RVC Floor Decor, Ltd. v. Floor & Decor Holdings, Inc.

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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RVC FLOOR DECOR, LTD.,

Plaintiff, MEMORANDUM & ORDER

18-CV-6449 (JS)(ARL)

-against-

FLOOR AND DECOR OUTLETS OF

AMERICA, INC.,

Defendant.

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APPEARANCES

For Plaintiff: Craig B. Sanders, Esq.

Jonathan Mark Cader, Esq.

James H. Freeman, Esq.

Sanders Law Group

333 Earle Ovington Boulevard, Suite 402

Uniondale, New York 11530

Erica Carvajal, Esq.

Sanders Law LLC

100 Garden City Plaza, Suite 500

Garden City, New York 11530

For Defendant: Bryan J. Wolin, Esq.

H. Forrest Flemming, III, Esq.

Robert Nathan Potter, Esq.

Kilpatrick Townsend & Stockton LLP

1114 Avenue of the Americas, 21st Floor

New York, New York 10036

Richard Charles Henn, Jr., Esq.

Kilpatrick Townsend & Stockton LLP

1100 Peachtree Street, Suite 2800

Atlanta, Georgia 30309

SEYBERT, District Judge:

SEYBERT, District Judge:

RVC Floor Decor, Ltd., (hereafter the “Plaintiff”)

initiated this trademark infringement case against Floor & Decor

Outlets of America (hereafter the “Defendant”) pursuant to Section

43(a) of the Lanham Act, New York common law, and New York General

Business Law Section 360-l.1 Trial is scheduled to commence in

this case on April 10, 2023. Presently before the Court is

Defendant’s Omnibus Motion in Limine (hereafter the “Omnibus

Motion”). (ECF No. 167.) For the reasons that follow, Defendant’s

motion is GRANTED IN PART AND DENIED IN PART.

DISCUSSION

For a thorough recitation of the factual and procedural

background of this case, the Court refers the parties to Judge

Hurley’s March 18, 2021, Memorandum & Order denying Plaintiff’s

motion for summary judgment and denying in part and granting in

part Defendant’s cross-motion for summary judgment. See RVC Floor

Decor, Ltd. v. Floor and Decor Outlets of Am., Inc., 527 F. Supp.

3d 305, 312-15 (E.D.N.Y. 2021).2

In its Omnibus Motion, Defendant seeks to exclude from

trial all evidence, testimony and argument regarding:

(1) “purported consumer ‘confusion’ that is non-actionable and

therefore irrelevant;” (2) “[i]mproper expert opinion testimony by

1 Plaintiff also brought claims pursuant to New York General

Business Law Section 349, which were dismissed during the summary

judgment stage of this case. See RVC Floor Decor, Ltd. v. Floor

and Decor Outlets of Am., Inc., 527 F. Supp. 3d 305, 321-22

(E.D.N.Y. 2021).

2 Judge Hurley’s Memorandum & Order is also available on the docket

at ECF No. 147. Going forward, the Court will refer to this case

by its Reporter citation.

unqualified fact witnesses concerning, inter alia, reputational

harm purportedly suffered by Plaintiff, . . . damages purportedly

suffered by [Plaintiff], and the quality of products sold by the

parties;” (3) “[h]earsay from, inter alia, social media posts,

documents prepared by third parties, and documents prepared solely

for discovery purposes;” (4) “[Defendant’s new] stores that opened

for business long after the close of discovery;” (5) “[t]he closure

of [Plaintiff’s] Syosset store location after the close of

discovery;” (6) “[p]urported evidence of secondary meaning coming

into existence after July 2015;” (7) “[p]urported consumer

‘confusion’ occurring after the close of discovery; and

(8) Plaintiff’s post discovery alterations “to the appearance of

its logo and presentation of its trade name.” (See Support Memo,

ECF No. 168, in toto.) Plaintiff filed opposition to Defendant’s

Omnibus Motion. (See Pl’s Opp’n, ECF No. 178.) Afterwards,

Defendant filed a reply. (See Def’s Reply, ECF No. 182.)

I. Legal Standard

“A district court’s inherent authority to manage the

course of its trials encompasses the right to rule on motions in

limine.” Highland Cap. Mgmt., L.P. v. Schneider, 551 F. Supp. 2d

173, 176 (S.D.N.Y. 2008) (citing Luce v. United States, 469 U.S.

38, 41 n.4 (1984)). Motions in limine “aid the trial process by

enabling the Court to rule in advance of trial on the relevance of

certain forecasted evidence, as to issues that are definitely set

for trial, without lengthy argument at, or interruption of, the

trial.” Mango v. BuzzFeed, Inc., 316 F. Supp. 3d 811, 812

(S.D.N.Y. 2018) (quoting Palmieri v. Defaria, 88 F.3d 136, 141 (2d

Cir. 1996)). On a motion in limine evidence should be excluded,

“[o]nly when [it] is ‘clearly inadmissible on all potential

grounds.’” United States v. Ceballo, No. 13-CR-0308, 2014 WL

4980554, at *1 (E.D.N.Y. Oct. 6, 2014) (quoting United States v.

Paredes, 176 F. Supp. 192, 193 (S.D.N.Y. 2001)). In considering

a motion in limine, the Court “may reserve judgment until trial,

so that the motion is placed in the appropriate factual context.”

United States v. Chan, 184 F. Supp. 2d 337, 340 (S.D.N.Y. 2002).

Moreover, the Court’s rulings on a motion in limine are “subject

to change when the case unfolds, particularly if the actual

testimony differs from what was contained in the defendant’s

proffer.” Id. at 341 (quoting Luce, 469 U.S. at 41).

As an initial matter, pursuant to Federal Rules of

Evidence (hereafter “Rule”) 401, “[e]vidence is relevant if:

(a) it has any tendency to make a fact more or less probable than

it would be without the evidence; and (b) the fact is of

consequence in determining the action.” FED R. EVID. 401. However,

“[t]he court may exclude relevant evidence if its probative value

is substantially outweighed by a danger of one or more of the

following: unfair prejudice, confusing the issues, misleading the

jury, undue delay, wasting time, or needlessly presenting

cumulative evidence.” FED. R. EVID. 403. With these general

principles in mind, the Court addresses each of Defendant’s

arguments in turn.

II. Evidence Supporting Plaintiff’s Theory of Reverse Confusion

As part of Plaintiff’s Lanham Act claims and its New

York common law claims for trademark infringement, Plaintiff is

required to prove that Defendant’s “use of its own mark will likely

cause confusion with [P]laintiff’s mark.” RVC Floor Decor, 527 F.

Supp. 3d at 316; see also Info. Superhighway, Inc. v. Talk Am.,

Inc., 395 F. Supp. 2d 44, 56 (S.D.N.Y. 2005) (“The elements

necessary to prevail on common law causes of action for trademark

infringement and unfair competition mirror Lanham Act claims.”).

“To establish a likelihood of confusion, a plaintiff must show

that ‘numerous ordinary prudent purchasers are likely to be misled

or confused as to the source of the product in question because of

the entrance in the marketplace of defendant’s mark.’” O’Keefe v.

Ogilvy & Mather Worldwide, Inc., 590 F. Supp. 2d 500, 519 (S.D.N.Y.

2008) (quoting Gruner + Jahr USA Publ’g v. Meredith Corp., 991

F.2d 1072, 1077 (2d Cir. 1993)).

To establish confusion, Defendant anticipates that

Plaintiff will seek to advance “the theory of reverse confusion.”

