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

• Decision Date: 07 March 2023
• Docket Number: 18-CV-6449 (JS)(ARL)
• 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

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RVC FLOOR DECOR, LTD., Plaintiff, v. FLOOR AND DECOR OUTLETS OF AMERICA, INC., Defendant.

No. 18-CV-6449 (JS)(ARL)

United States District Court, E.D. New York

March 7, 2023

For Plaintiff: Craig B. Sanders, Esq.

Jonathan Mark Cader, Esq.

James H. Freeman, Esq.

Sanders Law Group

Erica Carvajal, Esq. Sanders Law LLC 100

For Defendant: Bryan J. Wolin, Esq.

H Forrest Flemming, III, Esq.

Robert Nathan Potter, Esq.

Kilpatrick Townsend & Stockton LLP

Richard Charles Henn, Jr., Esq.

Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street, Suite 2800 Atlanta, Georgia 30309

MEMORANDUM & ORDER

SEYBERT, DISTRICT JUDGE

RVC Floor Decor, Ltd., (hereafter the “Plaintiff”) initiated this trademark infringement case against Floor & Decor Outlets of America (hereafter the “Defendant”) pursuant to Section 43(a) of the Lanham Act, New York common law, and New York General Business Law Section 360-l.^[1] Trial is scheduled to commence in this case on April 10, 2023. Presently before the Court is Defendant's Omnibus Motion in Limine (hereafter the “Omnibus Motion”). (ECF No. 167.) For the reasons that follow, Defendant's motion is GRANTED IN PART AND DENIED IN PART.

DISCUSSION

For a thorough recitation of the factual and procedural background of this case, the Court refers the parties to Judge Hurley's March 18, 2021, Memorandum & Order denying Plaintiff's motion for summary judgment and denying in part and granting in part Defendant's cross-motion for summary judgment. See RVC Floor Decor, Ltd. v. Floor and Decor Outlets of Am., Inc., 527 F.Supp.3d 305, 312-15 (E.D.N.Y. 2021).^[2]

In its Omnibus Motion, Defendant seeks to exclude from trial all evidence, testimony and argument regarding: (1) “purported consumer ‘confusion' that is non-actionable and therefore irrelevant;” (2) “[i]mproper expert opinion testimony by unqualified fact witnesses concerning, inter alia, reputational harm purportedly suffered by Plaintiff, . . . damages purportedly suffered by [Plaintiff], and the quality of products sold by the parties;” (3) “[h]earsay from, inter alia, social media posts, documents prepared by third parties, and documents prepared solely for discovery purposes;” (4) “[Defendant's new] stores that opened for business long after the close of discovery;” (5) “[t]he closure of [Plaintiff's] Syosset store location after the close of discovery;” (6) “[p]urported evidence of secondary meaning coming into existence after July 2015;” (7) “[p]urported consumer ‘confusion' occurring after the close of discovery; and (8) Plaintiff's post discovery alterations “to the appearance of its logo and presentation of its trade name.” (See Support Memo, ECF No. 168, in toto.) Plaintiff filed opposition to Defendant's Omnibus Motion. (See Pl's Opp'n, ECF No. 178.) Afterwards, Defendant filed a reply. (See Def's Reply, ECF No. 182.)

I. Legal Standard

“A district court's inherent authority to manage the course of its trials encompasses the right to rule on motions in limine.” Highland Cap. Mgmt., L.P. v. Schneider, 551 F.Supp.2d 173, 176 (S.D.N.Y. 2008) (citing Luce v. United States, 469 U.S. 38, 41 n.4 (1984)). Motions in limine “aid the trial process by enabling the Court to rule in advance of trial on the relevance of certain forecasted evidence, as to issues that are definitely set for trial, without lengthy argument at, or interruption of, the trial.” Mango v. BuzzFeed, Inc., 316 F.Supp.3d 811, 812 (S.D.N.Y. 2018) (quoting Palmieri v. Defaria, 88 F.3d 136, 141 (2d Cir. 1996)). On a motion in limine evidence should be excluded, “[o]nly when [it] is ‘clearly inadmissible on all potential grounds.'” United States v. Ceballo, No. 13-CR-0308, 2014 WL 4980554, at *1 (E.D.N.Y. Oct. 6, 2014) (quoting United States v. Paredes, 176 F.Supp. 192, 193 (S.D.N.Y. 2001)). In considering a motion in limine, the Court “may reserve judgment until trial, so that the motion is placed in the appropriate factual context.” United States v. Chan, 184 F.Supp.2d 337, 340 (S.D.N.Y. 2002). Moreover, the Court's rulings on a motion in limine are “subject to change when the case unfolds, particularly if the actual testimony differs from what was contained in the defendant's proffer.” Id. at 341 (quoting Luce, 469 U.S. at 41).

