Kohler Co. v. Bold Int'l Fzco, 17-cv-4233 (LDH) (RLM)

• Citation: 422 F.Supp.3d 681
• Decision Date: 29 September 2018
• Docket Number: 17-cv-4233 (LDH) (RLM)
• Parties: KOHLER CO., Plaintiff, v. BOLD INTERNATIONAL FZCO and Rocell Bath Limited, Defendants.
• Court: United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)

422 F.Supp.3d 681

KOHLER CO., Plaintiff,

v.BOLD INTERNATIONAL FZCO and Rocell Bath Limited, Defendants.

17-cv-4233 (LDH) (RLM)

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

Signed September 29, 2018

Filed October 4, 2018

MEMORANDUM AND ORDER

LaSHANN DeARCY HALL, United States District Judge:

Plaintiff commenced this action on July 17, 2017. (See Complaint, ECF No. 1.) Defendants failed to answer or otherwise defend this case, and therefore defaulted on October 5, 2017. (Clerk's Entry of Default, ECF No. 12.) Plaintiff subsequently moved, pursuant to Federal Rule of Civil Procedure 55(b)(2), for default judgment. (Mot. for Default J., ECF No. 13.) On October 23, 2017, the Court referred Plaintiff's motion to United States Magistrate Judge Roanne L. Mann for a report and recommendation.

On June 19, 2018, Magistrate Judge Mann issued a Report and Recommendation (the "R & R"), wherein she recommended that Plaintiff Kohler Co.'s ("Kohler") motion for default judgment against Defendants Bold International FZCO ("Bold") and Rocell Bath Limited ("Rocell") (collectively "Defendants") be granted in part and denied in part. (R & R at 739, ECF No. 33.)

The R & R recommends that Plaintiff's motion for default judgment be granted with respect to Plaintiff's trademark infringement and false designation of origin claims under the Lanham Act and New York common law, and denied with respect to Plaintiff's unfair competition and trademark dilution claims under New York law. (Id. ) The R & R also recommends that the Court deny Plaintiff's request for injunctive relief. (Id. at739.) On July 20, 2018, Plaintiff filed an objection requesting that the Court decline to adopt three aspects of Magistrate Judge Mann's R & R: first , the denial of Plaintiff's request for injunctive relief; second , the R & R's conclusion that Plaintiff's BOLD marks are only moderately strong; and third , the denial of Plaintiff's New York trademark dilution claim. (Obj. to R & R at 1, ECF No. 35.) Additionally, Plaintiff requests that the Court find Defendants liable for trademark infringement and false designation of origin claims under federal and New York law based on a Kohler mark that was registered after Plaintiff moved for default judgment but before Magistrate Judge Mann issued the R & R. (Id. ) Finally, Plaintiff requests that the Court adopt the R & R's recommended entry of default judgment against Defendant Bold as to its trademark infringement and false designation of origin claims under the federal Lanham Act. (Id. )

The Court reviews any portion of the R & R that has been objected to de novo. See Fed. R. Civ. P. 72(b)(3) ; 28 U.S.C. § 636(b)(1)(C). As to the balance, "the district court need only satisfy itself that there is no clear error on the face of the record." Estate of Ellington ex rel. Ellington v. Harbrew Imps. Ltd. , 812 F. Supp. 2d 186, 189 (E.D.N.Y. 2011) (quoting Urena v. New York , 160 F. Supp. 2d 606, 609-10 (S.D.N.Y. 2001) (internal quotation marks and citations omitted)). For the reasons set forth below, the Court adopts Magistrate Judge Mann's thorough and well-reasoned opinion, with the exception of two harmless errors.

BACKGROUND¹

I. Plaintiff's Marks

Plaintiff Kohler created its first bathtubs and entered the plumbing business in 1883. (Compl. ¶ 10.) In 1965, Plaintiff "introduced bathroom fixtures in vibrant colors, moving away from the pastels that had dominated the market since the 1920s." (Id. ¶ 14.) In order to highlight these "boldly colored products[,]" Plaintiff, in 1967, began to market its products under the slogan THE BOLD LOOK OF KOHLER. (Id. ¶ 15.) Plaintiff introduced environmentally conscious "low-consumption faucets, showerheads, and toilets in 1974." (Id. ¶ 17.) In 1977, Plaintiff "launched its first whirlpool bath line." (Id. ¶ 18.)

Plaintiff has registered the following marks (the "Kohler BOLD Marks" or the "Marks") with the United States Patent and Trademark Office (the "USPTO"):

 Mark Reg. No. Filing Date First Use Reg. Status
                  THE BOLD LOOK     1137310      01/22/1979      12/06/1978     Registered
                  OF KOHLER
                  BOLD.             3890954      07/29/2009      03/31/2010     Registered
                  PERFORMANCE
                  BOLD. POWER.      3901466      07/29/2009      10/31/2009     Registered
                  BOLD. DESIGN.     3927382      07/29/2009      10/31/2009     Cancelled
                  BOLD.             3982059      07/29/2009      11/30/2010     Registered
                  CONSERVATION
                  BOLD. STYLE.      3986327      07/29/2009      01/31/2010     Registered
                  BOLD.             4049785      09/17/2009      03/31/2011     Registered
                  DURABILITY
                  BOLD.             4092003      10/18/2010      06/30/2010     Registered
                  EXPERIENCE
                  LIVE BOLD         4298967      10/20/2011      04/30/2012     Registered
                  BOLD2             5475789      10/1/2014       11/28/2016     Registered
                