(Support Memo at 2.) “Reverse confusion exists when a [junior]

user selects a trademark that is likely to cause consumers to

believe, erroneously, that the goods marketed by the [senior] user

are produced by the [junior] user.” On Site Energy Co. v. MTU

Onsite Energy Corp., No. 10-CV-1671, 2012 WL 13113196, at *1

(E.D.N.Y. July 26, 2012) (quoting Lang v. Ret. Living Publ’g Co.,

949 F. 2d 576, 585 (2d Cir. 1991)); see also RiseandShine Corp. v.

PepsiCo, Inc., 41 F.4th 112, 119 (2d Cir. 2022). “In reverse

confusion cases, consumers may believe that the senior user is ‘an

unauthorized infringer, and the [junior user’s] use of the mark

may in that way injure [the senior user’s] reputation and impair

its good will.” Kelly-Brown v. Winfrey, 717 F.3d 295, 304-05 (2d

Cir. 2013) (quoting Banff, Ltd. v. Federated Dep’t Stores, Inc.,

841 F.2d 486, 490 (2d Cir. 1988)); see also Mejia & Assocs. Inc.

v. Int’l Bus. Machs. Corp., 920 F. Supp. 540, 546 (S.D.N.Y. 1996)

(“The reverse confusion theory protects the mark of a [senior]

user from being overwhelmed by a [junior] user, typically where

the [junior] user is larger and better known and consumers might

conclude that the senior user is the infringer.”). The Second

Circuit has “explained that the relevant confusion is that which

affects the purchasing and selling of the goods or services in

question.” Lang, 949 F.2d at 583 (citations omitted).

Consequently, “trademark infringement protects only against

mistaken purchasing decisions and not against confusion

generally.” Id. (quoting RESTATEMENT (THIRD) OF UNFAIR COMPETITION

§ 20). For example, the Second Circuit has held that incidents in

which customers looking for the junior user’s products or store

mistakenly contact the senior user of a mark are irrelevant to the

issue of reverse confusion since such calls reflect that the

“consumers erroneously believed that the senior user [] was the

source of the junior user’s [product].” On Site Energy Co., 2012

WL 13113196, at *1; see also Codename Enters., Inc. v.

Fremantlemedia N. Am, Inc., No. 16-CV-1267, 2018 WL 3407709, at

*11 (S.D.N.Y. Jan. 12, 2018) (clarifying that “[e]vidence of

reverse confusion that would support [a] [p]laintiff’s claim would

[include] customers seeking [p]laintiff’s . . . services but

reaching out instead to [d]efendant”).

Defendant argues that Plaintiff’s reverse confusion

evidence can be broadly categorized “into four buckets:”

[1] testimony concerning instances of callers

looking for [Defendant’s store], or

[Defendant’s] products that [Plaintiff] does

not [stock]; [2] [evidence relying] on

instances in which individuals merely inquired

about whether the parties were affiliated;

[3] [evidence] offered by [Plaintiff]

reflect[ing] confusion by non-consumers,

[such as Plaintiff’s owner’s friends and

landlord; and] [4] purported confusion

evidence involving [Defendant’s] [and] not

[Plaintiff’s] customers.

(Support Memo at 3-4.)

Defendant maintains that all four categories of evidence

should be precluded under Rules 402 and 403 as irrelevant. (Id.

at 4.) Plaintiff counters that the proffered testimony, contrary

to Defendant’s assertion, “does not rest on the testimony of

Defendant’s customers [but] [r]ather . . . will consist of

purchasers or prospective purchasers of the Plaintiff’s products

who believed that they were produced by or affiliated with

Defendant’s brand.” (Pl’s Opp’n at 7.) Plaintiff requests that

“the Court . . . defer . . . ruling on th[ese] issue[s] until the

evidence has actually been proffered at trial and the Court

has . . . the opportunity to assess whether the [proffered]

testimony refers to Plaintiff’s customers, as opposed to

Defendant’s customers.” (Id.)

A. Evidence of Defendant’s Customers Contacting Plaintiff

The Court rules that any evidence Plaintiff may have

sought to introduce pertaining to individuals contacting

Plaintiff’s store looking for either Defendant, or Defendant’s

products, and who did not mistakenly purchase goods from Plaintiff

believing that they were dealing with Defendant, should be excluded

as irrelevant under Rules 401, 402, and 403. See Lang, 949 F.2d

at 583 (finding that evidence of four hundred misdirected phone

calls to plaintiff from consumers was irrelevant to the theory of

reverse confusion where plaintiff could not “show[] that [the]

misdirected callers were prospective purchasers of [plaintiff’s]

products); SLY Mag., LLC v. Weider Publ’ns L.L.C., 529 F. Supp. 2d

425, 440 (S.D.N.Y. 2007) (finding evidence of consumers contacting

plaintiff looking for defendants’ magazine were irrelevant to

plaintiff’s theory of reverse confusion because “[t]here [was] no

evidence . . . that anyone . . . made a mistaken purchasing

decision -- that is bought defendants’ magazine thinking it was

plaintiff’s”); O’Keefe, 590 F. Supp. 2d at 524 (finding irrelevant

to the theory of reverse confusion evidence from consumers who

“mistakenly believed either that [plaintiff] was involved in

creating [defendant’s products’] tagline and campaign, or

conversely, that [plaintiff] copied [defendant’s] tagline and

campaign” because there was no evidence that this confusion

“affected [the potential customer’s] determination to purchase

[plaintiff’s] product” (last two alterations in original)

(internal citations omitted)).

To the extent Plaintiff’s evidence does consist of

purchasers or prospective purchasers of Plaintiff’s products who

made purchasing decisions based upon the mistaken belief that

Plaintiff’s products were produced by Defendant, the Court finds

such evidence would be relevant to Plaintiff’s reverse confusion

theory and, therefore, not precluded. However, Plaintiff is

precluded from introducing evidence of individuals contacting

Plaintiff’s store looking for either Defendant or Defendant’s

products where such individuals did not mistakenly purchase goods

from Plaintiff believing that they were dealing with Defendant.

B. Evidence Consisting of Inquiries Regarding Affiliation

Between the Parties

Defendant next moves to preclude as irrelevant any

evidence concerning “individuals [who] merely inquired about

whether the parties [were] affiliated.” (Support Memo at 3.)

Defendant cites to Nora Beverages, where the Second

Circuit held that the district court did not err when it refused

to weigh evidence “of distributor inquiries to [plaintiff’s] sales

managers regarding whether [plaintiff] was affiliated with other

spring water sellers” in favor of the plaintiff. Nora Beverages,

Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 124 (2d Cir.

2001). The Second Circuit held that such “[i]nquiries about the

relationship between an owner of a mark and an alleged infringer

do not amount to actual confusion.” Id. Plaintiff distinguishes

Nora Beverages on the basis that “the inquiries about potential

affiliation” in that case “were directed at whether the plaintiff

was affiliated ‘with other spring water sellers’” generally,

whereas here, “the inquiries were specific to the affiliation

between Plaintiff and Defendant.” (Pl’s Opp’n at 7.)

While Nora Beverages provides support for Defendant’s

proposition that inquiries regarding potential affiliation,

without more, are irrelevant to the confusion inquiry, this Court

is aware of a more recent case in which the Second Circuit held

that inquiries into affiliation may properly be considered as

evidence weighing in a plaintiff’s favor. See Virgin Enters. Ltd.

V. Nawab, 335 F.3d 141, 151 (2d Cir. 2003). In Virgin Enterprises,

plaintiff presented an affidavit from a former employee of

defendant who worked at a mall kiosk, which stated that

“individuals used to ask him if the kiosk was affiliated with

plaintiff’s [] stores.” Id. The Second Circuit held that “[t]he

district court correctly concluded that this evidence weighed in

plaintiff’s favor.” Id.; see also Gross v. Bare Escentuals Beauty,

Inc., 641 F. Supp. 2d 175, 187 (S.D.N.Y. 2008) (highlighting that

Nora Beverages and Virgin Enterprises are “in direct conflict with

one another regarding the relevance of affiliation inquiries”).

Given the conflict in the case law, the Court declines

to preclude Plaintiff’s purported affiliate evidence as irrelevant

at this stage. Instead, the Court will reserve decision on the

issue until the evidence has been proffered at trial and the Court

can assess its relevance in light of the factual context in which

it is presented. Should Plaintiff’s affiliate evidence evince a

link between customer confusion regarding the parties’ affiliation

and the customers’ subsequent purchasing decisions, the Court

believes that such evidence would likely be relevant to the reverse

confusion inquiry. See e.g., Lang, 949 F.2d at 583 (noting in

that case that consumer inquiries regarding affiliation were

irrelevant to the reverse confusion analysis because there was no

evidence linking consumer confusion “to any potential or actual

effect on [the] consumers’ purchasing decisions”) (emphasis

added)).

