United States District Court, E.D. New York
THE AMERICAN SOCIETY FOR THE PREVENTION OF CRUELTY TO ANIMALS, Plaintiff,
J.C. CLOTHING DRIVE, INC., Defendant.
CORRECTED MEMORANDUM DECISION AND ORDER
M. COGAN U.S.D.J
The American Society for the Prevention of Cruelty to Animals
(“ASPCA”) brings this trademark infringement
action against a company that is essentially a former
licensee that has refused to stop using ASPCA's
trademarks despite the expiration of the license. It is
before the Court on ASPCA's motion for a default judgment
pursuant to Federal Rule of Civil Procedure 55(b), the Clerk
having noted defendant's default under Rule 55(a). The
motion is granted.
has a program called the ASPCA Business Ambassador Program.
Participants in the Ambassador Program help raise funds and
awareness for ASPCA or provide other support to its mission.
In return, the participant is granted permission to use both
ASPCA's trademarks and a special ASPCA Business
Ambassadors badge (both of which the participant apparently
feels will either attract consumers to it or it will help the
participant's own mission by consumers' associating
ASPCA with the participant). Under the terms and conditions
of the Ambassadors Program, each authorized participant is
entitled to use ASPCA's intellectual property for a
one-year period. That term can be renewed annually subject to
the approval of ASPCA.
has been using its trademarks in commerce since 1866 on
various products and services. One of the marks, Reg. 1, 891,
019, issued by the U.S. Patent and Trademark Office on April
25, 1995, covers “THE AMERICAN SOCIETY FOR THE
PREVENTION OF CRUELTY TO ANIMALS” as applied to every
variety of printed matter of which one could conceive,
expressly including “charitable fundraising, ” as
well as clothing and services involving animal care and
protection. Another mark, Reg. 1, 934, 584, issued November
14, 1995, covers “ASPCA”. It has the same scope
as the '019 trademark.
2016, defendant J.C. Clothing Drive, Inc.
(“JCCD”), a New York corporation located in
Queens, was admitted into the Ambassador's Program for
the one-year period; the term therefore ended in June 2017.
JCCD did not seek to re-register for further participation
and thus its right to use ASPCA's trademarks lapsed at
JCCD continued to use ASPCA's two trademarks. It
distributed flyers, a copy of one of which is annexed to the
complaint, showing the trademarks in its solicitation of
household items, clothing, toys, appliances, and electronics.
The flyer stated that bags containing donations “must
clearly be marked ‘ASPCA'” and contained
advice at the bottom stating:
The American Society for the Prevention of Cruelty to
Animals® (ASPCA®) was the first humane society to be
established in North America and is, today, one of the
largest in the world. JC Clothing Drive is proud to support
he ASPCA® and its mission to save lives. To learn more,
this legend, the flyer displayed the ASPCA Ambassador
Program's symbol. It also featured prominently a picture
of cute cats and dogs (with which JCCD has no apparent
association other than through its association with ASPCA).
However, JCCD never turned over any donations to ASPCA.
sent multiple cease and desist letters to JCCD, both before
and after the filing of this action, to no avail. JCCD has
continued to distribute flyers bearing the ASPCA marks in
connection with clothing drives. ASPCA received a number of
communications from concerned citizens regarding JCCD's
use of the ASPCA's trademarks. In 2018, one person
reported receiving flyers approximately every two weeks.
Additional reports from others came in throughout the spring
and summer of 2019.
complaint asserts five claims for relief. The first two are
under the Lanham Act § 32 (15 U.S.C. § 1114(1)) and
§ 43(a) (15 U.S.C. § 1125(a)(1)), respectively. The
third and fifth claims are under the corresponding provisions
of state statutory law (N.Y. Bus. Corp. L. § 349) and
common law (unfair competition), respectively. The fourth is for
trademark dilution under 15 U.S.C. § 1125(c).
light of JCCD's default in this case, all of the
well-pleaded allegations in plaintiff's third-party
complaint pertaining to liability are deemed true. See
Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp.,
973 F.2d 155, 159 (2d Cir. 1992). However, “[e]ven when
a default judgment is warranted based on a party's
failure to defend, the allegations in the complaint with
respect to the amount of the damages are not deemed
true.” Credit Lyonnais Sec. (USA), Inc. v.
Alcantara, 183 F.3d 151, 155 (2d Cir. 1999). A court may
conduct hearings to determine the amount of damages, but an
inquest by paper record - rather than an in-person court
hearing - is appropriate when the court relies on affidavits
and other documentary evidence and the amount is liquidated.
See Transatlantic Marine Claims Agency, Inc. v. Ace
Shipping Corp., Div. of Ace Young Inc., 109 F.3d 105 (2d
Cir. 1997). In addition, “[t]he Court may issue an
injunction on a motion for default judgment upon a showing by
the moving ...