3M Company v. Performance Supply, LLC

Filing 54

FINAL DEFAULT JUDGMENT AND PERMANENT INJUNCTION BASED ON THE FOREGOING, the Court hereby GRANTS 3M's Motion for Default Judgment and Permanent Injunction against Defendant in its entirety, and ORDERS as follows: 1. Pursuant to FED. R. CIV. P . 55(b)(2), a Default Judgment is entered in favor of Plaintiff 3M and against Defendant Performance Supply, LLC on each claim for relief in the Complaint. 2. Pursuant to 15 U.S.C. § 1116(a), Defendant is hereby PERMANENTLY ENJOINED. This Cour t shall retain jurisdiction to hear and determine all matters arising out of, relating to, and/or otherwise concerning the interpretation and/or enforcement of this Final Judgment. The Temporary Restraining Order entered against Defendant in this action on April24, 2020 (Dkt. No. 17) and the Preliminary Injunction entered against Defendant in this action on May 5, 2020 (Dkt. No. 23) are vacated and superseded by this Final Judgment. (And as further set forth herein.) IT IS SO ORDERED. (Signed by Judge Jennifer L. Rochon on 5/16/2023) (jca)

Case 1:20-cv-02949-JLR-JW Document 54 Filed 05/16/23 Page 1 of 6

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
3M COMPANY,
Plaintiff,
-against-

Case No.: 1:20-cv-02949 (JLR)(JW)
Jury Trial Demand

PERFORMANCE SUPPLY, LLC,
Defendant.
[PROPOSED]
FINAL DEFAULT JUDGMENT AND PERMANENT INJUNCTION
WHEREAS, the Court, having considered Plaintiff 3M Company’s (“3M”) Memorandum
of Law in Support of its Motion for Default Judgment and Permanent Injunction against Defendant
Performance Supply, LLC (“Defendant”), together with the Declarations of Jonathan W. Thomas,
Charles Stobbie (Dkt. No. 14), David A. Crist (Dkt. No. 15), and A. John P. Mancini (Dkt. No.
16), as well as the Court’s Findings of Facts and Conclusions of Law entered in connection with
3M’s Application for a Temporary Restraining Order and Preliminary Injunction (Dkt. No. 23),
and the record and proceedings to date in the above-captioned action, including the Clerk’s
and the April 26, 2023 Report and Recommendation (Dkt. No. 50),
Certificate of Default (Dkt. No. 39), pursuant to FEDERAL RULE OF CIVIL PROCEDURE 58(a), the
Court enters this final judgment and hereby finds as follows:
1.

3M duly commenced this lawsuit on April 10, 2020. See Dkt. No 1 (as re-filed as

Dkt No. 9; hereinafter, the “Compl.”). 3M duly served Defendant’s President, Mr. Ronald
Romano, with the Summons and Complaint on April 14, 2020. See Dkt. No. 18. Defendant neither
appeared in this lawsuit nor responded to the Complaint. Accordingly, the Clerk of this Court
issued a Certificate of Default against Defendant on November 29, 2022.

Dkt. No. 39.

Defendant’s default indicates that 3M’s carefully curated brand and trademarks would suffer from

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an injury to their reputation, brand dilution, and loss of goodwill in the absence of a default
judgment against Defendant. Accordingly, the Court hereby enters a default judgment against
Defendant on each of 3M’s claims for relief in the Complaint. The Court also enters a permanent
injunction against Defendant for the reasons set forth below.
2.

Defendant is not an authorized distributor, vendor, agent, or representative of 3M.

Defendant also is not authorized to solicit orders of any size for 3M-brand N95 respirators (or any
other goods or services). Nonetheless, on or about March 30, 2020, Defendant sent a Formal Quote
to New York City’s Office of Citywide Procurement, offering to sell seven million of 3M-brand
N95 respirators for 500% more than 3M’s list price. To deceive New York City’s procurement
officers into believing that Defendant was authorized to solicit orders on 3M’s behalf, Defendant,
inter alia, reproduced the standard-character “3M” mark and 3M design mark

(the “3M

Marks”), and the slogan “3M Science. Applied to Life” (the “3M Slogan”), throughout the Formal
Quote.
3.

3M owns incontestable federal trademark registrations for its 3M Marks, as well as

a federal trademark registration for its 3M Slogan. Accordingly, 3M established the validity of its
3M Marks and 3M Slogan.
4.

3M also established that Defendant’s use of the 3M Marks and 3M Slogan caused

actual confusion, and creates a likelihood of confusion going forward, about the source and/or
quality of the products that Defendant offered to sell, and/or whether Defendant has an association
or affiliation with 3M. 3M has been using its 3M Marks and 3M Slogan for decades. During this
period, 3M has invested hundreds of millions of dollars into advertising and promoting a vast array
of goods and services under its 3M Marks and 3M Slogan, including its 3M-brand N95 respirators.
Defendant is trading off the widespread commercial recognition and goodwill of the 3M Marks

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and 3M Slogan in connection with offering to sell products that 3M is widely known for
manufacturing and selling, namely, N95 respirators. Accordingly, it is no surprise that Defendant
actually confused New York City procurement officials into believing that Defendant was an
authorized vendor of 3M-brand N95 respirators.
5.

