E.A. Sween Company, Inc. v. Big City Deli Express Corp
Filing
42
ORDER. For the reasons provided in the annexed order, the court respectfully overrules plaintiff's objections and adopts Judge Orenstein's Report and Recommendation as it pertains to liability. Because the court finds that plaintiff cannot establish liability against defendant under any of its claims, the court does not reach plaintiff's argument regarding relief. Plaintiff's motion for default judgment is DENIED. The Clerk of Court is respectfully directed to enter judgment against plaintiff and close this case. Ordered by Judge Kiyo A. Matsumoto on 10/8/2016. (Jacobson, Jonathan)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------X
E.A. SWEEN COMPANY, INC. d/b/a DELI
EXPRESS,
Plaintiff,
ORDER ADOPTING REPORT
& RECOMMENDATION
14-CV-6031 (KAM)(JO)
-againstBIG CITY DELI EXPRESS CORP.,
Defendant.
----------------------------------X
MATSUMOTO, United States District Judge:
On October 14, 2014, plaintiff E.A. Sween Company, Inc.
(“plaintiff”) filed its initial complaint in the instant action
against
Big
trademark
City
Deli
infringement
Express
and
Corp.
dilution,
(“defendant”),
unfair
alleging
competition,
and
injury to business reputation under federal and state law. (ECF
No. 1.) On December 18, 2015, after the magistrate judge noted
defects
in
service
of
the
original
complaint
among
other
deficiencies (ECF No. 25), plaintiff filed an Amended Complaint
containing substantially similar allegations. (ECF No. 28, Amended
Complaint (“Am. Compl.”).) On March 17, 2016, after obtaining an
entry of default on the Amended Complaint (ECF No. 32), plaintiff
filed a motion for default judgment. (ECF No. 33.) On June 21,
2016,
the
court
referred
the
plaintiff’s
default
motion
to
Magistrate Judge James Orenstein. (Docket Entry June 21, 2016.) On
September
12,
2016,
Judge
Orenstein,
in
a
well-reasoned
and
thorough
Report
and
Recommendation,
recommended
denying
plaintiff’s motion for default judgment and dismissing plaintiff’s
complaint with prejudice. (ECF No. 39, Report and Recommendation.)
On September 29, 2016, plaintiff filed objections to the Report
and Recommendation. (ECF No. 41 (“Pl. Mem.”).)
For the reasons
stated herein, the court adopts Judge Orenstein’s Report and
Recommendation
in
full
and
respectfully
overrules
plaintiff’s
objections.
BACKGROUND
The court assumes familiarity with the facts in this
action,
which
were
set
out
in
Judge
Orenstein’s
Report
and
Recommendation. See United States v. Bruno, 159 F. Supp. 3d 311,
313 (E.D.N.Y. 2016) (assuming “familiarity with the underlying
facts of this case, which are detailed in . . . [the] Report and
Recommendation”); Zielinski v. Linaweaver, No. 14-CV-3798, 2015 WL
9302832, at *2 (S.D.N.Y. Dec. 21, 2015) (same).
In brief, plaintiff alleges that defendant is infringing
plaintiff’s “Deli Express” mark by (1) operating a corporation
with the legal name “Big City Deli Express Corp.” (ECF No. 33-2,
Declaration of Timothy Sitzmann (“Sitzmann Decl.”), ¶ 8; id., Ex.
1; see also ECF No. 33-3, Declaration of Frank Misiti (“Misiti
Decl.”), Ex. D) and (2) employing exterior signage holding itself
2
out to the public as “Big City Deli Express and Pizza,” though
plaintiff admits that defendant removed the word “Express” from
the sign before the entry of default on the Amended Complaint.
(Am. Compl. ¶ 33; Misiti Decl., Ex. H; Pl. Mem. at 16-17.)
LEGAL STANDARD
A district court reviews the portions of a Report and
Recommendation to which a party has timely objected under a de
novo standard of review and “may accept, reject, or modify, in
whole or in part, the findings or recommendations . . . .” 28
U.S.C.
§ 636(b)(1)(C).
