Choice Hotels International, Inc. v. Kolath Hotels & Casinos, Inc. et al

Filing 40

MEMORANDUM-DECISION and ORDER - That Choice Hotel's 33 Motion for Entry of Default is GRANTED IN PART and DENIED IN PART as indicated below: ORDERED that Kolath Hotels, including its agents, servants, employees, representatives, subsidiarie s, successors, and assigns, is hereby PERMANENTLY ENJOINED from using any of the marks in the Quality family of marks, including the marks appearing in trademark registration numbers 886,881; 1,050,372; 1,183,294; 1,534,820; 1,699,581; 1,769,488; 2,7 29,999; 2,732,875; 2,946,054; 3,053,888; 3,448,436; 3,448,437; 3,435,885; 3,569,789; 3,837,912, or any mark confusingly similary thereto. ORDERED that Kolath Hotels shall, within thirty (30) days of the date of this memorandum-decision and order, fil e with the court and serve on Choice Hotels a report in writing under oath setting forth in detail the manner and form in which it has complied with the injunction. ORDERED that Kolath Hotels shall, within sixty (60) days of the date of this memoran dum-decision and order, deliver to Choice Hotels' counsel documentation showing all profits received as a result of its infringing activity. ORDERED that Choice Hotels' council shall file, within thirty (30) days of the date of receipt of Kolath Hotels' documentation showing all profits received as a result of its infringing activity, briefing papers with calculations of an award of damages, attorney's fees, and costs under 15 U.S.C. 1117(a). ORDERED that Choice Hotels 9; request that Kolath Hotels be ordered to deliver Choice Hotels for destruction materials in its possession bearing any of the marks in the Quality family of marks is DENIED WITHOUT PREJUDICE. ORDERED that Choice Hotels and George shall, within se ven (7) days of the date of this order, advise the court of their positions on the need for an adjournment in light of this Memorandum-Decision and Order, or whether they request to withdraw their stipulation of adjournment (Dkt. No. 38). Signed by Senior Judge Gary L. Sharpe on 1/19/2016. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
CHOICE HOTELS
INTERNATIONAL, INC.,
Plaintiff,

1:13-cv-192
(GLS/CFH)

v.
KOLATH HOTELS & CASINOS,
INC. et al.,
Defendants.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
McPhillips, Fitzgerald Law Firm
288 Glen Street
P.O. Box 299
Glens Falls, NY 12801-0299
Trego, Hines Law Firm
9300 Harris Corners Parkway, Suite
210
Charlotte, NC 28269

EDWARD P. FITZGERALD,
ESQ.

MATTHEW J. LADENHEIM,
ESQ.

FOR THE DEFENDANTS:
Kolath Hotels & Casinos, Inc.
No Appearance
Chinnamma George a/k/a Annie
George a/k/a Annie Kolath a/k/a
Sajimole George
E. Stewart Jones Hacker Murphy, LLP JOHN F. HARWICK, ESQ.
7 Airport Park Boulevard
Latham, NY 12110-0104

Gary L. Sharpe
Senior District Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction
Plaintiff Choice Hotels International, Inc. commenced this action for
damages and permanent injunctive relief against defendants Kolath Hotels
& Casinos, Inc. and Chinnamma George a/k/a Annie George, a/k/a/ Annie
Kolath, a/k/a/ Sajimole George, alleging violations of the Lanham Act1 and
trademark infringement and unfair competition under the New York
common law. (See generally Compl., Dkt. No. 1.) Pending is Choice
Hotels’ motion for default judgment against Kolath Hotels. (Dkt. No. 33.)
For the reasons set forth below, the motion is granted.
II. Background
A.

Facts
Choice Hotels is a publicly traded company that operates and

franchises hotels and motels, including the Quality Inn brand of hotels.
(Compl. ¶¶ 11, 14-15, 22.) In furtherance of its business, Choice Hotels
has registered various service marks, including the marks “QUALITY” and
1

See 15 U.S.C. §§ 1051-1141n.

