BEACON ROOFING SUPPLY, INC. v. MILLER et al

Filing 27

MEMORANDUM AND ORDER. For the reasons stated in the Memorandum and Order filed herewith, Plaintiff's Motion for Default Judgment (Doc. 25 ) is GRANTED. IT IS FURTHER ORDERED that: 1. Defendants and all officers, agents, servants, and employees and all other persons acting in concert or participation with any of them, are permanently enjoined from using the names, marks or designations "Beacon Roofing and Asphalt" and "Beacon Roofing Systems," and Beacon's encircle d lighthouse logo, as well as any use of the word "Beacon" or any confusingly similar name or mark in connection with identifying Defendants' business; 2. Defendants and all officers, agents, servants, employees, attorneys and all othe r persons acting in concert or participation with any of them are permanently enjoined from all acts of false description and representation and false designation of origin, all acts of unfair competition and unfair business practices, including the marketing, promotion and sale of any goods and services in the manner that is likely to cause confusion, to cause mistakes, or deceive, including the use of the trade names "Beacon Roofing and Asphalt" or "Beacon Roofing Systems," as well as Beacon's encircled lighthouse logo, and any other mark that is confusingly similar to Beacon's marks; and 3. All infringing promotional materials, products and other materials of Defendants or in the possession of Defendants tha t include the marks "Beacon Roofing and Asphalt" or "Beacon Roofing Systems," or Beacon's encircled lighthouse logo, or that is likely to cause confusion, to cause mistake, or to deceive, must be delivered to Beacon and destroyed pursuant to 15 U.S.C. § 1118. Signed by Judge Cathy Bissoon on 10/13/2017. (kg)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
BEACON ROOFING SUPPLY, INC.,
Plaintiff,
v.
GINGER MILLER, et al.,
Defendants.

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Civil Action No. 17-1100
Judge Cathy Bissoon

MEMORANDUM AND ORDER
Pending before the Court is Plaintiff Beacon Roofing Supply, Inc.’s (“Plaintiff”)’s
Motion for Default Judgment (Doc. 25). For the reasons discussed below, Plaintiff’s Motion will
be GRANTED.
MEMORANDUM
I.

BACKGROUND

On August 22, 2017, Plaintiff filed a Verified Complaint (Doc. 1) against Defendants
Paul Efferin and Ginger Miller (collectively “the Defendants”), asserting claims for trademark
infringement, false designation of origin, violation of the Pennsylvania Unfair Trade Practices
and Consumer Protection Act, and federal trademark dilution. In the Complaint, Plaintiff seeks
injunctive relief, statutory damages, and costs and attorneys’ fees. (Id.) Plaintiff’s Complaint
was served on Defendants on September 14, 2017. (Docs. 17 & 18).
On October 6, 2017, Plaintiff requested that a default be entered against Defendants for
their failure to answer the Complaint or to otherwise move. (Docs. 21 & 22). The Clerk of
Court entered a default against Defendants on October 10, 2017. (Docs. 23 & 24). As of the
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date of this filing, the Defendants have neither answered the Verified Complaint nor otherwise
pled in accordance with the Federal Rules of Civil Procedure.
II.

ANALYSIS

Federal Rule of Civil Procedure 55(b)(2) authorizes courts to enter a default judgment
against a properly served defendant who fails to a file a timely responsive pleading. See
Fed.R.Civ.P. 55(b)(2). In considering a motion for default judgment, a court must treat the
allegations in the complaint as true. Touchtown, Inc. v. DigitalSignGuys.com, LLC, 2010 WL
5152298, at *1, 2 (W.D. Pa. Dec. 13, 2010). The Court of Appeals for the Third Circuit has
enumerated three factors that govern a district court’s determination as to whether a default
judgment should be entered: “(1) prejudice to the plaintiff if default is denied, (2) whether the
defendant appears to have a litigable defense, and (3) whether defendant’s delay is due to
culpable conduct.” Chamberlain v. Giampapa, 210 F.3d 154, 164 (3d Cir. 2000). “However,
when a defendant has failed to appear or respond in any fashion to the complaint, this analysis is
necessarily one-sided; entry of default judgment is typically appropriate in such circumstances at
least until the defendant comes forward with a motion to set aside the default judgment pursuant
to Rule 55(c).” Sec. & Exch. Comm’n v. Fortitude Grp., Inc., 2017 WL 818604, at *1 (W.D. Pa.
Feb. 10, 2017), report and recommendation adopted, 2017 WL 782847 (W.D. Pa. Mar. 1, 2017).
The Court finds that the factors weigh in favor of granting default judgment. First,
Plaintiff will suffer prejudice if default is denied because its trademarks may continue to be
infringed. Second, Defendants do not appear to have a litigable defense because they have not
asserted any defense to Plaintiff’s claims. Third, Defendants’ delay is due to their culpable
conduct because they have failed to appear or to defend this action. The Court will therefore
enter judgment in favor of Plaintiff and against Defendants.

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The Court will also grant Plaintiff’s request for a permanent injunction. Section 34(a) of
the Lanham Act provides courts with the “power to grant injunctions, according to the principles
of equity and upon such terms as the Court may deem reasonable, to prevent the violation of any
right of the registrant of a mark registered in the Patent and Trademark Office.” 15 U.S.C. §
1116(a). The Verified Complaint establishes that Defendants unlawfully used Plaintiff’s
trademarked material. Nothing in the facts before the Court indicates that Defendants have
ceased this infringing activity; thus, a permanent injunction is warranted in this case.
ORDER
For the reasons stated above, Plaintiff’s Motion for Default Judgment is GRANTED. IT
IS FURTHER ORDERED that:
1. Defendants and all officers, agents, servants, and employees and all other persons
acting in concert or participation with any of them, are permanently enjoined from using
the names, marks or designations “Beacon Roofing and Asphalt” and “Beacon Roofing
Systems,” and Beacon’s encircled lighthouse logo, as well as any use of the word
“Beacon” or any confusingly similar name or mark in connection with identifying
Defendants’ business;
2. Defendants and all officers, agents, servants, employees, attorneys and all other persons
acting in concert or participation with any of them are permanently enjoined from all acts
of false description and representation and false designation of origin, all acts of unfair
competition and unfair business practices, including the marketing, promotion and sale of
any goods and services in the manner that is likely to cause confusion, to cause mistakes,
or deceive, including the use of the trade names “Beacon Roofing and Asphalt” or
“Beacon Roofing Systems,” as well as Beacon’s encircled lighthouse logo, and any other
mark that is confusingly similar to Beacon’s marks; and
3. All infringing promotional materials, products and other materials of Defendants or in
the possession of Defendants that include the marks “Beacon Roofing and Asphalt” or
“Beacon Roofing Systems,” or Beacon’s encircled lighthouse logo, or that is likely to
cause confusion, to cause mistake, or to deceive, must be delivered to Beacon and
destroyed pursuant to 15 U.S.C. § 1118.

IT IS SO ORDERED.

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October 13, 2017

s/Cathy Bissoon
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Cathy Bissoon
United States District Judge

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