C. Plaintiff’s Evidence Concerning Confusion on the Part of

Non-Consumers

Defendant also seeks to preclude evidence offered by

Plaintiff reflecting confusion amongst non-consumers. (Support

Memo at 3-4.) Defendant asserts that evidence from Plaintiff’s

owner’s friends and any confusion evidence from Plaintiff’s

landlord regarding whether Plaintiff was opening a new store in

Farmingdale, New York should be excluded as irrelevant. (Id.)

Plaintiff counters that “all of the evidence of reverse confusion

which Plaintiff intends to present at trial relates to existing or

potential customers of Plaintiff,” and not to its owner’s friends.

(Pl’s Opp’n at 8.) Plaintiff further contends that Defendant is

inappropriately attempting to “characterize Plaintiff’s fact

witnesses as ‘friends.’” (Id.)

Since the confusion relevant to the issue at hand

requires evidence “that a consumer’s actual purchasing decision

was impacted by a mistaken belief about the product’s origin or an

affiliation between brands,” Bonilla v. H&M Hennes & Mauritz L.P.,

12-CV-6919, 2014 WL 12661621, at *14 (S.D.N.Y. April 16, 2014),

confusion on the part of non-consumers is clearly irrelevant. See

e.g., W.W.W. Pharm. Co., Inc. v. The Gillette Co., 984 F.2d 567,

574 (2d Cir. 1993) (“No evidence was proffered that [plaintiff’s]

friend was a prospective purchaser or that confusion affected his

determination to purchase [plaintiff’s] product”); Gameologist

Grp., LLC v. Sci. Games Int’l, Inc., 838 F. Supp. 2d 141, 162-63

(S.D.N.Y. 2011) (finding that anecdotal confusion evidence “on the

part of friends and family members of [plaintiff’s] current or

former members” did “not suffice to raise a genuine issue of

material fact as to consumer confusion, especially given that this

inquiry focuses on the consuming public as a whole, not interested

parties already familiar with the plaintiff’s mark through

personal connections”). While Plaintiff represents that all of

the evidence it intends to present at trial does come from existing

and potential customers, and not friends, the Court is mindful

that in its summary judgment motion, Plaintiff did seek to rely

upon evidence “concern[ing] individuals who were not prospective

customers” including, job applicants, friends and family, and

Plaintiff’s landlord. See RVC Floor Decor, 527 F. Supp. 3d at

326. Consequently, the Court rules that evidence from purely non-

consumers, i.e. those who were not prospective customers of

Plaintiff, is irrelevant and thus excluded pursuant to Rule 401.

D. Plaintiff’s Evidence Supporting the Theory of Forward

Confusion

Defendant next seeks to preclude Plaintiff from

introducing any evidence of “consumers who shopped at Defendant’s

store -- even if they made a purchase -- but believed that they

were shopping (and buying from) Plaintiff” since this would be

evidence of forward and not reverse confusion. (Def’s Suppl.

Letter, ECF No. 208, at 1-2; Support Memo at 4.) Since Plaintiff

is advancing a theory of reverse confusion, Defendant’s position

is that this evidence would be irrelevant. (Def’s Suppl. Letter,

at 1.) Plaintiff cites legal authority from this Circuit that

reverse and forward confusion are different theories of proving

actual confusion and not different claims. (Pl’s Suppl. Letter,

ECF No. 209, at 1-2.) Plaintiff further asserts that since its

operative Complaint put Defendant on notice that Defendant was

“likely to cause confusion by marketing its infringing products”

in the relevant geographic area, Plaintiff therefore “reserved its

right to prove actual confusion by either available theory.” (Id.

at 2.)

Troublé v. The Wet Seal, Inc. is instructive; there, the

court denied the defendant’s motion in limine to exclude evidence

of reverse confusion where, from the filing of her complaint

through discovery, the plaintiff had framed her allegations as a

forward confusion trademark infringement claim. 179 F. Supp. 2d

291, 296 (S.D.N.Y. 2001). The court rejected the defendant’s

argument that the plaintiff “was improperly altering the

underpinning legal theory of her case,” finding that “allegations

of forward confusion and reverse confusion do not form distinct

claims” but “are alternative theories that can be used separately

or together in a trademark infringement claim under the Lanham

Act.” Id. Since plaintiff had “given [defendant] full notice of

her trademark infringement claim,” the court determined that

plaintiff’s complaint could “be read to encompass both theories.”

Id.

Here, Plaintiff provided Defendant the requisite notice

in its Complaint that it was pursuing a claim of trademark

infringement pursuant to the Lanham Act, New York common law and

the New York General Business Law. Since the actual confusion

aspect of Plaintiff’s claim can be proven with either a reverse or

forward confusion theory, and since “a complaint that gives ‘full

notice’ of the circumstances giving rise to the plaintiff’s claim

for relief ‘need not also correctly plead the legal theory or

theories and statutory basis supporting the claim,’” id. (quoting

Simonton v. Runyon, 232 F.3d 33, 36 (2d Cir. 2000)), the Court

denies Defendant’s request to preclude Plaintiff from presenting

any evidence it may have of forward confusion.

III. Plaintiff’s Fact Witness Providing Allegedly Unqualified

Expert Opinion Testimony

Next, Defendant moves to “exclude all unqualified expert

opinion testimony offered by [Plaintiff]” regarding: “(i) the

impact of advertising on consumers or on [Plaintiff’s] ‘goodwill;’

and (ii) the relative quality of the parties’ flooring products.”

(Support Memo at 6.)

Concerning goodwill, Defendant argues that “[c]onsumer

goodwill is not easily measured . . . and is typically analyzed by

damages, marketing, or brand experts.” (Id. at 5.) Defendant

highlights that Plaintiff’s fact witness, Robert Smith (hereafter

“Smith”), does not possess the “relevant expertise” to analyze how

advertising has impacted Plaintiff’s goodwill, nor has Smith

offered a “‘reliable methodology’ that can be ‘reliably applied’

in measuring consumer perceptions.” (Id.) Conversely, Plaintiff

counters that expert opinion is not needed to provide admissible

evidence on “how advertising impacts a company’s goodwill in the

marketplace.” (Pl’s Opp’n at 8.) Instead, Plaintiff avers that

“the average juror understands the connection between commercial

advertising and a company’s favorable reputation.” (Id. at 9.)

Further, Plaintiff highlights that Smith has “in-depth knowledge

of the company’s operations” which he has accumulated over 30

years. (Id.)

Regarding testimony concerning the parties’ respective

products, Defendant avers that, prior to trial, Plaintiff’s fact

witnesses, Glenn Altarac, Christina Silvestri, Bari Seidon, and

Wendy Lepkoff, have provided testimony regarding the quality of

the parties’ respective products. (Support Memo at 5.) Defendant

contends that “[s]uch comparative assessments fall within the

purview of expert, not lay, testimony [because] [t]he everyday,

average person lacks the knowledge, experience, and know-how to

reliably assess the quality of specialized products like

flooring.” (Id.) As further proof highlighting its point,

Defendant notes that Plaintiff has previously “admitted it

attempted to obtain an expert opinion on [] this point, but never

produced the results of that analysis.” (Id. at 5-6.) Defendant

speculates that Plaintiff’s purported expert report “strongly

suggests that it contradicts -- with science -- the unqualified

opinions of [Plaintiff’s] employees.” (Id. at 6.) Plaintiff

counters that “[i]n the age of DIY . . . home improvement

projects, consumers are familiar with flooring products.” (Pl’s

Opp’n at 10.) Similarly, Plaintiff contends that due to “access

to the internet, a consumer can become quite knowledgeable about

flooring products in short order, and become well-versed in certain

product advantages and disadvantages.” (Id.) Plaintiff posits

that a lay consumer can “easily discern between high quality wood

flooring made of oak versus a low quality product made of plywood.”

(Id.) Similarly, Plaintiff states that the lay consumer can

differentiate between vinyl and ceramic tile. (Id.)