“The
district
court
may
adopt
those
portions of a report and recommendation to which no objections
have been made, as long as no clear error is apparent from the
face of the record.” Wolff v. Town of Mount Pleasant, No. 06-CV3864, 2009 WL 1468620, at *1 (S.D.N.Y. May 26, 2009). “The clearlyerroneous standard also applies when a party makes only conclusory
or
general
objections,
or
simply
reiterates
his
original
arguments.” Id. (internal quotation marks and citation omitted).
DISCUSSION
Plaintiff brings five claims in this action. Plaintiff
alleges that defendant is liable for:
(1)
Trademark infringement in violation of the Lanham Act,
§ 32, 15 U.S.C. § 1114;
3
(2)
Federal unfair competition in violation of the Lanham Act,
§ 43(a), 15 U.S.C. § 1125(a);
(3)
Dilution in violation of the Lanham Act, § 43(c), 15 U.S.C.
§ 1125(c);
(4)
Injury to business reputation and dilution in violation of
N.Y. Gen. Bus. Law § 350-l; and
(5)
Unfair competition and trademark infringement under N.Y.
Gen. Bus. Law § 360-k and New York common law.
Before
addressing
plaintiff’s
objections,
the
court
addresses the magistrate judge’s determinations to which plaintiff
did not object. Plaintiff has not objected to Judge Orenstein’s
recommendation
regarding
dismissal
of
the
federal
and
state
dilution claims (claims (3) and (4) in the above list). Finding no
clear error in Judge Orenstein’s thorough analysis regarding the
dilution claims (Report and Recommendation, at p. 8-11), the court
adopts the Report and Recommendation with respect to the dismissal
of the federal and state law dilution claims.
Plaintiff
does,
however,
object
to
the
recommended
dismissal of the federal and state trademark infringement and
unfair
competition
claims
(claims
(1),
(2),
and
(5)
above).
Plaintiff effectively argues that the magistrate judge erred in
three ways. Plaintiff argues that:
4
(1)
The
magistrate
judge
failed
to
accept
the
Amended
Complaint’s factual allegations as true, as required for
purposes
of
determining
liability
where
a
defendant
law
and
defaults;
(2)
The
magistrate
judge
misapplied
the
facts
to
conclude that there was no likelihood of confusion between
its marks and defendant’s signage.
(3)
The magistrate judge failed to recognize that plaintiff
has suffered and will continue to suffer irreparable harm
absent equitable relief.
The court addresses plaintiff’s arguments in turn.
I.
Factual Allegations
Plaintiff
failed
to
first
appropriately
contends
deem
the
that
the
magistrate
well-pleaded
facts
judge
in
its
complaint admitted. (Pl. Mem. at 8-11.) The court disagrees.
First,
the
magistrate
judge
explicitly
stated
that
“[a]lthough a court accepts as true all well-pleaded allegations
against
a
defaulting
defendant
for
purposes
of
determining
liability, a default does not establish conclusory allegations,
nor does it excuse any defects in the plaintiff’s pleading.”
(Report
and
Recommendation,
at
p.
3.)
The
magistrate
judge
correctly applied Second Circuit precedent. See Taizhou Zhongneng
5
Imp. & Exp. Co., Ltd v. Koutsobinas, 509 F. App’x 54, 57 (2d Cir.
2013)
(vacating
default
judgment
where
plaintiff’s
complaint
provided “[c]onclusory allegations” and “legal conclusions”).
Second, a number of the allegations plaintiff recites in
its objections (as amalgamations of allegations in the complaint)
plainly constitute legal conclusions. The following allegations,
which plaintiff erroneously claims must be deemed admitted, are
representative of conclusory allegations that the court need and
should not deem to be established:
•
“Defendant’s use of the mark DELI EXPRESS as part of its ‘Big
City Deli Express’ name and mark constitutes an infringement
of Plaintiff’s DELI EXPRESS marks . . . .”
•
“Defendant’s use of Plaintiff’s DELI EXPRESS mark as part of
its ‘Big City Deli Express’ name and mark is likely to cause
confusion . . . .”
•
“Defendant’s actions have been undertaken with the willful
intent to trade on Plaintiff’s famous mark.”