Based on the foregoing, as well as Defendant’s default, 3M demonstrated actual

success on the merits of its claims for federal trademark infringement, unfair competition, false
association, false endorsement, false designation of origin, and false advertising under Sections 32
and 43(a)(1)(A) of the Lanham Act (to wit, 15 U.S.C. §§ 1114(a), 1125(a)(1)(A)-(B)), as well as
its claims for trademark infringement, and unfair competition, under New York law.
6.

3M cannot control the quality of the products that Defendant purports to sell under

the 3M Marks or 3M Slogan. Additionally, the harm to 3M’s reputation and the 3M brand of being
associated with price-gouging during the global COVID-19 pandemic is immeasurable.
7.

3M faces ongoing irreparable harm if Defendant’s conduct continues. First, 3M is

entitled to a presumption of irreparable harm pursuant to the Trademark Modernization Act, to
wit, 15 U.S.C. § 1116(a). Defendant has not rebutted that presumption. Second, 3M has
demonstrated actual irreparable harm in the form of damage to the quality of its goods and its
reputation and goodwill as a result of Defendant’s actions.
8.

Based on Defendant’s default, there is no guarantee that Defendant’s conduct will

cease; therefore, 3M has no adequate remedy at law.
9.

Defendant, on the other hand, cannot be heard to complain about having to refrain

from engaging in trademark infringement, unfair competition, false advertising, and pricegouging.

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10.

Based on the foregoing, and considering the irreparable harm and the lack of

remedies available at law to 3M against the lack of any harm to Defendant, the balance of hardships
favors 3M.
11.

The public has an interest in avoiding confusion about the source and quality of

goods and services.

This is especially true during the global COVID-19 pandemic, when

consumers, including experienced governmental procurement officials, are relying on the 3M
Marks and 3M Slogan to indicate that goods and services offered thereunder originate from 3M,
and are of the same quality that consumers have come to expect of the 3M brand.
12.

Based on the foregoing, converting the preliminary injunction into a permanent

injunction would benefit the public.
BASED ON THE FOREGOING, the Court hereby GRANTS 3M’s Motion for Default
Judgment and Permanent Injunction against Defendant in its entirety, and ORDERS as follows:
1.

Pursuant to FED. R. CIV. P. 55(b)(2), a Default Judgment is entered in favor of

Plaintiff 3M and against Defendant Performance Supply, LLC on each claim for relief in the
Complaint.
2.

Pursuant to 15 U.S.C. § 1116(a), Defendant is hereby PERMANENTLY

ENJOINED, as follows:
a. Defendant, its agents, servants, employees, officers and all persons and
entities in active concert and participation with them, are permanently
enjoined from using the 3M Marks and 3M Slogan, and any other word,
name, symbol, device, or combination thereof that is confusingly similar to
the 3M Marks and/or the 3M Slogan, for, on, and/or in connection with the
manufacture, distribution, advertising, promoting, offering for sale, and/or

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sale of any goods or services, including, without limitation, Plaintiff’s 3Mbrand N95 respirators, and
b. Defendant, its agents, servants, employees, officers and all persons and
entities in active concert and participation with them, are also permanently
enjoined from engaging in any false, misleading, and/or deceptive conduct
in connection with 3M and its products, including, without limitation,
representing itself as being an authorized distributor, vendor, agent,
representative, retailer, and/or licensee of 3M and/or any of 3M’s products
(including, without limitation, 3M-brand N95 respirators); falsely
representing to have an association or affiliation with, sponsorship by,
and/or connection with, 3M and/or any of 3M’s products; and offering to
sell any of 3M’s products at a price and/or in a manner that would constitute
a violation of NEW YORK GENERAL BUSINESS LAW § 369-R.
3.

3M and/or its authorized representative(s) must serve a copy of this Final Judgment

on Defendant and/or Defendant’s registered agent via overnight mail or courier and/or personal
5:00 am/pm
service at 3 Westbrook Way, Manalapan, New Jersey 07726, delivered on or before ______
May 18
on ___________
___, 2023. The foregoing shall constitute proper service and notice of this Final
Judgment.
4.

This Court shall retain jurisdiction to hear and determine all matters arising out of,

relating to, and/or otherwise concerning the interpretation and/or enforcement of this Final
Judgment.

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5.

The Temporary Restraining Order entered against Defendant in this action on April

24, 2020 (Dkt. No. 17) and the Preliminary Injunction entered against Defendant in this action on
May 5, 2020 (Dkt. No. 23) are vacated and superseded by this Final Judgment.
16th day of _________,
IT IS SO ORDERED this ______
2023.
May
___________________________________
United States District Judge
Jennifer L. Rochon

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