Pursuant to Rule 701, opinions of lay witnesses are

limited to those that are “(a) rationally based on the witness’s

perception; (b) helpful to clearly understanding the witness’s

testimony or to determining a fact in issue; and (c) not based on

scientific, technical, or other specialized knowledge within the

scope of Rule 702.” FED. R. EVID. 701. Due to the specialized

knowledge requirement, lay opinion testimony “must be the product

of reasoning processes familiar to the average person in everyday

life” as opposed to expert testimony which results “from a process

of reasoning which can be mastered only by specialists in the

field.” United States v. Garcia, 413 F.3d 201, 215 (2d Cir. 2005)

(internal citations omitted). However, “[l]ay witnesses may give

testimony on matters with which they have special familiarity based

on personal experiences.” Zhen v. Safety-Kleen Sys., Inc., No.

18-CV-6015, 2021 WL 4937888, at *1 (E.D.N.Y. May 27, 2021).

While the Court agrees with Defendant that, generally,

consumer goodwill is a metric that is typically analyzed by

damages, marketing or brand experts, the Court will not, at this

stage, preclude Plaintiff from offering lay opinion testimony from

Smith on the issue of how advertising has affected Plaintiff’s

business. In deferring ruling this way, the Court acknowledges

that Smith, as a co-founder and former owner of Plaintiff, may

indeed be able to testify on the subject of goodwill at a general

level due to his familiarity with Plaintiff’s operations. As such,

the Court shall reserve decision on this matter. Additionally,

while the Court is cognizant of Defendant’s concerns regarding lay

testimony about the relative quality of its products, especially

where the lay witness offers opinions on product quality between

two similarly situated products, until it hears the lay witness

testimony the Court will not preclude such testimony.

IV. Defendant’s Hearsay Arguments

Next, Defendant seeks to preclude several categories of

“hearsay evidence” for which it contends no exception to the

hearsay rules applies. Defendant broadly categorizes Plaintiff’s

purported hearsay evidence into three categories: (1) “statements

by unknown third parties about [Defendant] and its products;”

(2) “documents prepared by the parties exclusively for discovery

purposes;” and (3) “documents created by third parties.” (Support

Memo at 6.) The Court addresses each of Defendant’s objections in

turn.

Hearsay is defined as “a statement that: (1) the

declarant does not make while testifying at the current trial or

hearing; and (2) a party offers in evidence to prove the truth of

the matter asserted in the statement.” FED. R. EVID. 801(c). Unless

an exception to the general rule exists, “[h]earsay is not

admissible.” FED R. EVID. 802. With these general principles in

mind, the Court turns to Defendant’s hearsay arguments.

A. Out-of-Court Statements Made by Diana Hyman to David Weiss

First, Defendant highlights that the testimony of David

Weiss, one of Plaintiff’s witnesses, included an anecdotal story

in which he referred a customer to Plaintiff’s store and the

customer responded that she would visit Plaintiff’s store in

Florida, despite Plaintiff not having any stores in Florida.

(Support Memo at 6.) This testimony was presented as evidence of

consumer confusion in Plaintiff’s summary judgment briefs. (Id.)

Defendant argues that “[t]estimony concerning statements made by

unknown third parties who cannot be cross examined is

quintessential, textbook hearsay” which should be excluded. (Id.

at 6-7.) Plaintiff notes that Weiss’ testimony regarded a customer

named Diana Hyman, and counters that Hyman’s experience “does not

constitute hearsay because Plaintiff is not proffering Weiss’

testimony for statements that Hyman made” but instead that Weiss’

testimony establishes that “he has direct personal knowledge of []

Hyman’s experience because she was acting pursuant to his

instructions.” (Pl’s Opp’n at 11-12.) Plaintiff contends further

that even if Weiss’ anecdote concerning Hyman’s experience were

hearsay, the “statements made by Hyman to Weiss concerning her

visit to the [Defendant’s] store constitute a present sense

impression because she contemporaneously related her impressions

to Weiss.” (Id. at 12 (citing FED. R. EVID. 803(1).) Plaintiff

proposes that the Court defer ruling on this issue until trial so

as to “first hear the testimony . . . in context.” (Id.)

Pursuant to Rule 803(1), present sense impressions are

excluded from the general rule that hearsay statements are

inadmissible. See FED R. EVID. 803(1). A present sense impression

is “[a] statement describing or explaining an event or condition,

made while or immediately after the declarant perceived it.” Id.

“Statements fitting the present sense impression definition ‘are

considered to be trustworthy because the contemporaneity of the

event and its description limits the possibility for intentional

deception or failure of memory.’” United States v. Chen Kuo, No.

10-CR-0671, 2011 WL 145471, at *3 (E.D.N.Y. Jan. 8, 2011) (quoting

United States v. Jones, 299 F.3d 103, 112 (2d Cir. 2002)).

As an initial matter, if the Hyman anecdote were hearsay,

the Court is unpersuaded that the present sense impression

exception applies. Regardless, the Court is unconvinced that the

statements made by Hyman to Weiss are in fact hearsay. Declarant

Hyman is not scheduled to testify. However, Hyman’s statement,

that she would visit Defendant’s store in Florida after Weiss

recommended Hyman visit Plaintiff’s store, is not being offered

for the truth of the matter asserted, i.e., it is not being offered

to prove that Hyman actually went, or intended to actually visit,

Defendant’s store in Florida. Instead, Defendant intends to offer

the anecdote regarding Hyman as evidence of confusion generally on

the part of one of Plaintiff’s customers. This would be a

permissible example of customer confusion, and, even if it were

hearsay, would likely be admissible as a statement of the

declarant’s then-existing state of mind under Rule 803(3). See

UPS Store, Inc. v. Hagan, No. 14-CV-1210, 2017 WL 3309721, at *3

(S.D.N.Y. Aug. 2, 2017) (“In Lanham Act cases, hearsay declarations

can come in under Rule 803(3) to prove consumer confusion.”).

B. Plaintiff’s Instagram Post Showing Customer Confusion

Next, Defendant seeks to preclude “a copy of an Instagram

message purportedly sent by an unknown third party” to Plaintiff

“concerning an alleged experience with” one of Defendant’s

products. (Support Memo at 7.) Plaintiff contends that the

Instagram Post should be admitted under the Business Records

Exception articulated in Rule 803(6) because “the message was sent

to Plaintiff in the ordinary course of business.” (Pl’s Opp’n at

13.)

Pursuant to Rule 803(6), certain business records may be

excluded from the rule against hearsay when:

(A) the record was made at or near the time

by--or from information transmitted by--

someone with knowledge;

(B) the record was kept in the course of a

regularly conducted activity of a

business . . . whether or not for

profit;

(C) making the record was a regular practice

of that activity;

(D) all these conditions are shown by the

testimony of the custodian or another

qualified witness, or by a certification

that complies with Rule 902(11) or (12)

or with a statute permitting

certification; and

(E) the opponent does not show that the

source of information or the method or

circumstances of preparation indicate a

lack of trustworthiness.

FED R. EVID. 803(6).

The purpose of the business records exception “is to

ensure that documents were not created for ‘personal

purpose[s] . . . or in anticipation of any litigation’ so that the

creator of the document ‘had no motive to falsify the record in

question.’” U.S. Underwriters Ins. Co. v. ITG Dev. Grp., LLC, 294

F. Supp. 3d 18, 28-29 (E.D.N.Y. 2018) (alterations in original)

(quoting United States v. Kaiser, 609 F.3d 556, 574 (2d Cir.

2010)). Similarly, the business records exception “is designed to

capture records that are likely accurate and reliable in content,

as demonstrated by the trustworthiness of the underlying sources

of information.” United States v. Hunt, 534 F. Supp. 3d 233, 254

(E.D.N.Y. 2021) (quoting United States v. Browne, 834, F.3d 403,

410 (3d Cir. 2016)). “A duty to report . . . ‘has long been

recognized as the principal means of establishing the reliability

of a hearsay statement’ offered under the Business Records

Exception.” Abascal v. Fleckenstein, 820 F.3d 561, 566 (2d Cir.

2016) (quoting United States v. Reyes, 157 F.3d 949, 952 (2d Cir.

1998)).