2

“QUALITY INN,” as well as other marks containing the term “QUALITY” or
a stylized “Q” (collectively, the “Quality family of marks”). (Id. ¶¶ 17-42;
Dkt. No. 1, Attachs. 2-16.) In January 2003, Choice Hotels entered into a
franchise agreement with defendants,2 which permitted defendants to
operate a Quality Inn hotel franchise in Catskill, New York. (Id. ¶ 48; Dkt.
No. 1, Attach. 17.) The agreement authorized defendants to use the
Quality family of marks in connection with the operation of the hotel, as
long as the agreement remained in effect. (Dkt. No. 1, Attach 17 at 1-2;
Compl. ¶ 49.) After defendants defaulted on obligations under the
franchise agreement to pay various fees, service charges, and
membership dues, Choice Hotels issued multiple “Notices of Default” to
defendants. (Compl. ¶¶ 51-52, 55; Dkt. No. 1, Attach. 18.) When
defendants failed to cure the default, Choice Hotels issued a “Notice of
Termination” on August 17, 2011. (Compl. ¶¶ 56-59; Dkt. No. 1, Attach.
19.) The Notice of Termination instructed defendants to immediately
cease use of the Quality family of marks, and explained that any further
use would constitute trademark infringement. (Compl. ¶¶ 60-61; Dkt. No.

2

George signed the franchise agreement individually, and as president of Kolath
Hotels. (Dkt. No. 1, Attach. 17 at 22-23.)

3

1, Attach. 19 at 1.)
Thereafter, defendants sought reinstatement of the franchise
agreement, which request was denied. (Compl. ¶¶ 66-67; Dkt. No. 1,
Attach. 20.) In November 2011, after discovering that defendants
continued to use the Quality family of marks “in, around, and in publicity
for” the Catskill hotel, Choice Hotels alerted defendants that the continued
use of the marks constituted trademark infringement and requested written
and photographic evidence that all such marks had been removed from
defendants’ property. (Dkt. No. 1, Attach. 21; Compl. ¶¶ 69-71.)
Subsequently, in October 2012, after receiving “multiple complaints from
hotel guests and the area Brand Performance Consultant” regarding the
Catskill hotel, Choice Hotels sent another letter to defendants demanding
they immediately discontinue the use of any of the Quality family of marks,
remove the marks from the Catskill property, and provide written and
photographic proof of the same. (Compl. ¶¶ 74-77; Dkt. No. 1, Attach. 22.)
The October 2012 letter was returned to Choice Hotels. (Compl. ¶ 75.) In
January 2013, Choice Hotels received a report regarding the continued use
of the Quality family of marks at defendants’ property. (Id. ¶ 80.)
B.

Procedural History
4

Choice Hotels filed its complaint on February 20, 2013. (See
generally Compl.) On February 28, 2013, copies of the summons and
complaint were served upon Kolath Hotels through the New York Secretary
of State. See Fed. R. Civ. P. 4(h)(1)(A); N.Y. C.P.L.R. § 311(a)(1); N.Y.
Bus. Corp. Law § 306(b)(1); (Dkt. No. 8.) Kolath Hotels failed to respond in
any way, and its time to answer or otherwise respond expired on March 21,
2013. See Fed. R. Civ. P. 12(a). This action was subsequently adjourned
by a November 2014 stipulation of Choice Hotels and George, due to
Kolath Hotels’ status as a debtor in a bankruptcy proceeding. (Dkt. No.
21.) In May 2015, a final decree was entered in that bankruptcy
proceeding. (Dkt. No. 25.) Thereafter, pursuant to Fed. R. Civ. P. 55(a)
and N.D.N.Y. L.R. 55.1, Choice Hotels requested the Clerk enter default
against Kolath Hotels in this action. (Dkt. No. 29.) On July 30, 2015, the
Clerk entered default. (Dkt. No. 31.) The pending motion for default
judgment was then filed. (Dkt. No. 33.) Although Kolath Hotels was
served the motion, as of the date of this memorandum-decision and order,
Kolath Hotels has not appeared nor filed a response to the motion for
default judgment. (Dkt. No. 35.)
III. Standard of Review
5

“Federal Rule of Civil Procedure 55 provides a two-step process that
the [c]ourt must follow before it may enter a default judgment against a
defendant.” Robertson v. Doe, 05-CV-7046, 2008 WL 2519894, at *3
(S.D.N.Y. June 19, 2008), aff’d sub nom. Robertson v. Dowbenko, 443 F.
App’x 659 (2d Cir. 2011). “First, under Rule 55(a), when a party fails to
‘plead or otherwise defend . . . the clerk must enter the party’s default.’
Second, pursuant to Rule 55(b)(2), the party seeking default judgment is
required to present its application for entry of judgment to the court.” Id.
(quoting Fed. R. Civ. P. 55(a)). “Notice of the application must be sent to
the defaulting party so that it has an opportunity to show cause why the
court should not enter a default judgment.” Id. (citing Fed. R. Civ. P.
55(b)(2)).
The entry of a default judgment under Rule 55(b)(2) of the Federal
Rules of Civil Procedure is committed to the sound discretion of the court.
See Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 95 (2d Cir. 1993). In
determining whether to grant a judgment of default, “the court considers 1)
whether the defendant’s default was willful; 2) whether defendant has a
meritorious defense to plaintiff’s claims; and 3) the level of prejudice the
non-defaulting party would suffer as a result of the denial of the motion for
6

