1 2 3 4 UNITED STATES DISTRICT COURT 5 DISTRICT OF NEVADA 6 * * *
7 UNDEFEATED, INC., Case No. 2:21-CV-1691 JCM (EJY)
8 Plaintiff(s), ORDER
9 v.
10 UNDEFEATED.LIFE, LLC,
11 Defendant(s).
12 13 Presently before the court is plaintiff Undefeated, Inc. (“plaintiff”)’s second unopposed 14 motion for default judgment. (ECF No. 16). Defendant Undefeated.Life, LLC (“defendant”) did 15 not respond, and the time to do so has passed. 16 I. Background 17 This is a trademark infringement case. Plaintiff is a clothing designer, manufacturer, 18 lifestyle brand, and operates numerous retail stores around the world. (ECF No. 14 at 3). Plaintiff 19 obtained its first trademark registration for “UNDEFEATED” in 2003. (See ECF No. 1). Since 20 2003, plaintiff has obtained numerous trademark registrations for “UNDEFEATED” and related 21 marks in several classes including 25 and 41.1 (See id.) Plaintiff’s marks have been associated 22 with, and used on and in connection with, boxing, and other sports and fitness content under the 23 “UNDEFEATED” brand. 24 Plaintiff learned that defendant was selling apparel and running a business under its own 25 “Undefeated” brand. Plaintiff subsequently sent defendant a letter on April 28, 2020, demanding 26 it to stop the use of plaintiff’s Undefeated mark, or any marks confusingly similar, in connection 27
28 1 Class 25 relates to clothing, and class 41 relates to education and entertainment services. 1 with its clothing and business. (ECF No. 1 at 4). Defendant acknowledged receipt of plaintiff's 2 letter and spoke to plaintiff’s attorney. (Id.) Plaintiff sent a follow-up letter on August 11, 2020, 3 with no response or acknowledgement from defendant. (Id.) 4 Defendant proceeded to file two trademark applications after the cease and desist was 5 received. (Id. at 4-5). The applications for the “UNDEFEATED” and “UNDEFEATED.LIFE” 6 marks were filed under classes 25 and 41. (Id.) The applications were filed in connection with 7 boxing instruction, personal fitness training services, and numerous clothing items, amongst other 8 goods and services. (Id.) 9 Plaintiff filed its complaint on September 14, 2021, alleging: (1) trademark infringement 10 under 15 U.S.C. § 1114, (2) unfair competition and false designation under 15 U.S.C. § 1125(a), 11 and (3) federal dilution by blurring or tarnishment under 15 U.S.C. § 1125(c). (ECF No. 1). 12 Defendant failed to appear or otherwise respond to the complaint within the time prescribed by the 13 Federal Rules of Civil Procedure. On February 2, 2022, plaintiff moved for entry of clerk’s default 14 against the defendant. (ECF No. 11). The clerk of the court entered that default on March 4, 2022. 15 (ECF No. 12). 16 Plaintiff previously moved for default judgment. (ECF No. 14). While the court agreed 17 that default judgment was proper, plaintiff failed to meaningfully support its request for statutory 18 damages, and the court denied the motion because it could not determine what statutory damages 19 were appropriate. (ECF No. 15). Plaintiff now brings this second motion supporting its damages 20 request. (ECF No. 16). 21 II. Legal Standard 22 Obtaining a default judgment is a two-step process. Eitel v. McCool, 782 F.2d 1470, 1471 23 (9th Cir. 1986). First, “[w]hen a party against whom a judgment for affirmative relief is sought 24 has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the 25 clerk must enter the party’s default.” Fed. R. Civ. P. 55(a). Federal Rule of Civil Procedure 26 55(b)(2) provides that “a court may enter a default judgment after the party seeking default applies 27 to the clerk of the court as required by subsection (a) of this rule.” 28 1 The choice whether to enter a default judgment lies within the discretion of the court. 2 Aldabe v. Aldabe, 616 F.3d 1089, 1092 (9th Cir. 1980). In the determination of whether to grant 3 a default judgment, the court should consider the seven factors set forth in Eitel: (1) the possibility 4 of prejudice to plaintiff if default judgment is not entered; (2) the merits of the claims; (3) the 5 sufficiency of the complaint; (4) the amount of money at stake; (5) the possibility of a dispute 6 concerning material facts; (6) whether default was due to excusable neglect; and (7) the policy 7 favoring a decision on the merits. 782 F.2d at 1471–72. In applying the Eitel factors, “the factual 8 allegations of the complaint, except those relating to the amount of damages, will be taken as true.” 9 Geddes v. United Fin. Grp., 559 F.2d 557, 560 (9th Cir. 1977); see also Fed. R. Civ. P. 8(d). 10 III. Discussion 11 In its order on plaintiff’s last motion, the court noted that default judgment was appropriate 12 in this matter but for plaintiff’s insufficient request for damages. The court will not disturb those 13 findings and expressly incorporates its analysis of the Eitel factors as set forth in the previous 14 order. See (ECF No. 15). 