RVC Floor Decor, Ltd. v. Floor & Decor Holdings, Inc. et al

Filing 261

MEMORANDUM & ORDER FINDINGS OF FACT AND CONCLUSIONS OF LAW; For the foregoing reasons, IT IS HEREBY ORDERED that the Court finds in favor of Defendant on all of Plaintiff's remaining claims. The Clerk of the Court is directed to enter judgment consistent with these Findings of Fact and Conclusions of Law, and thereafter to mark this matter CLOSED. So Ordered by Judge Joanna Seybert on 6/5/2024. (CV)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
--------------------------------X
RVC FLOOR DECOR, LTD.,
Plaintiff,
-against-

MEMORANDUM & ORDER
18-CV-6449 (JS)(ARL)

FLOOR AND DECOR OUTLETS OF
AMERICA, INC.,
Defendant.
--------------------------------X
APPEARANCES
For Plaintiff:
Craig B. Sanders, Esq.
Jonathan Mark Cader, Esq.
James H. Freeman, Esq.
Sanders Law Group
333 Earle Ovington Boulevard, Suite 402
Uniondale, New York 11530
Erica Carvajal, Esq.
Sanders Law LLC
100 Garden City Plaza, Suite 500
Garden City, New York 11530
For Defendant:

Bryan J. Wolin, Esq.
H. Forrest Flemming, III, Esq.
Robert Nathan Potter, Esq.
Kilpatrick Townsend & Stockton LLP
1114 Avenue of the Americas, 21st Floor
New York, New York 10036
Richard Charles Henn, Jr., Esq.
Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street, Suite 2800
Atlanta, Georgia 30309

SEYBERT, District Judge:
RVC Floor Decor, Ltd. (“Plaintiff”) brought this action
against Floor and Decor Outlets of America, Inc. (“Defendant”) for

violations of the Lanham Act, New York state common law, and New
York General Business Law.

(See generally Complaint, ECF No. 1.) 1

This case initially proceeded as a jury trial; however,
on April 18, 2023, after dismissing Plaintiff’s New York common
law unfair competition claim as a matter of law, this Court granted
Defendant’s Motion to Strike the Jury since the Court found that
the only remaining remedy which Plaintiff sought--an accounting of
profits under the Lanham Act--was an equitable remedy which did
not create a jury-trial right. 2 (Reconsideration Order, at 22-24.)
This Memorandum, Decision, and Order contains the findings of fact
and conclusions of law required by Federal Rule of Civil Procedure

Plaintiff’s New York General Business Law § 349 claim was
dismissed during summary judgment by then-presiding Judge Hurley.
RVC Floor Decor, Ltd. v. Floor and Decor Outlets of Am., Inc., 527
F. Supp. 3d 305, 332 (E.D.N.Y. 2021).
Judge Hurley reasoned
Plaintiff’s § 349 claim should be dismissed because, inter alia,
Plaintiff implicitly conceded its case did not involve evidence of
actual injury. Id. at 322. Additionally, Judge Hurley precluded
Plaintiff from seeking compensatory damages as part of its Lanham
Act claim. Id. at 332.
1

Similarly, at the close of Plaintiff’s case, upon reconsideration,
this Court granted in part and denied in part Defendant’s Motion
for Judgment as a Matter of Law and dismissed both Plaintiff’s New
York common law unfair competition claim and its claim for punitive
damages pursuant to same. (See Apr. 26, 2023 Mem. & Order, ECF
No. 258, in toto (hereafter the “Reconsideration Order”).) The
Court reasoned, in sum, Plaintiff had not introduced sufficient
evidence of bad faith to sustain its New York common law unfair
competition claim. (Id. at 8-16.)
2

See also supra n.1.
2

52(a)(1) 3 as to Plaintiff’s remaining claims, to wit: (1) trademark
infringement and unfair competition in violation of § 43(a) of the
Lanham Act; and (2) violations of New York General Business Law
§ 360-l.

After carefully considering the evidence introduced at

trial, the arguments of counsel, and the controlling law on the
issues presented, the Court finds in favor of Defendant on all
remaining counts.

FINDINGS OF FACT 4
Based on the evidence presented, the Court makes the
following

findings

of

fact.

They

are

drawn

from

witnesses’

testimony at trial, and the parties’ trial exhibits.

3

Rule 52(a)(1) provides:
In an action tried on the facts without a jury
or with an advisory jury, the court must find
the facts specially and state its conclusions
of
law
separately.
The
findings
and
conclusions may be stated on the record after
the close of the evidence or may appear in an
opinion or a memorandum of decision filed by
the court.

FED. R. CIV. P. 52(a)(1).
To the extent any of the findings of fact may be deemed
conclusions
of
law,
they
shall
also
be
considered
conclusions. Likewise, to the extent any of the conclusions
of law may be deemed findings of fact, they shall be
considered findings.
See Miller v. Fenton, 474 U.S. 104,
113–14
(1985)
(noting
the
difficulty,
at
times,
of
distinguishing findings of fact from conclusions of law).
4

3

I.

General Background: Plaintiff
A. Plaintiff’s Corporate Name and its Asserted Mark
Plaintiff is a New York corporation, incorporated on

October 4, 1974, with its principal place of business in Rockville
Centre, New York.
(“Altarac”)

(Tr. 178:24-179:1, 482:12-22.)

is

the

(Id. 178:20-23.)
original

sole,

owner

of

Plaintiff.

Robert Smith (“Smith”) was one of Plaintiff’s

founders

and

(Id. 113:15-114:2.)
in 2000.

current,

Glenn Altarac

owned

fifty

percent

of

the

company.

Smith sold his interest in Plaintiff sometime

(Id.)
Plaintiff’s corporate name is RVC Floor Decor, Ltd.

(Id. 178:13-14.)

Nevertheless,

Plaintiff

asserts

from

its

inception to present it has operated under the name “Floor Decor”
(the “Asserted Name”) within the geographic region of Nassau,
Suffolk,

Kings,

and

Queens

County

(the

“Four-County

Area”).

(Id. 116:11-22; 117:11-19; 185:25-186:6; 482:25-483:1.) Plaintiff
added “RVC” to its corporate name on the advice of its attorney,
who advised it “would be easier for [Plaintiff] to get the name
that [it] wanted”, i.e., “Floor Decor”, if it included “RVC”.
(Id. 117:13-19;

149:23-150:4.)

Plaintiff

included

the

words

“Floor Decor” in its name because it accurately “described the
[products]

that

(Id. 150:5-7.)

[Plaintiff
In

was]

formulating

its

going

to

corporate

be
name,

selling.”
it

was

understood by Smith that “somebody might [already] have” the name
4

“Floor Decor”. (Id. 117:20-118:1.) From its inception to present,
Plaintiff has neither applied to register the Asserted Name with
the United

States

Patent

&

Trademark

register it at the state level.
Notwithstanding

Office,

nor

applied

to

(Id. 150:12-19; 346:20-347:12.)

Plaintiff’s

corporate

name,

when

operating the business, Smith, Altarac, and Plaintiff’s employees
have

consistently

referred

(Id. 118:4-9;

182:23-25;

historically,

Plaintiff

to

Plaintiff

222:20-22;
has

been

as

“Floor

417:2-17.)

Decor.”

Nevertheless,

inconsistent

with

its

presentation of the Asserted Name in various advertisements, and
online.

(See PX017; PX019; DX1005; DX1006-DX1009; DX1018; see

also infra–Part I.D.)
B. Plaintiff’s Business Operations, Generally
In 1984, Plaintiff relocated to its present location at
456 Sunrise Highway, Rockville Centre (the “Rockville Location”).
(Tr. 121:15-20; 183:1-14; 482:23-24.)

During this period, the

Rockville Location was approximately 11,500 square feet to which
6,000 square feet was allocated to warehousing, 2,000 square feet
was allocated to storage and fabrication of rugs, and the remainder
was allocated to the showroom.
this

was

increased

to

(Id. 135:6-16.)

approximately

In the late 1980s

13,500

square

feet.

(Id. 183:12-19.)
The Rockville Location is approximately 3,000 feet from
the Long Island Railroad and Plaintiff has generated business from
5

commuters who saw the Rockville Location whilst commuting through
Rockville Centre.
Centre may
Location.

have

(Id. 137:10-139:13.)
attended

the

grand

The Mayor of Rockville

opening

of

the

Rockville

(Id. 139:20-22.)
The Rockville Location features an exterior sign on the

fascia of the building which displays the Asserted Name alongside
the

words:

“carpet,

tile,

rugs”,

in

(Id. 136:3-16; 137:4-9; see also PX049.)
font

of

letters

(Id. 163:5-19.)

in

Plaintiff’s

lowercase,

font.

Historically, the text

sign

was

colored

white.

Additionally, Plaintiff’s exterior sign includes

a stylized “fd” logo to the left of the Asserted Name.
see also Tr. 155:4-12.)

(PX049;

Plaintiff used variations of the “fd”

logo in certain of Plaintiff’s advertisements throughout this
period.

(Compare

Tr. 155:4-156:16.)

e.g.,

PX006

with

PX007;

see

also

In other advertisements, Plaintiff omitted the

“fd” logo entirely and instead presented a design in which the
Asserted Name was displayed at a right angle on the upper lefthand side of the advertisement.

(See PX007.)

Notwithstanding

these design choices, Plaintiff’s advertisements from 1974-1996
consistently referred to Plaintiff by the Asserted Name.
Today, the exterior sign is largely similar; however,
the

lettering

on

(Tr. 163:5-21; 184:7-25.)

the

sign

Further,

is
sometime

colored
in

2014,

red.
in

conjunction with Plaintiff’s plans to open a new store in Syosset,
6

Plaintiff added “& Design” to its name and adopted a new “FD&D”
logo which was affixed to Plaintiff’s exterior sign above the
entrance of the Rockville Location. 5
PX049.)

(Id. 377:18-378:5; see also

The “FD&D” logo became Plaintiff’s main logo from 2014

onwards and featured on all its subsequent advertising.

(Id.; see

also DX1020.)
C. Plaintiff’s Target Customers and Asserted Market
At

inception,

Plaintiff

sold

linoleum, wood floors and ceramic.”

“carpet,

vinyl

tile,

(Id. 116:23-117:1.)

From

1975-1980, 75 to 80 percent of Plaintiff’s business consisted of
“mostly carpet, vinyl, tile, wood flooring and ceramic, in that
order.”

(Id. 122:13-19.)

Upon moving to the Rockville Location,

almost immediately, Plaintiff began selling decorative products in
addition to those products identified above. (Id. 121:15-122:5.)
Advertisements from the 2010s confirm Plaintiff’s contemporary
product offerings remain consistent with those offered in the past.
(See,

e.g.,

selection
flooring”

of

DX

1009

carpet,
and

(stating

Plaintiff

hardwood,

ceramic,

customers

offers

“the

laminate
can

largest

and

vinyl

“[v]isit

[the] . . . showroom . . . for all of [their] flooring, kitchen,

By referring to itself as “Floor Decor & Design”, Plaintiff
intended to eliminate concerns the Asserted Name, standing alone,
would not properly inform customers about the range of design
products Plaintiff intended to offer at its new Syosset store
location. (Tr. 223:15-226:1.)
5

7

bath, and interior design needs”); see also DX 1046 (stating, in
addition to those categories of products previously identified,
Plaintiff

also

offers

“Fabrics

Draperies . . . Window
upholstery . . . Vinyl
Contracting[,]
Cabinetry

Interior

Kitchens

and

Trim

and

Wall

Covering

Treatments[,]
Sliding
and

Windows[,]

Exterior

Bathrooms”

Custom

Roofing[,]

Painting[,]

and

provides

General

Custom

Built

installation

services which are performed by Plaintiff’s “own craftsman”).)
Historically, Plaintiff’s customer base has extended
from Nassau County into Brooklyn, Queens, and Suffolk County.
(Tr. 133:16-24.)

