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Brannock Device Co., Inc. v. ABC Industries

September 11, 2006

THE BRANNOCK DEVICE CO., INC., PLAINTIFF,
v.
ABC INDUSTRIES, INC.; ABC TARGET, INC.; AND HOWARD SCHULMAN, DEFENDANTS.



The opinion of the court was delivered by: Scullin, Senior Judge

MEMORANDUM-DECISION AND ORDER

I. INTRODUCTION

Currently before the Court is Plaintiff's motion for entry of a default judgment against Defendants ABC Industries, Inc. and ABC Target, Inc. (collectively "Defendants"), pursuant to Rule 55(b) of the Federal Rules of Civil Procedure.*fn1 Specifically, Plaintiff "seeks a default judgment finding . . . ABC Industries, Inc. and ABC Target, Inc. . . . liable on each of [Plaintiff's] claims for trademark infringement, false designation of origin, trademark dilution, civil contempt, and breach of contract." See Plaintiff's Memorandum of Law at 1. Moreover, "[i]n connection with the default judgment, [Plaintiff] seeks a permanent injunction to prevent [D]efendants from infringing [Plaintiff's] trademark in the future, an accounting of [D]efendants' illicit profits, attorneys' fees and costs, and trebling of damages due to the [D]efendants [sic] willful infringement of [Plaintiff's] trademark." See id.

II. BACKGROUND

Plaintiff manufactures and sells a foot-measuring instrument known as the "BRANNOCK DEVICE" ("the device").*fn2 Plaintiff registered the device with the federal government under Federal Registration No. 2,615,262 and uses the registration symbol "(r)" when advertising and marketing the device. See Complaint at ¶¶ 9, 11.

On October 2, 2003, Plaintiff commenced an action against ABC Industries, Inc. in this District for trademark infringement on the ground that ABC Industries, Inc. sold, without Plaintiff's authorization, foot-measuring instruments under the BRANNOCK DEVICE trademark. See Complaint at ¶ 14; Civil Action No. 5:03-CV-1212. The parties settled that action and entered into a "Stipulated Final Judgment and Order" that, among other things, permanently enjoined ABC Industries, Inc. from (1) using any trademark or any other names or marks, designs, phrases, or logos that are confusingly similar to the BRANNOCK DEVICE trademark or any colorable imitation thereof; (2) otherwise infringing on the BRANNOCK DEVICE trademark; (3) unfairly competing with Plaintiff Brannock by using the BRANNOCK DEVICE mark without authorization; and (4) diluting the distinctiveness of the BRANNOCK DEVICE trademark.

See Complaint at ¶ 16; Civil Action No. 5:03-CV-1212 at Dkt. No. 3.*fn3*fn4 Despite that permanent injunction, Plaintiff discovered that, on or about September 27, 2004, Defendants were, once again, using the BRANNOCK DEVICE trademark to sell foot-measuring devices.*fn5 See Complaint at ¶ 18. Plaintiff also discovered that at least two consumers had purchased Defendants' foot-measuring instrument under the mistaken belief that they were buying Plaintiff's authentic device. See id. at ¶ 24.

As a result of these discoveries, Plaintiff commenced the present action on November 9, 2004, asserting claims of trademark infringement, false designation of origin, trademark dilution, civil contempt, and breach of contract. See Dkt. No. 1. Plaintiff seeks both monetary damages and injunctive relief. See id. Plaintiff served Defendants with the summons and complaint on March 22, 2005. See Dkt. No. 5. Defendants failed to respond or otherwise appear in this action and, therefore, on June 22, 2005, Plaintiff requested and the Clerk of the Court entered notice of Defendants' default. See Dkt. Nos. 6-7.

III. DISCUSSION

A. Standard of Review

Under Rule 55(b) of the Federal Rules of Civil Procedure, a court may enter a default judgment where a party fails to respond to a plaintiff's complaint. See Fed. R. Civ. P. 55(b). As a prerequisite to the court entering a default judgment, the party seeking the default must request, and the clerk of the court must enter, a notice of default. See Fed. R. Civ. P. 55(a). Moreover, when a court enters a default judgment against a defendant, "the defendant is deemed to have admitted to the truth of the well-pleaded allegations of the complaint." Eng'rs Joint Welfare, Pension, Supplemental Unemployment Benefit & Training Funds v. B.B.L. Constructors, Inc., 825 F. Supp. 13, 17 (N.D.N.Y. 1993) (citing Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992), cert. denied, 506 U.S. 1080, 113 S.Ct. 1049, 122 L.Ed. 2d 357 (1993)).

As noted above, Plaintiff requested and the Clerk of the Court entered notice of Defendants' default on June 22, 2005. See Dkt. Nos. 6-7. Therefore, because Plaintiff has met the requirements of Rule 55(a), it may properly move for the entry of a default judgment under Rule 55(b).

B. Plaintiff's Claims for Trademark Infringement and False Designation of Origin

Plaintiff asserts that Defendants violated the Lanham Act, 15 U.S.C. §§ 1051-1127, by infringing its registered trademark and by creating a false and misleading impression that their foot-measuring instrument was in some way associated with Plaintiff's device.

Under the Lanham Act, a defendant is liable for trademark infringement if it uses a plaintiff's registered mark, without authorization, in connection with the sale or attempted sale of goods and/or services. See 15 U.S.C. § 1114(1). Likewise, a defendant is liable for false designation of origin if it uses a word, term, name or symbol associated with a plaintiff's registered mark without obtaining the plaintiff's authorization. See 15 U.S.C. § 1125(a)(1). With respect to both of these claims, "[t]he central issue . . . is whether the unauthorized use of the mark is 'likely to cause confusion.'" Tommy Hilfinger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 414 (S.D.N.Y. 2002) (quoting 15 U.S.C. § 1114(1); 15 U.S.C. § 1125(a)(1)(A)). It is well-established that confusion exists "where consumers are likely to believe that the mark's owner sponsored, endorsed, or otherwise approved of the defendant's use of the mark." Id. (citation omitted).

In this case, Defendants' use of Plaintiff's BRANNOCK DEVICE mark is not only likely to cause confusion but, according to Plaintiff's complaint, has, in fact, caused such confusion in the minds of at least two consumers who purchased Defendants' foot-measuring instrument under the mistaken belief that they were purchasing Plaintiff's device. See Complaint at ¶ 24. Moreover, not only did Plaintiff not authorize Defendants' use of its mark, but the parties' "Stipulated Final Judgment and Order" in Civil Action 5:03-CV-1212, expressly prohibited Defendant ABC Industries, Inc. from using the BRANNOCK DEVICE mark. See Civil Action 5:03-CV-1212 at Dkt. No. 3.

Therefore, because Plaintiff's well-pleaded allegations establish that Defendants infringed its trademark and engaged in false designation of origin under the Lanham Act, the Court concludes that Defendants are ...


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