E.A. Sween Co. v. Deli Express of Tenafly, LLC., 19 F. Supp. 3d 560

Background

E.A. Sween Company, Inc. owns federally-registered and incontestable DELI EXPRESS trademarks used nationwide on convenience food products and related services; registrations date back to the 1980s.
Deli Express of Tenafly, LLC operated a Tenafly, NJ restaurant using the name/mark “DELI EXPRESS” / “DELI EXPRESS OF TENAFLY”; plaintiff notified defendant of its registrations and objections in 2012.
Defendant represented it had changed its name to “The Bagel Shop,” but continued to display and use DELI EXPRESS on its awning and promotional materials through at least June 2013.
Plaintiff served the complaint; defendant failed to answer. Clerk entered default; plaintiff moved for default judgment under Fed. R. Civ. P. 55(b)(2).
The court treated the complaint allegations as admitted, found federal and state claims for trademark infringement, unfair competition, and dilution adequately pleaded, and determined default judgment and equitable relief were appropriate.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether default judgment is appropriate	Defendant was properly served and failed to respond; admitted facts support Lanham Act and state claims	(No answer; no argument)	Default judgment appropriate: service and procedural prerequisites met; meritorious defenses not shown; prejudice and culpability support default.
Whether defendant infringed under 15 U.S.C. §§1114, 1125(a) (likelihood of confusion)	Use of identical/near-identical DELI EXPRESS marks on identical goods/services causes likelihood of consumer confusion; plaintiff owns incontestable registrations	(No answer; implicit denial absent)	Infringement and unfair competition proved: ownership, validity, and likelihood of confusion (identical marks, overlapping goods/channels, post-notice use).
Whether defendant diluted a famous mark under 15 U.S.C. §1125(c)	DELI EXPRESS is famous and commercially strong; defendant’s post-fame use blurs/diminishes distinctiveness	(No answer)	Dilution established: mark famous, use in commerce, post-fame adoption, and likely dilution by blurring.
State-law claims (N.J. dilution and unfair competition)	Federal findings establish parallel state claims; New Jersey law grants injunction for willful dilution/unfair appropriation	(No answer)	State-law claims sustained consistent with federal findings.
Relief: permanent injunction and fees	Injunction necessary to prevent irreparable harm to reputation and goodwill; defendant acted willfully so fees and costs are exceptional	(No answer)	Permanent injunction granted with specific prohibitions; reasonable attorneys’ fees and costs awarded as exceptional/willful infringement (amount to be proven later).

Key Cases Cited

Hritz v. Woma Corp., 732 F.2d 1178 (3d Cir. 1984) (district court discretion in entering default judgment)
Tozer v. Charles A. Krause Milling Co., 189 F.2d 242 (3d Cir. 1951) (default judgment discretion)
United States v. $55,518.05 in U.S. Currency, 728 F.2d 192 (3d Cir. 1984) (courts disfavor defaults)
A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) (elements for Lanham Act infringement and confusion analysis)
Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463 (3d Cir. 2005) (Lapp factors guidance for likelihood of confusion)
Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277 (3d Cir. 1991) (similarity and distinctiveness principles)
Checkpoint Sys., Inc. v. Check Point Software Techs., 269 F.3d 270 (3d Cir. 2001) (distinctiveness, secondary meaning)
Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157 (3d Cir. 2000) (elements for federal dilution claim)
Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700 (3d Cir. 2004) (trademark infringement and irreparable harm)
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (four-factor test for permanent injunction)
Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44 (3d Cir. 1991) (exceptional cases standard for attorney's fees under Lanham Act)