Plaintiff’s

company

policy

is

to

have

its

employees personally show customers around its showroom and to
discuss design options with them.

(Id. 436:3-20.)

The amount of

time Plaintiff’s employees will spend with any client varies;
however, some clients can spend up to two or three hours at
Plaintiff’s store.

(Id. 435:8-436:2.)

Generally, even clients

engaging in small projects will spend thousands of dollars with
Plaintiff.

(Id. 438:5-14.)
Since 1996, Plaintiff has served approximately 18,000

customers.

(Id. 283:8-10.)

As much as 70 to 80 percent of

Plaintiff’s business consists of satisfied, repeat customers, and
referrals.

(Id. 420:3-421:12; 437:13-16; see also PX115 (“Korner

8

Tr.”) 11:4-7; PX116 (“Lepkoff Tr.”) 7:18-24; 22:25-23:3; PX156
(“Venier Tr.”) 8:11-24; 20:12-18; 27:14-28:3.)
D. Plaintiff’s Advertising Efforts and Gross Sales Revenue
From

1975-1980,

Plaintiff’s

advertising

budget

was

approximately $10,000 to $12,000 per year; Plaintiff “tried to
keep [the advertising budget] to a minimum” because of the expense.
(Tr.

128:14-20.)

The

parties

dispute

advertising was continuous in nature.

whether

Plaintiff’s

What cannot be disputed is

that throughout 1974-1980, Plaintiff’s advertising campaign was
limited to small, local newspapers, including Pennysaver and the
Yellow Pages; Plaintiff’s advertising was targeted at the South
Shore of Long Island and into Suffolk County.
125:5-8.)

(Id. 124:14-25;

During this time Plaintiff advertised itself using the

Asserted Name.

(Id. 125:23-25.)

As to sales, Smith testified

Plaintiff’s first year sales in 1974 were approximately $500,000;
this figure later rose in 1978 to an estimated $1 million. 6
(Id. 119:12-14; 126:4-10.)
Around 1982, Plaintiff began advertising in Newsday.
(Id. 126:24-127:18.)

Likewise, Plaintiff utilized various other

forms of print media including pamphlets, direct brochures, and
Plaintiff’s historical sales numbers were wholly based upon
Smith’s recollection.
Consequently, the Court accepts these
numbers with trepidation, and affords them less credence than it
would have had Plaintiff substantiated Smith’s estimations with
documentary evidence. (See id. 153:21-154:6.)
6

9

mailings to former customers.

(Id. 127:19-128:7.)

Sales in 1982

were estimated to be $1.5 million; this figure increased to $2
million in 1984.
Smith
advertising

(Id. 126:4-10.)
testified

that,

budget

(Id. 139:25-140:5.)
relationship

in

was

the

1990s,

Plaintiff’s

approximately

$100,000. 7

Around 1990, Plaintiff entered a business

with

Karastan

Carpets

(“Karastan”).

(Id. 142:20-143:13.) Subsequently, Plaintiff’s advertising budget
increased to approximately $125,000 per year.

(Id. 144:13-17.)

To

advertise

prominently

its

association

featuring

advertisements.

the

with

Karastan,

Plaintiff

Karastan

logo

some

(Id. 154:19-22.)

in

of

began
its

Throughout this period, Newsday

remained Plaintiff’s main source of advertisement (id. 140:3-9;
144:2-5), but Plaintiff did advertise “on TV at some point”,
including Channel 12 and some cable channels.

(Id. 140:3-9.)

However, between 2000 and July of 2015, Plaintiff engaged in no
television advertising.

(Id. 383:5-9.)

Likewise, Plaintiff ran

a very limited amount of radio advertisement due to difficulty
tracking its effectiveness and the cost.

(Id. 153:7-20.)

Plaintiff

advertisement

did

run

some

limited

radio

While
between

Smith’s estimations of Plaintiff’s historical advertising
budgets, like his estimations as to its historical sales volumes,
were based entirely upon his recollection.
Plaintiff did not
introduce documentary evidence substantiating these figures. (See
id. 152:2-5.)
7

10

2012-2013,

this

was

the

total

extent

advertisement during the relevant period.

of

Plaintiff’s

radio

(Id. 383:10-24.) 8

Sometime in the 1990s, Plaintiff entered a business
relationship with Carpet One.
membership

buying

group.

(Id. 144:21-24.)
(Id.

Carpet One is a

144:25-145:8.)

Plaintiff’s

membership in Carpet One provided it with “advantages that other
stores” did not have, including, inter alia, rebates on products
Plaintiff

purchased,

advertisements.

and

help

from

(Id. 145:9-18.)

Carpet

One

in

developing

Plaintiff continued to operate

under the Asserted Name notwithstanding its membership in Carpet
One.

(Id. 146:10-17.)

Nevertheless, beginning in 1996, Plaintiff

began to include Carpet One’s brand-name “in a smaller font or
logo” on some of Plaintiff’s advertisements.
159:3-163:4.)
reimbursement

(Id. 146:15-21;

In exchange, Plaintiff received “a greater level of
from

(Id. 162:5-163:4.)

Carpet

One

Additionally,

for

the

Plaintiff

ad[vertisement].”
began

running

advertisements in which Carpet One’s brand-name was featured “more
centrally, such as including their name after [Plaintiff’s] in the
title of the ad[vertisement]”. (Id.; see also id. 159:13-19; PX019
(2011 advertisement which Smith agreed was demonstrative of what
he meant when he testified Plaintiff ran advertisements featuring

Plaintiff’s 2020 radio advertisement campaign is irrelevant
considering the secondary meaning cutoff date of July 2015.
8

11

“Carpet One” centrally with the Asserted Name).)

Smith estimated

that by 1990, Plaintiff’s sales had risen to $3 million and peaked
at $3.8 million in 1995.
From

(Id. 126:14-20.)

1996-2001,

Altarac

testified

Plaintiff’s

sales

remained above $3 million, grossing between approximately $3.1
million and $3.5 million.

(Id. 284:24-285:1.)

On February 20, 1997, Plaintiff was featured in the “RVC
News Owl” in recognition of various donations of carpet it had
made to a local senior living project.

(Id. 130:7-131:8; see also

PX027.)
From

1996-2011,

Plaintiff’s

advertising

budget

was

estimated to be consistently above $100,000. (Id. 284:24-286:13.)
From 2001-2002, Plaintiff began advertising in the Long Island
section of the New York Times, which covered the Four-County Area,
using the Asserted Name.

(Id. 200:11-21.)

Plaintiff discontinued

advertising in the New York Times shortly thereafter because the
expense was not worth the return on investment. (Id. 200:22-201:4;
384:2-15.)
Regarding online advertising, Plaintiff did not maintain
its own internet domain name as of 2004; however, during this time
Carpet

One

developed

a

website

www.CarpetOne.com/FloorDecor.

for

Plaintiff

with

the

URL:

(Id. 208:2-15; see also PX013.)

A

later domain name, developed in 2012 for Plaintiff by Carpet One,
identified Plaintiff’s website as floordecorrockvillecentre.com.
12

(Id.

220:5-15;

359:12-361:6;

see

also

DX1005.)

This

later

iteration of Plaintiff’s website referred to Plaintiff as “Floor
Decor Carpet One Floor & Home®” and referred to Altarac as the
owner of same.

(DX1005.) 9

As of July 2015, Plaintiff did not maintain any social
media accounts. (Tr. 381:22-382:8.) Likewise, prior to July 2015,
Plaintiff

did

not

run

any

paid

advertisements

on

Google.

(Id. 384:19-25.)
From 2012 onwards, Plaintiff’s advertising expenditures
and gross sales revenues are each substantiated by accounting
records.

(Id. 385:3-10.)

These records reveal that Plaintiff’s

advertising budgets from 2012-2015 were considerably lower than
those historical budgets estimated to by Smith.

For example, in

2012, Plaintiff’s advertising expenditures were $56,381 (see id.
385:24-386:11; see also DX1037 at 58); this figure fell modestly
in 2013 to $48,037 (see id. 386:18-387:1; see also DX1037 at 50),
before falling precipitously to $23,497 in 2014 (see id. 387:4-9;

Record evidence further establishes that many of Plaintiff’s own
suppliers refer to Plaintiff on their websites as “RVC Floor Decor”
and that third-party listings, likewise, refer to Plaintiff using
names other than the Asserted Name. (See DX1010, DX1014-DX1017;
Tr. 372:14-375:2.)
9

13

see also DX1037 at 42.)

In 2015, Plaintiff spent $44,654 on

advertising expenditures. (Id. 387:19-25; DX1037 at 34.) 10
As to sales revenue, Plaintiff’s accounting records show
Plaintiff grossed: (1) $2,002,450 in 2012; (2) $2,573,759 in 2013;
(3) $2,072,294 in 2014; (4) $2,206,660 in 2015; (5) $2,793,872 in
2016; (6) $2,392,584 in 2017; and (7) $2,530,070 in 2018.

(See

DX1037, in toto.)
II.

General Background: Defendant
A. Defendant Owns a Registered Trademark For its Floor &
Decor Mark
Defendant is a Delaware corporation with its principal

place of business in Atlanta, Georgia.

(Tr. 483:2-4.)

Defendant

adopted its Floor & Decor mark (hereafter, Defendant’s “Mark”) in
2003 and applied to register same with the United States Patent
and Trademarks Office the same year. (Id. 663:19-23.) Defendant’s
Mark was first registered on June 13, 2006, under U.S. Registration
Number

3,102,586.

(Id. 664:8-19;

see

also

DX1100

at

2.) 11

While Altarac disbelieved Plaintiff’s advertising expenditures
could be this low, the Court notes these accounting records were
prepared by Plaintiff’s own accountant.
(Tr. 387:12-18.)
Moreover, Altarac’s admission he does not even review Plaintiff’s
financial records renders all his testimony as to Plaintiff’s
financials incredible. (See id. 408:16-409:12.)
10

Defendant’s application for protection of its “Floor & Decor”
name was registered on July 4, 2006, under U.S. Registration Number
3,110,827. (See DX1100 at 12.) Both the June 2006, and July 2006
applications were filed July 14, 2003. (Id.)
11

14

Defendant’s Mark covers “retail store services featuring flooring
materials

and

related

(DX1100 at 2.)

home

improvements

[and]

accessories.”

Defendant was unaware of Plaintiff’s existence at

the time it adopted its Mark.

(Tr. 662:12-16.)

Plaintiff never

objected to any of Defendant’s applications or registrations.
(Id. 664:16-25.)
B. Defendant’s General Business Operations
Defendant’s brand proposition is “top quality floors at
everyday low prices.”

(Id. 660:6-10.)

Defendant maintains it

holds the “largest in stock position in the marketplace.”

(Id.)

Defendant does not offer carpet or rugs but instead sells
hard

surface

flooring,

(Id. 660:14-17.)

to

wit:

“tile,

wood,

[and]

stone.”