[Editor's Note: The preceding image contains the reference for footnote² ]

(Id. ¶¶ 22-25; Obj. to R & R Ex. A, ECF No. 35.) The Kohler BOLD Marks cover goods such as toilets, showerheads, bathtubs, sinks, and faucets. (Id. ) The BOLD LOOK OF KOHLER mark appears as follows:

[Editor's Note: The preceding image contains the reference for footnote³ ]

Plaintiff has invested in marketing its goods. In 1985, Plaintiff "opened its 36,000 square-foot Kohler Design Center for the purpose of showcasing the dramatic design of [its] kitchen and bath fixtures." (Compl. ¶ 19.) "In the U.S. alone, [Plaintiff] has expended in the tens of millions of dollars on the advertising and marketing of products under the [Kohler BOLD marks] in each of the last five years." (Declaration of James M. Robinson, IV ("Robinson Decl.") ¶ 8, ECF No. 20.) Plaintiff alleges that these marketing efforts have been successful. (Compl. ¶ 23.) "Kohler's sales of products sold under its BOLD trademarks has been in the hundreds of millions of dollars in annual sales in each of the last five years." (Robinson Decl. ¶ 9.) Plaintiff also claims that "[a]s a consequence of [this] extensive advertising, promotion, and use of the Kohler BOLD Marks, Kohler has developed enormous recognition for its goods and services under the [M]arks and has acquired and enjoys a valuable reputation and tremendous goodwill under them." (Compl. ¶ 23.)

II. Defendants' Alleged Infringement

Defendant Bold is a seller of various bathroom fixtures founded in the United Arab Emirates in 2011. (Compl. ¶¶ 5, 30-31.) That same year, Defendant Bold attempted to register the mark BOLD with the Office of Harmonization in the Internal Market (now known as the European Union Intellectual Property Office ("EUIPO")):

(Id. ¶ 38.) Plaintiff successfully opposed Defendant Bold's mark based on the likelihood of confusion with its own marks, and Defendant Bold's application was subsequently cancelled. (Id. ¶¶ 40-43.) In 2015, Defendant Bold attempted to register the same mark with the USPTO. (Id. ¶ 32.) The USPTO examiner refused to register the mark given the likelihood of confusion with Plaintiff's Marks. (Id. ¶¶ 34-35.)

In early 2016, Defendant Bold began selling its BOLD-branded goods through Defendant Rocell. (Id. ¶¶ 47-49.) Defendant Rocell maintains a supply of BOLD-branded footwashers in its Briarwood, New York warehouse, and sells those footwashers on Amazon.com. (Id. ¶ 52.) Defendant Bold also maintains a website at mybold.com. (Id. ¶ 31.) In January 2017, Defendant Bold exhibited its BOLD-branded products, including toilets, shower systems, sinks, faucets, and shower heads at a trade show in Orlando, Florida. (Id. ¶¶ 44-46.)

DISCUSSION

I. Evidence Not Presented to the Magistrate Judge

Plaintiff claims that Magistrate Judge Mann's determinations as to Plaintiff's BOLD mark rested on "a factual error that impacts its assessment of liability." (Obj. to R & R at 1.) Specifically, Plaintiff objects that Magistrate Judge Mann referred to Plaintiff's BOLD mark as "unregistered" and "yet-to-be-used," when, in fact, Plaintiff's BOLD mark was registered on May 22, 2018, and its statement of use had been accepted in April 2018. (Obj. to R & R at 1-2.) But what Plaintiff characterizes as "a factual error" is more properly characterized as a lack of diligence on Plaintiff's part. That is, Plaintiff chose not to present evidence of the mark's registration or use to Magistrate Judge Mann. This notwithstanding the fact that Plaintiff's BOLD mark was registered and its statement of use accepted almost four weeks and two months prior to when Magistrate Judge Mann issued the R & R, respectively. Notably, Magistrate Judge Mann was forced to order Plaintiff to produce additional memoranda, declarations, and evidence in support of its deficient motion for a default judgment on two separate occasions. (See Nov. 9, 2017 Order, ECF No. 14 and March 16, 2018 Order, ECF No. 25.) And, Plaintiff's last submission to Magistrate Judge Mann, a declaration in support of its motion for default judgment, was filed on May 2, 2018, two weeks after the USPTO accepted Plaintiff's statement of use. (See Decl. of Ryan Ghiselli in Supp. Mot. for Default J., ECF No. 32.) Plaintiff could have used these opportunities to proffer this additional evidence to Magistrate Judge Mann, but did not.

Against this backdrop, the Court will not use Plaintiff's belatedly adduced evidence to find error in Magistrate Judge Mann's decision. The Second Circuit has found that "[c]onsiderations of efficiency and fairness militate in favor of a full evidentiary submission for the Magistrate Judge's consideration." Hynes v. Squillace , 143 F.3d 653, 656 (2d Cir. 1998). As such, the Second Circuit has routinely "upheld the exercise of the district court's discretion in refusing to allow supplementation of the record upon the district court's de novo review." Id. This is particularly the case where, as here, a party offers no justification for its failure to offer evidence to a magistrate judge. See Pan Am. World Airways, Inc. v. Int'l Bhd. of Teamsters, Chauffeurs, Warehousemen & Helpers of Am. , 894 F.2d 36, 40 n.3 (2d Cir. 199...