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

4/7/2023 4:3 4 pm

UNITED STATES DISTRICT COURT

U.S. DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

EASTERN DISTRICT OF NEW YORK

--------------------------------X LONG ISLAND OFFICE

RVC FLOOR DECOR, LTD.,

Plaintiff, MEMORANDUM & ORDER

18-CV-6449 (JS)(ARL)

-against-

FLOOR AND DECOR OUTLETS OF

AMERICA, INC.,

Defendant.

--------------------------------X

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., (“Plaintiff”) initiated this

trademark infringement case against Floor & Decor Outlets of

America, Inc., (“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 Plaintiff’s Omnibus

Motion in Limine (“Omnibus Motion”). (ECF No. 193.) For the

reasons that follow, Plaintiff’s motion is DENIED.

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, Plaintiff seeks to exclude from

trial: (1) “any reference to Plaintiff by its corporate trade name

‘RVC Floor Decor Ltd.’ [o]r ‘RVC’ in lieu of its actual trademark

FLOOR DECOR”; (2) “any evidence or testimony regarding Plaintiff’s

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.

use of any derivative trademarks such as ‘Floor Decor Direct;’

‘FD&D;’ ‘Floor Decor & Design;’ ‘Floor Decor Carpet One;’ ‘Floor

Decor Carpet One Floor & Home;’ and ‘Floor Decor and Design Home

Design Studio;’ or any other derivative trademark adopted by

Plaintiff subsequent to July 2014”; and (3) “any evidence or

testimony regarding any allegedly similar third-party trademarks,

and for such further relief as [the] Court deems just and proper.”

(Support Memo, ECF No. 194, at 3-10.) Defendant filed opposition

to Plaintiff’s Omnibus Motion. (See Opp’n, ECF No. 203.)

Afterwards, Plaintiff filed a reply. (See Reply, ECF No. 196.)

I. Legal Standard

A. Motions in Limine

“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 ruling on a motion in limine is “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.

B. Secondary Meanings and Polaroid Factors

As part of Plaintiff’s Claims, Plaintiff must first

prove that its unregistered FLOOR DECOR trademark merits

protection under the Lanham Act. “An unregistered mark merits

protection under the Lanham Act if it ‘would qualify for

registration as a trademark.’” RVC Floor Decor, 527 F. Supp. 3d

at 316 (quoting Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373,

381 (2d Cir. 2005)). A mark qualifies for registration as a

trademark if it is “either (1) inherently distinctive or (2) has

acquired distinctiveness through secondary meaning.” Id. (quoting

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992)).

Since Plaintiff has conceded that its mark is not inherently

distinctive, it must prove secondary meaning to merit protection

under the Lanham Act. “A mark has secondary meaning if ‘in the

minds of the public, the primary significance of [the] product

feature or term is to identify the source of the product rather

than the product itself. Id. (quoting Inwood Labs., Inc. v. Ives

Labs., Inc., 456 U.S. 844, 851 n.11 (1982)).

Next, after establishing that its mark is entitled to

trademark protection, to succeed in a trademark infringement suit,

“plaintiff must prove under 15 U.S.C. § 1114(a) . . . that there

is a likelihood of confusion,” that is, “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.” Gruner + Jahr USA Pub. v.

Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993). In assessing

the likelihood of confusion, courts in the Second Circuit refer to

the factors articulated in Polaroid Corp. v. Polarad Elec. Corp.,

287 F.2d 492 (2d Cir. 1961):

(1) the strength of the plaintiff’s mark;

(2) the degree of similarity between the

plaintiff’s and defendant’s mark; (3) the

competitive proximity of the products sold

under the marks; (4) the likelihood that the

plaintiff will bridge the gap; (5) actual

confusion; (6) the defendant’s good faith, or

lack thereof, in adopting its mark; (7) the

quality of the defendant’s product; and

(8) the sophistication of the plaintiff’s

customers.

Capri Sun GmbH v. Am. Beverage Corp., 595 F. Supp. 3d 83, 145

(S.D.N.Y. 2022) (quoting Time, Inc. v. Petersen Pub. Co. L.L.C.,

173 F.3d 113, 117 (2d Cir. 1999)).

With these principles in mind, the Court turns to each

of Plaintiff’s motions in limine, and addresses each in turn.

