UniPro Foodservice, Inc. v. Eastern Tea Corp., Civil Action No. 1:22-cv-03691-ELR (N.D. Ga., June 14, 2023)

Judge Eleanor Ross granted a motion for a permanent injunction, and also awarded the plaintiff’s statutory damages, attorneys fees, and costs in an “exceptional” trademark dispute. 

Plaintiff UniPro Foodservice, Inc., (“UniPro” or “Plaintiff”) owns U.S. Trademark Registration No. 1,574,245 for the mark “NIFDA” for food goods in International Classes 29 and 30.  Dkt. 1 ¶ 12.  UniPro began using the NIFDA mark as early as March of 1959, at a time when Dwight Eisenhower was in the Oval Office and the Barbie Doll was born.  The mark was not registered until 1990, but has been used continuously in commerce since the 1950s, and is thus incontestable, valid, and enforceable.  Id. 1 ¶ 12.  According to the Complaint, Defendant Eastern Tea Corporation (“Eastern Tea” or “Defendant”) infringed the mark by selling identical goods in the same channels of trade under an identical mark without consent and in a manner likely to cause consumer confusion.  Id. 1 ¶¶ 16­–21.  The Complaint further alleges Defendant had knowledge of UniPro’s rights in mark since it received–and ignored–multiple demand letters, phone calls, and emails asserting those rights prior to the filing of the Complaint. Id. 1 ¶¶ 20, 23.

Rather than respond to the allegations, Defendant failed to appear, answer, or otherwise defend the action, resulting in the entry of default.  Id. 9 at 2.  Judge Ross, thus, looked to the Plaintiff’s well-pleaded complaint and found the Defendant infringed the “NIFDA” mark based on UniPro’s allegation that Defendant offered for sale and sold identical goods in the same channels of trade in a manner likely to cause consumer confusion.  Dkt. 9 at 3–5.

The Court then turned to UniPro’s request for relief.  First, considering the request for permanent injunction, the Court reasoned that the Lanham Act authorizes permanent injunctions to prevent trademark infringement, and case law supports issuing such remedies against a defaulting defendant to further the policy behind such relief.  Id. 9 at 5.  [insert as pull quote: “Permanent injunctive relief is appropriate where a plaintiff demonstrates: (1) it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship favors an equitable remedy; and (4) the public interest would be served by a permanent injunction.” Id. 9 at 5 (citing Angel Flight of Georgia, Inc. v. Angel Flight of America, Inc., 522 F.3d 1200, 1208–09 (11th Cir. 2008)].  The Court found UniPro roundly carried its burden on each of the four factors and permanently enjoined Eastern Tea from sales of infringing goods.

The Court also found statutory damages appropriate in view of the allegations in the complaint. Weighing the factors that warrant special consideration,  in particular the defendant’s willfulness and the deterrent value of a sanction, the Court found the requested amount of $350,000 “inherently reasonable.” Dkt. 9 at  9.

Additionally, the Court found the case “exceptional” and awarded attorney fees and costs.  The Lanham Act provides that the court may award reasonable fees in exceptional cases.  Clarifying that an “exceptional” case is one that “stands out from others,” the Court found the totality of the circumstances surrounding Eastern Tea’s use of the NIFDA mark “clearly exceptional.” Id. at 10. In support, the Court listed Defendant’s willful and unauthorized use, prior knowledge, and lack of response demonstrate an exceptional situation meriting an award of fees and costs.

The ruling shows that defendants would be ill-advised to ignore demand letters or any type of litigation brought under the Lanham Act, which was successfully leveraged here to permanently enjoin and punish Eastern Tea’s behavior.  Judge Ross’s order demonstrates a commitment to deterrence and proof that trademark infringers can be stopped, even when they bury their heads in the sand.