Here, the customer complaint contained in the Instagram

Post is hearsay if offered to prove the truth of the matter

asserted, i.e., that there is a difference in quality between

Defendant’s and Plaintiff’s product, or that the customer making

the complaint believed that there was a difference in product

quality between the parties’ products. The Court is unconvinced

that the Instagram Post qualifies as a business record since the

underlying source of the information, i.e., the customer

declarant, was not acting in the regular course of business when

it made the complaint. See United States v. Baker, 693 F.2d 183,

188 (D.C. Cir. 1982) (“[I]f the source of the information is an

outsider, Rule 803(6) does not, by itself, permit the admission of

the business record. The outsider’s statement must fall within

another hearsay exception to be admissible because it does not

have the presumption of accuracy that statements made during the

regular course of business have.”); see also Hunt, 534 F. Supp. 3d

at 254 (“[T]o construe the substance of social media content as a

business record would be to misunderstand the business-records

exception under [Rule] 803(6).”).

However, if the Instagram Post is offered for the limited

purpose of demonstrating general confusion on the part of

customers, the customer complaint would not be hearsay since it is

not being offered for the truth of the matter asserted. Moreover,

as discussed, infra Part IV.A, a customer complaint may also be

admissible under Rule 803(3) as a statement showing the declarant’s

then-existing state of mind. See Fun-Damental Too, Ltd. v. Gemmy

Indus. Corp., 111 F.3d 993, 1003-04 (2d Cir. 1997) (holding that

direct testimony from plaintiff’s sales manager regarding customer

complaints was not hearsay since “[t]he testimony in question was

not offered to prove” the truth of the matter asserted “but was

probative on declarant’s confusion” and that Rule 803(3) was also

applicable to show the declarant’s then-existing state of mind).

C. Plaintiff’s Intention to Admit into Evidence Defendant’s

Privilege Log

Next, Defendant seeks to preclude Plaintiff from

offering into evidence Defendant’s privilege log arguing that the

privilege log is hearsay and is of no probative value on any fact

in issue and that, even if it were, “such minimal, tenuous value

is far outweighed by the dangers of confusing the issues and

misleading the jury.” (Support Memo at 7.) Plaintiff first argues

that, as a matter of law, privilege logs are not hearsay because

they qualify as admissions by a party opponent. (Pl’s Opp’n at

13.) Moreover, the privilege logs are relevant, Plaintiff avers,

since they “indicate that Defendant was aware of Plaintiff’s mark

as early as 2012, several years before Defendant entered the

relevant market in 2015.” (Id.) Plaintiff further argues that

“[t]he issue as to whether Defendant conducted a sufficient

trademark search in 2012, as indicated on Defendant’s privilege

log” is relevant on the issue of bad faith. (Id. at 13-14.)

Pursuant to Rule 801(d)(2), an opposing party’s

statement is not hearsay. FED R. EVID. 801(d)(2). An opposing

party statement is a statement “offered against an opposing party”

that, inter alia, “was made by the party in an individual or

representative capacity.” FED R. EVID. 801(d)(2)(A). A “privilege

log may constitute [an] admission [by] a party opponent.” Utica

Mut. Ins. Co. v. Munich Reinsurance Am., Inc., No. 13-CV-0743,

2018 WL 3135847, at *13 (N.D.N.Y. June 27, 2018) (citing Mut. Ins.

Co. v. Murphy, 630 F. Supp. 2d 158, 168 n.3 (D. Mass. 2009)).

Contra Biggs v. Chicago Bd. of Educ., No. 18-CV-6183, 2022 WL

1591577, at *9 (N.D. Ill. May 19, 2022) (finding defendant’s

“privilege log is inadmissible hearsay to the extent [p]laintiff

offers it for the truth of the matter contained in the log

entries”).

The bad faith factor in Lanham Act cases “looks to

whether the defendant adopted its mark with the intention of

capitalizing on plaintiff’s reputation and goodwill and any

confusion between his and the senior user’s product.” Easy Spirit,

LLC v. Skechers U.S.A., Inc., 515 F. Supp. 3d 47, 74 (S.D.N.Y.

2021) (quoting Lang, 949 F.2d at 583); see also Artisan Mfg. Corp.

v. All Granite & Marble Corp., 559 F. Supp. 2d 442, 452 (S.D.N.Y.

2008) (noting that a “defendant’s awareness of plaintiff’s mark

may give rise to an inference of bad faith” and that this inference

is “bolstered if the defendant offers no credible explanation for

its adoption of the mark”). The Second Circuit “has never held

adoption of a mark with no knowledge of a prior similar mark to be

in bad faith even in the total absence of a trademark search.”

Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 388 (2d

Cir. 2005). In assessing bad faith, persistence in using the

allegedly infringing mark during the duration of the litigation

can be a contributing factor when combined with other factors

evidencing a party’s bad faith. 24 Hour Fitness USA, Inc. v. 24/7

Tribeca Fitness, LLC., 447 F. Supp. 2d 266, 283-84 (S.D.N.Y. 2006).

Additionally, unlike the Lanham Act, “New York’s common law unfair

competition cause of action is ‘adaptable and capricious.’” RVC

Floor Decor, 527 F. Supp. 3d at 328 (quoting Roy Export Co.

Establishment of Vaduz, Liechtenstein v. Columbia Broad. Sys.,

Inc., 672 F.2d 1095, 1105 (2d Cir. 1982)). The common law cause

of action is “not confined to Defendant’s decision to adopt its

mark . . . [and] is assessed not by viewing acts in isolation but

upon the totality of the evidence, including their timing.” Id.

Here, the Court finds any evidentiary value that

Defendant’s privilege log might provide on the sufficiency of

Defendant’s trademark search in 2012 is de minimis; consequently,

the privileges log’s probative value is substantially outweighed

by its prejudicial effect. See FED. R. EVID. 403; see also Old

Republic Ins. Co. v. Ness, Motlet, Loadholt, Richardson & Poole,

P.A., No. 03-CV-5238, 2006 WL 3782994, at *12-13 (N.D. Ill. Dec.

21, 2006) (finding plaintiff’s privilege log was inadmissible

because its “probative value [was] substantially outweighed by the

probability of jury confusion and noting that the “privilege log

itself [was] not evidence; rather, the document named in the

privilege log [was] the evidence”). Therefore, Plaintiff is

precluded from introducing the privilege log as evidence of the

sufficiency of Defendant’s trademark search in 2012.3

D. Documents Prepared by Third Parties

Next, Defendant anticipates that Plaintiff will “offer

into evidence . . . documents prepared by several third parties”

including: (1) “data allegedly provided to Plaintiff by the Bureau

of Labor” (hereafter the “Labor Data”); (2) “two office action

letters from the U.S. Patent and Trademark Office concerning a []

[Defendant] trademark application” (hereafter the “Action

Letters”); and (3) ”an affidavit” from Plaintiff’s witness Hadi

Taffal (hereafter the “Taffal Declaration”). (Support Memo at 7.)

1. The Labor Data and the Action Letters

Defendant contends that neither the Labor Data nor the

Action Letters qualify under the hearsay exception afforded to

certain public records pursuant to Rule 803(8). (Support Memo at

8.) Specifically, Defendant contends that before admitting either

the Labor Data or the Action Letters, Plaintiff would have to

present “live testimony of a records custodian representing the

agencies that produced the records” and that “[n]one of

[Plaintiff’s] prospective witnesses can authenticate” the records.

(Id.)

3 The Court notes that the law of this case establishes that

Defendant became aware of Plaintiff’s mark in 2012 (RVC Floor

Decor, 527 F. Supp. 3d at 314, 327).

Additionally, Defendant argues that the Labor Data “does

not speak for itself in simple terms that a lay person can

comprehend without assistance from an expert.” (Id.) The Labor

Data, Defendant contends, is further inadmissible because it

“purports to present information regarding ‘U.S. city average[s]’

while [Plaintiff] asserts rights in” a specific geographical

region confined to Long Island, New York. (Id.) Defendant further

notes that the Labor Data is untrustworthy in that it is presented

as a “one-off screenshot[] of unidentified webpages . . . the

source and genesis of [which] remains completely unknown.” (Def’s

Reply at 5.)

Regarding the Action Letters, Defendant argues that the

documents contain the hearsay statements of a trademark examiner

that Defendant’s mark was “merely descriptive.” (Support Memo at

9.) Defendant further posits that the Action Letters are

irrelevant since “if it is [Plaintiff’s] goal to call into question

the validity of [Defendant’s] marks, the mark at issue” has now

become “incontestable and its distinctiveness ‘conclusively

established’ as a matter of law.” (Id. at 9.)

