# Sream, Inc. v. Tiger Brothers Food Mart, Inc.

> District Court, M.D. Louisiana · July 1, 2019

URL: https://www.frixlaw.com/law-library/cases/10190954

## Case

- **Court:** District Court, M.D. Louisiana
- **Decided:** July 1, 2019
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10190954

## Opinion text

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF LOUISIANA

SREAM, INC. CIVIL ACTION
VERSUS
TIGER BROTHERS FOOD MART, NO.: 17-00657-BAJ-RLB
INC.

RULING AND ORDER
Before the Court is the Motion for Default Judgment (Doc. 21) and the
Motion for Default Judgment (Doc. 22) filed by Plaintiff Sream, Inc., in which
Plaintiff seeks a default judgment against Defendant Tiger Brothers Food Mart, Inc.!
Jurisdiction is proper under 28 U.S.C. § 1331. For the following reasons, the Motion
for Default Judgment (Doc. 21) and the Motion for Default Judgment
(Doc. 22) are GRANTED IN PART AND DENIED IN PART.
I. BACKGROUND
Plaintiff is a California corporation that, since at least 2013, has been the
exclusive licensee of the trademark “RooR” in the United States. (Doc. 1 at p. 2). RooR
is recognized for its ornate glass products including borosilicate jointed-glass water
pipes, parts, and accessories. (Doc. 21 at p. 2). RooR products are allegedly superior
in the market place and consistently retail higher than those from other brands. (Doc.
21 at p. 3). Defendant is a Louisiana corporation that Plaintiff claims engaged in the

1 Both motions are identical except Doc. 22 contains evidence in support of Plaintiff's Motion.

unlawful manufacture, retail sale, and/or wholesale sales of counterfeit RooR branded
water pipes and related parts. (Doc. 1 at p. 2).
Plaintiff filed its Complaint on September 20, 2017, asserting violations of the
Lanham Act, 15 U.S.C. § 1114. Plaintiff seeks injunctive relief prohibiting Defendant
from using the RooR mark and damages. The Clerk of Court entered a default on
June 14, 2018 because Defendant failed to file an answer or motion under Federal
Rule of Civil Procedure 12. (Doc. 19). Plaintiff then filed the pending Motion for
Default Judgment. (Doc. 21).
II. LEGAL STANDARD
The United States Court of Appeals for the Fifth Circuit has adopted a three-
step process to obtain a default judgment. See New York Life Ins. Co. v. Brown, 84
F.3d 137, 141 (5th Cir. 1996). First, a default occurs when a party “has failed to plead
or otherwise defend” against an action. Fed. R. Civ. P. 55(a). Next, an entry of default
must be entered by the clerk when the default is shown “by affidavit or otherwise.”
See id.; New York Life, 84 F.3d at 141. Third, a party may apply to the court for a
default judgment after an entry of default. Fed. R. Civ. P. 55(b); New York Life, 84
F.3d at 141.
After a party files for a default judgment, a court must apply a two-step process
to determine whether a default judgment should be entered. First, a court must
consider whether the entry of default judgment is appropriate under the
circumstances. Lindsey v. Prive Corp., 161 F.3d 886, 893 (5th Cir. 1998). Several
factors are relevant to this inquiry, including: (1) whether there are material issues

of fact at issue, (2) whether there has been substantial prejudice, (3) whether the
grounds for default have been clearly established, (4) whether the default was caused
by excusable neglect or good faith mistake, (5) the harshness of the default judgment,
and (6) whether the court would think itself obliged to set aside the default on a
motion by the defendant. Id.
Second, a court must assess the merits of the plaintiffs claims and determine
whether the plaintiff has a claim for relief. Nishimatsu Constr. Co. v. Houston Nat'l
Bank, 515 F. 2d 1200, 1206 (5th Cir. 1975); Hamdan v. Tiger Bros. Food Mart, Inc.,
2016 WL 1192679, at *2 (M.D. La. Mar. 22, 2016).
III. DISCUSSION
A, Default Judgment is Appropriate under the Lindsey Factors
The Court must first decide whether the entry of default judgment is
appropriate under the circumstances, by considering the Lindsey factors. First, there
are no material facts in dispute because Defendant failed to file an answer or motion
under Rule 12. Second, there has been substantial prejudice because Defendant’s
failure to appear in this action leaves Plaintiff with no recourse for its alleged injuries.
(Doc. 21 at p. 5). Third, the grounds for granting a default judgment against
Defendant are clearly established, as evidenced by the action’s procedural history and
the Clerk’s entry of default. (Doc. 19). Fourth, the Court has no basis to find that
Defendant’s failure to respond was the result of a good faith mistake or excusable
neglect because Defendant has failed to respond to Plaintiff or to the Court. Fifth,
Defendant’s failure to file any responsive pleading or motion mitigates the harshness

of a default judgment. Finally, the Court is not aware of any facts that would lead it
to set aside the default judgment if challenged by Defendant. The Court therefore
finds that the six Lindsey factors weigh in favor of default.
B. The Sufficiency of the Pleadings
The Court must also determine whether Plaintiffs pleadings provide a
sufficient basis for a default judgment. Plaintiff sued Defendant under the Lanham
Act, which provides that a plaintiff must show that (1) it possesses a legally
protectable trademark and (2) the defendant’s use of the trademark creates a
likelihood of confusion as to source, affiliation, or sponsorship. Streamline Prod. Sys.
v. Streamline Mfg., 851 F.3d 440, 450 (5th Cir. 2017) (quoting Nola Spice Designs,
L.L.C. v. Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015)). It is uncontroverted
that Plaintiff is the exclusive licensee of the legally protectable trademark RooR.
(Doc. 22-2 at p. 2). The United States Court of Appeals for the Fifth Circuit has
identified eight factors to determine whether a likelihood of confusion exists: (1) the
type of mark allegedly infringed, (2) the similarity between the two marks, (3) the
similarity of the products or services, (4) the identity of the retail outlets and
purchasers, (5) the identity of the advertising media used, (6) the defendant’s intent,
(7) any evidence of actual confusion, and (8) the degree of care exercised by potential
purchasers. Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465, 478 (5th Cir.
2008) (quoting Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 663-64
(5th Cir. 2000)).