Similarly, Defendant does not offer furniture,

upholstery, window treatments, wall coverings, custom kitchens,
custom

bathrooms,

contracting,

or

vinyl

painting.

siding,
(Id.

windows,

roofing,

746:5-748:13;

general

750:5-751:21.)

Defendant offers only limited design services such as helping
customers

“make

decisions

on . . . matching

color.”

(Id. 746:22-747:4.)
Defendant opened its Farmingdale store in November 2018.
(Id. 483:8-9.)
80,000

square

nationwide,

Defendant’s Farmingdale store is approximately
feet;

which,

(Id. 691:23-692:5;

this
on

is

typical

average,

734:19–735:3.)
15

of

measure

Defendant’s
75,000

Customers

stores

square
entering

feet.
the

Farmingdale store are confronted with multiple cash registers,
“high ceilings, bright lights, a lot of product, [and] a lot of
displays.”

(Id. 735:18-23.)

Customers purchasing product from

one of Defendant’s stores can take the product home that day.

(Id.

663:9-15.)
Since 2009, Defendant has maintained a retail website
which

is

accessible

(Id. 671:18-672:4;

see

to
also

residents
DX1130.)

of

Long

Members

of

Island.

the

public

accessing Defendant’s website can shop, purchase product, and have
goods shipped directly to them.
DX 1103.)

(Id. 666:20-669:24; see also

Between January 1, 2014, and December 31, 2017, prior

to launching its Farmingdale Store, 38,436 users in the Four-County
Area

visited

Defendant’s

website.

(DX1130.)

This

traffic

culminated in 435 transactions, which generated $109,091.80 in
revenue for Defendant.

(Id.)

C. Defendant’s Target Customer Base
Defendant’s
professional

contractors

(Tr. 713:25-714:4.)
of

its

business,

homeowners,

customer

with

base

(“Pros”)

predominantly

and

of

homeowners.

Defendant estimates Pros comprise 85 percent
either

directly

or
of

only

“15

percent

being . . . customer[s]

who

buy[]

products themselves.

consists

and

(Id. 714:7-16.)

through

their

[Defendant’s]
install[]”

client
business

Defendant’s

Defendant holds Pro-only

events and sends out teams to meet local Pros before the grand
16

openings of its stores.

(Id. 741:15-25.)

Defendant provides Pros

with private parking, and a separate entrance, as well as a
“Pro-Desk”, and dedicated “Pro Services” to help Pros manage and
grow their businesses.

(Id. 739:8-740:6.)

To avoid competing

with Pros, Defendant does not personally provide installation
services;

however,

Defendant

does

offer

opportunities

customers to connect with third-party installers.

for

(Id. 709:16-18;

709:22-710:16.)
As to average revenue per customer, Defendant estimated
each

Pro,

individually,

spends

annually” at Defendant’s stores.

approximately

(Id. 740:18-20.)

“$20,000

plus

Comparatively,

non-Pro customers, on average, spend approximately $5,000 per
project with Defendant.

(Id. 742:24-743:2.)

Customers typically

conduct research for approximately six months before making a
flooring purchase with Defendant.

(Id. 742:9-22.)

Before a

customer makes a purchase, Defendant expects the customer to shop
around at competitor stores and make multiple visits to Defendant.
(Id.)

Defendant posits customers predominantly choose to purchase

from Defendant because of the quality and pricing of its products.
(Id. 743:6-10.)

None of Defendant’s customers have affirmatively

stated the strength of Defendant’s name motivated their purchase;
Defendant speculates this is because flooring customers do not
shop by brand.

(Id. 743:11-23.)

17

D. Defendant’s Advertising and Marketing Channels
Defendant

advertises

through

“traditional

channels”

including “TV, radio, print, [and on] Billboard[s]” and various
digital channels like “Google search, banner ads . . . [s]ocial
media” and “email.”

(Id. 666:2-15.)

Further, Defendant bids on approximately 8,000 keywords
as part of its Google Adwords campaign, including the search term
“Floor Decor”.

(Id. 699:5-23.)

Defendant bids on the term “Floor

Decor” nationally, not simply in the Long Island market.

(Id.)

Defendant continued to bid on the “Floor Decor” ad term through
2018-2023.

(Id. 700:2-701:8; 708:3-709:1.)

purchase or bid on negative keywords.

(Id.

Defendant does not
706:20-23.)

E. Entrance into the Four-County Area
In 2012, Defendant became aware of Plaintiff’s existence
when Defendant’s attorney, Paul Owens (“Owens”), prepared a list
of potential competitors that included “Floor Decor” in their name.
(Id. 680:3-681:10.)

Despite this awareness, when Defendant opened

its Farmingdale Location it did not contact Plaintiff to alert it
of the opening.

(Id. 291:5-20; 681:24-682:4.)

Wendy Martin (“Martin”) is Defendant’s Chief Marketing
Officer.

(Id. 659:19-660:2.)

Martin explained Defendant was not

worried about causing potential confusion when it opened its
Farmingdale Location because of the difference in the parties’
brand

propositions

(id.

717:7-19).
18

Likewise,

Martin

stated

Defendant

did

not

foresee

any

public

confusion

between

the

Defendant’s Mark and Plaintiff’s Asserted Name because Defendant
owned a registered trademark for its Mark, had consistently used
it on its website since 2009, and had been advertising using the
Mark in the marketplace for several years prior to the grand
opening of the Farmingdale Location.

(Id. 690:5-12.)

Martin estimated Defendant invested approximately $3.5
million in advertising ahead of the opening of its Farmingdale
Location.

(Id. 678:5-8.)

From July 2015 to the end of 2017,

Defendant spent approximately $1.1 million on radio advertisement.
(Id. 675:20-22.)
After deducting the reasonable and undisputed costs and
expenses incurred in connection with the sale of products and
services,

Defendant

has

made

approximately

profits from sales at its Long Island stores.

$10.9

million

in

(See Id. 771:5-17;

774:1-5; see also DX1135.)
III.

The Findings of Dr. Neal’s Secondary Meaning Survey
Dr. David Neal (“Neal”) is a qualified expert with

extensive experience in consumer psychology and the design of
surveys,

including

in

the

context

(Id. 484:23-486:12; see also DX 1111.)

of

trademark

litigation.

As part of its rebuttal

case, Defendant offered Neal as an expert witness to opine about
the results of two surveys he had conducted in December 2018 and
January 2019, the key takeaway of which was that only three percent
19

of the relevant consuming public in the Four-County Area identified
the Asserted Name with a single company.

(Id. 488:9-489:3.)

Neal testified his survey methodology was “conservative”
and that he “err[ed] on the side of what would be logically
beneficial to [Plaintiff].”

(Id. 493:23-501:25; 521:15-522:3.)

In designing his survey, Neal utilized a large panel company,
“Survey Sampling International” (“SSI”), to find a representative
sample of 900 residents from the Four-County Area who had purchased
the kinds of products sold by Plaintiff in the past two years, or
would, in the next two years, be in the market for those types of
products. (Id. 490:23-496:7.) SSI paid the participants of Neal’s
survey a small sum in points which could be exchanged for products
or money.

(Id.

544:22-545:4.)

Potential respondents were asked a series of screening
questions

to

ensure

their

suitability

(Id. 531:5-17; see also DX 1112, DX1113.)

for

the

survey.

Qualified respondents

were shown the Asserted Name and a control cell, each presented in
the same typeface and red coloring as that emblazoned on the
exterior

sign

of

(Id. 497:12-498:6;

Plaintiff’s

518:12-20;

see

Rockville
also

DX

Location.

1112,

DX1113.)

Qualified respondents were then asked questions to assess whether
they

associated

the

Asserted

(2) more than one company.

Name

with:

(1)

(DX1112, DX1113.)

one

company;

or

Likewise, qualified

respondents were asked whether they associated the Asserted Name
20

with a particular company, or particular companies.

(Id.)

Both

questions also allowed qualified respondents to respond, “I don’t
know”, to either question.

(Id.)

Neal conceded, notwithstanding his survey results, that
he did not have data on consumers’ perceptions as to secondary
meaning as of July 2015; further, Neal acknowledged he could not
opine as to whether the Asserted Name had attained secondary
meaning at any time between 1975-2006.
IV.

(Tr. 570:4-574:21.)

Plaintiff’s “Likelihood of Confusion” Evidence
A. Geographic Proximity
Defendant’s Farmingdale store is approximately 14 miles

from Plaintiff’s Rockville Location; the Farmingdale Location was
approximately

8.2

(Id. 320:15-321:17;

miles

from

Plaintiff’s

324:12-18.)

Since

Syosset

the

Location.

launch

of

its

Farmingdale Store, Defendant has opened several other locations in
the Four-County Area including: (1) Garden City (in March 2021);
(2) Commack; and (3) Bohemia.

(Id.)

From the Rockville Location,

Defendant’s: Garden City store is approximately 6.2 miles away;
Commack store is an estimated 27 miles away; and, Bohemia store is
around 34 miles from said Location.

(Id.)

B. Consumer Confusion
1. Craig Cosgrove
Craig

Cosgrove

(“Cosgrove”)

is

manager at Plaintiff’s Rockville Location.
21

presently

the

store

(Id. 416:11-14.)

At

the time of trial, Cosgrove had worked for Plaintiff for almost
three years.

(Id. 416:15-16.)

Cosgrove’s duties as store manager

include serving and greeting clients.

(Id. 418:7-16.)

Cosgrove

has known Altarac his whole life having “gr[own] up with [him].”
(Id. 416:7-10.)

Cosgrove testified he has never heard Plaintiff’s

business referred to by any name other than the Asserted Name.
(Id. 417:2-17.)
Cosgrove’s

first

recounted

instance

confusion involved his roommate “Alicia.”
Cosgrove

testified

he

became

aware

of

consumer

(Id. 421:13-422:7.)

Alicia

had

installed

new

flooring in her upstairs apartment and, when he inquired as to
where she had purchased it, Alicia responded, “I bought it from
[Plaintiff’s] store in Farmingdale.”

(Id.)

Alicia only knew

Cosgrove worked at a company called “Floor Decor”. (Id.) Cosgrove
subsequently explained to her that Plaintiff did not own the
Farmingdale store.
Next,

(Id.)

Cosgrove

recalled

working

with

referred to as “Jaime from Massapequa” (“Jamie”).
many

hours

assisting

Rockville Location.
Rockville

Location

Jaime

in

finding

returned

with

a

client

he

Cosgrove spent

bathroom

(Id. 423:3-424:15.)
and

a

tile

at

the

Jaime later left the
sample

tile

she

had

purchased from Defendant’s Farmingdale store, which she believed
was owned by Plaintiff.
attempting

to

match

the

(Id. 428:11-20; 431:6-16.)
tile
22

she

purchased

at

Jamie was
Defendant’s

Farmingdale store with the samples she had initially viewed at
Plaintiff’s Rockville Location.

(Id. 428:4-20.)

Jaime told

Cosgrove she intended on “return[ing] it and buy[ing] it from
[Cosgrove], so that [he] could get credit”.

(Id.)

Cosgrove

informed Jamie that the Farmingdale Location was not associated
with Plaintiff’s store.

(Id. 431:17-22.)

Cosgrove could not recount any other specific instances
of confusion, but testified generally that he had to deal often
with situations in which customers informed him that they purchased
products from, what they believed to be, Plaintiff’s “other store
in Farmingdale”.