Plaintiff counters that, on Defendant’s authentication

argument, the Labor Data is self-authenticating under Rule 902(5).

(Pl’s Opp’n at 14.) Additionally, Defendant contends that “if

necessary, the Court may take judicial notice of the [Action

Letters] at trial under” Rule 201(b) “because such correspondence

was issued by a federal government agency whose authenticity cannot

be reasonably questioned.” (Id.) While Plaintiff offers no

explanation as to why the Labor Data is relevant in this action,

it argues that the Action Letters are relevant on the issue of bad

faith since both how and why the Defendant adopted its mark are

part of the relevant inquiry. (Id. at 15 n.5.)

Pursuant to Rule 803(8), “[a] record or statement of a

public office” may be excluded from the rule against hearsay if:

(A) it sets out:

(i) the office’s activities;

(ii) a matter observed while under a legal

duty to report, but not including, in a

criminal case, a matter observed by law-

enforcement personnel; or

(iii) in a civil case or against the

government in a criminal case, factual

findings from a legally authorized

investigation; and

(B) the opponent does not show that the source

of information or other circumstances indicate

a lack of trustworthiness.

FED R. EVID. 803(8)

“Once the party seeking admission has met the minimum

requirements and shows that the evidence contains factual findings

and was made based on an investigation made pursuant to legal

authority, the burden shifts to the opposing party to demonstrate

a lack of trustworthiness.” Harte v. Ocwen Fin. Corp., No. 13-

CV-5410, 2018 WL 1830811, at *18 (E.D.N.Y. 2018). “[A]dmissibility

of evidence covered under Rule 803(8) ‘is generally favored’ and

presumed.” Id. (citing Gentile v. County of Suffolk, 962 F.2d

142, 148 (2d Cir. 1991)).

Regarding authentication, certain items of evidence “are

self-authenticating” and “require no extrinsic evidence of

authenticity in order to be admitted.” FED R. EVID. 902. For

example, pursuant to Rule 902(5), official publications such as

“book[s], pamphlet[s], or other publication[s] purporting to be

issued by a public authority” are considered to be self-

authenticating in nature. FED. R. EVID. 902(5). Additionally,

pursuant to Rule 201(b) the Court may take judicial notice of a

fact that “is not subject to reasonable dispute because it: (1) is

generally known within the trial court’s territorial jurisdiction;

or (2) can be accurately and readily determined from sources whose

accordance cannot reasonably be questioned.” FED. R. EVID. 201(b).

i. The Labor Data

Assuming without deciding that Plaintiff can in fact

establish the authenticity of the Labor Data under either

Rules 902(5) or 201(b), the Court agrees with Defendant insofar as

it finds that the Labor Data is irrelevant to the extent that it

offers information on cities or locations outside the narrowly

defined geographical area germane to this case. Thus, subject to

authentication which will be determined at trial, at this stage,

the Court will not preclude Plaintiff from offering Labor Data

that is tailored to the geographical areas of Nassau County,

Suffolk County, New York City, Queens, and Brooklyn.

ii. The Action Letters

While the USPTO is an agency of the United States, within

the Department of Commerce, that falls squarely withing the “public

offices or agencies” requirement of Rule 803(8), even if the Action

Letters fall within the public documents exception to hearsay,

they remain subject to the rules of relevance articulated in Rules

401, 402, and 403. To that end, the Court rules that Plaintiff is

precluded from introducing the Action Letters on the ground that

they are irrelevant to the issues that Plaintiff must prove at

trial; moreover, their inclusion risks confusing both the issues

and the jury. Plaintiff’s argument that the Action Letters are

relevant because “[h]ow and why Defendant adopted its infringing

junior mark is relevant to the issue of bad faith” is unavailing.

(Pl’s Opp’n at 15 n.5.) The Action Letters are dated 20044,

approximately eight years before Defendant learned of Plaintiff’s

mark and eleven years before it entered the relevant geographical

area that is the subject of this litigation. See Star Indus., 412

F.3d at 288 (“[The Second Circuit] has never held adoption of a

mark with no knowledge of a prior similar mark to be in bad

4 The Action Letters, designated in the parties’ Amended Proposed

Pretrial Order as PX166 and PX167, are described as being dated

2004. (See Amended Proposed Pretrial Order, ECF No. 200 at 20.)

faith . . . .”). Additionally, the Court agrees with Defendant in

that, even if the Action Letters were relevant, their probative

value is substantially outweighed by the danger of unfair prejudice

and confusing both the jury and the issues, see FED. R. EVID. 403,

especially since Defendant’s trademark application was ultimately

approved. Here, it is the Plaintiff that must establish that its

mark achieved secondary meaning by July 2015. Since Defendant’s

mark has been established as a matter of law, any evidence

attacking its legitimacy or describing the process Defendant took

to register it long before it became aware of Plaintiff’s mark

risks confusion of the issue and would prejudice Defendant.

2. The Sworn Declaration of Hadi Taffal

According to Defendant, the Taffal Declaration is

hearsay since it “consists entirely of out-of-court statements

offered to prove the truth of the matters asserted.” (Support

Memo at 9.) Defendant further notes that there is no applicable

hearsay exception that would make the Taffal Declaration

admissible but that regardless, since Taffal is listed as a

witness, Plaintiff’s request on this issue is moot. (Def’s Reply

at 6.) Plaintiff argues that the Court should defer ruling on

whether to exclude the Taffal Declaration since “if at trial

[Taffal] confirms the statements made in the declaration, such

statements would no longer be considered ‘out-of-court.’” (Pl’s

Opp’n at 15.) Further, Plaintiff avers that “if Taffal were to

offer testimony at trial that contradicts the earlier sworn

statement, then the declaration may be used for impeachment

purposes.” (Id.)

If offered for the truth of the matter asserted, sworn

statements should be excluded as hearsay. See Sec. & Exch. Comm’n

v. Am. Growth Funding II, LLC, No. 16-CV-0828, 2018 WL 6322145, at

*9 (S.D.N.Y. 2018). However, sworn statements may not be hearsay

when offered for a permissible purpose such as impeachment of a

witness pursuant to Rule 801(d)(1) or to refresh a witness’

recollection pursuant to Rule 803(5). Id.

Here, the Court rules that Plaintiff is precluded from

entering into evidence the Taffal Declaration because it is hearsay

if offered to prove the truth of the matters asserted therein.

The extent to which the Taffal Declaration may be used for

impeachment or rehabilitative purposes during Taffal’s live

testimony will be determined by the Court at trial.

V. Testimony Concerning Newly Opened Long Island Floor & Décor

Stores

Pursuant to Rule 403, Defendant next moves to preclude

Plaintiff from introducing evidence at trial relating to new stores

“opened by [Defendant] on Long Island [occurring] after the close

of discovery in this action.” (Support Memo at 10.) Defendant

primarily advances two arguments as to why evidence of new stores

should be excluded. First, Defendant notes that the store openings

“substantially post-date[] . . . the close of discovery” and the

Court’s decision on the parties’ cross-motions for summary

judgment. (Id.) Second, Defendant maintains such evidence is

“irrelevant to the remaining issues to be tried” and that, further,

even if relevant, the probative value of the evidence does not

exceed the risk of confusion and unfair prejudice. (Id.)

A. Defendant’s Argument That There was a Lack of Discovery

Regarding New Stores

Defendant notes that, other than the Farmingdale

location, no new stores were opened by Defendant on Long Island

“until well after the end of fact discovery . . . and no

supplemental discovery has been taken on this issue” since

discovery closed. (Support Memo at 10.) Defendant argues that

due to the lack of discovery “the parties will be entirely unable

to prepare related testimony and evidence at trial.” (Id.)

Defendant further posits that if Plaintiff intended to offer

evidence related to the new store openings it should have moved to

re-open discovery. (Id. at 10-11.)

Plaintiff disputes Defendant’s contentions and notes

that “Plaintiff did ask Defendant during the discovery period to

disclose any information regarding its plans for ‘new stores’ in

the Long Island area.” (Pl’s Opp’n at 16.) Further, Plaintiff

asserts that Defendant was under a “legal obligation under” Federal

Rule of Civil Procedure 26(e) “to supplement its disclosures

regarding new stores as post discovery deadline information became

available.” (Id.) Plaintiff contends that Defendant’s failure to

disclose the new stores was in contravention of an order issued by

Magistrate Judge Lindsay who directed Defendant to supply

Plaintiff with information if a store actually opened during the

pendency of this litigation. (Id.)

