Commscope, Inc. v. Commscope (U.S.A.) International Group Co.
809 F. Supp. 2d 33
N.D.N.Y.2011Background
- CommScope, Inc. filed a trademark infringement action against Commscope (U.S.A.) International Group Co., Ltd. asserting six claims under the Lanham Act and New York law.
- Defendant was served on November 4, 2010, but failed to answer or appear; default entered by the Clerk on December 6, 2010.
- Plaintiff moved for default judgment under Fed.R.Civ.P. 55(b) on January 3, 2011; defendant did not respond.
- The court applies the two-step Rule 55 process and finds the movant’s burden met for liability based on the unopposed, well-pleaded allegations.
- Plaintiff seeks injunctive relief to permanently enjoin use of the CommScope marks and related corporate-name protections; the court grants such relief and directs removal of the name from the New York register within 30 days.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether default judgment on liability is appropriate | Suddaby, on liability, finds default admits the well-pleaded facts. | No response or opposition submitted by Commscope. | Yes; default judgment granted on liability. |
| Whether Defendant’s use of the CommScope marks and name infringes under Lanham Act | Defendant's use is likely to cause confusion with CommScope marks and is improper. | Not asserted due to default. | Liability established for trademark infringement and false designation of origin. |
| Whether Plaintiff may recover under New York unfair competition and infringement theories | Lanham Act liability supports NY state law liability; bad-faith use supports unfair competition. | Not asserted due to default. | Liability established under NY law for infringement and unfair competition. |
| Whether Plaintiff states a claim for dilution under NY Gen. Business Law § 360-Z | Defendant’s use dilutes or harms CommScope's distinctive quality. | Not asserted due to default. | Liability established for dilution under § 360-Z. |
| Whether injunctive relief is warranted and appropriately tailored | Irreparable harm and lack of adequate remedy at law; willful infringement supports injunction. | Not asserted due to default. | Permanent injunction granted; removal of 'Commscope' from the NY register ordered within 30 days. |
Key Cases Cited
- Transatlantic Marine Claims Agency, Inc. v. Ace Shipping Corp., 109 F.3d 105 (2d Cir. 1997) (default judgment standards; well-pleaded allegations admitted)
- Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F.Supp.2d 284 (S.D.N.Y. 2003) ( Lanham Act likelihood of confusion standard)
- Lorillard Tobacco Co. v. Jamelis Grocery, Inc., 378 F.Supp.2d 448 (S.D.N.Y. 2005) ( Lanham Act likelihood of confusion and related considerations)
- Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 15 F.Supp.2d 389 (S.D.N.Y. 1998) (permanent injunction standards in trademark cases)
- Lobo Enters., Inc. v. Tunnel, Inc., 822 F.2d 331 (2d Cir. 1987) ( irreparable harm in trademark disputes; likelihood of confusion implies irreparable injury)