(Id. 445:17-446:3.)

Specifically, Cosgrove

testified:
I can’t even tell you how many times I lend
the samples out. Client disappears. I call
them. Where are my samples? Oh, I’ll bring
them back. They come back in like a drive-by,
the shadiest thing. They come in. They wait
‘til like no one is there to drop it at the
counter and try to escape out the door.
Always, like, hey. How did it work out?
I got tiles somewhere else. Where else?
your other location.

Oh,
Oh,

I have heard it plenty of times. People think
that that’s our location -- we have other
locations. . . . It actually blows my mind the
loyalty that people have to our stores,
because people are not loyal anymore. . . . We
have such loyal clients[.]

23

(Id. 432:25-433:25.)

Cosgrove estimated that for every ten people

he helped, approximately two to four customers, after Cosgrove
followed up with them, would respond thusly.

(Id. 434:15-24.)

2. Lauren Korner
Lauren

Korner

(“Korner”)

is

a

resident

of

Port

Washington, New York, who grew up in Rockville Centre. (See Korner
Tr. 8:13-9:2.)

Korner learned of Plaintiff through her parents’

recommendation.

(Id. 11:4-7.)

Korner first became aware of

Defendant sometime in October 2018 when she was driving with her
husband

on

Route

(Id. 19:14-24.)
from

[her]

110

and

saw

the

Farmingdale

store.

Korner testified Defendant’s name “rang a bell

parents’

conversation”,

that

she

thought

the

Farmingdale store “must be the place” and so she spontaneously
opted

to

visit

Defendant’s

store.

(Id.)

Korner

purchased

approximately $1,300 of vinyl flooring from Defendant when she
made this initial visit.

(Id. 27:12-21.)

The flooring purchased

from Defendant was installed sometime in December.

(Id. 28:2-7.)

Korner subsequently returned to Defendant’s Farmingdale store to
purchase carpet but, when she learned Defendant does not sell
carpet, she realized Plaintiff and Defendant were not affiliated
stores.

(Id. 30:14-18.)

Later, in January 2019, while at her

parents’ house, Korner informed her parents of her experience at
Defendant’s
carpet.

store,

(Id.

including

24:5-23.)

her

failed

Korner’s
24

attempt

parents

then

to

purchase

guided,

and

accompanied,

Korner

to

Plaintiff’s

Rockville

Location.

(Id. 24:5-23.)
At

her

deposition,

Korner

testified,

while

the

two

stores did not look similar, she experienced confusion because she
had no context for what Plaintiff’s store was meant to look like,
that her parents had just recommended “Floor Decor”, and that it
was those two words which stuck in her mind.

(Id. 39:9-22.)

3. Wendy Lepkoff
Wendy Lepkoff (“Lepkoff”) is an interior designer who
has resided on Long Island for more than 40 years.
5:4-23.)

(Lepkoff Tr.

Lepkoff’s customers are in Nassau and Suffolk County,

with an emphasis on Nassau County.

(Id. 6:4-14.)

During those

40-plus years, Lepkoff has been familiar with Plaintiff and has
made

purchases

business use.

from
(Id.

Plaintiff

for

to

Plaintiff’s

(Id. 18:6-16.)

her

personal

8:14-17; 11:10-16; 27:8-19.)

of Plaintiff from her neighbors.
refers

both

business

the

and

Lepkoff learned

(Id. 7:14-24.)
using

use

Lepkoff only

Asserted

Name.

Lepkoff was unaware of any instances in which

clients she referred to Plaintiff ended up at Defendant’s stores.
(Id. 29:10-20.)
4. Mary Venier
Mary

Venier

(Venier Tr. 5:13-19.)

(“Venier”)

is

a

resident

of

Syosset.

Venier has known of Plaintiff for more than

38 years and has been a repeat customer during this time span.
25

(Id. 8:6-24.)

Venier has repeatedly hired Plaintiff to do work at

her place of business, purchased several of Plaintiff’s products,
and

has

consistently

referred

people

personal and professional referrals.

to

Plaintiff,

including

(Id. 8:11-9:15; 20:12-21:9.)

When making these referrals, Venier refers to Plaintiff using the
Asserted Name.
V.

(Id. 20:12-15.)

Plaintiff’s Evidence of “Blurring”
Altarac

“blurring”

testified

including

the

to

several

receipt

of

purported

instances

multiple

reviews

of

from

Defendant’s customers, not meant for Plaintiff, on Google and/or
Yelp

which

products.

mentioned

Defendant’s

Farmingdale

(Id. 787:17-788:9; 792:20-793:8.)

store

and/or

Similarly, Altarac

testified to instances in which Defendant’s employees, or former
disgruntled
associated

employees,
with

(Id. 788:10-23.)

left

Plaintiff,

negative
rather

reviews
than

with

on

websites
Defendant.

Altarac also recounted an instance in which a

job applicant initially applied to Plaintiff’s store for part-time
work, who later told Altarac she “went to [Plaintiff’s] Garden
City store and [was] working there now.”

(Id. 788:24-789:18.)

Finally, Altarac generally testified to instances in
which Defendant’s call centers would send Defendant’s customers
into Plaintiff’s store to pick up merchandise they had purchased
from Defendant.

(Id. 789:19-790:8.)

Further, on two occasions,

Plaintiff’s customers mistakenly ended up on Defendant’s website
26

and were confused into believing that Plaintiff no longer sold
carpet.

(Id. 790:9-791:6.)
CONCLUSIONS OF LAW

I.

Violation of § 43(a) of the Lanham Act
“Section

43(a)

of

the

Lanham

Act

‘protect[s]

unregistered trademark[] . . . against infringement.’”

an

RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 316 (quoting Genesee Brewing Co.,
Inc. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997)).

To

prevail under Section 43(a) on a trademark infringement claim, “a
plaintiff must show, first, that he or she has a valid mark that
is entitled to protection, and, second, that the defendant’s
actions

are

likely

to

cause

confusion

sponsorship of the defendant’s goods.”

as

to

the

origin

or

LVL XIII Brands, Inc. v.

Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 649 (S.D.N.Y.
2016); see also Gruner + Jahr USA Publ’g., a Div. of Gruner + Jahr
Printing and Publ’g. Co. v. Meredith Corp., 991 F.2d 1072, 1074
(2d Cir. 1993) (“[T]o succeed in a Lanham Act suit for trademark
infringement, a plaintiff has two obstacles to overcome: the
plaintiff must prove that its mark is entitled to protection and,
even more important, that the defendant’s use of its own mark will
likely cause confusion with plaintiff’s mark.”).
An unregistered mark merits protection under the Lanham
Act only where it “would qualify for registration as a trademark”.
27

Star Indus. v. Bacardi & Co. Ltd., 412 F.3d 373, 381 (2d Cir.
2005).

A mark qualifies for registration as a trademark if it

“either

(1)

is

inherently

distinctive

or

distinctiveness through secondary meaning”.

(2)

has

acquired

Two Pesos, Inc. v.

Taco Cabana, Inc., 505 U.S. 763, 769 (1992) (emphasis in original).
The

Court

previously

found,

and

Plaintiff

Plaintiff’s mark is not inherently distinctive.

conceded,

that

See RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 316 (“Plaintiff concedes its mark
is not inherently distinctive.”); (see also Tr. 150:5-7 (Smith
testifying that Plaintiff chose the name Floor Decor because it
“described the stuff that [Plaintiff was] going to be selling”)).
Nevertheless, “if a mark is not inherently distinctive, it may
‘acquire’ distinctiveness by achieving ‘secondary meaning’ among
the relevant consumer market.” LVL XIII Brands, Inc., 209 F. Supp.
3d at 649-50 (citing Two Pesos, 505 U.S. at 769).
A mark acquires “secondary meaning” when, “in the minds
of

the

public,

the

primary

significance

of

a

product

feature . . . is to identify the source of the product rather than
the product itself.”

Christian Louboutin S.A. v. Yves Saint

Laurent Am. Holdings, Inc., 696 F.3d 206, 216 (2d Cir. 2012)
(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851
n.11 (1982)).

“The crucial question in a case involving secondary

meaning always is whether the public is moved in any degree to buy
an article because of its source.”
28

Easy Spirit, LLC v. Skechers

U.S.A., Inc., 515 F. Supp. 3d 47, 61 (S.D.N.Y. 2021) (quoting
Genesee Brewing Co., 124 F.3d at 143 n.4).
articulated

six

non-exclusive

determining

secondary

factors

meaning;

The Second Circuit has
that

they

are:

are

relevant

“(1)

in

advertising

expenditures, (2) consumer studies linking the mark to a source,
(3) unsolicited media coverage of the product, (4) sales success,
(5)

attempts

to

plagiarize

the

exclusivity of the mark's use.”

mark,

and,

(6)

length

and

Christian Louboutin S.A., 696

F.3d at 226 (quoting Genesee Brewing Co., 124 F.3d at 143 n.4).
“No single factor is determinative, and every element need not be
proved.”

RVC Floor Decor, Ltd., 527 F. Supp. 3d at 317 (quoting

Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir.
1985)).
“[P]roof

of

secondary

evidentiary requirements.”

meaning

entails

vigorous

Easy Spirit, LLC, 515 F. Supp. 3d at

61 (quoting Thompson Med. Co., 753 F.2d at 217 (alteration in
original)).
mark

“[P]laintiff bears the burden of proving that [its]

acquired

secondary

meaning

by

infringing product came on the market.”

the

time

the

allegedly

LVL XIII Brands, Inc.,

209 F. Supp. 3d at 654 (citing Thompson Med. Co., 753 F.2d at 217);
see also Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037,
1043 (2d Cir. 1980) (“[Plaintiff] could not successfully rely upon
secondary meaning if [defendant] obtained a mark established prior
to the earliest time when [plaintiff’s] mark could have acquired
29

secondary meaning.”).

The time by which Plaintiff must have

established secondary meaning was previously determined by Judge
Hurley to be July 2015. 12

See RVC Floor Decor, Ltd., 527 F. Supp.

3d at 317 (“Plaintiff’s mark must have achieved secondary meaning
by July 2015.”).
Having
reasons

considered

articulated

herein,

the

record

the

Court

evidence
concludes

and

for

the

Plaintiff’s

Asserted Name, i.e., “Floor Decor”, has not achieved Secondary
Meaning in the Four-County Area and, thus, is not entitled to
protection under the Lanham Act.
A. Plaintiff Has Not Proven that its Predominantly Local,
Low-Budget, Advertising Was Effective in Reaching its
Target Audience
“Advertising

expenditures

are

regarded

as

‘indirect

evidence of the possible effect that advertising may have on
consumers’ association of the [trademark] with the source of the
product.’”

Capri Sun GmbH v. Am. Beverage Corp., 595 F. Supp. 3d

83, 150 (S.D.N.Y. 2022) (quoting LVL XIII Brands, Inc., 209 F.
Supp. 3d at 654-55).

“When considering advertising expenditures,

Notwithstanding Judge Hurley’s previous determination of this
issue, Defendant argues that Plaintiff should be required to prove
that its name attained secondary meaning “on the date [Defendant]
entered the Four-County Area.”
(See Def. Proposed Findings &
Conclusions of Law, ECF No. 259, at 11-12.) Effectively, Defendant
argues Plaintiff should not be permitted to establish historical
secondary meaning without also establishing such historical
secondary meaning persisted until July 2015. Since the Court finds
Plaintiff has not established the Asserted Name achieved Secondary
Meaning at any time, it need not resolve this issue.
12

30

‘[c]ourt[s] should consider not only the total amount . . . but
also whether the plaintiff’s advertising specifically directed
consumers to the mark as an indication of source.’”

RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 319 (quoting LVL XIII Brands, Inc.,
209 F. Supp. 3d at 655); see also Jewish Sephardic Yellow Pages,
Ltd. v. DAG Media, Inc., 478 F. Supp. 2d 340, 371 (E.D.N.Y. 2007)
(“[M]erely showing that a certain amount was spent on advertising
provides little support for secondary meaning.

It must be shown

that there was promotion of the mark as an identifier for the
product.”).

Indeed, “targeted albeit low-cost advertising may

establish this factor, but only if the plaintiff can show that it
was successful in reaching the targeted audience.”

Easy Spirit,

LLC, 515 F Supp. 3d at 62 (quoting LVL XIII Brands, Inc., 209 F.
Supp. 3d at 655); see also Jewish Sephardic Yellow Pages, Ltd.,
478 F. Supp. 2d at 345 (“[P]laintiff has not submitted any concrete
evidence showing that these efforts succeeded in reaching the
Jewish phonebook users who are plaintiff’s target audience.”).
As
unsubstantiated

an

initial

modest,

matter,

historical

the
sums

Court

Plaintiff

finds
contends

the
it

spent on advertising, from 1974-2000, are insufficient to support
a finding of secondary meaning, especially in the absence of some
demonstration

that

Plaintiff’s

reaching the target audience.

advertising

was

effective

in

See LVL XIII Brands, Inc., 209 F.

Supp. 3d at 655 (finding $82,000 spent in a single year on
31

marketing and promotion was insufficient to support secondary
meaning). This conclusion is buttressed by the Court finding that,
while

Smith

exceeded

testified

$100,000

documentation

Plaintiff’s

every

from

year

advertising

from

2012-2015

approximately

highlighting

expenditures
1990-2000,

Plaintiff

spent

significantly less in advertising expenditure, thereby rendering
Smith’s estimated figures of suspect value. 13
Of greater significance, Plaintiff adduced no evidence
at trial regarding the effect its advertising efforts had on
consumers’ perceptions of the Asserted Name during the relevant
time period.
advertising
audience.

In fact, the record evidence establishes Plaintiff’s
outreach

was

ineffective

in

reaching

its

target

For example, Smith, a resident of Suffolk County, who

became a customer of Plaintiff’s after retiring, admitted on
cross-examination

he

had

never

seen

any

of

Plaintiff’s

advertisements run from 2005 through 2011. (See Tr. 164:20-165:12;
169:6-18; 170:3-14.)

Similarly, McVeigh, Defendant’s Farmingdale

store manager, testified, notwithstanding having resided on Long
Island for approximately 35 years and having held positions in the
flooring industry his entire career, he had never seen any of
Plaintiff’s advertisements.

(Id. 745:7-9.)

Moreover, much of the

Smith’s testimony on Plaintiff’s historical advertising figures
carries little persuasion because they were unsubstantiated with
documentary evidence.
13

32

testimony of Plaintiff’s own witnesses emphasized the importance
of repeat customers and referrals to Plaintiff’s business model.
Significantly, none of these customer witnesses testified they
became customers of Plaintiff because they had seen one of its
advertisements.
Finally,

the

evidence

shows

Plaintiff

has

been

inconsistent in its presentation of the Asserted Name post-1996,
when it began including the Carpet One brand name on certain of
its advertisements. 14 Plaintiff did not establish which percentage
of its advertisements bore only the Asserted Name versus those
which bore the Asserted Name alongside Carpet One’s branding; given
this void, it is reasonable to conclude the effectiveness of
Plaintiff’s

advertising

Asserted Name was limited.

on

the

consumers’

perception

of

the

See Grout Shield Distrib., LLC v. Elio

E. Salvo, Inc., 824 F. Supp. 2d 389, 412 (E.D.N.Y. 2011) (finding
where plaintiff sold goods under several different marks, it was
not clear how much was actually spent on the mark at issue, and,
as such, plaintiff’s advertising expenditures did not weigh in
favor of finding secondary meaning); see also Jewish Sephardic
Yellow Pages, Ltd., 478 F. Supp. 2d at 345 (“[M]any of the
marketing

efforts

undertaken

by

plaintiff . . . did

exclusively showcase the [Asserted Name].

not

Rather, these materials

This is also true as to the post-2014 advertisements bearing the
Floor Decor and Design, “FD&D”, mark.
14

33

display

the

[Asserted

Name]

alongside

and

sometimes

less

prominently than [plaintiff’s] other identifying marks.”).
For

the

foregoing

reasons

the

Court

concludes

this

factor weighs against finding secondary meaning.
B. The Neal Survey Establishes Plaintiff’s Mark Has Not
Achieved Secondary Meaning in the Four-County Area
“While consumer surveys are ‘not necessary to establish
secondary meaning,’ they offer ‘the most direct and persuasive
evidence of secondary meaning.’”

Easy Spirit, LLC, 515 F. Supp.

3d at 63 (first quoting MZ Wallace Inc. v. Fuller, No. 18-CV-2265,
2018 WL 6715489, at *11 (S.D.N.Y. Dec. 20, 2018); then quoting
Lopez v. Gap, Inc., 883 F. Supp. 2d 400, 426 (S.D.N.Y. 2012)); see
also RVC Floor Decor, Ltd., 527 F. Supp. 3d at 319 (“[C]onsumer
surveys are the most persuasive evidence of secondary meaning”.
(quoting LVL XIII Brands, Inc., 209 F. Supp. 3d at 638-39)).
Indeed,

“the

ultimate

trademark . . . has

determination

acquired

of

secondary

whether
meaning

‘empirical question of consumer association.’”

a

particular
remains

an

LVL XIII Brands,

Inc., 209 F. Supp. 3d at 639 (quoting Two Pesos, Inc., 505 U.S. at
770-71).

“In the Second Circuit, survey data showing 50 percent

or greater recognition has generally been required to establish
secondary meaning.”

Jackpocket, Inc. v. Lottomatrix NY LLC,

No. 22-CV-5772, 2022 WL 17733156, at *39 (S.D.N.Y. Dec. 7, 2022)
(citing Empresa Cubana del Tabaco v. Culbro Corp., No. 97-CV-8399,
34

2004 WL 602295, at *36 (S.D.N.Y. Mar. 26, 2004) (collecting cases),
aff’d in part, rev’d in part on other grounds, 399 F.3d 462 (2d
Cir. 2005)); see also id. (finding survey results showing 14.9
percent awareness of plaintiff’s asserted mark was “far below what
would be necessary to establish acquired meaning”).
The Neal Survey concluded that a mere 3 percent of the
relevant
Plaintiff.

consuming

public

associate

the

Asserted

Name

with

Of note, Neal’s findings were unrebutted by Plaintiff

who presented no counter survey evidence of its own, despite the
importance
analysis.

of

this

factor

as

part

of

the

secondary

meaning

While Plaintiff argues the Court should consider this

factor neutral due to various “deficiencies” in the Neal Survey,
the Court finds Neal’s Survey to be, on the whole, fairly designed.
Cf. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 350
(S.D.N.Y. 1998) (“While this Court is well aware that the results
from secondary meaning surveys are open to criticisms from party
opponents . . .

such

secondary meaning.”).

studies

are

helpful

tools

in

assessing

Likewise, the Court finds Neal was credible

and highly qualified to opine on this issue.
Recognizing

the

Neal

Survey

“does

not

have

any

relevan[ce] to a secondary meaning determination as of 1975, 1980,
1990, 2000, 2003, 2005 or . . . 2006”, the Court, nonetheless,
concludes the Survey does provide relevant evidence, i.e., that
from

approximately

2016,

whatever
35

percentage

of

consumer

recognition Plaintiff’s Asserted Name may have accumulated at some
indeterminate point in the past had since faded to almost nothing. 15
This is significant regarding the issue of establishing secondary
meaning.

See Capri Sun GmbH, 595 F. Supp. 3d at 153 (disregarding

historical consumer surveys conducted between February 1983 and
June 1984 where cut-off date to establish secondary meaning was
November 2017 because “[c]onsumer association may fade over time,
when one generation of consumers has given way to another”); J.T.
Colby & Co., Inc. v. Apple Inc., No. 11-CV-4060, 2013 WL 1903883,

Further, as highlighted by Neal on cross-examination, because
Neal’s survey included both a two-year-forward-looking and a twoyear-backward-looking window, even if the Survey had been
conducted in 2015--before Plaintiff initiated this case--utilizing
the same parameters and methodology, such hypothetical, earlier,
study would result in certain overlap with respondents eligible to
take the hypothetical study and the December 2018 study--the study
Neal actually conducted. Indeed, a portion of the hypothetical
respondents taking a hypothetical 2015 survey, who intended on
purchasing the type of products sold by Plaintiff two years in the
future--and who did so--could have qualified as participants in
Neal’s December 2018 survey, since they would have been part of
the group that purchased the relevant products two years
previously.
(Tr. 573:9-574:5.)
Consequently, the Neal Survey
does have relevance regarding the potential state of affairs as of
July 2015.

15

In any event, and as highlighted above, any deficiencies in the
survey’s methodology simply go to the weight of the evidence. Even
if the Court were to afford minimal evidentiary weight to the
Survey, Plaintiff’s failure to present any contrary survey
evidence means this factor would still weigh in Defendant’s favor.
Cf. LVL XIII Brands, Inc., 209 F. Supp. 3d at 657-58 (acknowledging
plaintiff’s argument that survey evidence measured secondary
meaning from the wrong point in time as having “merit”, but
highlighting this deficiency merely went to the weight of the
evidence before finding this factor favored defendant).
36

at *11 (S.D.N.Y. May 8, 2013) (“Just as secondary meaning can be
built-up over time, it can also diminish over time.

That which

the market has learned can be unlearned.”) (citing Landers, Fray
& Clark v. Univ. Cooler Corp., 85 F.2d 46, 48 (2d Cir. 1936)).
Consequently, this factor weighs in Defendant’s favor.
C. The Single Instance of Unsolicited Media Coverage in the
Record is De Minimis and Fails to Support a Finding of
Secondary Meaning
“Precedent holds ‘extensive, unsolicited media coverage
of a product is a strong indication that a mark has obtained
secondary meaning.’”

RVC Floor Decor, Ltd., 527 F. Supp. 3d at

320 (quoting Tri-Star Pictures 14 F. Supp. 2d at 350).
Here, the Court finds the single instance of unsolicited
media coverage in the record, namely Plaintiff’s coverage in the
RVC Owl in 1984, is de minimis and far too temporally attenuated
to support a finding of secondary meaning. Accord Jewish Sephardic
Yellow Pages, Ltd., 478 F. Supp. 2d at 374 (finding evidence of a
single instance of unsolicited media coverage insufficient and,
consequently,

this

“weigh[ed]

against

a

finding

of

secondary

meaning”).
D. Plaintiff’s
Context

Sales

Figures

Are

Unreliable

and

Lack

“The sales success of a product ‘may be indicative of
whether or not a substantial portion of the purchasing public
associates the [mark] with the source of the goods.’”
37

RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 320 (quoting Tri-Star Pictures, 14
F. Supp. 2d at 351).