An analysis of the eight factors reveals that Defendant’s use of “RooR” creates
a likelihood of confusion. The first factor refers to the strength of a mark; generally,
the stronger the mark, the greater the likelihood of confusion. Bd. Of Supervisors,
550 F.3d at 479. The record indicates that the RooR trademark is at least ten years
old. (Doc. 22-3 at p. 1). Moreover, Jarir Farraj, owner of Sream, in his affidavit
submitted in support of the motion, asserted that RooR products are “considered a
status symbol, as owning a RooR means having the finest water pipe available.” (Doc.
22-2 at p. 3). As such, the Court concludes that Plaintiff has provided evidence that
RooR is a strong trademark. Second, Farraj stated that Defendant sold products
labeled as RooR, proving that there was a similarity between the two marks. Third,
Farraj stated that Defendant sold products for $19.25, while the sales price of the
equivalent noncounterfeit product is $130, indicating that Defendant and Plaintiff
sold similar products. (Ud. at p. 2). Fourth, Farraj alleged that both Plaintiff and
Defendant were in the business of selling water pipes, further increasing the
likelihood of confusion. (Doc. 22-2 at p. 4). The Court is unable to analyze the fifth
factor, the identity of the advertising media used, because the record is devoid of
information regarding how Defendant advertised the product. Sixth, it appears that
Defendant intended to cause confusion. Given that Defendant is in the business of
selling water pipes and that RooR has a reputation for high-quality within the
industry, it is unlikely that Defendant did not intend for consumers to conflate its
products with Plaintiffs. Seventh, evidence of confusion has been shown, in that
Farraj stated that in 2016, Plaintiff saw a 35% drop in total sales of RooR products

throughout the United States in part because of counterfeit products. (Doc. 22-3 at p.
3). Finally, the record does not indicate the level of care exercised by potential
customers. Taken as a whole, the eight factors weigh in favor of the conclusion that
Defendant’s use of the trademark RooR creates a likelihood of confusion. Accordingly,
Plaintiff has established a claim for relief.
C. Plaintiffs Requested Relief
1. Damages
Plaintiff seeks $15,000 per trademark infringed for losses to its business. The
Lanham Act provides that the Court may award statutory damages “not less than
$1,000 or more than $200,000 per counterfeit mark per type of goods or services sold,
offered for sale, or distributed, as the court considers just.” 18 U.S.C. §1117(c). Farraj
alleged that on March 4, 2016, counterfeit products bearing the name RooR were sold
in Defendant’s store. The fake products were sold for $19.25, while the real product
retails at $130.00. Plaintiff does not provide an estimate of how many RooR products
Defendant sold. Plaintiff contends that “while Defendant probably hasn’t sold
millions of counterfeit products, it has engaged in the purchase and sale of
counterfeits of at least one unit, and likely traded in more.” (Doc. 24-1 at p. 8). As
noted, Farraj further claims that Sream saw a 35 percent drop in the sale of RooR
products nationally due to the sale of counterfeit products. This statistic alone cannot
meaningfully inform the Court’s damages calculation because it does not indicate
Plaintiffs loss in revenue as a result of Defendant’s infringement activity. Because
Plaintiff has not indicated how long Defendant has been selling counterfeit products

or how many it has sold, the Court finds a $15,000 award to be excessive. Accordingly,
the Court concludes that a lesser award of $2,500 per counterfeit mark per type of
goods sold is appropriate. See Martin’s Herend Imports, Inc. v. Diamond & Gem
Trading USA, Co. 112 F.3d 1296, 1304 (5th Cir. 1997) (“Great latitude is given the
district court in awarding damages under the Lanham Act.”). Because Plaintiff claims
that Defendant infringed upon one trademark, RooR, with respect to one product, a
total of $2,500 is reasonable in this case.
z, Costs of Litigation
Plaintiff seeks to recover the costs of litigation. (Doc. 21 at p. 9). Title 15 U.S.C.
§ 1117(a) provides that a Plaintiff is entitled to the costs of the action when there is
a violation of any right of the registrant of a trademark. Plaintiff requests that the
Court award costs totaling $775.80 dollars, which includes the filing fee of $400, the
process server fee of $115, and Plaintiffs investigation fees which equal $260.
Plaintiff has provided the affidavit of one of its attorneys, Galen Hair, who indicates
that this is a reasonable estimate. (Doc. 22-4 at p. 2). This evidence is uncontroverted
by Defendant. Accordingly, the Court awards Plaintiff $775.80 in litigation costs.

IV. CONCLUSION
Accordingly,
IT IS ORDERED that the Motion for Default Final Judgment (Doc. 21)
and the Motion for Default Final Judgment (Doc. 22) are GRANTED IN
PART AND DENIED IN PART.
IT IS FURTHER ORDERED that an award of statutory damages is hereby
entered in favor of Plaintiff in the amount of $2,500.
IT IS FURTHER ORDERED that an award of costs is hereby entered in
favor of Plaintiff in the amount of $775.80.
Baton Rouge, Louisiana, this 23%. of June, 2019.
Aa □ □
JUDGE BRIAN KSON
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF LOUISIANA

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10190954. Public record. Not legal advice.