II. References to Plaintiff’s Corporate Trade Name

Plaintiff first moves to preclude Defendant “from

referring to or otherwise adducing any evidence or testimony at

trial relating to Plaintiff’s corporate trade name.” (Support

Memo at 3.) Additionally, Plaintiff argues that “Defendant should

further be excluded from referring to Plaintiff as ‘RVC’ or as

‘RVC Floor Decor Ltd’ during the course of the trial.” (Id.)

Plaintiff avers that RVC Floor Decor Ltd “is merely the trade name

of Plaintiff’s corporate entity” and “[s]ince 1974, Plaintiff has

continuously used the trademark FLOOR DECOR to identify and

distinguish its goods, not its corporate trade name.” (Id. at 5.)

Plaintiff further highlights that the RVC portion of its corporate

trade name “has never been used by Plaintiff[] in any of its

signage, advertising, letterhead or other business usage.” (Id.)

Conversely, Defendant argues that Plaintiff’s “inconsistent use of

Floor-Decor-formative names, including [its] corporate

name . . . is highly relevant to the secondary meaning [and

strength of the mark] analysis.” (Opp’n at 1.) Defendant further

avers that Plaintiff’s argument, that it has not used its corporate

name in any signage, advertising or other business usage, is

“demonstrably false” and that in actuality Plaintiff “has used its

corporate name and related variants in connection with numerous

consumer-facing materials –- including on its public-facing

website [] and in promotional materials.” (Id. at 1-2.) For

example, Defendant proffers that Plaintiff has inconsistently

presented itself in business listings as “RVC Floor Decor Carpet

One;” (Id. at 2.) “R V C Floor Decor;” (Id.) and “RVC Floor Decor

Limited.” (Id.) Moreover, Defendant notes that Plaintiff’s own

customers refer to Plaintiff by a variety of names in thank-you

letters. (Id.)

“[T]he fact that [a] plaintiff infuse[s] the market with

several names . . . decreases the likelihood that any one name

[will] acquire[] secondary meaning.” Fraga v. Smithhaven MRI, 866

F. Supp. 107, 112 (E.D.N.Y. 1994). This principle also applies to

the “strength of the mark” Polaroid factor. See e.g., Sorensen v.

WD-40 Co., 792 F.3d 712, 731 (7th Cir. 2015) (“Inconsistent use

makes a symbol less helpful to consumers as a source indicator,

and therefore a weaker mark”); Reebok Intern. Ltd. v. K-Mart Corp.,

849 F. Supp. 252, 262 (S.D.N.Y. 1994), vacated as moot, No. 92-

CV-8871 (S.D.N.Y. Dec. 28, 1994) (noting that one limitation to

the strength of Reebok’s Stripecheck mark was that “Reebok ha[d]

used the Stripecheck inconsistently” choosing instead to “focus[]

primarily on other marks in establishing its brand identity among

consumers,” which meant that “many consumers might [] view the

Stripecheck as merely a decorative flourish, and not as an

indicator of origin”).

In view of the foregoing, the Court finds evidence of

Plaintiff’s use of names other than its asserted mark, i.e., FLOOR

DECOR, is relevant to both the secondary meaning analysis and the

“strength of the mark” Polaroid factor. Plaintiff’s argument that

it cannot control third parties publishing “its publicly available

corporate tradename” on their business listings is unavailing;

such argument may go to the weight of the evidence but not its

admissibility. See Morgans Grp. LLC v. John Doe Co., No. 10-CV-

5225, 2012 WL 1098276, at *7 (S.D.N.Y. March 31, 2012) (citing

Fraga and finding that plaintiff “ha[d] been listed under a variety

of names in the press, and not just the names which [plaintiff]

claim[ed] an interest” in, such that the “smaller subset of

listings that” did refer to plaintiff’s claimed name were “simply

insufficient to establish secondary meaning”). Additionally,

evidence which shows that Plaintiff’s customers refer to Plaintiff

by various names is also relevant and will not be excluded. See

Sizes Unlimited, Inc. v. Sizes To Fit, Inc., 871 F. Supp. 1558,

1564-65 (E.D.N.Y. 1994) (considering “customer correspondence

offered by plaintiffs” to establish secondary meaning); see also

Rockland Exposition, Inc. v. All. of Auto. Serv. Providers of N.J.,

894 F. Supp. 2d 288, 320 (S.D.N.Y. 2012) (finding that

“courts . . . will consider direct testimony of customers to show

evidence of secondary meaning.”).

