419 F.Supp.3d 569
W.D.N.Y.2019Background
- Plaintiff Deep Foods Inc. (New Jersey) owns federally registered "DEEP" marks used since at least 1977 for prepared foods and related products.
- Defendants (Deep Foods Inc., New York, and Vikramdeep Cheema) operate a convenience store under the tradename "Deep Foods Inc." and allegedly sell prepared foods, snacks, and drinks.
- Plaintiff sent cease-and-desist letters (Feb and Mar 2018), sued on Nov. 8, 2018 for Lanham Act and New York claims, and served Defendants Dec. 1, 2018; Defendants never responded.
- Clerk entered default Jan. 10, 2019; Plaintiff moved for default judgment May 29, 2019; motion was served but unopposed.
- The court found Defendants’ default willful but denied default judgment because Plaintiff’s pleadings and submitted evidence were too sparse to establish liability on its claims (likelihood of confusion, public injury, or fame/dilution).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Entry of default judgment | Default and admission of factual allegations entitle Plaintiff to judgment | No responsive pleading; no opposition | Default was willful, but default judgment denied because Plaintiff failed to prove liability on merits |
| Trademark infringement / false designation / NY common‑law unfair competition | Plaintiff owns incontestable registrations and used DEEP since 1977; Defendants use identical tradename for a store, causing likely confusion | No answer; court cannot infer needed facts about how mark was used on goods/channels | Denied — Polaroid factors not sufficiently established (similarity, proximity, actual confusion not shown) |
| NY GBL § 349 deceptive acts/practices | Defendants’ use deceives consumers as to source | No answer; no evidence of public consumer injury beyond trademark confusion | Denied — Plaintiff failed to allege specific public injury beyond ordinary trademark confusion |
| Dilution (federal and NY § 360‑1) | DEEP is famous/distinctive and Defendants’ use dilutes or tarnishes the mark | No answer; insufficient allegations of fame or blurring/tarnishment | Denied — allegations do not show "fame" or likelihood of blurring/tarnishment |
Key Cases Cited
- Cement & Concrete Workers Dist. Council v. Metro Found. Contractors Inc., 699 F.3d 230 (2d Cir. 2012) (default admits well‑pleaded allegations of liability)
- Pecarsky v. Galaxiworld.com, Ltd., 249 F.3d 167 (2d Cir. 2001) (factors guiding default‑judgment discretion)
- City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114 (2d Cir. 2011) (court must determine whether allegations establish liability before entering default judgment)
- Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012) (elements for § 1114 trademark infringement)
- Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (Polaroid likelihood‑of‑confusion factors and their non‑mechanical application)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (original articulation of the Polaroid factors)
- Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir. 2005) (registered mark in continuous use is presumptively valid)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (standards for federal dilution claims)
- Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497 (2d Cir. 1996) (context of mark use affects likelihood of confusion and dilution analysis)
- Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) (importance of strength, similarity, and proximity in Polaroid analysis)