Deep Foods Inc. v. Deep Foods Inc.

• Court: U.S. District Court — Western District of New York
• Writing for the Court: ELIZABETH A. WOLFORD, United States District Judge
• Citation: Deep Foods Inc. v. Deep Foods Inc., 419 F.Supp.3d 569 (W.D. N.Y. 2019)
• Decision Date: 26 December 2019
• Docket Number: 1:18-CV-01256 EAW
• Parties: DEEP FOODS INC., a New Jersey Corporation, Plaintiff, v. DEEP FOODS INC., a New York Corporation, and Vikramdeep Cheema, Defendants.

419 F.Supp.3d 569

DEEP FOODS INC., a New Jersey Corporation, Plaintiff,

v.DEEP FOODS INC., a New York Corporation, and Vikramdeep Cheema, Defendants.

1:18-CV-01256 EAW

United States District Court, W.D. New York.

Signed December 26, 2019

Lawrence D. Mandel, Gertner Mandel, LLC, Lakewood, NJ, for Plaintiff.

DECISION AND ORDER

ELIZABETH A. WOLFORD, United States District Judge

INTRODUCTION

Plaintiff Deep Foods Inc. ("Plaintiff") commenced this action on November 8, 2018, asserting various claims arising out of the alleged infringement of Plaintiff's trademark by defendants Deep Foods Inc. and Vikramdeep Cheema (collectively, "Defendants"). (Dkt. 1). Because Defendants have not appeared in this action, upon Plaintiff's request (Dkt. 8), the Clerk of Court entered default as to Defendants on January 10, 2019 (Dkt. 9).

Currently before the Court is Plaintiff's motion for default judgment. (Dkt. 10). For the reasons set forth below, the motion is denied.

BACKGROUND

I. Factual Background

The following facts are taken from Plaintiff's Complaint and motion papers and are accepted as true in light of Defendants' default. See Cement & Concrete Workers Dist. Council Welfare Fund, Pension Fund, Annuity Fund, Educ. & Training Fund & Other Funds v. Metro Found. Contractors Inc. , 699 F.3d 230, 234 (2d Cir. 2012) ("[A] party's default is deemed to constitute a concession of all well pleaded allegations of liability....").

Plaintiff is a "leading manufacturer" of Indian foods in the United States, and "has been selling its prepared foods to customers throughout the United States for over 40 years." (Dkt. 1 at ¶ 5). Plaintiff owns and has used the mark "DEEP" in commerce "since at least as early as October, 1977." (Id. at ¶ 6). "Plaintiff offers delicious snacks, frozen meals, ice creams[,] and other specialties under its house mark ‘DEEP’ and its tradename Deep Foods Inc." (Id. at ¶ 9). Plaintiff's tradename appears on its packaging, advertising, promotional materials, correspondence, and website. (Id. at ¶ 7).

Plaintiff owns the trademark "DEEP" (U.S. Trademark Registration No. 2,544,228), for the following:

prepared foods, namely frozen and non-frozen entrees and side-dishes consisting primarily of meat, poultry, fish and/or vegetables; and snacks, namely, party mix consisting primarily of mixtures of dried fruits, processed nuts, processed vegetables with processed cereal grains; prepared foods, namely frozen and non-frozen side dishes consisting primarily of rice and/or pasta; cooking sauces; spices; and desserts, namely ice cream, ice milk, frozen yogurt, pies, cakes, cookies and pastries.

(Dkt. 10-3 at ¶ 2). Plaintiff also owns the trademark "DEEP" and Lamp Design (Trademark Registration No. 1,690,366) for "frozen and prepared entrees consisting primarily of meat, fish, poultry or vegetables." (Id. at ¶ 3). Plaintiff further owns the trademark "DEEP" and Lamp Design (Trademark Registration No. 1,300,799) for "mixtures of dried fruits, processed nuts, processed vegetables[,] and processed cereal grains." (Id. at ¶ 4).

"Defendants own and operate a convenience store featuring prepared foods, snacks[,] and drinks" under the tradename Deep Foods Inc. (Dkt. 1 at ¶ 13). "Defendants' use of Deep Foods Inc. is done with full knowledge of Plaintiff's rights." (Id. at ¶ 14). Plaintiff learned of Defendants' infringement activities through its "banker in connection with commercial financing being sought by Plaintiff." (Dkt. 10-2 at ¶ 13). Plaintiff sent a cease and desist letter to Defendants on February 15, 2018, and a follow up letter on March 20, 2018. (See id. at ¶ 14). Defendants refuse to cease and desist and continue their infringement activities. (Id. at ¶ 15).

II. Procedural Background

Plaintiff commenced this action on November 8, 2018. (Dkt. 1). Defendants were served on December 1, 2018. (Dkt. 6; Dkt. 7). Accordingly, Defendants were required to answer or otherwise respond to the Complaint on or before December 22, 2018. See Fed. R. Civ. P. 12(a)(1)(A)(i). Defendants failed to file a responsive pleading and, at Plaintiff's request (Dkt. 8), the Clerk of Court entered default against Defendants on January 10, 2019. (Dkt. 9).

On May 29, 2019, Plaintiff moved for default judgment. (Dkt. 10). Plaintiff served their motion papers on Defendants at their last known addresses. (Dkt. 10-5 at 2; Dkt. 12). Defendants have not responded in opposition.