The Court agrees with Plaintiff that Defendant was under

a duty to supplement its disclosures up until the date of trial,

and not merely up until the close of discovery, if it opened any

new stores in the relevant geographical area. Star Direct Telecom,

Inc. v. Glob. Crossing Bandwidth, Inc., 272 F.R.D. 350, 358

(W.D.N.Y. 2011) (“The obligation to update and supplement

responses [to discovery requests] continues even after the close

of discovery.” (internal alterations omitted) (quoting Allen v.

Colgate-Palmolive Co., No. 79-CV-1076, 1985 WL 191, at *1 (S.D.N.Y.

Jan. 14, 1985))); see also McKinney v. Connecticut, No. 06-CV-

2055, 2011 WL 166199, at *2 (D. Conn. 2011) (“The fact that

discovery has closed has no bearing on [d]efendant’s duty to

supplement under Rule 26(e).”)). Defendant was reminded of its

continuing disclosure obligations on September 26, 2019, by Judge

Lindsay. (Sept. 26, 2019 Hr’g Tr., ECF No. 113, 18:2-9.)

Furthermore, Judge Lindsay’s order expressly directed Defendant

“to supply [Plaintiff] with information if a store actually

open[ed] during the pendency of th[e] litigation.” (Id. at 17:9-

12 (emphasis added).) Defendant conceded during the motion hearing

held before this Court on February 22, 2023, that it was aware of

Judge Lindsey’s directive and offered no explanation as to why it

failed to provide Plaintiff with the information relating to new

stores. (Feb. 22, 2023 Hr’g Tr., ECF No. 212, 9:12-21.) Instead,

Defendant speculated that since the order “was a directive from

Judge Lindsay during a hearing[,] that [Defendant] didn’t follow

up on [it].” (Id. at 9:23-10:1.) Defendant explicitly

acknowledged that this “was a mistake on [its] part.” (Id.)

Therefore, the Court finds that any failure to take

discovery relating to new stores is the fault of the Defendant,

not Plaintiff. Thus, the Court declines to preclude evidence of

Defendant’s new stores on this basis.

B. Defendant’s Argument That the Opening of New Stores is

Irrelevant

Additionally, Defendant argues that evidence of its new

Long Island stores is irrelevant to the outstanding factual issues

pertinent to Plaintiff’s remaining claims. (Support Memo at 11.)

Defendant highlights that the Court has already dismissed

Plaintiff’s claim for actual damages in this case, and so, any

contentions by Plaintiff that the new stores could result in

additional damages is moot in light of the Court’s summary judgment

ruling. (Id.) Nevertheless, Defendant speculates that Plaintiff

may seek to introduce this evidence as a means of “denigrat[ing]

[Defendant] in the eyes of the jury, [and] creating undue prejudice

[] unrelated to the merits of [the] dispute.” (Id.) On the issue

of potential bad faith, Defendant argues that the opening of new

stores is irrelevant since the intent inquiry is limited to

Defendant’s “initial adoption of its . . . registered mark[].”

(Id. at 13.)

Plaintiff, while acknowledging that the Court has

previously excluded it from collecting an award of actual damages,

notes that “a [d]efendant’s profits are distinct from compensatory

damages . . . [and that] as a matter of law, the profits that

Defendant garnered from the operation of the new stores are

relevant to the calculation of overall profits to be awarded under

section 1117(b) of the Lanham Act.” (Pl’s Opp’n at 18.)

Additionally, Plaintiff contends that Defendant’s opening of new

stores during the pendency of this case and its continued use of

its trademark, despite having notice of the existence of

Plaintiff’s senior mark, is evidence of bad faith. (Id. at 19-

20.) Moreover, Plaintiff refutes Defendant’s assertion that bad

faith is measured from the date a defendant initially adopts a

mark; instead, Plaintiff asserts that bad faith may be found where

a defendant continues to use a senior mark and that regardless,

each time Defendant opens a new store, it is “re-adopting the mark

for that location.” (Id. at 20.)

Pursuant to 15 U.S.C. Section 1117(a), a prevailing

plaintiff in a trademark infringement case may recover:

“(1) defendant’s profits; (2) any damages sustained by the

plaintiff,[5] and (3) the costs of the action.” 15 U.S.C.

§ 1117(a). Additionally, “under certain conditions, disgorgement

of profits and treble damages” may also be obtained pursuant to 15

U.S.C. Section 1117(b). RVC Floor Decor, 527 F. Supp. 3d at 331.

A showing of willful infringement is required to win a treble

damages award, but Plaintiff need not make this showing “to win an

award of Defendant’s profits.” Id. “Punitive damages under New

York law can [also] be awarded ‘in addition to a treble damages

assessment under the [federal] Lanham Act.’” Id. (second

alteration in original) (quoting Am. Auto. Ass’n Inc. v. AAA Auto.

Club of Queens, Inc., No. 97-CV-1180, 1999 WL 97918, at *11

(E.D.N.Y. Feb 8, 1999)). Bad faith and willful infringement have

been used interchangeably by the Second Circuit in this context.

Id. (citing Malletier v. Dooney & Bourke, Inc., No. 04-CV-2990,

2007 WL 1498323, at *1 (S.D.N.Y. May 22, 2007)). Contrary to

Defendant’s assertions, in determining bad faith, the Court “is

5 The Court has previously ruled that Plaintiff cannot recover

compensatory damages. See RVC Floor Decor, 527 F. Supp. 3d at

330-31 (“[T]he parties tacitly agree that Plaintiff is not seeking

compensation for its sustained damages, so Defendant’s cross-

motion to preclude Plaintiff from obtaining such relief is

unopposed. Defendant is entitled to summary judgment on this

issue.”)

required to consider a defendant’s conduct after being notified of

an infringement claim.” 24 Hour Fitness USA, Inc., 447 F. Supp.

2d at 284 (emphasis in original) (citing Int’l Start Class Yacht

Racing Ass’n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753 (2d

Cir. 1996)); see also Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486,

492 (5th Cir. 1992) (“When there is no evidence of bad faith in

the adoption of the mark, all post-notification conduct must be

analyzed to determine if the defendant’s continuing actions were

unreasonable and amounted to bad faith.”).

The Court finds that evidence of new store openings by

Defendant in the geographical location occupied by Plaintiff

during the pendency of this litigation are relevant to the issue

of bad faith. See 24 Hour Fitness USA, 447 F. Supp. 2d at 284;

Moore Bus. Forms, 960 F.2d at 492. Additionally, as noted by

Plaintiff, the information regarding new stores in the relevant

geographical location is necessary to any calculation of

Defendant’s profits, should Plaintiff establish that it is

entitled to recover such profits under the Lanham Act.

VI. Plaintiff’s Introduction of Evidence Regarding the Closure of

its Syosset Store Location

Next, pursuant to Rule 403, Defendant seeks to preclude

Plaintiff from introducing evidence that Plaintiff closed its

Syosset store sometime in 2021 during the COVID pandemic. (Support

Memo at 14-15.) Defendant expects Plaintiff to attribute this

closure to Defendant despite Plaintiff allegedly not having any

evidence of causation on this issue. (Id. at 15.) Additionally,

Defendant notes that the Syosset store closed approximately eleven

months after the close of discovery in this case. (Id.) Defendant

argues that Plaintiff failed to notify Defendant about the closure

of the Syosset store until April 27, 2022, and that “neither party

took any discovery with respect to [the] matter.” (Id.)

Consequently, Defendant maintains it would be prejudiced if

evidence of the Syosset store closure were introduced at trial

since it “has had no opportunity to examine any documents or

witnesses on this issue.” (Id.) Defendant avers that if Plaintiff

intended to enter evidence of the Syosset store closure it should

have “called for supplemental discovery, amended its initial

disclosures to identify it as a topic of discovery” and disclosed

all witnesses with relevant knowledge of the store closure who

Defendant could have deposed. (Id.)

