Aging Well Beauty LLC v. Jhon'Elle Beauty Cosmetics EE, Inc.Aging Well Beauty LLC v. Jhon'Elle Beauty Cosmetics EE, Inc.
COGAN, District Judge.
This trademark action is presently before the Court on plaintiff‘s motion for a default judgment, the Clerk having entered defendants’ default upon the docket under
Defendants have not opposed the motion for a default judgment or otherwise appeared in this action. Nevertheless, I find that plaintiff is not entitled to the declaration it seeks. The motion is therefore denied and the case is dismissed.
BACKGROUND
The following allegations in the complaint relating to liability are taken as true for purposes of this motion. See Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992).
According to the complaint, on January 29, 2023, plaintiff‘s predecessor in interest filed an application to register its trademark “JEUNELLE SKINCARE,” in connection with various cosmetic and skincare products in International Class 3 with the United States Patent and
The complaint further alleges that on April 17, 2024, defendants filed a Notice of Opposition with the USPTO opposing the registration of plaintiff‘s mark. Defendants own the registered mark “JHON‘ELLE BEAUTY COSMETICS EE” and common law mark “Jhonnelle” in International Class 3 for cosmetic goods. Defendants’ opposition is essentially that the “Jeunelle” portion of plaintiff‘s proposed mark would likely cause consumer confusion with the “Jhon‘Elle” portion of defendants’ registered mark, especially since both plaintiff and defendants market cosmetic products. Defendants also point to the similarity in sound and appearance between the two marks, as well as the absence of any restriction to trade channels or consumers for either sides’ products. Defendants contend before the USPTO that the potential for consumer confusion is sufficiently high that not only will consumers be misled, but defendants will lose sales.
Plaintiff‘s declaratory judgment complaint before this Court contains three claims: (1) that plaintiff is not infringing defendants’ registered trademarks; (2) that plaintiff is not infringing defendants’ common law trademarks; and (3) that plaintiff has a right to register its trademarks.
The proceeding before the USPTO‘s Trademark Trial and Appeal Board is presently pending. The TTAB has indicated that it is awaiting this Court‘s decision before it determines whether to sustain the objection to plaintiff‘s registration.
DISCUSSION
In determining whether to exercise its permissive jurisdiction under the Declaratory Judgment Act, a court must consider “(1) whether the judgment will serve a useful purpose in
Plaintiff maintains that it need not conduct an analysis of likelihood of confusion under the factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), the reason being that “declaratory judgment plaintiffs do not have the burden of proving non-infringement.” For this proposition, plaintiff relies on Sam Bernstein L. Firm, PLLC v. Sam, No. 25-cv-0252, 2026 WL 61261 (W.D.N.Y. Jan. 8, 2026), and Classic Liquor Importers, Ltd. v. Spirits Int‘l B.V., 201 F. Supp. 3d 428 (S.D.N.Y. 2016). Plaintiff then conclusorily asserts that its proposed mark is not confusingly similar to defendants’ registered mark, and that defendants, by their default, “have failed to prove otherwise.”
Sam Bernstein is unhelpful to plaintiff in more ways than one. For starters, Sam Bernstein is not a default judgment case. The defendant was actively defending the action and brought counterclaims for declarations of non-infringement. Next, Sam Bernstein does not say what a party bringing a non-infringement claim must or need not prove, though it does imply – to
Classic Liquor gives plaintiff half of the equation. Yes, Classic Liquor states that “declaratory judgment plaintiffs do not have the burden of proving non-infringement.” Classic Liquor, 201 F. Supp. 3d at 440 (citing Medtronic, Inc. v. Mirowski Fam. Ventures, LLC, 571 U.S. 191, 198 (2014)). However, Classic Liquor, like Sam Bernstein, is not a default judgment case, and does not say what happens when a defendant defaults in a non-infringement declaratory judgment action. It‘s common sense that a non-appearing defendant cannot affirmatively meet any burden. But does that mean that the Court cannot analyze the claim and, in doing so, consider evidence or allegations from the pleadings that might weigh in the defendant‘s favor? The Court thinks no. Even though plaintiff has not shown the absence of a likelihood of confusion (and perhaps has a good argument for not having done so), the Court cannot just take plaintiff‘s word for it.