“In assessing sales success, courts have

considered sales volume, market share, whether sales grew over
time, whether sales data was broken down by year, and whether sales
data was convincingly linked to the mark-bearing product”.

Focus

Prods. Grp. Int’l, LLC v. Kartri Sales Co., Inc., 647 F. Supp. 3d
145, 213-14 (S.D.N.Y. 2022) (internal citations omitted).
As an initial matter and like Plaintiff’s historical
advertising figures, the Court emphasizes the historical revenue
figures Smith testified to at trial were entirely unsubstantiated
with

documentary

Further,

evidence. 16

Smith

conceded,

notwithstanding he was asked to opine as to sales figures from

This lack of documentary evidence diminishes any persuasive
value Smith’s testimony could offer, especially considering
Smith’s testimony that such records apparently existed at the time
he left the Company in early 2000. (Tr. 154:3-6.) Cf. Chum Ltd.
v. Lisowski, 198 F. Supp. 2d 530, 535 (S.D.N.Y. 2002) (finding the
lack of “hard numbers in the record” to substantiate plaintiff’s
revenue figures “glaring” where plaintiff “undoubtedly ha[d] such
numbers at its fingertips”).
16

Likewise, the Court rejects Plaintiff’s attempts to bolster
Smith’s testimony by emphasizing the testimony was credible and
uncontradicted.
The mere fact Smith’s testimony was unrebutted
has no bearing upon whether it was credible. Cf. Latin Am. Music
Co., Inc. v. Spanish Broad. Sys., Inc., 232 F. Supp. 3d 384, 390
(S.D.N.Y. 2017) (stating the Second Circuit has held “that a
district court is not obligated to accept the truth of trial
testimony from an ‘interested’ witness merely because the
testimony is ‘uncontradicted, unimpeached by anything appearing in
the record, and not inherently improbable’” (quoting Broad. Music
v. Havana Madrid Rest. Corp., 175 F.2d 77, 79-81 (2d Cir. 1949))).
38

decades previous, he had not looked at Plaintiff’s financials in
approximately 23 years.

(Tr. 149:17-22.)

These considerations

seriously denigrate the evidentiary value of Smith’s testimony,
which the Court finds unpersuasive on this matter.
Furthermore, Plaintiff failed to place its sales figures
into context; for example, the record evidence neither shows
Plaintiff’s market share in the Four-County Area, nor does it frame
Plaintiff’s “sales success” with reference to similarly situated
competitors.

Therefore, Plaintiff’s level of historical “sales

success” is unclear.

See EBIN N.Y. Inc. v. SIC Enter., Inc., No.

19-CV-1017, 2023 WL 6141275, at * 9 (E.D.N.Y. Sept. 20, 2023) (“Raw
sales figures need to be put into context to have any meaning.
That is, if a company says that its sales of goods or services
under

the

mark

are

$x,

that

number

cannot

be

said

to

be

‘impressive’ or ‘persuasive’ evidence of secondary meaning without
knowing how $x compares with the norms of that industry.” (quoting
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 15:49 (5th Ed. 2023))); Nulux, Inc. v. Ramirez, No. 01-CV-3023,
2008

WL

11411300,

at

*7

(E.D.N.Y.

Oct.

31,

2008)

(“Evidence

defining the size of the market and the plaintiff’s share of that
market bolsters raw sales figures by providing the context out of
which the figures are derived.”); BigStar Ent., Inc. v. Next Big
Star, Inc., 105 F. Supp. 2d 185, 203 (S.D.N.Y. 2000) (“[T]here is
no documentary support in the record regarding plaintiff’s market
39

share,

sales

volume

or

the

number

of

visitors

to

its

website . . . all important considerations in relation to sales
success.”).
Further,
Plaintiff

began

and

as

previously

featuring

Carpet

highlighted,

One

branding

post-1996,
prominently

alongside the Asserted Name in an indeterminate number of its
advertisements.
post-1996,

Consequently, for all Plaintiff’s sales revenues

substantiated

conclusively

determine

or

unsubstantiated,

the

true

volume

attributable solely to the Asserted Name.

the

of

Court

sales

cannot

that

are

Cf. Erchonia Corp. v.

Bissoon, 410 F. App’x 416, 418 (2d Cir. 2011) (“These non-itemized
sales and advertising figures are insufficient to raise a triable
issue of fact because Erchonia’s laser has been known by different
names

at

different

times,

so

none

of

these

data

convey

any

information about consumers’ relationship with the ‘lipolaser’
mark.”).
To the extent there is documentary evidence in the record
establishing

that

for

the

years

2012-2018

Plaintiff

has

consistently grossed more than $2 million in revenue each year,
such evidence would ordinarily support a finding of secondary
meaning.

See, e.g., Easy Spirit, LLC, 515 F. Supp. 3d at 65

(describing
reflect[ed]

sale

of

396,090

units

millions-of-dollars

in

of

product

sales

which

revenue”

“likely
a

“not

insignificant” sum for purposes of determining sales success in
40

the context of secondary meaning analysis); R.F.M.A.S., Inc. v.
Mimi So, 619 F. Supp. 2d 39, 81 (S.D.N.Y. 2009) (stating $4 million
in sales was indicative of secondary meaning); Metrokane, Inc. v.
The Wine Enthusiast, 160 F. Supp. 2d 633, 640 (S.D.N.Y. 2001)
(describing $3 million in sales as “indisputable sales success”).
However,

like

Plaintiff’s

historical

figures

which

fail

to

differentiate between revenue attributable solely to the Asserted
Name versus to the “Floor Decor Carpet One” branding, the gross
sales receipts for the years 2014 through 2018 do not separate out
the percentage of sales which are attributable solely to the
Asserted Name versus those attributable to Plaintiff’s Floor Decor
& Design “FD&D” mark, which, by Plaintiff’s own admission, became
its main logo post-2014.
Additionally,

the

record

evidence

establishes

Plaintiff’s sales revenues actually represent a low total volume
of sales since: (1) Plaintiff has only served approximately 18,000
paying customers in the Four-County Area since 1996; and (2) a
large percentage of Plaintiff’s customer base is comprised of
repeat customers.

See Audemars Piguet Holding S.A. v. Swiss Watch

Int’l, Inc., 46 F. Supp. 3d 255, 277 (S.D.N.Y. 2014) (stating
despite “high” sales revenues totaling $167 million, the number of
units sold in the United States “each year hovers around 3,000”,
and that this “low volume favors Defendants”).

41

In view of the foregoing, the Court concludes the Sales
Success factor does not support a finding of secondary meaning.
E. There is No Evidence of Any Attempts by Third-Parties to
Plagiarize Plaintiff’s Mark
“Evidence

that

a

mark

has

been

widely

copied

is

persuasive evidence of secondary meaning because it demonstrates
that the mark has become a ‘strong source identifier in the eyes
of the purchasing public.’”

LVL XIII Brands, Inc., 209 F. Supp.

3d at 660 (quoting Lopez, 883 F. Supp. 2d at 428).

“The key

question is ‘whether the copying was done deliberately, so as to
benefit from [the plaintiff’s] name and good will.’”

Id. (quoting

Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp.
2d 217, 243 (S.D.N.Y. 2004) (alteration in original)).
Defendant

highlights

Plaintiff

failed

to

adduce

any

evidence of intentional copying or plagiarism of its Asserted Name
at trial and contends Plaintiff’s failure in this regard cautions
against finding secondary meaning.

The Court agrees.

See Bobcar

Media, LLC v. Aardvark Event Logistics, Inc., 554 F. Supp. 3d 606,
619 (S.D.N.Y. 2020) (“Here, [plaintiff] presents no evidence of
any third-party copying.

That alone may be enough for this factor

to weigh against [plaintiff].”) (citing Metrokane, Inc., 160 F.
Supp. 2d at 637); Nulux, Inc., 2008 WL 11411300, at *7 (“[T]he
absence of previous instances of plagiarism by third parties weighs
against a finding of secondary meaning.”). To the extent Plaintiff
42

adduced evidence it had sent a cease-and-desist letter to a company
in

the

Hamptons

that

was

using

the

Asserted

Name

(see

Tr. 400:8-25), “this alone falls short of demonstrating that [the]
business[]

[was]

intentionally

Plaintiff’s Asserted Name.

copying

or

plagiarizing”

Kelly-Brown v. Winfrey, 95 F. Supp. 3d

350, 359 n.6 (S.D.N.Y. 2016), aff’d, 659 F. App’x 55 (2d Cir.
2016).
F. The Length and Exclusivity of Use Factor Weighs in
Plaintiff’s Favor
While

“‘there

is

no

magic

time

span

that

confers

secondary meaning’ . . . ‘the longer and more exclusive the trade
use, the more likely it is that a mark has acquired secondary
meaning’”.

Rockland Exposition, Inc. v. All. of Auto. Serv.

Providers of N.J., 894 F. Supp. 2d 288, 322-23 (S.D.N.Y. 2012)
(first quoting Jewish Sephardic Yellow Pages, Ltd., 478 F. Supp.
2d at 346; then quoting BigStar Ent., Inc. 105 F. Supp. 2d at 203).
Generally, “[c]ourts often point to five years of exclusive use of
a mark as evidence of secondary meaning.”

RVC Floor Decor, Ltd.,

527 F. Supp. 3d at 318 (alteration in original) (quoting Hello I
Am Elliot, Inc. v. Sine, No. 19-CV-6905, 2020 WL 3619505, at *10
(S.D.N.Y. July 2, 2020)).

However, “whatever the length of use by

one party, use of part or all of a mark by third parties weakens
the mark’s strength and is a factor weighing against a finding of

43

exclusivity.”

Rockland Exposition, Inc., 894 F. Supp. 2d at 323

(collecting cases).
The record evidence establishes that from 1974 until
approximately 1996, Plaintiff operated, and consistently marketed
itself under, the Asserted Name, notwithstanding that it did so
through various variations in design.

Approximately twenty years

of

Name

continuous

use

Plaintiff’s favor.

of

the

Asserted

certainly

weighs

in

Nevertheless, the significance of this length

of time is tempered by Plaintiff’s unsubstantiated historical
sales record, and the limited effect of its advertising efforts.
Moreover, Plaintiff’s inclusion of the Carpet One brand name on an
indeterminate number of its advertisements from 1996-2014, and its
transition in 2014 to the Floor Decor & Design Mark, further
denigrates the level of significance the Court places on this
factor, since such inclusion may have stymied and/or weakened any
secondary meaning the Asserted Name may have had with the relevant
consuming public. 17
In sum, the “Length & Exclusivity of Use” factor is the
only factor the Court finds weighs, though slightly, in Plaintiff’s
favor.

Given the remainder of the relevant factors are neutral or

cut against Plaintiff, the Court concludes Plaintiff has not met
While there was evidence of potential third-party use of
Plaintiff’s Asserted Name (see Tr. 398:2-401:4), Defendant did not
fully develop this part of the record in a meaningful way; hence,
the Court attributes little weight to this evidence.
17

44

its burden in establishing its Asserted Name attained Secondary
Meaning by July 2015.
II.

Even if Plaintiff’s Mark had Achieved Secondary Meaning,
Plaintiff Failed to Prove a Likelihood of Confusion
“To prevail in a trademark infringement action under the

Lanham Act, a plaintiff must prove, in addition to protectability
of the mark, ‘a probability of confusion, not a mere possibility,’
affecting ‘numerous ordinary prudent purchasers.’”