15 In the instant motion, plaintiff now supports its request for damages. As the court 16 previously determined, plaintiff is entitled to a statutory damages award pursuant to 15 U.S.C. § 17 1117(c). Plaintiff now clarifies that it requests the statutory minimum: $5,000. Courts in this 18 district have previously awarded much higher sums in similar cases. See Mirage Resorts, Inc. v. 19 Cybercom Productions, 228 F. Supp. 2d 1141, 1142 (D. Nev. 2002) ($100,000.00); Nevada 20 Property 1 LLC v. Newcosmopolitanlas Vegas.com, 2013 WL 167755 at *3 (D. Nev. 2013) 21 ($25,000.00 taking into account that permanent injunction was also issued). $5,000 is thus a 22 reasonable request for damages in light of the fact that plaintiff also requests a permanent 23 injunction. 24 “15 U.S.C. § 1116(a) vests the district court with the ‘power to grant injunctions according 25 to principles of equity and upon such terms as the court may deem reasonable, to prevent the 26 violation of any right’ of the trademark owner.” Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 27 1137 (9th Cir. 2006). To that end, given that plaintiff requests the minimum in statutory damages, 28 a permanent injunction is appropriate if plaintiff proves its entitlement to that remedy. 1 A party seeking an injunction (whether preliminary or permanent) must establish four 2 factors: (1) success on the merits (or likelihood thereof, for a preliminary injunction), (2) a 3 likelihood of irreparable harm without the injunction, (3) a balance of hardships that tips in its 4 favor, and (4) the injunction is in the public interest. See, e.g., Winter v. Nat. Res. Def. Council, 5 Inc., 555 U.S. 7, 20 (2008).
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1 2 3 4 UNITED STATES DISTRICT COURT 5 DISTRICT OF NEVADA 6 * * *
7 UNDEFEATED, INC., Case No. 2:21-CV-1691 JCM (EJY)
8 Plaintiff(s), ORDER
9 v.
10 UNDEFEATED.LIFE, LLC,
11 Defendant(s).
12 13 Presently before the court is plaintiff Undefeated, Inc. (“plaintiff”)’s second unopposed 14 motion for default judgment. (ECF No. 16). Defendant Undefeated.Life, LLC (“defendant”) did 15 not respond, and the time to do so has passed. 16 I. Background 17 This is a trademark infringement case. Plaintiff is a clothing designer, manufacturer, 18 lifestyle brand, and operates numerous retail stores around the world. (ECF No. 14 at 3). Plaintiff 19 obtained its first trademark registration for “UNDEFEATED” in 2003. (See ECF No. 1). Since 20 2003, plaintiff has obtained numerous trademark registrations for “UNDEFEATED” and related 21 marks in several classes including 25 and 41.1 (See id.) Plaintiff’s marks have been associated 22 with, and used on and in connection with, boxing, and other sports and fitness content under the 23 “UNDEFEATED” brand. 24 Plaintiff learned that defendant was selling apparel and running a business under its own 25 “Undefeated” brand. Plaintiff subsequently sent defendant a letter on April 28, 2020, demanding 26 it to stop the use of plaintiff’s Undefeated mark, or any marks confusingly similar, in connection 27
28 1 Class 25 relates to clothing, and class 41 relates to education and entertainment services. 1 with its clothing and business. (ECF No. 1 at 4). Defendant acknowledged receipt of plaintiff's 2 letter and spoke to plaintiff’s attorney. (Id.) Plaintiff sent a follow-up letter on August 11, 2020, 3 with no response or acknowledgement from defendant. (Id.) 4 Defendant proceeded to file two trademark applications after the cease and desist was 5 received. (Id. at 4-5). The applications for the “UNDEFEATED” and “UNDEFEATED.LIFE” 6 marks were filed under classes 25 and 41. (Id.) The applications were filed in connection with 7 boxing instruction, personal fitness training services, and numerous clothing items, amongst other 8 goods and services. (Id.) 9 Plaintiff filed its complaint on September 14, 2021, alleging: (1) trademark infringement 10 under 15 U.S.C. § 1114, (2) unfair competition and false designation under 15 U.S.C. § 1125(a), 11 and (3) federal dilution by blurring or tarnishment under 15 U.S.C. § 1125(c). (ECF No. 1). 12 Defendant failed to appear or otherwise respond to the complaint within the time prescribed by the 13 Federal Rules of Civil Procedure. On February 2, 2022, plaintiff moved for entry of clerk’s default 14 against the defendant. (ECF No. 11). The clerk of the court entered that default on March 4, 2022. 15 (ECF No. 12). 16 Plaintiff previously moved for default judgment. (ECF No. 14). While the court agreed 17 that default judgment was proper, plaintiff failed to meaningfully support its request for statutory 18 damages, and the court denied the motion because it could not determine what statutory damages 19 were appropriate. (ECF No. 15). Plaintiff now brings this second motion supporting its damages 20 request. (ECF No. 16). 