default judgment.” Robertson, 2008 WL 2519894, at *3; see Sola
Franchise Corp. v. Solo Salon Studios Inc., No. 14-CV-0946, 2015 WL
1299259, at *5 (E.D.N.Y. Mar. 23, 2015). In considering these factors, the
court accepts the factual allegations of the complaint as true, except for
those averring the amount of damages, and draws all reasonable
inferences in the moving party’s favor. See Finkel v. Romanowicz, 577
F.3d 79, 81 n.1, 84 (2d Cir. 2009); Greyhound Exhibitgroup, Inc. v.
E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992). However, “a
plaintiff must . . . establish that on the law it is entitled to the relief it seeks,
given the facts as established by the default.” Finkel v. Triple A Group,
Inc., 708 F. Supp. 2d 277, 280 (E.D.N.Y. 2010) (internal quotation marks
and citation omitted); see W.A.W. Van Limburg Stirum v. Whalen, 90-CV1279, 1993 WL 241464, at *4 (N.D.N.Y. June 29, 1993).
IV. Discussion
A.

Willfulness
First, the court notes that due notice of this action has been given to

Kolath Hotels, however, no one has appeared on its behalf. In addition,
the Clerk has already entered default against Kolath Hotels, and Choice
Hotels has served Kolath Hotels with its motion for the issuance of default
7

judgment. (Dkt. Nos. 31, 33, 35.) A defendant’s failure to appear, failure
to respond to the complaint, and failure to respond to a motion for default
judgment supports a finding of willfulness. See Sola Franchise Corp.,
2015 WL 1299259, at *6; see also Indymac Bank v. Nat’l Settlement
Agency, Inc., No. 07 Civ. 6865, 2007 WL 4468652, at *1 (S.D.N.Y. Dec.
20, 2007) (finding that defendants’ non-appearance in the action, failure to
respond to the complaint, and failure to respond to a motion for default
judgment indicated willful conduct). Accordingly, the court concludes that
Kolath Hotels’ default was willful.
B.

Meritorious Defense
Because Kolath Hotels has failed to present any defense, the court,

as it must, accepts the factual allegations of the complaint as true. See
Finkel, 577 F.3d at 81 n.1. Therefore, “‘the second factor-of whether
[d]efendants have a meritorious defense-need not be addressed.’”
Robertson, 2008 WL 2519894, at *3 (quoting Mason Tenders Dist. Council
v. Duce Constr. Corp., 2003 WL 1960584, at *2 (S.D.N.Y. Apr. 25, 2003));
see Sola Franchise Corp., 2015 WL 1299259, at *6 (“[W]here a defendant
fails to answer the complaint, a court is unable to make a determination
whether the defendant has a meritorious defense to the plaintiff’s claims,
8

which circumstance weighs in favor of granting a default judgment.”
(internal quotation marks and citation omitted)). The question remains,
however, whether the factual allegations of the complaint are sufficient to
state a claim for the relief it seeks. See CommScope, Inc. of N. Carolina v.
Commscope (U.S.A.) Int’l Grp. Co., 809 F. Supp. 2d 33, 37 (N.D.N.Y.
2011); W.A.W. Van Limburg Stirum, 1993 WL 241464, at *4.
1.

Lanham Act Claims

Choice Hotels asserts two claims under the Lanham Act, namely,
infringement of a federally registered trademark in violation of 15 U.S.C.
§ 1114, and false designation of origin in violation of 15 U.S.C. § 1125(a).
(Compl. ¶¶ 83-99). To succeed on Lanham Act claims, a plaintiff must
show that: (1) it has a valid mark that is entitled to protection under the
Lanham Act, and (2) the defendant’s actions are likely to cause confusion
with plaintiff’s mark. See 15 U.S.C. §§ 1114(1), 1125(a)(1)(A); The Sports
Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996); see
also Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 390 n.4 (2d
Cir. 1995) (noting that the standard is the same for claims under both
sections 1114(1)(a) and 1125(a) of the Lanham Act).
Here, Choice Hotels alleges that the Quality family of marks have
9