III. Evidence Relating to Plaintiff’s Derivative Marks

Plaintiff’s second in limine request seeks to exclude

“any evidence at trial of Plaintiff’s use of Derivative Marks to

the extent such use post-dated July 2014” which is one year prior

to the date by which Plaintiff must establish that it achieved

secondary meaning. (Support Memo at 6.) Plaintiff’s arguments in

support of its request are threefold. First, Plaintiff argues

that its “use of any Derivative Marks subsequent to July 2015 is

not probative of any issue in this case” since evidence of

secondary meaning which postdates Defendant’s entry into the

market is irrelevant. (Id.) Second, Plaintiff argues that “none

of the Derivative Marks could have acquired secondary meaning on

their own in less than one year [and so] no reasonable jury could

find that Plaintiff’s adoption of any derivative mark so close to

the secondary meaning deadline could have impact the analysis.”

(Id. at 7.) Finally, Plaintiff contends that “since Plaintiff has

continuously used its original mark . . . in commerce since 1974,

it necessarily acquired secondary meaning regardless of

Plaintiff’s use of any subsequent marks.” (Id. at 8.) Defendant

counters that, while Plaintiff “is correct that secondary meaning

must be established by July 2015,” that the strength of the mark

Polaroid factor is assessed “at the time the mark is asserted in

litigation.” (Opp’n at 3.) Consequently, Defendant avers that

evidence of Plaintiff’s use of derivative marks is relevant and

not restricted by date. (Id.)

The “Strength of the Mark” Polaroid factor is assessed

“at the time the mark is asserted in litigation to prevent

another’s use.” Horn’s, Inc. v. Sanofi Beaute, Inc., 963 F. Supp.

318, 322 (S.D.N.Y. 1997); see also Ty Inc. v. Softbelly’s Inc.,

No. 00-C-5230, 2006 WL 5111124, at *16 (N.D. Ill. Apr. 7, 2006)

(“The strength of the mark should be determined at the time of

litigation and not at the time the alleged infringer entered the

market”); Renaissance Greeting Cards, Inc. v. Dollar Tree Stores,

Inc., 405 F. Supp. 2d 680, 690 (E.D. Va. 2005) (strength of the

mark measured “as of the time the mark is asserted in litigation)

(citing 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair

Competition § 11:80 (5th ed. 2022)). “Although ‘secondary

meaning’ and ‘commercial strength’ are separate concepts, ‘[w]hen

determining the commercial or marketplace strength of a mark, the

courts look to the same kind of evidence of real world recognition

of the mark as is used to decide the presence of secondary

meaning.’” Alzheimer’s Disease & Related Disorders Ass’n, Inc. v.

Alzheimer’s Found. of Am., Inc., 307 F. Supp. 3d 260, 289 (S.D.N.Y.

2018) (quoting McCarthy on Trademarks & Unfair Competition §§

11:82, 15:1, 15:25).

The Court declines Plaintiff’s invitation to exclude, as

irrelevant, evidence of Plaintiff’s use of derivative marks which

post-date July 2014. Since the strength of the mark should be

determined at the time of litigation, post-2014 evidence of

Plaintiff’s use of derivative marks would be relevant to this

factor.

IV. Evidence Relating to Third-Party Usage of Similar Marks

Finally, Plaintiff argues that the Court should “exclude

all evidence of third-party usage as irrelevant” under Rule 402.

(Support Memo at 10.) While conceding that evidence of third-

party use of a mark may indicate a lack of secondary meaning,

Plaintiff nevertheless avers that Defendant’s third-party use

evidence suffers from three major flaws. (Id. at 9-10.) First,

Plaintiff argues that Defendant “must . . . prove that the third

party trademarks were actually used by third parties, that they

were well promoted or that they were recognized by consumers.”

(Id. at 9 (citations omitted)). Second, Plaintiff contends that

“any evidence of third-party marks must be relevant to the

secondary meaning timeframe.” (Id.) Finally, Plaintiff argues

that “evidence of [third-party] marks must be relevant to the

geographic territory at issue.” (Id.) Defendant counters that

evidence of third-party use of the mark at issue “is plainly

admissible at trial to show that the Asserted Name . . . lacks

commercial strength under the first Polaroid factor.” (Opp’n at

4.) Additionally, Defendant argues that Plaintiff cites no

authority for its contention that Defendant must “first prove that

the third-party trademarks were actually used by third parties.”