Star Indus.,

Inc., 412 F.3d at 383 (quoting Gruner + Jahr, 991 F.2d at 1077);
see also Hamilton Int’l Ltd. v. Vortic LLC, 13 F.4th 264, 274 (2d
Cir. 2021) (“[I]mportantly, in a trademark infringement case, the
plaintiff bears the burden of proving a likelihood of consumer
confusion in the alleged infringer’s use of the mark.”).

To

determine whether there is a likelihood of confusion, courts in
this

Circuit

introduced

“apply

by

Judge

the

eight-factor

Friendly

in

Polaroid

Polaroid

balancing

Corp.

v.

test

Polarad

Electronics Corp., 287 F.2d 492 (2d Cir. 1961)” (the “Polaroid
Factors”).

Id.

at 384.

The eight Polaroid 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.
45

RVC Floor Decor, Ltd., 527 F. Supp. 3d at 323.

“The ‘analysis is

not mechanical, but rather, focuses on the ultimate question of
whether, looking at the products in their totality, consumers are
likely to be confused.’”
at 384).

Id. (quoting Star Indus., Inc., 412 F.3d

In applying the Polaroid Factors, “[t]he proper approach

is to weigh each factor in the context of the others to determine
if, on balance, a likelihood of confusion exists.”

W.W.W. Pharm.

Co., Inc. v. Gillette Co. 984 F.2d 567, 572 (2d Cir. 1993).

“The

court ‘generally should not treat any single factor as dispositive;
nor should [it] treat the inquiry as a mechanical process by which
the party with the greatest number of factors wins.’”

LVL XIII

Brands, Inc., 209 F. Supp. 3d at 667 (quoting Playtex Prods., Inc.
v. Ga.-Pacific Corp., 390 F.3d 158, 162 (2d Cir. 2004)). “Instead,
the

court

should

focus

on

the

ultimate

consumers are likely to be confused.”

question

of

whether

Id.

A. Strength of Mark
As

highlighted

above,

Plaintiff

has

conceded

its

Asserted Name is not inherently distinctive; consequently, it can
only

be

deemed

worthy

of

trademark

acquisition of secondary meaning.

protection

through

the

The Court has already found

Plaintiff has not met its burden in proving the Asserted Name
achieved secondary meaning; thus, the Court concludes, this factor
“strongly
confusion.”

militates

against

a

finding

of

a

likelihood

LVL XIII Brands, Inc., 209 F. Supp. 3d at 668.
46

of

B. Similarity of the Marks
“In assessing similarity, courts look to 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.” Capri Sun GmbH, 595 F.
Supp. 3d at 162-63 (quoting Gruner + Jahr, 991 F.2d at 1078)
(alteration in original).
Judge

Hurley

previously

determined,

“[t]he

marks

at

issue—‘Floor Decor’ and ‘Floor & Decor’—are ‘strikingly similar,”
that they “possess[ed] a strong visual and phonetic resemblance
and . . . are almost identically named.’”

RVC Floor Decor, Ltd.,

527 F. Supp. 3d at 323 (quoting Syntex Labs., Inc. v. Norwich
Pharmacal Co., 437 F.2d 566, 569 (2d Cir. 1971)); see also Reply
All Corp. v. Gimlet Media, LLC, 843 F. App’x 392, 396 (2d Cir.
2021) (observing “that using two identical words in sequence to
form a mark is ‘extremely unusual’ and therefore weighs in favor
of finding confusing similarity”).

The record evidence did little

to change the Court’s view on this factor; consequently, the Court
adheres to Judge Hurley’s previous determination and concludes the
similarity factor weighs in favor of confusion.
C. Competitive Proximity
Competitive proximity examines both “market proximity”
and

“geographic

proximity.”

See
47

Guthrie

Healthcare

Sys.

v.

ContextMedia, Inc., 826 F.3d 27, 39-40 (2d Cir. 2016).

Market

proximity measures “‘whether and to what extent the two products
compete with each other,’ considering ‘the nature of the products
themselves and the structure of the relevant market.’”
Decor,

Ltd.,

527

F.

Supp.

3d

at

324

(first

RVC Floor

quoting

Cadbury

Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996);
then quoting Vitarroz v. Borden, Inc., 644 F.2d 960, 967 (2d Cir.
1981)).

Geographic proximity measures “the ‘geographic separation

of the products.’” Id. (quoting Brennan’s Inc. v. Brennan’s Rest.,
L.L.C., 360 F.3d 125, 134 (2d Cir. 2004)). 18
While
coextensive,

the

Judge

parties’
Hurley

catalog

previously

of
found

products
them

to

is
be

not
in

competitive proximity since their products, generally, “serve the
same purpose [and] fall within the same general class.”

Id.

(quoting W.W.W. Pharm. Co., Inc., 984 F.2d at 575) (alteration in
original).

The Court agrees.

While Defendant highlights the

parties’ target customers are diverse in that Plaintiff targets
homeowners and interior designers, whereas Defendant predominantly
targets “Pros”, the record evidence shows homeowners, whether
individually or through a Pro, do transact business at Defendant’s

The parties’ geographic proximity is undisputed since they
occupy the same geographic market, i.e., the Four-County Area.
See RVC Floor Decor, Ltd., 527 F. Supp. 3d at 324. Defendant does
not contend otherwise. (See Def. Proposed Findings of Fact and
Conclusions of Law, in toto.)
18

48

store; hence there is a certain degree of overlap in the parties’
customer

base.

Brennan’s

Inc.,

360

F.3d

at

134

(stating

competitive proximity seeks “to determine whether the two products
have an overlapping client base that creates a potential for
confusion”).

Accordingly,

the

Court

concludes

this

Polaroid

Factor favors Plaintiff.
D. Bridging the Gap
“This factor inquires whether a plaintiff is likely to
enter defendant’s market, or ‘bridge the gap.’”

Morningside Grp.

Ltd. v. Morningside Cap. Grp., L.L.C., 182 F.3d 133, 141 (2d Cir.
1999).
Since the Court finds Plaintiff and Defendant occupy the
same market (see supra-Part II.C.), this factor is neutral.

See

Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir.
1998)

(“The

[fourth]

factor—bridging

the

gap—is

not

relevant

because, in assessing this factor, we consider the likelihood that
the plaintiff will enter the market occupied by the defendant's
product to compete against the defendant.

Since plaintiff and

defendants already occupy the same market of simplified, laminated
street maps, the gap has been bridged. In addition, this factor is
subsumed

by

one

to

be

discussed

in

a

moment,

that

is,

the

competitive proximity of the products, and thus is not relevant as
an individual factor.” (internal citation omitted)).
49

E. Actual Customer Confusion
This factor concerns whether “there was confusion that
could lead to ‘a diversion of sales, damage to goodwill, or loss
of control over reputation.’”

RVC Floor Decor, Ltd., 527 F. Supp.

3d at 325-26 (quoting Reply All Corp., 843 F. App’x at 397).
evidence

of

actual

consumer

confusion

“is

not

While

necessary

to

establish a likelihood of confusion” it “can often provide highly
probative evidence of this likelihood.”

Akiro LLC v. House of

Cheatham, Inc., 946 F. Supp. 2d 324, 336 (S.D.N.Y. 2013) (quoting
Henegan

Const.

Co.,

Inc

v.

Heneghan

Contracting

Corp.,

No. 00-CV-9077, 2002 WL 1300252, at *7 (S.D.N.Y. June 12, 2002));
see also Morningside Grp. Ltd., 182 F.3d at 141 (“Evidence that
confusion has actually occurred is of course convincing evidence
that confusion is likely to occur.”)

Evidence of actual confusion

can be “anecdotal or survey-based.”

RVC Floor Decor, Ltd., 527 F.

Supp. 3d at 325 (citing Paco Sport, Ltd. v. Paco Rabanne Parfums,
86 F. Supp. 2d 305, 319 (S.D.N.Y. 2000)).
The
Defendant.

Court
As

an

concludes
initial

this

matter,

Polaroid
Plaintiff

Factor

favors

presented

no

survey-based evidence tending to establish actual confusion; this
is significant since “the absence of surveys is evidence that
actual confusion cannot be shown.”

Reply All Corp., 843 F. App’x

at 397 (quoting The Sports Auth., Inc. v. Prime Hosp. Corp., 89
F.3d 955, 964 (2d Cir. 1996)). The evidence of confusion Plaintiff
50

did adduce was limited to a handful of anecdotal instances; this
strikes the Court as de minimis in light of the parties’ sales
histories.

See Nora Beverages, Inc. v. Perrier Grp. Of Am., Inc.,

269 F.3d 114, 124 (2d Cir. 2001) (“[T]wo anecdotes of confusion
over the entire course of competition constituted de minimis
evidence.”);
As to Cosgrove’s anecdotal testimony that two to four
out of every ten customers exhibit confusion as to the ownership
of the Farmingdale Location, the Court finds it to be unpersuasive.
Indeed, record evidence is unclear as to whether these customers
were “confused” consumers, as opposed to consumers who knowingly
opted to purchase product elsewhere. 19
Likewise, the Court affords Korner’s testimony little
evidentiary weight because Plaintiff failed to prove that, at the
point of confusion, Korner was aware of Plaintiff’s business,
products, or how its Asserted Name appeared to consumers in the
market.

See, e.g., Therma-Scan, Inc. v. Thermoscan, Inc., 295

F.3d 623, 634 (6th Cir. 2002) (“[C]onfusion that . . . occurs
This conclusion is further based upon Cosgrove’s testimony that
he has been reprimanded for giving out samples to customers
because, when customers have samples, they can use said samples to
shop at other stores. While Cosgrove contends customers returning
Plaintiff’s samples told him they ended up purchasing product as
Plaintiff’s “other location”, that does not compel a conclusion of
confusion. It is as likely these customers were simply shopping
the competition and, when questioned, offered this as an excuse as
to why they did not follow through with Plaintiff.
19

51

among

individuals

question

is

omitted)).
Defendant’s

who

entitled

are
to

not

familiar

considerably

with

less

the

products

weight.”

in

(citation

As highlighted by Korner herself, she was unaware of
existence

prior

to

seeing

the

Farmingdale

store;

likewise, all she knew about Plaintiff was the name she had been
given by her parents and that it sold flooring; it was the name
that stuck when she saw Defendant’s store and mistook it for
Plaintiff’s.
how

Therefore, Korner’s confusion had nothing to do with

Defendant’s

marketplace. 20

and

Plaintiff’s

See Alzheimer’s

marks

were

presented

in

the

Disease and Related Disorders

Ass’n, Inc. v. Alzheimer’s Found. of Am., 307 F. Supp. 3d 260, 293
(S.D.N.Y. 2018) (“However, not all confusion counts: evidence of
actual confusion must show more than a fleeting mix-up of names;
rather it must show that the confusion was caused by the trademarks
and it swayed consumer purchase.” (quoting Streamline Prod. Sys.,
Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 457 (5th Cir. 2017))
(emphasis added)); see also id. (“We have rejected anecdotal
evidence of actual confusion when the proponent did not show that
a misleading representation by the defendant, as opposed to some
other

source,

caused

a

likelihood

of

confusion.”

(quoting

Streamline Prod. Sys., Inc., 851 F.3d at 457)).