been registered and that those registrations are “active, valid and
enforceable.” (Compl. ¶¶ 18-44; Dkt. No. 1, Attachs. 2-16). Accordingly,
the first prong of the inquiry is satisfied. See The Sports Auth., Inc., 89
F.3d at 960; ERA Franchise Sys., LLC v. Kings Realty No. 1, Inc., No.
07-CV-5319, 2009 WL 2424123, at *4 (E.D.N.Y. July 30, 2009) (“The
existence of a trademark registration is prima facie evidence of a valid
trademark.”); Fusco Grp., Inc. v. Loss Consultants Int’l, Inc., 462 F. Supp.
2d 321, 327 (N.D.N.Y. 2006) (“A trademark registration is prima facie
evidence of the mark’s validity, and of the registrant’s ownership and
exclusive right to use the mark in commerce in the United States.” (citing
15 U.S.C. § 1115(a); Gruner + Jahr USA Publ’g v. Meredith Corp., 991
F.2d 1072, 1075 (2d Cir. 1993)). Further, because Kolath Hotels continues
to hold itself out as operating a Quality Inn franchise, despite the
termination of its franchise agreement, “likelihood of confusion is
inevitable.” Dunkin’ Donuts Inc. v. N. Queens Bakery, Inc., 216 F. Supp.
2d 31, 43-44 (E.D.N.Y. 2001) (internal quotation marks and citation
omitted) (finding likelihood of confusion where defendants “continu[ed] to
do business as a doughnut shop and [held] themselves out to be Dunkin’
Donut retail shops, despite being in violation of their franchise agreements,
10

which explicitly provide[d] that they cease the use of the Dunkin’ Donut
marks”); see S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 375 (3d Cir.
1992) (“[T]here is a great likelihood of confusion when the infringer uses
the exact trademark as the plaintiff.” (internal quotation marks and citation
omitted)).
Based on the foregoing, Kolath Hotels is liable for trademark
infringement and false designation of origin under the Lanham Act.
2.

New York Common Law Claims

Choice Hotels also asserts claims of trademark infringement and
unfair competition under the New York State common law. (Compl.
¶¶ 100-16.) As it has established Kolath Hotels’ liability for trademark
infringement under the Lanham Act, Choice Hotels has also established its
liability for trademark infringement under New York State common law.
See CommScope, Inc., 809 F. Supp. 2d at 38; see also Standard & Poor’s
Corp., Inc. v. Commodity Exch., Inc., 683 F.2d 704, 708 (2d Cir. 1982)
(“The heart of a successful claim based upon [both] the Lanham Act . . .
and common law trademark infringement is the showing of a likelihood of
confusion as to the source of sponsorship of defendant’s products.”); Sola
Franchise Corp., 2015 WL 1299259, at *13 (“To prevail on a common law
11

claim of trademark infringement, a plaintiff need only present evidence
sufficient to establish a violation of section 32(1) of the Lanham Act.”
(internal quotation marks and citation omitted)). Further, Choice Hotels
can “establish liability on its unfair competition claims under New York
State common law by showing that [Kolath Hotels’] infringement was in bad
faith.” CommScope, Inc., 809 F. Supp. 2d at 38 (citing Pita v. Tulcingo Car
Serv., Inc., 10-CV-0481, 2011 WL 1790833, at *5 (E.D.N.Y. Apr. 7, 2011));
see U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515,
538 (S.D.N.Y. 2011), aff’d, 511 F. App’x 81 (2d Cir. 2013) (“The only
additional element that must be shown to establish a claim for unfair
competition under the common law is bad faith.”). “A determination of bad
faith centers around ‘whether the defendant adopted its mark with the
intention of capitalizing on plaintiff’s reputation and goodwill.’”
CommScope, Inc., 809 F. Supp. 2d at 38 (quoting Lang v. Ret. Living Pub.
Co., 949 F.2d 576, 583 (2d Cir. 1991)).
Here, Choice Hotels alleges that Kolath Hotels continued to hold
itself out as operating a Quality Inn franchise through its use of the Quality
family of marks after termination of its franchise agreement, despite Choice
Hotels’ warnings that the continued use of the marks constituted trademark
12

infringement. (Compl. ¶¶ 61, 65, 70, 73, 79-80.) These factual allegations,
accepted as true, sufficiently allege bad faith on the part of Kolath Hotels.
See, e.g., MyPlayCity, Inc. v. Conduit Ltd., No. 10 CIV. 1615, 2012 WL
2929392, at *5 (S.D.N.Y. July 18, 2012) (“[W]here an infringing former
licensee uses a former licensor’s trademark with the knowledge that it (the
former licensee) has no right to do so, a court is well within its rights to find
that the former licensee acted in bad faith.”).
Based on the foregoing, Kolath Hotels is liable for trademark
infringement and unfair competition under New York State common law.
C.