As an initial matter, pursuant to Federal Rules of Evidence (hereafter “Rule”) 401, “[e]vidence is relevant if: (a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” FED R. EVID. 401. HOWEVER, “[T]HE COURT MAY EXCLUDE RELEVANT EVIDENCE IF ITS PROBATIVE VALUE IS SUBSTANTIALLY OUTWEIGHED BY A DANGER OF ONE OR MORE OF THE FOLLOWING: UNFAIR PREJUDICE, CONFUSING THE ISSUES, MISLEADING THE JURY, UNDUE DELAY, WASTING TIME, OR NEEDLESSLY PRESENTING

cumulative evidence.” FED. R. EVID. 403. WITH THESE GENERAL PRINCIPLES IN MIND, THE COURT ADDRESSES EACH OF DEFENDANT'S ARGUMENTS IN TURN.

II. Evidence Supporting Plaintiff's Theory of Reverse Confusion

As part of Plaintiff's Lanham Act claims and its New York common law claims for trademark infringement, Plaintiff is required to prove that Defendant's “use of its own mark will likely cause confusion with [P]laintiff's mark.” RVC Floor Decor, 527 F.Supp.3d at 316; see also Info. Superhighway, Inc. v. Talk Am., Inc., 395 F.Supp.2d 44, 56 (S.D.N.Y. 2005) (“The elements necessary to prevail on common law causes of action for trademark infringement and unfair competition mirror Lanham Act claims.”). “To establish a likelihood of confusion, a plaintiff must show that ‘numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant's mark.'” O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F.Supp.2d 500, 519 (S.D.N.Y. 2008) (quoting Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993)).

To establish confusion, Defendant anticipates that Plaintiff will seek to advance “the theory of reverse confusion.” (Support Memo at 2.) “Reverse confusion exists when a [junior] user selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the [senior] user are produced by the [junior] user.” On Site Energy Co. v. MTU Onsite Energy Corp., No. 10-CV-1671, 2012 WL 13113196, at *1 (E.D.N.Y. July 26, 2012) (quoting Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 585 (2d Cir. 1991)); see also Riseand Shine Corp. v. PepsiCo, Inc., 41 F.4th 112, 119 (2d Cir. 2022) . “In reverse confusion cases, consumers may believe that the senior user is ‘an unauthorized infringer, and the [junior user's] use of the mark may in that way injure [the senior user's] reputation and impair its good will.” Kelly-Brown v. Winfrey, 717 F.3d 295, 304-05 (2d Cir. 2013) (quoting Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988)); see also Mejia & Assocs. Inc. v. Int'l Bus. Machs. Corp., 920 F.Supp. 540, 546 (S.D.N.Y. 1996) (“The reverse confusion theory protects the mark of a [senior] user from being overwhelmed by a [junior] user, typically where the [junior] user is larger and better known and consumers might conclude that the senior user is the infringer.”). The Second Circuit has “explained that the relevant confusion is that which affects the purchasing and selling of the goods or services in question.” Lang, 949 F.2d at 583 (citations omitted). Consequently, “trademark infringement protects only against mistaken purchasing decisions and not against confusion generally.” Id. (quoting RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 20). For example, the Second Circuit has held that incidents in which customers looking for the junior user's products or store mistakenly contact the senior user of a mark are irrelevant to the issue of reverse confusion since such calls reflect that the “consumers erroneously believed that the senior user [] was the source of the junior user's [product]." On Site Energy Co., 2012 WL 13113196, at *1; see also Codename Enters., Inc. v. Fremantlemedia N. Am, Inc., No. 16-CV-1267, 2018 WL 3407709, at *11 (S.D.N.Y. Jan. 12, 2018) (clarifying that “[e]vidence of reverse confusion that would support [a] [p]laintiff's claim would [include] customers seeking [p]laintiff's . . . services but reaching out instead to [d]efendant”).

Defendant argues that Plaintiff's reverse confusion evidence can be broadly categorized “into four buckets:”

[1] testimony concerning instances of callers looking for [Defendant's store], or [Defendant's] products that [Plaintiff] does not [stock]; [2] [evidence relying] on instances in which individuals merely inquired about whether the parties were affiliated; [3] [evidence] offered by [Plaintiff] reflect[ing] confusion by non-consumers, [such as Plaintiff's owner's friends and landlord; and] [4] purported confusion evidence involving [Defendant's] [and] not [Plaintiff's] customers.

(Support Memo at 3-4.)

Defendant maintains that all four categories of evidence should be precluded under Rules 402 and 403 as irrelevant. (Id. at 4.) Plaintiff counters that the proffered testimony, contrary to Defendant's assertion, “does not rest on the testimony of Defendant's customers [but] [r]ather . . . will consist of purchasers or prospective purchasers of the Plaintiff's products who believed that they were produced by or affiliated with Defendant's brand.” (Pl's Opp'n at 7.) Plaintiff requests that “the Court . . . defer . . . ruling on th[ese] issue[s] until the evidence has actually been proffered at trial and the Court has . . . the opportunity to assess whether the [proffered] testimony refers to Plaintiff's customers, as opposed to Defendant's customers.” (Id.)

A. Evidence of Defend...