RVC Floor Decor, Ltd. v. Floor & Decor Outlets of Am., Inc.

• Decision Date: 18 March 2021
• Docket Number: 2:18-cv-6449 (DRH) (ARL)
• Citation: 527 F.Supp.3d 305
• Parties: RVC FLOOR DECOR, LTD., Plaintiff, v. FLOOR AND DECOR OUTLETS OF AMERICA, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

527 F.Supp.3d 305

RVC FLOOR DECOR, LTD., Plaintiff,

v.FLOOR AND DECOR OUTLETS OF AMERICA, INC., Defendant.

2:18-cv-6449 (DRH) (ARL)

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

Signed March 18, 2021

BARSHAY SANDERS, PLLC, Attorneys for Plaintiff, 100 Garden City Plaza, Suite 500, Garden City, NY 11530, By: David M. Barshay, Esq., Craig B. Sanders, Esq.

KILPATRICK TOWNSEND & STOCKTON LLP, Attorneys for Defendant, 1114 Avenue of the Americas, New York, NY 10036, By: R. Charles Henn Jr., Esq., Robert N. Potter, Esq., Bryan J. Wolin, Esq., H. Forrest Flemming III, Esq.

MEMORANDUM AND ORDER

HURLEY, Senior District Judge:

INTRODUCTION

Plaintiff RVC Floor Decor, Ltd. ("Plaintiff") brought this action against Defendant Floor and Decor Outlets of America, Inc. ("Defendant") for trademark infringement and unfair competition in violation of § 43(a) of the Lanham Act, New York General Business Law § 349 and New York common law, and for violations of New York General Business Law § 360-l . Presently before the Court is Plaintiff's motion for summary judgment and Defendant's cross-motion for partial summary judgment, both pursuant to Federal Rule of Civil Procedure 56. For the reasons set forth below, Plaintiff's motion is DENIED and Defendant's cross-motion is GRANTED IN PART and DENIED IN PART.

BACKGROUND

The following facts, taken from the parties’ Local Rule 56.1 statements, are undisputed unless otherwise noted. (See Pl.’s Rule 56.1 Statement of Undisputed Material Facts ("Pl. 56.1") [DE 128]; Def.’s Loc. Rule 56.1 Response ("Def. Resp. 56.1") [DE 136]; Def.’s Loc. Rule 56.1 Statement of Undisputed Material Facts ("Def. 56.1") [DE 141]; Pl.’s Loc. Rule 56.1(b) Response ("Pl. Resp. 56.1") [DE 138]).

A. Plaintiff RVC Floor Decor, Ltd.

Plaintiff RVC Floor Decor, Ltd. is a New York State domestic corporation incorporated in 1974 that sells "carpet, vinyl and hard surface flooring for purchase and installation at customers’ homes and/or businesses," (Pl. 56.1 ¶¶ 1, 7, 23), as well as "bedding, furniture, fabrics, barware, vases, mirrors, wall art, interior design services, and window treatments," (Def. Resp. 56.1 ¶¶ 7, 23). In October of that year, Plaintiff opened its first store in Rockville Centre, New York, naming it "Floor Decor." (Pl. 56.1 ¶¶ 6, 8).

Plaintiff asserts that, from this point forward, its Rockville Centre location has continuously identified itself with the tradename "Floor Decor" mark in "all signage, advertising, and [for] other business purposes" – until spring 2014, when it opened a new a store in Syosset, New York under the name "Floor Decor & Design." (Id. ¶¶ 9, 16–17, 19, 42, 52, 54). According to Plaintiff, any other names used in this time were derivative marks. (Id. ¶ 55). Defendant disputes these facts. Defendant says Plaintiff has used many other, similar names: RVC Floor Decor Ltd.; Floor Decor Direct; FD&D Floor Decor & Design; Floor Decor Carpet One; Floor Decor Carpet One Floor & Home; and Floor Decor and Design Home Design Studio. (Def. Resp. 56.1 ¶¶ 6, 9). In support, Defendant annexes several advertisements for Plaintiff's Rockville Centre store that use a name other than "Floor Decor." (Ex. 18–19, 21–22, 24, 32 [DE 133-18, -19, -21, -22, -24, -32] to Decl. of R. Charles Henn Jr. ("Henn Decl.") [DE 133]).

Plaintiff's business has grown since its inception and now currently serves customers in the New York State counties of Kings, Nassau, Suffolk, and Queens. (Pl. 56.1 ¶ 41). In 1975 alone, Plaintiff spent roughly $10,000.00 in advertising with the Pennysaver, local newspapers, and the Nassau County Yellow Pages, all the while earning roughly $500,000.00 in sales. (Id. ¶¶ 11–12). In 1981, Plaintiff had an advertising budget of $100,000.00 and sales of $1,500,000.00. (Id. ¶¶ 13–15, 18). In the mid-1990s, Plaintiff spent roughly $150,000.00 per year in advertising, and its sales revenues "increase steadily year over year topping out in the mid 1990's at approximately" $3,800,000.00. (Id. ¶¶ 37–38, 47). In 2018, the advertising budget was roughly $80,000.00 and sales were $2,500,000.00. (Id. ¶¶ 58–60; Answers to Second Set of Expedited Interrogatories ("Pl. Answers to 2d Interrog."), Ex. 43 [DE 133-43] to Henn Decl. (providing a yearly advertising budgets)). Defendant contests the accuracy of these figures, noting that Plaintiff "does not have any business records of sales made prior to 2011" nor "records concerning the publications it advertised in or circulation numbers [for] any year between 1974 and 2013." (Def. Resp. 56.1 ¶¶ 11–15, 17–18, 20, 25, 37, 38, 46–47).