Plaintiff counters that the fact that Defendant was

unable to take discovery is irrelevant since the store closure

itself is undisputable and does not require discovery. (Pl’s Opp’n

at 21.) Plaintiff further avers that it is not required to “show

that Defendant was the direct cause of the closure[,] [b]ut [that]

a jury [may] infer, based on the fact of the store closure itself

and Defendant’s aggressive marketing push into [] Long

Island . . . that Defendant’s expanding presence in the area has

had a detrimental impact on Plaintiff’s business.” (-Id-.-)

The Court notes that Plaintiff has been aware of the

Syosset store closure since sometime in 2021 and that it has failed

to provide this information to Defendant or supplement any of its

disclosures to alert Defendant to any new evidence or witnesses

supporting its theory as to why the store closed. The Court agrees

with Defendant that Plaintiff’s failures in this regard have

prejudiced Defendant and hampered its ability to prepare its

defense on this issue. Although the store closure may have been

relevant if Plaintiff had any evidence on the causes of the

closure, Plaintiff’s frank concession that it has no evidence

regarding causation and that it merely wishes to present the store

closure to the jury and have them infer that the closure was the

fault of the Defendant is highly prejudicial to Defendant.

Consequently, because of Plaintiff’s own failures in discovery and

because it has no evidence to support its theory that Defendant

was in some way responsible for the closure, the Court finds that

the evidentiary value of Plaintiff’s Syosset store closure is

substantially outweighed by the danger of unfair prejudice to

Defendant and the Court precludes it for this reason.

VII. Evidence of Plaintiff’s Mark Gaining Secondary Meaning After

July 2015

The Court has previously held, as a matter of law, that

if Plaintiff’s mark has achieved secondary meaning, it must have

been achieved by July 2015. RVC Floor Decor, 527 F. Supp. 3d at

318. Relying upon this ruling, pursuant to Rules 401 and 403,

Defendant seeks to preclude any evidence or testimony concerning

secondary meaning “relating to events occurring after July 2015.”

(Support Memo at 16.) Defendant contends that even if relevant,

such evidence’s probative value is “far exceeded by the risk of

confusion and undue prejudice.” (Id.) Plaintiff has no objection

to the exclusion of such evidence.6 (Pl’s Opp’n at 21.)

Consequently, the Court finds that any evidence or testimony

concerning secondary meaning that relate to events occurring after

July 2015 are precluded as irrelevant pursuant to Rules 401, and

403.

VIII. Evidence of Consumer Confusion Occurring Since the Close of

Discovery

Defendant’s seventh request is moot in light of the

rulings made by the Court at the February 22, 2023 motion hearing,

6 To the extent Plaintiff suggests that Defendant “should be

equitably estopped from contesting points II and III of Plaintiff’s

Omnibus Motions in Limine, as well as Plaintiff’s Daubert motion

to exclude expert testimony and untimely consumer surveys” based

on Defendant’s arguments in the instant motion, the Court will

consider this argument in deciding that motion along with all other

arguments presented in the moving papers.

when the Court ruled that, from Plaintiff’s list of confusion

witnesses which included those new witnesses it sought to include

in the Amended Proposed Pretrial Order, Plaintiff would be

permitted to present testimony from four witnesses in total. (Feb.

22, 2023 Hr’g Tr. 18:8-15.) The Court reasoned that any more than

four confusion witnesses would likely become cumulative. (Id. at

13:23-14:3.) Further, the Court permitted Plaintiff to present

its confusion evidence through whichever four witnesses best

conveyed its points on this issue. (Id. at 18:8-15.)

IX. Evidence Regarding Recent Changes to the Appearance and

Presentation of Plaintiff’s Name and Logo

Finally, Defendant notes that it has recently discovered

that Plaintiff has “modified its branding, adopting . . . another

name and logo design.” (Support Memo at 18.) Defendant highlights

that Plaintiff’s newly adopted logo design “is visually far more

similar to [Defendant’s] longstanding design mark than any of

[Plaintiff’s] prior logos.” (Id.) Defendant seeks to preclude,

pursuant to Rules 401 and 403, evidence relating to Plaintiff’s

new mark since all of Plaintiff’s claims in this case “arise from

[the] purported likelihood of confusion between the parties’ names

and logos as they existed at the time [Plaintiff] filed its

complaint in November 2018.” (Id. (emphasis in original.))

Plaintiff offers no opposition to Defendant’s request on this issue

and in fact “has no objection to the exclusion” of this evidence.7

(Pl’s Opp’n at 22.) Consequently, Plaintiff is precluded from

entering evidence relating to its new mark pursuant to Rule 401.

CONCLUSION

For the stated reasons, IT IS HEREBY ORDERED that the

Defendant’s Omnibus Motion in limine (ECF No. 167) is GRANTED IN

PART and DENIED IN PART.

A. The Defendant’s first request is GRANTED. Pursuant to Rules

401, 402, and 403, Plaintiff is precluded from introducing

evidence pertaining to individuals merely contacting

Plaintiff’s store looking for either Defendant, or

Defendant’s products, who did not mistakenly purchase goods

from Plaintiff under the belief they were dealing with

Defendant;

B. The Defendant’s second request is DENIED. Plaintiff’s

affiliate evidence may be admissible if it can show that

confusion regarding whether the parties were affiliated

actually affected customers’ purchasing decisions;

7 To the extent Plaintiff suggests that Defendant “should be

equitably estopped from contesting Point II of Plaintiff’s Omnibus

Motions in Limine which seeks to exclude any reference to

derivative marks used by Plaintiff prior to July 2014” based on

its arguments in the instant motion, the Court will consider this

argument in deciding that motion along with all other arguments

presented in the moving papers.

C. The Defendant’s third request is GRANTED. Evidence from

purely non-consumers who were not prospective customers of

Plaintiff is excluded as irrelevant pursuant to Rule 401;

D. The Defendant’s fourth request is DENIED to the extent that

Plaintiff has evidence of forward confusion; it may prove

actual confusion under either a forward or reverse confusion

theory;

E. The Court RESERVES DECISION on Defendant’s fifth request;

F. The Defendant’s sixth request is DENIED. Evidence of customer

confusion is admissible as non-hearsay so long as it is not

offered for the truth of the matter asserted;

G. The Defendant’s seventh request is DENIED. Evidence of

customer confusion is admissible as non-hearsay so long as it

is not offered for the truth of the matter asserted;

H. The Defendant’s eighth request is GRANTED. Plaintiff is

precluded from entering into evidence Defendant’s privilege

log pursuant to Rule 403;

I. The Defendant’s ninth request is GRANTED IN PART AND DENIED

IN PART. If Plaintiff can establish authenticity at trial,

to the extent that the Labor Data is relevant and is limited

in scope to the geographically relevant location pertinent to

this case, it is admissible. Plaintiff is precluded from

introducing into evidence the Action Letters pursuant to

Rules 401, and 403;

J. The Defendant’s tenth request is GRANTED. Plaintiff is

precluded from entering into evidence the Taffal Declaration.

The extent to which the Taffal Declaration may be used for

impeachment or rehabilitative purposes will be determined at

trial;

K. The Defendant’s eleventh request is DENIED. Evidence of

Defendant’s post-notification conduct, including the opening

of new stores is admissible on the issue of Defendant’s bad

faith, and in measuring Defendant’s profits, if necessary;

L. The Defendant’s twelfth request is GRANTED. Plaintiff is

precluded from entering into evidence its Syosset store

closure for failure to timely disclose the closure to

Defendants and pursuant to Rule 403;

M. The Defendant’s thirteenth request is GRANTED. On consent of

the parties, Plaintiff is precluded from entering into

evidence testimony concerning secondary meaning relating to

events occurring after July 2015 pursuant to Rule 401;

N. The Defendant’s fourteenth request is DENIED AS MOOT in light

of the Court’s rulings on this matter at the February 22,

2023, hearing; and

O. The Defendant’s fifteenth request is GRANTED. On consent of

the parties, Plaintiff is precluded from entering any

evidence relating to its new mark pursuant to Rule 401.

SO ORDERED.

/s/ JOANNA SEYBERT______

Joanna Seybert, U.S.D.J.

Dated: March 7, 2023

Central Islip, New York