(Pl. Mem. at 11 (citing Am. Compl. ¶¶ 9-112).) Because allegations
like
the
three
mentioned
above
are
legal
conclusions,
the
magistrate judge appropriately disregarded them.
Finally, the magistrate judge correctly recognized that
allegations, such as plaintiff’s claim that its mark is “famous
6
and widely recognized by the general consuming public of the United
States,” are conclusory. (Report and Recommendation, at p. 9 n.6.)
Another significant conclusory allegation is plaintiff’s
claim that, “[u]pon information and belief, Defendant used BIG
CITY DELI EXPRESS on the interior of its store.” (Am. Compl. ¶¶ 2632.) Plaintiff offers no affidavit or declaration regarding the
interior of defendant’s store, as other plaintiffs do in seeking
default judgments in similar circumstances. E.g., Garden City
Boxing Club, Inc. v. Espinal, No. 05-CV-3762, 2008 WL 2078151, at
*2 (E.D.N.Y. May 15, 2008) (“As set forth in his affidavit,
investigator
showing
of
Conclusory
Cosmo
the
Lubrano
observed
boxing
match
at
allegations
based
“on
the
Destiny
unauthorized
to
information
50
public
customers.”).
and
belief
are
[generally] insufficient to support a finding of default-based
liability.” Sola Franchise Corp. v. Solo Salon Studios Inc., No.
14-CV-0946, 2015 WL 1299259, at *6 n.2 (E.D.N.Y. Mar. 23, 2015);
Sciascia v. Prime Protective Servs., Inc., No. 13-CV-0800, 2014 WL
940721,
at
*5
(E.D.N.Y.
Mar.
11,
2014)
(same).
There
is
an
exception for when the allegations on information and belief are
“primarily
within
[the]
defendant’s
knowledge.”
See
Joe
Hand
Promotions, Inc. v. Blais, No. 11–CV–1214, 2013 WL 5447391, at *3
(E.D.N.Y. Sept. 20, 2013). The entire purpose of commercial signage
7
is that it be visible to the public. Allegations regarding signage
therefore cannot meet the aforementioned exception because whether
signage does or does not contain a particular mark is not primarily
within a defendant’s knowledge. See id. Accordingly, the court
need
not
accept
as
true
plaintiff’s
conclusory
allegation
regarding interior signage. 1
II.
Likelihood of Confusion
The court turns next to plaintiff’s argument that the
magistrate judge misapplied the law and facts to conclude that
there was no likelihood of confusion. Plaintiff’s first two Lanham
Act claims – for trademark infringement and unfair competition,
see 15 U.S.C. §§ 1114, 1125(a) — require that plaintiff establish
“that he owns a valid protectable trademark; that the defendant
used the trademark in commerce and without consent; and that there
was a likelihood of consumer confusion.” Mun. Credit Union v.
Queens Auto Mall, Inc., 126 F. Supp. 3d 290, 295 (E.D.N.Y. 2015)
(emphasis added); see also Louis Vuitton Malletier v. Dooney &
1
(See also ECF No. 37, Transcript of Proceedings Before Magistrate Judge
Orenstein, Nov. 18, 2015, at 5:25-6:7 (The Court: “What is it that they are
doing to infringe your client’s marks . . . other than operating the store with
that name above the awning?” Plaintiff’s Counsel: “That’s my understanding
that’s what they’re doing. They’re operating the store with the Deli Express
name.”).) Notably, although plaintiff repeats the allegation regarding interior
signage in its objection during a recitation of the allegations in the complaint
(Pl. Mem. at 7), plaintiff does not repeat the allegation in the list of facts
plaintiff alleges “must be deemed admitted by the Defendant and . . . taken as
true.” (Id. at 10-11.)