In 1984, Plaintiff moved to a larger facility in Rockville Centre, prompting the town's mayor to attend the grand opening and to present Plaintiff "with an award for having the most improved building in Rockville Centre." (Pl. 56.1 ¶¶ 25, 28, 30).

Since 1984, the store has used the same exterior lighted sign with its "Floor Decor" mark. (Id. ¶¶ 31–32). Defendant asserts the sign "appears only on the roof" and "is not prominently displayed" but rather "crammed in the middle of a string of descriptive text." (Def. Resp. 56.1 ¶¶ 31, 42).

(See Pl.’s Mem. of Law in Support at 16 ("Pl. Mem.") [DE 127] (left-hand image); Def.’s Mem. Law in Opp. at 6 ("Def. Opp.") [DE 135] (right-hand image)).

B. Defendant Floor & Decor Outlets of America, Inc.

Defendant Floor & Decor Outlets of America, Inc. was founded in 2000 in Atlanta, Georgia and has used the tradename "Floor & Decor" since 2003. (Def. 56.1 ¶¶ 1, 2, 5; Def. Resp. 56.1 ¶ 150). Defendant sells "hard surface flooring" along with "accompanying trim and decorative products" (e.g. , tile) in a warehouse-style store. (Def. Resp. 56.1 ¶¶ 163, 165). Defendant, however, does not "offer installation services, nor does it sell carpet, bedding, furniture, fabrics, barware, vases, mirrors, wall art, or window treatments." (Id. ¶ 166). In 2006, Defendant registered its "Floor & Decor" mark with the United States Patent and Trademark Office. (Id. ¶ 7; Def. Resp. 56.1 ¶ 151).

Defendant's business has considerably expanded since its founding. (Def. Resp. 56.1 ¶¶ 135–37, 158). A Google search of the terms "floor decor," "floor and decor," or "floor & decor" each yield Defendant's website as the first advertised and first organic listing. (Pl. 56.1 ¶¶ 130–33). In its first three years in the New York metropolitan area, Defendant spent more than $3,500,000 in advertising alone. (Def. 56.1 ¶¶ 9, 10). In 2016 and 2017, Defendant opened two stores in New Jersey. (Id. ¶ 9).

(See Pl. Mem. at 16 (left-hand image); Pl.’s Reply Mem. of Law at 11 ("Pl. Reply") [DE 139] (right-hand image)).

C. Defendant Opens a Store on Long Island in November 2018

Defendant first became aware of Plaintiff's business in 2012. (Def. 56.1 ¶ 15). Six years later, in November 2018, Defendant opened its first store in New York – in the village of Farmingdale on Long Island. (Id. ¶ 13). According to Plaintiff, Defendant did not advertise this location until ten days prior to the grand opening. (Pl. 56.1 ¶¶ 108, 126; Tr. of Dep. of Wendy Martin at 24:18–25:11 ("W. Martin Dep."), Ex. 13 [DE 130-1] to Decl. of David M. Barshay ("Barshay Decl.") [DE 129]). According to Defendant, however, it "specifically advertised its Farmingdale store at least as early as February 2018." (Def. Resp. 56.1 ¶ 126). Plaintiff asserts that, in the time since Defendant has opened it store, many people have mistaken its store and services with that of Defendant's. (Pl. 56.1 ¶¶ 73–105). Defendant contends that these "individuals were actually [Defendant] customers looking for [Defendant's store." (Def. Resp. 56.1 ¶¶ 76–78, 80–82, 86, 90–91, 99, 102; see also id. ¶ 84 (prospective Defendant employees looking for Defendant's store)).

D. Procedural Posture

Plaintiff filed its complaint on November 13, 2018 alleging violations of the Lanham Act, New York state common law, and New York General Business Law. (Compl. [DE 1]). At bottom, Plaintiff's case concerns Defendant's alleged trademark infringement of Plaintiff's mark in the New York State counties of Kings, Nassau, Suffolk, and Queens. (Pl. Resp. 56.1 ¶ 35). As to remedies, Plaintiff seeks a "permanent injunction, all profits wrongfully derived by Defendant, a treble award as to such profits pursuant to 15 U.S.C. § 1117(a) and New York law, punitive damages, and interest, costs and attorneys’ fees pursuant to 15 U.S.C. § 1117(b)." (Pl.’s Mem. of Law in Opp. at 7 ("Pl. Opp.") [DE 137]).

LEGAL STANDARD

Summary judgment, pursuant to Federal Rule of Civil Procedure 56, is appropriate only where the movant "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The relevant governing law in each case determines which facts are material; "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). When making this determination, a court must view all facts "in the light most favorable" to the non-movant, Tolan v. Cotton , 572 U.S. 650, 656–57, 134 S.Ct. 1861, 188 L.Ed.2d 895 (2014), and "resolve all ambiguities and draw all permissible factual inferences in favor of the [non-movant]," Johnson v. Killian , 680 F.3d 234, 236 (2d Cir. 2012) (quoting Terry v. Ashcroft , 336 F.3d 128, 137 (2d Cir. 2003) ). Thus, "[s]ummary judgment is appropriate [only] where the record taken as a whole could not lead a rational trier of fact to find for the [non-movant]." Id. (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ) (internal quotation marks omitted).

To defeat a summary judgment motion properly supported by affidavits, depositions, or other documentation, the non-movant must offer similar materials setting forth specific facts demonstrating that there is a genuine dispute of material fact to be tried....