Prejudice
The final factor the court must evaluate in determining whether to

grant default judgment is the level of prejudice the non-defaulting party
would suffer as a result of the denial of the motion. Because Kolath Hotels
has been entirely unresponsive, denying this motion would be prejudicial to
Choice Hotels, “‘as there are no additional steps available to secure relief
in this [c]ourt.’” Sola Franchise Corp., 2015 WL 1299259, at *15 (quoting
Bridge Oil Ltd. v. Emerald Reefer Lines, LLC, No. 06-CV-14226, 2008 WL
5560868, at *2 (S.D.N.Y. Oct. 27, 2008)).
D.

Requested Relief
13

Lastly, the court turns its attention to Choice Hotels’ requested relief.
Choice Hotels seeks an order that enjoins Kolath Hotels from use of the
Quality family of marks, directs the immediate removal of signage,
placards, and source indicators bearing any of the marks from Kolath
Hotels’ Catskill property, requires the destruction of all items and/or
advertisements in Kolath Hotels’ possession or control bearing any of the
marks pursuant to 15 U.S.C. § 1118, directs the filing of a compliance
report pursuant to 15 U.S.C. § 1116(a), and grants compensatory
damages, treble damages, costs and attorney’s fees pursuant to 15 U.S.C.
§ 1117. (Compl. at 18-19; Dkt. No. 33, Attach. 5.)
“‘A court may issue an injunction on a motion for default judgment
provided that the moving party shows that (1) it is entitled to injunctive relief
under the applicable statute[,] and (2) it meets the prerequisites for the
issuance of an injunction.’” Pitbull Prods., Inc. v. Univ. Netmedia, Inc., 07
Civ. 1784, 2007 WL 3287368, at *5 (S.D.N.Y. Nov. 7, 2007) (quoting
Kingvision Pay-Per-View Ltd. v. Lalaleo, 429 F. Supp. 2d 506, 516
(E.D.N.Y. 2006)); accord CommScope, Inc., 809 F. Supp. 2d at 41.
Because the Lanham Act grants district courts the “power to grant
injunctions, according to the principles of equity and upon such terms as
14

the court may deem reasonable,” 15 U.S.C. § 1116(a), the first prong is
met. To meet the second prong, a plaintiff in a trademark infringement
action must demonstrate:
(1) that it has suffered an irreparable injury; (2) that
remedies available at law, such as monetary
damages, are inadequate to compensate for that
injury; (3) that, considering the balance of hardships
between the plaintiff and defendant, a remedy in
equity is warranted; and (4) that the public interest
would not be disserved by a permanent injunction.
Coach, Inc. v. Zhen Zhen Weng, No. 13 Civ. 445, 2014 WL 2604032, at
*20 (S.D.N.Y. June 9, 2014) (quoting eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388, 391 (2006)); see also Salinger v. Colting, 607 F.3d 68, 77-78
(2d Cir. 2010) (explaining that “the traditional principles of equity”
embodied in the four-factor eBay test “are the presumptive standard for
injunctions in any context”).
Here, accepting Choice Hotels’ factual allegations as true, the four
factors weigh in favor of granting an injunction. “‘[I]n a trademark case,
irreparable injury is established where there is any likelihood that an
appreciable number of ordinarily prudent purchasers are likely to be misled,
or indeed simply confused, as to the source of the goods in question.’”
CommScope, Inc., 809 F. Supp. 2d at 42 (quoting Lobo Enters., Inc. v.
15

