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Northeastern Lumber Manufacturing Association v. NLM Enterprises

April 26, 2009

NORTHEASTERN LUMBER MANUFACTURING ASSOCIATION, PLAINTIFF,
v.
NLM ENTERPRISES, INC. D/B/A AMTECH PACKAGING SOLUTIONS, DEFENDANT.



The opinion of the court was delivered by: William M. Skretny United States District Judge

DECISION AND ORDER

I. INTRODUCTION

In this intellectual property case, Plaintiff Northeastern Lumber Manufacturing Association (hereinafter "NeLMA") alleges that Defendant NLM Enterprises, Inc., d/b/a Amtech Packaging Solutions (hereinafter "Amtech"), infringed its federal trademark rights by using its distinctive "NeLMA" marks without authorization. Amtech failed to appear through counsel, which is required of corporate defendants, resulting in the Clerk of the Court entering default against it. Presently before this Court is NeLMA's unopposed Motion for Summary Judgment.*fn1 For the following reasons, the motion is granted.

II. BACKGROUND

A. Facts

This Court accepts the facts alleged by NeLMA as true for two reasons. First, because Amtech is in default, the allegations that establish its liability must be accepted as true.Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992); FED. R. CIV. P. 8(b)(6). Second, because Amtech failed to respond to NeLMA's summary judgment motion, the factual allegations in NeLMA's Local Rule 56.1 statement are deemed admitted. See Local Rule 56.1(c) (statements of undisputed fact that are not controverted by the non-moving party are deemed admitted).*fn2

NeLMA owns common law and registered trademarks associated with its system for demonstrating compliance with the international inspection program known as the "Wood Packaging Materials Inspection Program," as well as with programs concerning the compliance of softwood lumber with grades and standards approved by the American Lumber Standards Committee. (Local Rule 56.1 Statement of Undisputed Facts (hereinafter "Rule 56.1 Statement"), Docket No. 18-2, ¶¶ 1-3.)

NeLMA has been using its marks in connection with the certification of wood packaging material and the grading and certification of lumber and timber in interstate commerce since 2002 or earlier. (Rule 56.1 Statement, ¶ 5.) The NeLMA stamp on a wood packaging product certifies that the wood has been properly heat treated in line with governing standards. (Rule 56.1 Statement, ¶¶ 6-12.) Through worldwide use of the marks and vigilance in protecting and policing the use of the marks, the NeLMA marks have acquired consumer recognition and goodwill in the minds of the relevant public. (Rule 56.1 Statement, ¶¶ 12-14.)

Amtech has never been certified by NeLMA to use the NeLMA mark on its international wood packaging. (Rule 56.1 Statement, ¶ 15.) Nonetheless, beginning in 2004 and continuing through May 2008, Amtech used the NeLMA mark without permission or a license. (Rule 56.1 Statement, ¶¶ 16-18 .) One of Amtech's employees, Jeffrey Spring, became aware that Amtech's products improperly bore NeLMA marks, and he repeatedly communicated this to Amtech's president, Nancy McNamara, and advised her that a license was necessary. (Rule 56.1 Statement, ¶¶ 16-19.)

Spring also told McNamara's husband, Michael McNamara, that Amtech needed a license to use the NeLMA marks. (Rule 56.1 Statement, ¶ 20.) But rather than discontinue using the marks or obtain a license, Michael McNamara arranged for the creation and purchase of stamps bearing counterfeit NeLMA marks and other false designations from a company in Rochester, N.Y. (Rule 56.1 Statement, ¶ 22.) The stamps contained counterfeit NeLMA logos, "HT" heat-treatment symbols, "US-681" certifier numbers,*fn3 and International Plan Protection Convention ("IPPC") designations. (Rule 56.1 Statement, ¶ 24.) Neither Michael McNamara nor Amtech received permission to use NeLMA's mark or have these stamps created. (Rule 56.1 Statement, ¶ 26.) Again, Spring warned the McNamaras that using the NeLMA marks and counterfeit stamps was illegal. (Rule 56.1 Statement, ¶ 27.) Nonetheless, Amtech continued using the marks.

B. Procedural History

NeLMA filed its Complaint against Amtech on July 31, 2008, alleging federal trademark infringement, counterfeiting, federal unfair competition, false designation of origin, passing off and false advertising, and violations of the New York Deceptive Trade Practices Act. (Docket No. 1.) Amtech immediately agreed to partial settlement and consented to the entry of judgment against it for injunctive relief and an assessment of damages, including attorney's fees, which it agreed to pay in monthly installments. (Rule 56.1 Statement, ¶¶ 33-36; Easterling Affidavit, Docket No. 18-5, Exhibit D.)

Shortly thereafter, on August 12, 2008, the parties filed a Joint Motion for Entry of Judgment by Consent to implement the partial settlement agreement. (Docket No. 3.) Although it was represented that Amtech had the benefit of counsel for purposes of negotiating the proposed consent judgment, no attorney appeared on Amtech's behalf in this action. Because corporations cannot appear pro se in federal court, see, e.g., Grace v. Bank Leumi Trust Co. of N.Y., 443 F.3d 180, 187 (2d Cir. 2006) ("it is well-settled law that a corporation may appear in the federal courts only through licensed counsel"), this Court denied the joint motion without prejudice to it being re-filed after Amtech retained counsel. (Docket No. 5.)

On October 22, 2008, the Honorable Jeremiah J. McCarthy, United States Magistrate Judge, conducted a status conference, at which he again advised that corporations cannot appear pro se and set a deadline of November 3, 2008, for Amtech to appear in this action through counsel. (Docket No. 11.) Thereafter, Amtech notified Judge McCarthy by letter that it would not be appearing in the action or filing an Answer to the Complaint through counsel.*fn4 (Docket No. 12.) This led to NeLMA securing an entry of default on November 12, 2008 (Docket No. 17), and filing the instant Motion for Summary Judgment on January 28, 2009 (Docket No. 18).

On February 16, 2009, this Court issued an Order affording Amtech a final opportunity to retain counsel and defend this action. (Docket No. 19.) This Court warned Amtech that it would take NeLMA's Motion for Summary Judgment under advisement as unopposed if counsel did not appear by the imposed deadline of March 9, 2009. By letter dated March 4, 2009, Amtech again advised that it would not appear through ...


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