8
Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006). Further, “[a]s
with the Lanham Act, a plaintiff suing for trademark infringement
under state law must prove that defendant’s use of the mark is
likely to cause confusion, mistake or to deceive.” Biosafe-One,
Inc. v. Hawks, 639 F. Supp. 2d 358, 367 (S.D.N.Y. 2009), aff’d,
379 F. App’x 4 (2d Cir. 2010); see also W.W.W. Pharm. Co. v.
Gillette Co., 984 F.2d 567, 576 (2d Cir. 1993) (“The state law
cause of action for unfair competition shares many common elements
with the Lanham Act claims of false designation of origin and
trademark infringement, including proof of actual confusion to
recover
damages,
equitable
and
relief.”
proof
of
(citations
a
likelihood
omitted)).
of
confusion
Whether
there
for
is
a
likelihood of confusion is dispositive of plaintiff’s remaining
Lanham Act and state law claims, and plaintiff’s contention that
there
is
a
likelihood
of
confusion
constitutes
its
central
objection to the magistrate judge’s Report and Recommendation.
A.
Standard of Review
Against its own interest, plaintiff represents that the
magistrate
judge’s
factual
findings
regarding
likelihood
of
confusion are to be reviewed under the clearly erroneous standard
and that the magistrate judge’s ultimate determination regarding
likelihood of confusion is reviewed de novo. (See Pl. Mem. at 8.)
9
Plaintiff cites Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70,
75–76 (2d Cir. 1988), which recognized that “[i]n reviewing the
magistrate’s
determinations
as
to
the
Polaroid
factors,
each
specific finding is subject to a clearly erroneous standard, but
the ultimate determination of the likelihood of confusion is a
legal issue subject to de novo appellate review.”
Hasbro is inapposite. In Hasbro, the parties stipulated
to the magistrate judge’s jurisdiction, so the magistrate judge’s
dispositive factual findings were reviewed directly by the Second
Circuit (without an intervening review by the district court). See
id. at 72-73. Here, by contrast, any factual determinations to
which plaintiff has lodged an objection must be reviewed directly
by this court pursuant to 28 U.S.C. § 636(b)(1)(C) and Fed. R.
Civ. P. 72(b) under the de novo standard. See Petrie v. Astrue,
No. 08-CV-1289, 2010 WL 1063836, at *1 (N.D.N.Y. Mar. 19, 2010)
(“De novo review requires that the court give fresh consideration
to those issues to which specific objections have been made. It
will examine the entire record, and make an independent assessment
of
the
magistrate
judge’s
factual
and
legal
conclusions.”
(internal quotation marks and citation omitted)), aff’d, 412 F.
App’x 401 (2d Cir. 2011); 12 Charles Alan Wright & Arthur R.
Millerk, Federal Practice and Procedure § 3070.2 (2d ed. 2016)
10
(“‘De novo review’ means the district court must consider the
matter referred to a magistrate judge anew, as if it had not been
heard before and as if no decision previously had been rendered.”).
Accordingly, the court reviews the magistrate judge’s factual and
legal determinations regarding likelihood of confusion de novo.
B.
Likelihood of Confusion Factors
Having
evaluated
de
novo
the
merits
of
plaintiff’s
arguments regarding likelihood of confusion, the court concludes
that plaintiff has not shown on this record that there is a
likelihood
of
consumer
confusion
between
the
plaintiff’s
and
defendant’s marks. Courts in the Second Circuit apply the eightfactor balancing test set out by Judge Friendly in Polaroid Corp.
v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). “The eight
factors are: (1) strength of the trademark; (2) similarity of the
marks; (3) proximity of the products and their competitiveness
with one another; (4) evidence that the senior user may ‘bridge
the gap’ by developing a product for sale in the market of the
alleged
infringer’s
product;
(5)
evidence
of
actual
consumer
confusion; (6) evidence that the imitative mark was adopted in bad
faith;
(7)
respective
quality
of
the
products;
and
(8)
sophistication of consumers in the relevant market.” Lebewohl v.
Heart Attack Grill LLC, 890 F. Supp. 2d 278, 293 (S.D.N.Y. 2012).
11
“Among the eight, the first three — the strength of the mark, the
similarity of the marks, and the proximity of the products — are
usually the most important.” Zuppardi’s Apizza, Inc. v. Tony
Zuppardi’s Apizza, LLC, No. 10-CV-01363, 2014 WL 4841085, at *14
(D. Conn. Sept. 29, 2014) (citing Mobil Oil Corp. v. Pegasus
Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)).
i.