21 II. Legal Standard 22 Obtaining a default judgment is a two-step process. Eitel v. McCool, 782 F.2d 1470, 1471 23 (9th Cir. 1986). First, “[w]hen a party against whom a judgment for affirmative relief is sought 24 has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the 25 clerk must enter the party’s default.” Fed. R. Civ. P. 55(a). Federal Rule of Civil Procedure 26 55(b)(2) provides that “a court may enter a default judgment after the party seeking default applies 27 to the clerk of the court as required by subsection (a) of this rule.” 28 1 The choice whether to enter a default judgment lies within the discretion of the court. 2 Aldabe v. Aldabe, 616 F.3d 1089, 1092 (9th Cir. 1980). In the determination of whether to grant 3 a default judgment, the court should consider the seven factors set forth in Eitel: (1) the possibility 4 of prejudice to plaintiff if default judgment is not entered; (2) the merits of the claims; (3) the 5 sufficiency of the complaint; (4) the amount of money at stake; (5) the possibility of a dispute 6 concerning material facts; (6) whether default was due to excusable neglect; and (7) the policy 7 favoring a decision on the merits. 782 F.2d at 1471–72. In applying the Eitel factors, “the factual 8 allegations of the complaint, except those relating to the amount of damages, will be taken as true.” 9 Geddes v. United Fin. Grp., 559 F.2d 557, 560 (9th Cir. 1977); see also Fed. R. Civ. P. 8(d). 10 III. Discussion 11 In its order on plaintiff’s last motion, the court noted that default judgment was appropriate 12 in this matter but for plaintiff’s insufficient request for damages. The court will not disturb those 13 findings and expressly incorporates its analysis of the Eitel factors as set forth in the previous 14 order. See (ECF No. 15). 15 In the instant motion, plaintiff now supports its request for damages. As the court 16 previously determined, plaintiff is entitled to a statutory damages award pursuant to 15 U.S.C. § 17 1117(c). Plaintiff now clarifies that it requests the statutory minimum: $5,000. Courts in this 18 district have previously awarded much higher sums in similar cases. See Mirage Resorts, Inc. v. 19 Cybercom Productions, 228 F. Supp. 2d 1141, 1142 (D. Nev. 2002) ($100,000.00); Nevada 20 Property 1 LLC v. Newcosmopolitanlas Vegas.com, 2013 WL 167755 at *3 (D. Nev. 2013) 21 ($25,000.00 taking into account that permanent injunction was also issued). $5,000 is thus a 22 reasonable request for damages in light of the fact that plaintiff also requests a permanent 23 injunction. 24 “15 U.S.C. § 1116(a) vests the district court with the ‘power to grant injunctions according 25 to principles of equity and upon such terms as the court may deem reasonable, to prevent the 26 violation of any right’ of the trademark owner.” Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 27 1137 (9th Cir. 2006). To that end, given that plaintiff requests the minimum in statutory damages, 28 a permanent injunction is appropriate if plaintiff proves its entitlement to that remedy. 1 A party seeking an injunction (whether preliminary or permanent) must establish four 2 factors: (1) success on the merits (or likelihood thereof, for a preliminary injunction), (2) a 3 likelihood of irreparable harm without the injunction, (3) a balance of hardships that tips in its 4 favor, and (4) the injunction is in the public interest. See, e.g., Winter v. Nat. Res. Def. Council, 5 Inc., 555 U.S. 7, 20 (2008). In trademark infringement cases, once a party shows a likelihood of 6 success on the merits, there is a presumption of irreparable harm. 15 U.S.C. § 1116(a). 7 Plaintiff has established each of those factors. Not only has it proven a likelihood of 8 success, it has actually succeeded on its claim given defendant’s default. Because of that success 9 plaintiff is also entitled to the statutory presumption of irreparable harm. See id. Moreover, the 10 third and fourth factors tip in favor of plaintiff because without an injunction defendant could 11 continue to market its goods that infringe on plaintiff’s trademark rights, thus confusing 12 consumers. The public interest is served by preventing defendant from marketing competing 13 products using a confusingly similar market, and the hardships plaintiff would have to endure to 14 continue vindicating its rights otherwise (i.e., more lawsuits) counsel in favor of a permanent 15 injunction. 16 Thus, the court will enter that injunction. Plaintiff’s motion refers to a “proposed 17 permanent injunction filed concurrently herewith.” (ECF No. 16 at 21). However, based on the 18 court’s review of the docket, no such proposed order was filed. 19 IV. Conclusion 20 Accordingly, 21 IT IS HEREBY ORDERED, ADJUDGED, and DECREED that plaintiff’s motion for 22 default judgment (ECF No. 16) be, and the same hereby is, GRANTED. 23 Within seven (7) days of the issuance of this order, plaintiff shall file a proposed a judgment 24 and injunction consistent with the foregoing. Because the motion underlying this order represents 25 plaintiff’s second failure to provide the court with the documents necessary to effectuate the relief 26 it seeks, failure to fully comply with this order shall result in dismissal of the case. 27 DATED August 9, 2023. __________________________________________ 28 UNITED STATES DISTRICT JUDGE