Similarly, Cosgrove’s anecdotal account concerning his roommate
is afforded little weight for the same reason.
20

52

Therefore,
concludes

Plaintiff

upon
has

the
not

evidence

presented,

established

the

the

Court

actual-customer-

confusion Polaroid Factor weighs in its favor.
F. Bad Faith
“The sixth Polaroid factor is bad faith, which concerns
‘whether the defendant adopted its mark with the intention of
capitalizing

on

plaintiff’s

reputation

and

goodwill

confusion between his and the senior user’s product.’”

and

any

Akiro LLC,

946 F. Supp. 2d at 339 (quoting Lang v. Ret. Living Pub. Co., Inc.,
949 F.2d 576, 583 (2d Cir. 1991)).

“[T]he only relevant intent is

intent to confuse.” Starbucks Corp. v. Wolfe Borough Coffee, Inc.,
588 F.3d 97, 117 (2d Cir. 2009) (quotation omitted).

“In order to

establish that a defendant acted with the relevant intent to
confuse in adopting its mark, the plaintiff must show, among other
things,

that

the

defendant

had

knowledge—be

it

constructive—of the plaintiff’s ‘prior similar mark’”.

actual

or

Kohler Co.

v. Bold Int’l FZCO, 422 F. Supp. 3d 681, 726 (E.D.N.Y. 2018)
(quoting Star Indus., 412 F.3d at 388-89).
The

Court

previously

determined

Plaintiff

failed

adduce any evidence of bad faith during its case-in-chief.
Reconsideration Order at 8-16.)

to

(See

Indeed, the record evidence shows

Defendant has owned a valid trademark for its Mark since 2006,
that this Mark was adopted long before Defendant had any knowledge
53

of Plaintiff’s existence, and Defendant has been consistent in its
use of its Mark.

See LVL XIII Brands, Inc., 209 F. Supp. 3d at

675 (“[T]he Second Circuit ‘has never held adoption of a mark with
no knowledge of a prior similar mark to be in bad faith[.]’”
(quoting Star Indus., 412 F.3d at 388)). 21
Likewise, as to Defendant’s decision to bid on keywords
as part of its Google Adwords campaign, including the term “floor
decor”, the record evidence establishes such practice was not
motivated by Plaintiff’s presence in the market, rather this is
Defendant’s ordinary practice nationally, and is motivated by the
way consumers behave when they type words into the Google search
engine.

See Alzheimer’s Disease & Related Disorders Ass’n, Inc.,

307 F. Supp. 3d at 287 (“The sine qua non of trademark infringement
is consumer confusion caused by the infringing behavior, and
behavior meant to harm a competitor does not necessarily entail
infringement if a consumer is unlikely to be confused. For this
reason,

courts

have

repeatedly

found

that

the

purchase

of

a

competitor's marks as keywords alone, without additional behavior
that confuses consumers, is not actionable.”).

The Court credits Martin’s testimony that Defendant was not
worried about potential consumer confusion when it entered the
Four-County Area because it was using its registered Mark, which
had been used consistently nationwide across approximately 100
stores, in a market which Defendant, and its Mark, had been present
in, through its website, since 2009.
21

54

Therefore, the Court concludes the record evidence does
not weigh in Plaintiff’s favor as to the bad-faith Polaroid Factor.
Quality of the Products
In
‘whether

analyzing

defendant’s

plaintiff’s,

thereby

this

factor

products

or

tarnishing

consumers confuse the two’”.

“the

court

services

must

are

plaintiff’s

determine

inferior

to

reputation

if

Capri Sun GmbH, 595 F. Supp. 3d at

175 (quoting Akiro LLC, 946 F. Supp. 2d at 340).
Plaintiff adduced no evidence at trial tending to show
that Defendant’s products were of inferior quality.
the Court finds this factor is neutral.

Consequently,

See LVL XIII Brands, Inc.,

209 F. Supp. 3d at 676 (finding, where “there is insufficient
evidence in the record indicating the superiority or inferiority
of the products at issue . . . this factor is neutral”) (citation
omitted)).
G. Sophistication of Consumers
“The final Polaroid factor, consumer sophistication,
‘consider[s] the general impression of the ordinary purchaser,
buying under the normally prevalent conditions of the market and
giving the attention such purchasers usually give in buying that
class of goods.’”

LVL XIII Brands, Inc., 209 F. Supp. 3d at 676

(quoting Star Indus., 412 F.3d at 390).

“In a reverse confusion

case, ‘the consumers relevant to [this] inquiry are those who
55

purchase [the plaintiff’s] products.’”
Drug,

Inc.

v.

Bayer

AG,

(alterations in original)).

14

F.3d

Id. (quoting Sterling

733,

742

(2d

Cir.

1994)

“In general, ‘[t]he greater the value

of an article the more careful the typical consumer can be expected
to be.’”

Id. (quoting McGregor-Doniger, Inc v. Drizzle Inc., 599

F.2d 1126, 1137 (2d Cir. 1979)); see also Manhattan Indus., Inc.
v. Sweater Bee by Banff, Ltd., 627 F.2d 628, 631 (2d Cir. 1980)
(“The greater the value of an article the more careful the typical
consumer can be expected to be; the average purchaser of an
automobile will no doubt devote more attention to examining the
different products and determining their manufacturer or source
than will the average purchaser of a ball of twine.” (citation
omitted)).

“The Second Circuit has noted one possible exception

to this principle: where the parties’ marks are identical and their
goods

are

in

very

close

competitive

proximity,

a

highly

sophisticated consumer may be the most vulnerable to confusion.”
Kohler Co., 422 F. Supp. 3d at 730 n.20 (collecting cases).
Here,

the

record

evidence

customers are highly sophisticated.
from, inter
products;

alia:

(2) the

(1) the

high

extremely

establishes

both

parties’

This is reasonably inferred

price

personal

point
nature

of
of

both

parties’

the

customer

service that Plaintiff offers clients; and (3) the research that
customers who purchase the products at issue will typically engage
in, prior to committing to a purchase.
56

Additionally, while the parties’ marks are similar, they
are not identical. 22

Compare Lois Sportswear, U.S.A., Inc. v. Levi

Strauss & Co., 799 F.2d 867, 868-69 (2d Cir. 1986) (Applying
exception

where

trademark

for

appellee
“a

jeans

distinct

manufacturer
back

owned

pocket

federal
stitching

pattern . . . consist[ing] of two intersecting arcs which roughly
bisect[ed] both pockets of appellee’s jeans” and appellant’s jeans
bore “a back pocket stitching pattern substantially similar to
appellee’s trademark stitching pattern”, and observing, “it is a
sophisticated jeans consumer who is most likely to assume that the
presence of appellee’s trademark stitching pattern on appellants’
jeans

indicates

some

sort

of

association

between

the

two

manufacturers. Presumably it is these sophisticated jeans buyers
who pay the most attention to back pocket stitching patterns and
their ‘meanings’.”).
Here,

Plaintiff’s

Asserted

Name

is

presented

in

lower-case font and includes a design logo, originally the “fd”
design

and,

post

2014,

the

“FD&D”

design;

comparatively,

Defendant’s Mark is presented as two words in uppercase-font
stacked atop each other with a large ampersand to the right of

While Judge Hurley previously determined that the Parties’ Marks
were similar enough to trigger the exception, Judge Hurley’s
conclusion was formed based upon the parties’ framing of the issue
at summary judgment. This Court’s conclusion is formed based upon
its review of the fully developed record at trial.
22

57

Defendant’s name.

These differences, in conjunction with the

carefulness with which purchasers of the parties’ products exhibit
prior to committing to purchase, warrants the conclusion that this
factor does not support a likelihood of confusion.
H. Weighing the Factors
In sum, when viewed in their totality, the Court finds
the Polaroid Factors do not support a likelihood of confusion.
While the similarity and the proximity factors weigh in Plaintiff’s
favor, the strength of Plaintiff’s mark, i.e., the Asserted Name,
is extremely weak; indeed, Plaintiff failed to meet its burden of
proving that its mark was entitled to protection through secondary
meaning.

Further, the bridging-the-gap, and quality factors are

neutral.

Conversely, the remaining factors weigh in Defendant’s

favor.

RiseandShine Corp. v. PespiCo, Inc., 41 F.4th 112, 124 (2d

Cir. 2022) (“Weak marks are entitled to only an ‘extremely narrow
scope’ of protection, ‘unless a convincing combination of other
Polaroid factors militates strongly in favor of likelihood of
confusion.’” (quoting Plus Prod. V. Plus Discount Foods, Inc., 722
F.2d 999, 1006 (2d Cir. 1983))).

Accordingly, in the absence of

a convincing combination of other Polaroid Factors militating
strongly in favor of likelihood of confusion, the Court concludes
Plaintiff has failed to prove likelihood of confusion.

58

III.

N.Y. GBL § 360-l
“New

York

General

Business

Law

§ 360-l

requires

plaintiff to prove ‘(1) that it possess[es] a strong mark—one which
has

a

distinctive

quality

or

has

acquired

a

secondary

meaning . . . and (2) a likelihood of dilution by either blurring
or tarnishment.’”

RVC Floor Decor, Ltd., 527 F. Supp. 3d at 330

(quoting Fireman’s Ass’n of State of N.Y. v. French Am. School of
N.Y., 839 N.Y.S.2d 238, 241-42 (2007)). “The same factors relevant
to secondary meaning under the Lanham Act are relevant to secondary
meaning under New York General Business Law § 360-l” Id. (citing
DeBeers LV Trademark Ltd. v. DeBeers Diamond Syndicate Inc., 440
F. Supp. 2d 249, 280 (S.D.N.Y. 2006) (collecting cases)).
Plaintiff’s Asserted Name is not inherently distinctive,
and as this Court has found in its conclusions of law, Plaintiff
has failed to meet its burden in proving its Asserted Name acquired
secondary

meaning.

(See

supra-Part

I.A-F.)

Consequently,

Plaintiff’s dilution claim falls at the first hurdle, and the Court
need not address the second element of Plaintiff’s dilution claim.
Cf. Shandong Shinho Food Indus. Co., Ltd. v. May Flower Int’l,
Inc., 521 F. Supp. 3d 222, 262 (E.D.N.Y. 2021) (dismissing dilution
claim pursuant to N.Y. GBL § 360-l where plaintiff had not shown
its trade dress was protectible); Therapy Prods., Inc. v. Bissoon,
623 F. Supp. 2d 485, 495 (S.D.N.Y. 2009) (granting summary judgment
in favor of defendant because, in interpreting N.Y. GBL § 360-l,
59

the Second Circuit has stated “New York law accords protection
against dilution to marks that are distinctive as a result of
acquired secondary meaning as well as to those that are inherently
distinctive” and plaintiff’s mark was neither (quoting N.Y. Stock
Exch., Inc. v. N.Y., N.Y. Hotel, LLC, 293 F.3d 550, 557 (2d Cir.
2002))).
CONCLUSION
For the foregoing reasons, IT IS HEREBY ORDERED that the
Court finds in favor of Defendant on all of Plaintiff’s remaining
claims.

The Clerk of the Court is directed to enter judgment

consistent with these Findings of Fact and Conclusions of Law, and
thereafter to mark this matter CLOSED.

SO ORDERED.
/s/ JOANNA SEYBERT
Joanna Seybert, U.S.D.J.
Dated: June 5, 2024
Central Islip, New York

60