Strength of the Plaintiff’s Mark
Judge
Orenstein
correctly
concluded
(see
Report
and
Recommendation, at p. 5) that plaintiff’s mark, in light of its
registration, is presumed strong. See Road Dawgs Motorcycle Club
of the U.S., Inc. v. Cuse Roa Dawgs, Inc., 679 F. Supp. 2d 259,
286 (N.D.N.Y. 2009) (“Plaintiffs’ mark is registered and thus is
presumptively strong as applied to the goods and services listed
on the registrations . . . .”).
ii.
In
Degree of Similarity
assessing
the
similarity
of
two
marks,
courts
evaluate the “overall impression created by the [marks] and the
context in which they are found and consider the totality of
factors that could cause confusion among prospective purchasers.”
Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1078 (2d
Cir. 1993). There is no evidence in the record that defendant’s
“used” plaintiff’s mark to advertise, sell, or promote its business
12
to
prospective
purchasers.
Emphasizing
correctly
that
only
defendant’s signage was at issue in terms of evaluating likelihood
of
confusion
(see
supra
Discussion
Part
I),
Judge
Orenstein
concluded that “[c]ontext matters: [plaintiff] is a corporation
that uses the term ‘Deli Express’ as a brand for pre-made deli
items sold throughout the country; the most natural reading of Big
City’s awning is that the ‘Big City Deli’ is a local institution
that offers both ‘Express’ service for its delicatessen foods and
also ‘Pizza.’” (Report and Recommendation, at p. 7.) Indeed, the
only similarity between plaintiff’s mark and defendant’s purported
use of it is the adjacent placement of the words “Deli Express” in
its awning sign which reads “Big City Deli Express & Pizza.”
Plaintiff’s argument based on the unique brand name “Starbucks” is
inapposite. In the Second Circuit, the juxtaposition of fragments
of a mark is not useful in deciding if marks are likely to cause
confusion. See Brennan's, Inc. v. Brennan's Rest., L.L.C., 360
F.3d 125, 133 (2d Cir. 2004) (“When evaluating the similarity of
marks, courts consider the overall impression created by a mark.
Each
mark
must
be
compared
against
the
other
as
a
whole;
juxtaposing fragments of each mark does not aid in deciding whether
the compared marks are confusingly similar.”).
13
Plaintiff’s
objections
to
Judge
Orenstein’s
determination regarding the degree of similarity between the two
marks is largely a verbatim rehashing of arguments plaintiff
presented in its initial memorandum of law in support of its motion
for default judgment. (Compare ECF No. 33-1, at pp. 8-9, with Pl.
Mem. at 12-14.) Accordingly, plaintiff is not entitled to de novo
review on the degree of similarity factor. See Visich v. Walsh,
No. 10-CV-4160, 2013 WL 3388953, at *2 (S.D.N.Y. July 3, 2013)
(“The clearly erroneous standard also applies where a party’s
objections are . . . an attempt to engage the district court in a
rehashing
of
the
same
arguments
set
forth
in
the
original
petition.”).
Even upon de novo review, however, the court agrees
entirely
with
Judge
Orenstein’s
reasoning.
In
applying
the
similarity of the marks factor, “courts must analyze the mark’s
overall impression on a consumer, considering the context in which
the
marks
are
displayed.”
Louis
Vuitton,
454
F.3d
at
117.
Plaintiff’s “Deli Express” mark appears on the plaintiff’s deli
items themselves, which are sold nationwide. If defendant were
selling sandwiches or pizza labeled “Deli Express,” for example,
this would be a different case. Defendant’s mark, however, only
14
appeared on its awning for an unspecified period of time. (Misiti
Decl, Ex. H.) Further, plaintiff represents that defendant removed
the word “Express” from its awning so that it read “Big City Deli
& Pizza” before the entry of default against defendant on the
Amended Complaint. (Am. Compl. ¶ 33; Pl. Mem. at 16-17.) The court
finds that the marks are not similar.
iii. Proximity of the Products in the Marketplace and
Sophistication of the Buyers
“The proximity-of-the-products inquiry concerns whether
and to what extent the two products compete with each other.”
Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir.
1996) (internal quotation marks omitted). The proximity factor is
also
generally
considered
alongside
the
factor
regarding
sophistication of the buyers. See Cadbury Beverages v. Cott Corp.,
73 F.3d 474, 480 (2d Cir. 1996) (“The eighth Polaroid factor,
sophistication of the buyers, has been called analogous to the
proximity
factor.”
(internal
quotation
marks
and
citation
omitted)). Judge Orenstein determined that “while both [plaintiff]
and [defendant] sell food, they do so in very different ways to
different groups of customers.” (Report and Recommendation, at p.
6.) Judge Orenstein also noted that there was no evidence in the
record pertaining to the sophistication of the customer base. (Id.,
at p. 7.)
15
Here,
plaintiff
contends
in
its
objections
that
it
“sells the same products (e.g., sandwiches, pizza and coffee)” as
the defendant. (Pl. Mem. at 14-15.) Plaintiff’s products are
principally pre-packaged foods. (Am. Compl. ¶¶ 49, 51, 53, 55, 79,
81; see also Misiti Decl., Ex. A.) Plaintiff does not provide
information
regarding
the
sophistication
of
customers
or
the
extent to which its products compete with the defendants based on
proximity.
Moreover,
plaintiff
has
offered
no
evidence
that
defendant’s purportedly competing products are pre-packaged or
made on site. Plaintiff’s description of the purportedly competing
goods in the Amended Complaint is limited to its contentions that
defendant sells “sandwiches,” “pizza,” and “coffee.” (Am. Compl.
¶¶ 30-32.) Merely selling the same general category of product is
not sufficient to establish that the products are in proximate
competition. See Lebewohl, 890 F. Supp. 2d at 295 (finding that
two restaurants contesting likelihood of confusion regarding their
respective sandwiches were not in competitive proximity).
Ultimately, the court finds on de novo review that
neither the proximity of the products factor nor the consumer
sophistication factor favors either party.
16
iv.
Likelihood of Bridging the Gap
“‘Bridging the gap’ refers to the likelihood that the
senior user will enter the junior user’s market in the future, or
that consumers will perceive the senior user as likely to do so.”
Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 387 (2d Cir.
2005); see also Nature’s Best, Inc. v. Ultimate Nutrition, Inc.,
323 F. Supp. 2d 429, 434 (E.D.N.Y. 2004) (“The fourth Polaroid
factor is an inquiry into whether either the senior or junior user
of the mark is likely to bridge the gap and enter into the other’s
market.” (citation omitted)). Judge Orenstein concluded that, even
assuming the products were in competitive proximity, plaintiff
“offers no reason to believe that it will enter [defendant’s]
market.” (Report and Recommendation, at pp. 6-7.)
Plaintiff contends that “consumers could readily assume”
that it has expanded “into owning its own stores that sold its
products.” (Pl. Mem. at 16.) Plaintiff, however, “has failed to
provide any relevant evidence that the public believes that it has
or will enter [defendant’s] market.” The Sports Auth., Inc. v.
Prime Hosp. Corp., 89 F.3d 955, 963 (2d Cir. 1996). Accordingly,
this factor does not favor plaintiff.
17
v.
Evidence of Actual Confusion
Plaintiff admits that there is no evidence of actual
confusion. (Pl. Mem. at 16.) Although evidence of actual confusion
is not a prerequisite to a finding of a likelihood of confusion,
“it is certainly proper for the trial judge to infer from the
absence of actual confusion that there was also no likelihood of
confusion.” McGregor–Doniger Inc. v. Drizzle Inc., 599 F.2d 1126,
1136 (2d Cir. 1979), overruled on other grounds by Bristol–Myers
Squibb Co. v. McNeil–P.P.C. Inc., 973 F.2d 1033, 1044 (2d Cir.
1992). Here, plaintiff has not presented even one instance of
actual consumer confusion. The absence of evidence of actual
confusion favors defendant.
vi.