Tunnel, Inc., 822 F.2d 331, 333 (2d Cir. 1987)). Because, according to the
complaint, Kolath Hotels has continued to hold itself out as operating a
Quality Inn franchise after the termination of its franchise agreement,
Choice Hotels has established a likelihood of confusion and, thus, an
irreparable injury. See id. Further, because Kolath Hotels was willful in its
infringement of the Quality family of marks and “there are no assurances in
the record against [its] continued infringement, monetary damages are
unlikely to present an adequate remedy,” Sola Franchise Corp., 2015 WL
1299259, at *17, (citing Stark Carpet Corp. v. Stark Carpet & Flooring
Installations, Corp., 954 F. Supp. 2d 145, 158 (E.D.N.Y. 2013)), and the
balance of hardships weigh in favor of Choice Hotels, see Coach, Inc.,
2014 WL 2604032, at *21 (“The balance of hardships also weigh in favor of
[p]laintiffs, given the very real possibility of the [d]efendants’ possible future
infringement.”). Finally, because a permanent injunction would prevent
consumer confusion, public interest would not be disserved by the
issuance of one. See id.
Based on the foregoing, Choice Hotels’ request for injunctive relief
against Kolath Hotels is granted. Further, Choice Hotels’ request, pursuant
to 15 U.S.C. § 1116(a), for an order directing Kolath Hotels to file a sworn
16

report detailing compliance with the injunction, (Dkt. No. 33, Attach. 4 at
11), is granted. Lastly, Choice Hotels’ request that the court reserve
decision on the award of damages and attorney’s fees and direct Kolath
Hotels to provide documentation showing the gross profits received as a
result of its infringing activity, (id. at 11-12), is granted. In the
circumstances here, however, Choice Hotel’s request that the court order
the destruction of infringing items, (Dkt. No. 33, Attach. 4 at 10), is denied
without prejudice. While 15 U.S.C. § 1118 permits the court to order an
infringing defendant to “deliver[] up and destroy” all signs, packaging and
advertisements bearing the plaintiff’s trademark, the decision to do so is
committed to the court’s discretion. See Krevat v. Burgers to Go, Inc., No.
13-CV-6258, 2014 WL 4638844, at *14 (E.D.N.Y. Sept. 16, 2014).
“‘[W]here an injunction is issued under the Lanham Act enjoining an
infringer from further infringement, the rights of the plaintiff are adequately
protected and an order requiring destruction of infringing articles, though
permitted, may be unnecessary.’” Id. (quoting Breaking the Chain Found.,
Inc. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d. 25, 33 (D.D.C. 2008)).
In light of the injunction to be entered by the court in this matter, and the
requirement that Kolath report on its compliance with the injunction, such
17

an order is unnecessary at this time.
V. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Choice Hotels’ motion for default judgment (Dkt. No.
33) is GRANTED IN PART and DENIED IN PART as indicated below; and
it is further
ORDERED that Kolath Hotels, including its agents, servants,
employees, representatives, subsidiaries, successors, and assigns, is
hereby PERMANENTLY ENJOINED from using any of the marks in the
Quality family of marks, including the marks appearing in trademark
registration numbers 886,881; 1,050,372; 1,183,294; 1,534,820; 1,699,581;
1,769,488; 2,729,999; 2,732,875; 2,946,054; 3,053,888; 3,448,436;
3,448,437; 3,435,885; 3,569,789; 3,837,912, or any mark confusingly
similar thereto; and it is further
ORDERED that Kolath Hotels shall, within thirty (30) days of the date
of this memorandum-decision and order, file with the court and serve on
Choice Hotels a report in writing under oath setting forth in detail the
manner and form in which it has complied with the injunction; and it is
further
18

ORDERED that Kolath Hotels shall, within sixty (60) days of the date
of this memorandum-decision and order, deliver to Choice Hotels’ counsel
documentation showing all profits received as a result of its infringing
activity, and it is further
ORDERED that Choice Hotels’ council shall file, within thirty (30)
days of the date of receipt of Kolath Hotels’ documentation showing all
profits received as a result of its infringing activity, briefing papers with
calculations of an award of damages, attorney’s fees, and costs under 15
U.S.C. § 1117(a), and it is further
ORDERED that Choice Hotels’ request that Kolath Hotels be ordered
to deliver to Choice Hotels for destruction materials in its possession
bearing any of the marks in the Quality family of marks is DENIED
WITHOUT PREJUDICE; and it is further
ORDERED that Choice Hotels and George shall, within seven (7)
days of the date of this order, advise the court of their positions on the
need for an adjournment in light of this Memorandum-Decision and Order,
or whether they request to withdraw their stipulation of adjournment (Dkt.
No. 38); and it is further
ORDERED that the Clerk provide a copy of this Memorandum19

Decision and Order to the parties.
IT IS SO ORDERED.
January 19, 2016
Albany, New York

20