United States District Court, M.D. Louisiana
RULING AND ORDER
A. JACKSON JUDGE
the Court is Plaintiffs Motion for Remedies
(Doc. 49). Plaintiff requests an injunction,
damages, attorney's fees, and costs and expenses.
Id. Defendant did not file an opposition to the
motion and oral argument on this matter is not necessary. For
the following reasons, Plaintiffs Motion is
and Defendants are roofing contractors. (Doc. 44-1 at p. 7).
Plaintiff operates under the name "Premier South,"
while Defendants operate under the name "Premier
Roofing." Id. Plaintiff owns the trademark
rights to the name "Premier South." Id.
Plaintiff alleges that Defendants' name and mark are
confusingly similar to his mark, "Premier South,"
constituting willful trademark infringement. Id.
Plaintiff also alleges that Defendants promised to rebrand
but did not. Id.
further alleges that the parties entered into a settlement
agreement on December 12, 2017, which Defendants breached.
(Id. at p. 13). Plaintiff avers that after engaging
in limited discovery, Defendants' attorney withdrew from
this matter. (Id.). Plaintiff asserts that
Defendants did not respond to or object to any of Plaintiff s
discovery requests. (Id.). The Clerk of Court
entered default against Defendants on January 9, 2019. (Doc.
39). The Court entered default judgment against Defendants on
June 25, 2019 and instructed Plaintiff to prepare and submit
a brief on the topic of damages, costs, attorney's fees,
and other requested reliefs. (Doc. 48). Plaintiff then filed
the motion sub judice. (Doc. 49).
is requesting a permanent injunction against Defendants. The
Lanham Act grants the Court discretion to enter an injunction
to prevent continued infringement of a trademark. 15 U.S.C.
§ 1116(a). In order for a permanent injunction to issue,
a plaintiff must show "that a commercial advertisement
or promotion is either literally false or that the
advertisement is likely to mislead and confuse
consumers" and that the plaintiff "will suffer
irreparable harm if the injunction is not granted."
Logan v. Burgers Ozark Country Cured Hams, Inc., 263
F.3d 447, 465 (5th Cir. 2001) (quoting Seven-Up v.
Coca-Cola Co., 86 F.3d 1379, 1390 (5th Cir. 1996)).
Plaintiffs allegations have shown that Defendant's use of
"Premier Roofing" is likely to confuse consumers as
to the source of the goods and services provided. (Doc. 49-1
at p. 7). Plaintiff also alleges that the continued use of
"Premier Roofing" will cause him irreparable harm
by damaging his consumer goodwill. Id. As such, a
permanent injunction is warranted.
successful claim under 15 U.S.C. §1125, a plaintiff
shall be entitled to recover the defendant's profits,
damages sustained by the plaintiff, and the costs of the
action. 15 U.S.C. § 1125. The awarding of profits is not
automatic and is within the discretion of the court.
Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338,
349 (5th Cir. 2002) (citing Champion Spark Plug Co. v.
Sanders, 331 U.S. 125, 131 (1947); Pebble Beach Co.
v. Tour 18 I, Ltd., 155 F.3d 526, 554 (5th Cir. 1998)).
Relevant factors in this analysis include,
(1) whether the defendant had the intent to confuse or
deceive, (2) whether the sales have been diverted, (3) the
adequacy of other remedies, (4) any unreasonable delay by the
plaintiff in asserting his rights, (5) the public interest in
making the misconduct unprofitable, and (6) whether it is a
case of palming off.
Id. (quoting Pebble Beach, 155 F.3d at
554). Similarly, the court is given broad discretion to
determine "a just amount or recovery for trademark
infringement." Martin's Herend Imports, Inc. v.
Diamond & Gem Trading USA, Co., 112 F.3d 1296, 1304
(5th Cir. 1997).
has submitted an affidavit estimating that Defendants
completed fifteen (15) projects which would have been
Plaintiffs projects had Defendants not infringed on
Plaintiffs trademark. (Doc, 49-2 at p. 5). The average profit
margin for these projects is $1, 500.00. Id.
Defendants do not contest Plaintiff s evidence. Thus,
Plaintiff is awarded $30, 000.00.
also requests that the Court award twice the estimated amount
of lost profits. Courts may enhance damages to "provide
proper redress to an otherwise under compensated plaintiff
where imprecise damage calculations fail to do justice,
particularly where the imprecision results from [the]
defendant' conduct." Taco Cabana Int'l, Inc.
v. Two Pesos, Inc., 932 F.2d 1113, 1127 (5th Cir. 1991).
"An enhancement of damages may be based on a finding of
willful infringement." Id. Given the evidence
of willful infringement in this case, the Court grants