Bad Faith
Judge Orenstein determined that bad faith cannot merely
be
inferred
knowledge
because
of
defendant
plaintiff’s
adopted
rights
in
plaintiff’s
the
mark.
mark
(Report
with
and
Recommendation, at p. 7 & n.4.) Bad faith can be inferred where
“prior knowledge is accompanied by similarities so strong that it
seems plain that deliberate copying has occurred.” Paddington
Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 587
(2d Cir. 1993).
18
Plaintiff first emphasizes defendant’s disregard for the
multiple cease-and-desist letters plaintiff sent. (Misiti Decl.,
Exs. E-F.) “But a defendant’s refusal to abandon a mark in the
face of a cease and desist letter cannot demonstrate bad faith
standing alone. If a defendant reasonably believes its mark does
not infringe plaintiff’s, she does not act with the [requisite]
intention of capitalizing on plaintiff’s reputation and goodwill.”
O’Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500,
525
(S.D.N.Y.
2008)
(internal
quotation
marks
and
citation
omitted)). Under similar circumstances, the Supreme Court has
explained,
Defendants’ persistence in their use of the design after
notice proves little or nothing against them. They had
been advertising their goods by name and using the design
in connection with the name. The natural interpretation
is not that they wanted to steal the plaintiff’s good
will, of which they then learned for the first time, but
that they wished to preserve their own. . . . If the
defendants’ conduct was a wrong, . . . it was a wrong
knowingly committed, but no further inference against
the defendants can be drawn from the fact.
Straus v. Notaseme Hosiery Co., 240 U.S. 179, 181–182 (1916).
Plaintiff next emphasizes that, by defaulting, defendant
effectively admitted to using the Deli Express mark with the intent
to confuse and deceive customers and capitalize on plaintiff’s
mark. (Pl. Mem. at 18.) Plaintiff, however, does not even attempt
to address Judge Orenstein’s recognition, in evaluating bad faith,
19
that defendant has already “removed the word ‘Express’ from its
exterior
signage.”
(Report
and
Recommendation,
at
p.
7.)
Accordingly, the court finds that this factor does not favor
plaintiff.
vii. Quality of the Defendant’s Products
Judge Orenstein correctly noted that the record contains
no information that would permit the court to evaluate the quality
of the defendant’s products. (Report and Recommendation, at p. 7.)
Plaintiff argues only that plaintiff cannot control the quality of
defendant’s food. (Pl. Mem. at 18-19.) In the absence of evidence
in the record to support plaintiff’s contentions, the court cannot
find that the quality factor favors either party.
C.
There is No Likelihood of Confusion
The court finds on de novo review that the likelihood of
confusion factors tilt heavily in defendant’s favor. Although
plaintiff’s mark is presumed strong, the marks are not similar;
plaintiff has not established that the products are competitively
proximate;
plaintiff
has
not
presented
evidence
regarding
a
likelihood of bridging the gap; there is no evidence of actual
confusion; there is insufficient evidence of bad faith to find
that the factor favors plaintiff; and there is an absence of
evidence in the record to make findings regarding the final two
20
factors, quality of the defendant’s product and sophistication of
the relevant consumer base. Accordingly, the court reaches the
same conclusions as Judge Orenstein, and adopts Judge Orenstein’s
finding
that
there
is
no
likelihood
of
confusion
regarding
plaintiff’s mark.
Because
plaintiff
to
a
likelihood
establish
its
of
confusion
remaining
is
claims
required
for
for
trademark
infringement and unfair competition under the Lanham Act and state
law (see supra Discussion Part B), plaintiff cannot succeed on its
motion for default judgment.
CONCLUSION
For
overrules
the
foregoing
plaintiff’s
reasons,
objections
and
the
adopts
court
Judge
respectfully
Orenstein’s
Report and Recommendation as it pertains to liability. Because the
court finds that plaintiff cannot establish liability against
defendant under any of its claims, the court does not reach
plaintiff’s
argument
regarding
relief.
Plaintiff’s
motion
for
default judgment is DENIED.
SO ORDERED.
Dated:
October 8, 2016
Brooklyn, New York
_____________/s/_____________
Kiyo A. Matsumoto
United States District Judge
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