(Id. at 5.) Moreover, Defendant avers that Plaintiff’s objections

to the third-party use evidence go to its weight and not its

admissibility. (Id. at 5-6.)

“The first Polaroid factor ‘focuses on “the

distinctiveness of the mark, or more precisely, its tendency to

identify the goods” as coming from a particular source.’” LCL

XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d

612, 667 (S.D.N.Y. 2016) (quoting Lang v. Retirement Living Pub.

Co., Inc., 949 F.2d 576, 581 (2d Cir. 1991)). “Assessing this

factor, courts consider both the inherent distinctiveness of a

mark and the distinctiveness it has acquired in the marketplace,

i.e., secondary meaning.” Id. (citing Streetwise Maps, Inc. v.

VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998)). “[T]he extent of

third-party use [is] particularly relevant to this inquiry.” Id.

(citing Star Indus., 412 F.3d at 385). See also Giggle, Inc. v.

netFocal, Inc., 856 F. Supp. 2d 625, 632 (S.D.N.Y. 2012) (“When

reliable, . . . evidence of third-party use of a mark is very

persuasive in proving lack of secondary meaning.”). “[E]vidence

of third-party marks is relevant only when indicative of how third

parties actually use the marks in commerce, but there are various

ways to evidence such actual use.” Id. at 632-33 (citing Scarves

by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1173 (2d Cir.

1976)).

The Court declines to preclude Defendant’s third-party

use evidence at this stage since such evidence is relevant in

assessing the first and second Polaroid factors.3 Plaintiff’s

3 To the extent Plaintiff relies upon the Court’s summary judgment

ruling in this case as support that Defendant’s third-party use

evidence is inadmissible, Plaintiff’s reliance is misplaced.

Judge Hurley did not find that, to use its third-party use

evidence, Defendant must first prove that the marks used by third

parties were “well promoted or that they were recognized by

consumers.” See RVC Floor Decor, Ltd., 527 F. Supp. 3d at 318-

319. Judge Hurley offered no opinion as to the admissibility of

the third-party use evidence. Id. Instead, in weighing the

secondary meaning factors Judge Hurley considered Defendant’s

third-party use evidence and gave it the weight it deserved. Id.

Judge Hurley next considered the third-party use evidence in

considering the “Strength of the Mark” Polaroid factor. Id. at

323. Judge Hurley specifically noted that Defendant contested

Plaintiff’s “mark’s strength with reference to . . . third-party

use” evidence. Id. Judge Hurley ultimately found that “[t]he

argument that, to be admissible, Defendant must first prove that

the third-party marks were “actually used by third parties, that

they were well promoted or that they were recognized by consumers,”

is unavailing. See Easy Spirit, LLC v. Sketchers U.S.A., Inc.,

571 F. Supp, 3d 185, 204 n.9 (S.D.N.Y. 2021) (“[E]vidence of mark

registrations was enough for the Second Circuit . . . to find that

third-party registrations for competitive products weakened the

strength of the senior mark, without additional evidence of the

extent of the use of those marks”) (citing Car-Freshner Corp. v.

Am. Covers, LLC, 980 F.3d 314, 328-30 (2d Cir. 2020)); see also

Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39

(D.D.C. 2015) (holding that evidence of third-party use of a mark

was “powerful on its face” even when there were no “specifics

regarding the extent of sales or promotional efforts surrounding

the third-party materials and, thus, what impact, if any, these

uses had in the minds of the purchasing public”). Regardless,

“there are various ways to evidence such actual use,” Giggle, Inc.,

856 F. Supp. 2d at 632, and Defendant has proffered various ways

in which these third-party party marks were used including: (1)

the registering of corporate names with “floor” and/or “décor,”

(2) the publication of such names in business listings, and

evidence [on this point was] neutral, as a rational trier of fact

could weigh it in either party’s favor.” Id.

(3) publication of such marks on social media and third-party

websites. (Opp’n at 4-5.)

CONCLUSION

For the stated reasons, IT IS HEREBY ORDERED that the

Plaintiff’s Omnibus Motion in Limine (ECF No. 193) is DENIED.

SO ORDERED.

JOANNA SEYBERT

Joanna Seybert, U.S.D.J.

Dated: April 7, 2023

Central Islip, New York