In assessing likelihood of confusion, courts in this Circuit apply the eight-factor balancing test from Polaroid, considering:
- (1) strength of the trademark;
- (2) similarity of the marks;
- (3) proximity of the products and their competitiveness with one another;
- (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer‘s product;
- (5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith; - (7) respective quality of the products; and
- (8) sophistication of consumers in the relevant market.
Starbucks Corp. v. Wolfe‘s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009). “The application of the Polaroid test is “not mechanical, but rather, focuses on the ultimate question of whether, looking at the products in their totality, consumers are likely to be confused.” Id. (quoting Star Indus. v. Bacardi & Co., Ltd., 412 F.3d 373, 384 (2d Cir. 2005)). Conversely, “[n]o single factor is dispositive, nor is a court limited to consideration of only these factors.” Brennan‘s, Inc. v. Brennan‘s Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004). “Rather, a court should focus on the ultimate question of whether consumers are likely to be confused.” Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 584 (2d Cir. 1993).
The Court will analyze only the first three factors, as it has no evidence from which to render any conclusions about the latter five factors.
Strength of the Trademark. Registered marks “are presumptively distinctive.” Classic Liquor, 201 F. Supp. 3d at 442 (citation omitted). That presumption “can be overcome by showing that a registered mark is generic or is descriptive without secondary meaning.” Id. (citation omitted). Plaintiff admits that defendants’ mark is registered and has made no showing (nor can the Court conclude sua sponte) that the mark is generic or merely descriptive. The “JHON‘ELLE” portion of defendants’ registered mark is a person‘s name, and is thus fanciful in that it “does not communicate any information about the product either directly or by suggestion.” Id. (citation omitted). In turn, it enjoys the “strongest” protection. Id. (citation omitted). Therefore, this factor weighs against plaintiff.
Similarity of the Marks. “In applying this factor, courts consider whether the similarity of the marks is likely to cause confusion among potential customers,” Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 394 (2d Cir. 1995), and “look[] at the visual and aural similarity of
Proximity of the Products and Their Competitiveness with One Another. “The purpose of the inquiry, which considers both market proximity and geographic proximity, is ‘to determine whether the two products have an overlapping client base that creates a potential for confusion.‘” Classic Liquor, 201 F. Supp. 3d at 447 (quoting Brennan‘s, 360 F.3d at 134). Geographic proximity appears to be a non-issue, since at least plaintiff appears to operate entirely online. As for market proximity, all the Court knows is that both parties provide anti-aging cosmetics. The Court does not have any information upon which it could conclude that the parties are directly competing with each other, but by that same token, the Court cannot conclude otherwise. Thus, this factor weighs against plaintiff.
* * *
On balance, the Court cannot find that there is no likelihood of confusion between plaintiff‘s proposed mark and defendants’ registered mark. In reaching this conclusion, the Court is not holding that plaintiff infringed on defendants’ mark. To the contrary, the Court is concluding that it is unequipped to make a finding either way. By this same token, the Court could have arguably declined to exercise jurisdiction over plaintiff‘s claims on the grounds that the declaratory judgment sought would not “serve a useful purpose in clarifying or settling the legal issues involved” or “finalize the controversy and offer relief from uncertainty.” See
Plaintiff may find it unfair that defendants’ default has effectively prevented it from obtaining any resolution in this matter. However, there is certainly no guarantee that defendants’ appearance would have resulted in a judgment in plaintiff‘s favor. As set forth above, three of the Polaroid factors appear to favor defendants, even with all of plaintiff‘s allegations relating to liability deemed true. If defendants had appeared, they would have undoubtedly brought a counterclaim for infringement, and in that event, the Court may have rendered a judgment in defendants’ favor.
CONCLUSION
Plaintiff‘s motion for a default judgment is denied, and the case is dismissed.
SO ORDERED.
Brian M. Cogan
U.S.D.J.
Dated: Brooklyn, New York
August 4, 2026