a
finding.
Current damages, let alone future damages, are difficult or impossible to
calculate as a result of the defendant’s default. In addition, an ongoing loss to
the plaintiff’s business goodwill cannot be readily estimated or compensated in
damages. Id. (citing Louis Vuitton v. Mosseri, 2009 WL 3633882, at *5 (D.N.J.
Oct. 2, 2009)).
The balance of hardships favors the plaintiff. Defendant is not being
deprived of anything to which it is entitled. See Coach, Inc. v. Bags &
Accessories, No. CIV.A. 10-2555 JBS-J, 2011 WL 1882403, at *9 (D.N.J. May
17, 2011) (“The only hardship imposed upon the Defendants is that they obey
the law.”) Moreover, the plaintiff has done what can reasonably be expected to
enforce its rights; defendant’s non-appearance implies that efforts to identify
and restrain future infringement might not be fruitful. See Shore Enuff at *9
(citing Louis Vuitton, supra).
The public interest, too, favors the plaintiff. In a trademark case, the
public interest is “most often a synonym for the right of the public not to be
deceived or confused.” S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 379
(3d Cir. 1992). Here, as noted above, I find that the members of the public
seeking masonry services could be confused by the similarity of the marks.
Permanent injunctive relief will therefore be granted.
CONCLUSION
The Plaintiff’s motion for a default judgment (DE 8) is GRANTED. A
default judgment will be entered in favor of the plaintiff and against defendant.
The defendant is permanently enjoined from further acts of infringement, in
terms further specified in the accompanying Order.
Dated: January 7, 2022

/s/ Kevin McNulty
____________________________________
Kevin McNulty
United States District Judge

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