1:20-cv-01397-JPO
S.D.N.Y.Apr 28, 2021Background
- Plaintiff Times Three Clothier, LLC (owner of the "YUMMIE by HEATHER THOMSON" and "YUMMIE by HEATHER THOMSON and design" marks) has used YUMMIE-branded shapewear and related clothing since 2011 and holds federal registrations (Reg. No. 4,553,312 and Reg. No. 4,126,770).
- Defendant McCubbin Hosiery, LLC was served via the New York Secretary of State on June 25, 2020, failed to answer, and a clerk’s default was entered; plaintiff moved for final default judgment and a permanent injunction.
- The Court found it has personal and subject-matter jurisdiction, the registrations are valid and subsisting, and plaintiff is the sole owner of the Registered Marks.
- The Court concluded defendant used marks confusingly similar to plaintiff’s under the Polaroid factors and that defendant’s infringement was willful and intentional.
- The Court entered a permanent injunction barring use, sale, display, advertising, or other acts likely to cause confusion; ordered removal of references from defendant’s websites; required notice to recipients of infringing product; required delivery of infringing goods to plaintiff for destruction; and ordered an accounting and disgorgement of profits for infringing sales since January 1, 2020.
- The Court awarded plaintiff $13,714 in costs and attorneys’ fees, required a 30-day compliance report, and retained jurisdiction to enforce the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity and ownership of marks | Plaintiff holds federal registrations and used marks in commerce since 2011 | No response (default) | Registrations valid and subsisting; plaintiff sole owner; registrations establish exclusive rights |
| Trademark infringement / likelihood of confusion | Defendant used confusingly similar marks; Polaroid factors support confusion | No response (default) | Court found infringement under 15 U.S.C. § 1114 and § 1125(a), and under NY law and common law |
| Willfulness of infringement | Defendant’s conduct was intentional and willful | No response (default) | Court found infringement willful and intentional, supporting enhanced relief |
| Remedies: injunction, destruction, accounting, disgorgement, fees | Requests permanent injunction, destruction of infringing goods, accounting and disgorgement of profits, attorneys’ fees | No response (default) | Court granted permanent injunction with detailed prohibitions; ordered removal of marks, notice to recipients, delivery of infringing goods for destruction, 30-day accounting and disgorgement, $13,714 in fees/costs, and 30-day compliance report |
Key Cases Cited
None (the opinion does not cite any reported cases).