United States District Court, S.D. New York
4 PILLAR DYNASTY LLC, and REFLEX PERFORMANCE RESOURCES, INC., Plaintiffs,
SAUCONY, INC., Defendant.
MEMORANDUM OPINION AND ORDER
GREGORY H. WOODS United States District Judge.
suit, Plaintiffs 4 Pillar Dynasty LLC and Reflex Performance
Resources, Inc. allege that Defendant Saucony, Inc. has
infringed its trademark for the word “Velocity”
for use on clothes and performance wear. Not so fast, says
Saucony, which seeks a declaration of non-infringement and
asserts counterclaims alleging that it was first out of the
blocks as the senior user of the “Velocity” mark,
making Plaintiffs the infringers. Saucony has moved for
summary judgment for dismissal of the complaint and on its
counterclaims. Because a triable issue of fact exists at
least with respect to the threshold question of which party
is the senior user of the mark at issue, Saucony's motion
for summary judgment is DENIED.
4 Pillar Dynasty LLC (“4 Pillar”) holds a federal
trademark registration for the word “Velocity”
for use on clothes and performance gear. Pls.'/Countercl.
Defs.' Local Rule 56.1 Counterstatement (ECF No. 65)
(“Pls.' 56.1”) ¶ 42; Decl. of Edward
F. Maluf in Supp. of Mot. for Summ. J. (ECF No. 58)
(“Maluf Decl.”), Ex. R (certificate of
registration). 4 Pillar filed an application to register the
“VELOCITY” mark (the “Mark”) with the
United States Patent and Trademark Office (the
“PTO”) on March 12, 2012. Pls.' 56.1 ¶
30. 4 Pillar filed pursuant to Section 1(b) of the Lanham
Act, which permits the filing of a registration application
on the basis of a “bona fide intention to use” a
trademark in commerce rather than on the basis of the
applicant's prior use of the trademark. Pls.' 56.1
¶ 31; 15 U.S.C. § 1051(b). On December 3, 2013, 4
Pillar updated its application and requested registration of
the Mark by filing with the PTO a Trademark/Service Mark
Statement of Use. Pls.' 56.1 ¶ 39. The Statement of
Use included the following “allegation of use, ”
made under penalty of perjury:
The mark is in use in commerce on or in connection with all
of the goods/services, or to indicate membership in the
collective organization listed in the application or Notice
of Allowance or as subsequently modified for this specific
The mark was first used by the applicant, or the
applicant's related company, licensee, or predecessor in
interest at least as early as 01/13/2010, and first used in
commerce at least as early as 01/13/2010, and is now in use
in such commerce.
Maluf Decl., Ex. Q; Pls.' 56.1 ¶ 40. The PTO granted
4 Pillar's application to register the Mark on March 11,
2014. Pls.' 56.1 ¶ 42. The registration certificate
contains a “first use” date of
“1-13-2010” and an “in commerce” date
of “1-13-2010.” Maluf Decl., Ex. R.
Pillar and Plaintiff Reflex Performance Resources, Inc.
(“Reflex”) are owned by Behrooz, Leon, and
Faramarz Hedvat. Decl. of Behrooz Hedvat in Opp'n to Mot.
for Summ. J. (ECF No. 64) (“Hedvat Decl.”)
¶¶ 3, 7 & Exs. A & B. It is undisputed that
the Hedvats have manufactured and/or sold apparel through
several different companies and under several different brand
names for the past twenty-five years. Pls.' 56.1 ¶
10. Currently, Reflex licenses the Mark from 4 Pillar and
sells products bearing the Mark to retail stores and on the
internet. Pls.' 56.1 ¶¶ 44-48; Hedvat Decl.
¶ 4. The date on which Plaintiffs―or the Hedvats,
through a related or predecessor company―began using
the Mark lies at the heart of this dispute and will be
discussed further in Section 3, infra.
Saucony, Inc. (“Saucony”) also manufactures and
sells apparel, specifically, “[t]echnical performance
wear and lifestyle” apparel. Dep. of Todd P. Dalhausser
(“Dalhausser Dep.”) 26:10-23 (Dec. 5, 2016),
annexed to Maluf Decl as Ex. B. Like Plaintiffs, Saucony
sells its “Velocity”-branded products both in
brick-and-mortar retail stores and online. Pls.'s 56.1
¶¶ 13-14; Dalhausser Dep. 28:5-30:2. As with
Plaintiffs, the date on which Saucony began using the word
“Velocity” in connection with its products lies
at the center of the dispute and will be discussed further in
Section 3, infra.
initiated this lawsuit on April 15, 2016. ECF No. 1. In their
complaint, Plaintiffs bring claims for federal trademark
infringement and common law trademark infringement, as well
as state-law claims for unlawful and deceptive acts and
practices pursuant to N.Y. Gen. Bus. Law §§ 133 and
349. Compl. at pp. 5-10. Each of Plaintiffs' claims is
premised on Saucony “offering for sale a line of
clothing and performance wear . . . under the brand name
‘Velocity, '” including “performance
wear, namely shirts, t-shirts and shorts.” Compl.