DISCUSSION

I. Legal Standard

Federal Rule of Civil Procedure 55 sets forth the procedural steps for entry of a default judgment. First, a plaintiff must seek entry of default where a party against whom it seeks affirmative relief has failed to plead or defend in the action. Fed. R. Civ. P. 55(a). Plaintiff has obtained entry of default as to Defendants in this case. (Dkt. 7). "Having obtained a default, a plaintiff must next seek a judgment by default under Rule 55(b)." New York v. Green , 420 F.3d 99, 104 (2d Cir. 2005) ; see also Fed. R. Civ. P. 55(b). "Once found to be in default, a defendant is deemed to have admitted all of the well-pleaded allegations in the complaint pertaining to liability." Philip Morris USA Inc. v. 5 Brothers Grocery Corp. , No. 13-CV-2451 (DLI)(SMG), 2014 WL 3887515, at *2 (E.D.N.Y. Aug. 5, 2014) (citation omitted).

"As the Second Circuit has noted, when determining whether to grant a default judgment, the Court is guided by the same factors which apply to a motion to set aside entry of default." Krevat v. Burgers to Go, Inc. , No. 13-CV-6258, 2014 WL 4638844, at *5 (E.D.N.Y. Sept. 16, 2014) (citing Pecarsky v. Galaxiworld.com, Ltd. , 249 F.3d 167, 170-71 (2d Cir. 2001) ). The three factors include: (1) "whether the defendant's default was willful"; (2) "whether the defendant has a meritorious defense to plaintiff's claims"; and (3) "the level of prejudice the non-defaulting party would suffer as a result of the denial of the motion for default judgment." Id. "[P]rior to entering default judgment, a district court is required to determine whether the [plaintiff's] allegations establish the [defendant's liability] as a matter of law." City of New York v. Mickalis Pawn Shop, LLC , 645 F.3d 114, 137 (2d Cir. 2011). Ultimately, "[t]he decision whether to enter default judgment is committed to the district court's discretion." Greathouse v. JHS Sec. Inc. , 784 F.3d 105, 116 (2d Cir. 2015).

II. Willfulness

The Court finds that Defendants' default is willful. Plaintiff has submitted proof of service demonstrating the Summons and Complaint were personally served on Defendants on December 1, 2018. (Dkt. 6; Dkt. 7). Moreover, Plaintiff's motion for default judgment was served upon Defendants at their last known addresses (Dkt. 12), and Defendants also did not respond to it. "Defendant's failure to appear, failure to respond to the Complaint, and failure to respond to the instant motion sufficiently demonstrate willfulness." Krevat , 2014 WL 4638844, at *8 (citation omitted); see also S.E.C. v. McNulty , 137 F.3d 732, 738-39 (2d Cir. 1998) (defendant's failure to appear, to respond to complaint, and to respond to motion for default judgment indicates willful conduct); Mason Tenders Dist. Council v. Duce Const. Corp. , No. 02Civ.9044(LTS)(GWG), 2003 WL 1960584, at *2 (S.D.N.Y. April 25, 2003) ("Defendants, having failed to respond in any way to the Summons and Complaint or otherwise make any appearance in this action and having failed to provide for its failure to defend, have defaulted willfully.").

III. Meritorious Defenses

The Court next considers whether Defendants have a meritorious defense to Plaintiff's claims. "A defense is meritorious if it is good at law so as to give the factfinder some determination to make." Am. Alliance Ins. Co. v. Eagle Ins. Co. , 92 F.3d 57, 61 (2d Cir. 1996) (citation omitted). "While a defendant need not establish his defense conclusively, he must ‘present evidence of facts that, if proven at trial, would constitute a complete defense.’ " Krevat , 2014 WL 4638844, at *6 (quotation and citation omitted).

"[W]here a defendant fails to answer the complaint, a court is unable to make a determination whether the defendant has a meritorious defense to the plaintiff's claims, which circumstance weighs in favor of granting a default judgment." Id.

The fact that a complaint stands unanswered does not, however, suffice to establish liability on [the] claims: a default does not establish conclusory allegations, nor does it excuse any defects in the plaintiff's pleading. With respect to liability, a defendant's default does no more than concede the complaint's factual allegations; it remains the plaintiff's burden to demonstrate that those uncontroverted allegations, without more, establish the defendant's liability on each asserted cause of action.

Said v. SBS Electronics, Inc. , No. CV 08-3067(RJD)(JO), 2010 WL 1265186, at *2 (E.D.N.Y. Feb. 24, 2010) ; see also Krevat , 2014 WL 4638844, at *7 ("Even if a plaintiff's claims are deemed admitted, a plaintiff must demonstrate that the allegations set forth in the complaint state valid claims."). Consequently, the Court must assess whether Plaintiff's allegations, accepted as true, demonstrate Defendants' liability as to each of Plaintiff's causes of action.

A. Trademark Infringement and False Designation of Origin under the Lanham Act and Unfair Competition under New York Common Law

"Courts employ substantially similar standards when analyzing claims for trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a) [,] false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a) [,] ... [and] unfair competition under New York common law." Van Praagh v. Gratton , 993 F. Supp. 2d 293, 301 (E.D.N.Y. 2014). Accordingly, the Court will address these claims together.

In order to prevail on a claim for infringement of a registered trademark under § 1114(a), a plaintiff must establish two elements. See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc. , 696 F.3d 206, 216-17 (2d Cir. 201...