PRL USA Holdings, Inc. v. Prestige America LLC

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK PRL USAHOLDINGS, INC,” Plaintiff, 20-cv-10201(PKC) -against- ORDER PRESTIGE AMERICA LLC, ET AL., Defendants. ween nen ee □□□ CASTEL, U.S.D.J. This is an action for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq. and state law trademark infringement, unfair competition and breach of contract claims. Plaintiff designs, markets and distributes products with the famous Ralph Lauren trademarks. Defendant Prestige America LLC is located in Denville, New Jersey that has allegedly sold and distributed linen products, such as bed sheets, bearing the Ralph Lauren Trademarks without a license to do so. Nighat A. Syed and Hashim R. Syed are alleged to be owners and managers of Prestige America LLC,

The defendant LLC and the two individuals, represented by counsel, filed an answer to the complaint on February 3, 2021. (ECF 10.) Plaintiff amended its complaint (ECF 18), served the three defendants (ECF 22 & 23) but none answered the amended complaint. The two individuals filed notice of their Chapter 13 bankruptcy filings in the District of New Jersey (ECF 41) and, thus, the action is automatically stayed as to them.

On September 22, 2022, PRL USA moved for summary judgment against Prestige America, LLC on all causes of action. No response to the motion has been filed by Prestige America, LLC,

In Vermont Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241 (2d Cir. 2004), the Second Circuit held in the context of an unopposed motion for summary judgment by the trademark owner in a trademark infringement action that a district court is not relieved of its duty to decide whether the summary judgment movant is entitled to judgment as a matter of law. The Court has reviewed plaintiff's motion, supported by two declarations that annex, among other things, the depositions of the two individual defendants, discovery responses, the trademark registrations and the settlement agreement reached with Prestige America LLC on September 20, 2018. Plaintiff has demonstrated ownership of the trademarks, that they are inherently distinctive, that plaintiff has invested significant effort and expense in promoting the trademarks and that it enjoys a reputation as a high-quality luxury brand. The plaintiff has also demonstrated that Prestige America LLC, a wholesaler, has purchased over 110,000 units of products, including bedding and pillowcases, unlawfully bearing the plaintiff's trademarks and that the defendant LLC sold over 100,000 units of the products. Further, the plaintiff has shown that such sales breach the terms of the 2018 settlement agreement. Plaintiff has come forward with evidence which if believed by the jury would entitle it to judgment as a matter of law. The defendant LLC has not rebutted this showing. The Court concludes that that (1) plaintiff has valid and incontestable trademark registrations to the marks at issue; (2) defendant Prestige America LLC’s offer for sale and sale of products with identical or confusingly similar reproductions of the marks is likely to cause customer confusion; (3) defendant Prestige America LLC has acted with bad faith in purchasing and selling the infringing products, and (4) defendant Prestige America LLC breached the 2018 settlement agreement by selling of the infringing products.

CONCLUSION

Plaintiff's motion for summary judgment (ECF 48) is GRANTED as against defendant Prestige America LLC.

Plaintiff shall file its evidence on damages, together with a memorandum in support, within 21 days of this Order.

SO ORDERED.

Dated: New York, New York April 6, 2023

P, Kevin Castel United States District Judge