¶¶ 9-10. Plaintiffs alleged that Saucony is using
the Mark “in the exact same category and style of goods
as Plaintiffs' [p]roducts” and that Saucony's
use has caused and is “likely to continue to cause
confusion as to the source, sponsorship and/or affiliation of
the [i]nfringing [p]roducts.” Compl. ¶¶
11-12. Although Plaintiffs specifically alleged that 4 Pillar
became the owner of the registered Mark effective March 12,
2012, Compl. ¶ 5, the complaint contains no allegations
concerning use of the Mark prior to that date.
filed an answer with counterclaims on July 8, 2016. ECF No.
20 (“Countercls.”). In its counterclaims, Saucony
alleged that, while “4 Pillar only filed an
Intent-to-Use application for the ‘VELOCITY' mark
in 2012, ” Saucony has been continuously using
“its ‘VELOCITY' mark . . . throughout the
United States since no later than 2008, ” giving
Saucony “superior rights” in the Mark.
Countercls. ¶ 1. As a result, Saucony asserts
counterclaims for trademark infringement and unfair
competition under federal and state law and also seeks (i)
“a judicial declaration that Saucony's use of the
“VELOCITY” mark in connection with athletic shoes
and apparel does not constitute trademark infringement,
unfair competition, false designation of origin, dilution or
unlawful and deceptive acts and practices under federal and
state law” and (ii) cancellation of 4 Pillar's
federal registration of the Mark. Countercls. ¶ 1 &
Plaintiffs failed to timely respond to Saucony's
counterclaims, the Clerk of Court issued a certificate of
default, ECF No. 26, and the Court issued an order to show
cause why a default judgment should not be entered against
Plaintiffs (in their capacity as counterclaim defendants).
ECF No. 27. After a hearing on September 19, 2016, the Court
issued an order setting aside Plaintiffs' entry of
default. ECF No. 37. After a number of limited-scope
extensions, discovery closed on December 5, 2016.
See ECF No. 51.
filed its motion for summary judgment on January 27, 2017.
ECF Nos. 56-62. Plaintiffs filed an opposition on February
24, 2017. ECF Nos. 63-67. Saucony filed a reply in support of
its motion on March 10, 2017. ECF Nos. 71-72.
are entitled to summary judgment on a claim if they can
“show[ ] that there is no genuine dispute as to any
material fact and [they are] entitled to judgment as a matter
of law.” Fed.R.Civ.P. 56(a); see also Celotex Corp.
v. Catrett, 477 U.S. 317, 322 (1986) (“[S]ummary
judgment is proper ‘if the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law.'”
(quoting former Fed.R.Civ.P. 56(c))). A genuine dispute
exists where “the evidence is such that a reasonable
jury could return a verdict for the nonmoving party, ”
while a fact is material if it “might affect the
outcome of the suit under the governing law.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). “Factual disputes that are irrelevant or
unnecessary will not be counted.” Id.
defeat a motion for summary judgment, Plaintiff “must
come forward with ‘specific facts showing that there is
a genuine issue for trial.'” Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986) (quoting former Fed.R.Civ.P. 56(e)). “[M]ere
speculation or conjecture as to the true nature of the
facts” will not suffice. Hicks v. Baines, 593
F.3d 159, 166 (2d Cir. 2010) (internal quotation marks and
citations omitted). Plaintiff “must do more than simply
show that there is some metaphysical doubt as to the material
facts.” Matsushita, 475 U.S. at 586.
determining whether there exists a genuine dispute as to a
material fact, the Court is “required to resolve all
ambiguities and draw all permissible factual inferences in
favor of the party against whom summary judgment is
sought.” Johnson v. Killian, 680 F.3d 234, 236
(2d Cir. 2012) (internal quotation marks and citation
omitted). The Court's job is not to “weigh the
evidence or resolve issues of fact.” Lucente v.
Int'l Bus. Machs. Corp., 310 F.3d 243, 254 (2d Cir.
2002); see also Hayes v. N.Y. City Dep't of
Corr., 84 F.3d 614, 619 (2d Cir. 1996) (“In
applying th[e] [summary judgment] standard, the court should
not weigh evidence or assess the credibility of
witnesses.”). “Assessments of credibility and
choices between conflicting versions of the events are
matters for the jury, not for the court on summary
judgment.” Jeffreys v. City of New York, 426
F.3d 549, 553-54 (2d Cir. 2005) (citation omitted).
“[T]he judge must ask . . . not whether . . . the
evidence unmistakably favors one side or the other but
whether a fair-minded jury could return a verdict for the
plaintiff on the evidence presented.” Id. at
553 (quoting Anderson, 477 U.S. at 252).