The opinion
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., (“Plaintiff”) initiated this
trademark infringement case against Floor & Decor Outlets of
America, Inc., (“Defendant” or “F&D”) 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
Motion in Limine (hereafter the “Motion”) based upon Judicial
Estoppel. (ECF No. 197.) For the reasons that follow, Plaintiff’s
Motion is DENIED.
BACKGROUND
I. Facts
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 The Court recites only those
facts necessary to resolve the instant motion.
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.
A. Defendant’s Prior Litigation
Plaintiff’s judicial estoppel motion revolves around
five “trademark enforcement actions brought by [Defendant]” in
other jurisdictions (the “Unrelated Cases”). (Support Memo, ECF
No. 197-9 at 3, attached to Motion.) Plaintiff contends that the
Unrelated Cases “all mimic the same fact patterns,” that is, “[a]n
entity with a business and trade name strikingly similar to
Plaintiff [and Defendant], is sued by [Defendant].” (Id.) In the
Unrelated Cases, Defendant argues that the opposing “entity’s name
is ‘confusingly similar’ to [Defendant’s], and the entity’s
business is the same as [Defendant’s] business.” (Id.) Plaintiff
alleges that Defendant repeatedly changes the description of its
business “to fit its purposes in each litigation,” then argues
“that consumer confusion is likely to occur, and that if an
injunction is not granted, [Defendant] will suffer irreparable
harm.” (Id.) According to Plaintiff, in each case, Defendant
“presented [] facts and [] legal arguments -- specifically
concerning the Polaroid factors -- as needed and tailored to
benefit it in the role of senior user seeking to enforce its
trademark against these junior users.” (Id.)
1. F&D v. Floor & Home Decor, Inc.
The first enforcement action was brought “against a
‘retail flooring-products store’ doing business under the name
‘Floor & Home Decor’ (‘FHD’).” (Id. at 3-4.) Defendant argued
that FHD’s mark was confusingly similar to Defendant’s. (Id. at
4.) Unlike in the present action, where Defendant describes itself
as a “a large, warehouse-style store,” Defendant described itself
as a “retail store[] featuring flooring materials and related home-
improvement accessories.” (Id. (alteration in original).)
Regarding confusion, Defendant argued that FHD’s mark
[i]s likely to cause confusion and to deceive
consumers and the public regarding the source
of its services, and to dilute and tarnish the
distinctive quality of [Defendant’s] marks.
Further, [FHD’s] use of such a confusingly
similar trademark is already causing actual
confusion in the marketplace between the
parties’ stores and, upon information and
belief, [FHD] have adopted their mark with the
intention of causing such confusion between
the parties’ stores and of trading on the
goodwill in [Defendant’s] marks.
(Id.)
2. F&D v. Home Decor by Victoria, Inc.
In the second Unrelated Case, Defendant “brought [an]
action against another ‘retail flooring products store’ doing
business under the mark ‘Floors & Decor’” (“Floors”). (Id.)
Defendant “argued that [Floors’] mark ‘[was] confusingly similar’
to [Defendant’s] mark, and again . . . described itself as a
‘retail store[] featuring flooring materials and related home-
improvement accessories.” (Id. at 5.)
3. F&D v. Decor & Flooring, LLC.
In the third Unrelated Case, Defendant brought an action
against Decor & Flooring “which provided ‘retail sales of flooring
products, tiles, and other home furnishing accessories, such as
granite countertops.” (Id. at 5.) Defendant described its
business in this case as comprising of “retail stores featuring
flooring products, tiles, and related home-improvement
accessories, such as granite countertops.” (Id. at 6.) Defendant
argued that Decor & Flooring’s use of Defendant’s mark was “likely
to cause confusion and to deceive consumers and the public
regarding the source of its services, and to dilute and tarnish
the distinctive quality of” Defendant’s mark. (Id.)
4. F&D v. Granite Floor & Decor
Granite Floor & Decor (“Granite Floor”) was a company
that provided “kitchen, bathroom, and related home remodeling
services featuring granite countertops, tiles and flooring, and
wood and porcelain flooring.” (Id. at 6.) Defendant described
its business in this case as comprising “retail stores featuring
granite countertops, tiles and flooring, and wood and porcelain
flooring.” (Id.) Defendant argued that:
[Granite Floor’s] [] mark is confusingly
similar to [Defendant’s] marks. The FLOOR &
DÉCOR portion of [Granite Floor’s] mark is
identical to [Defendant’s] word mark; the term
GRANITE is a generic term that has little
weight in distinguishing the parties’
marks. . . . Due to the similarity of the
marks, internet searches for [Defendant’s]
stores and website mistakenly return search
results directing consumers to [Granite
Floor’s] store and website. Further, [Granite
Floor’s] remodeling services involve the sale
of the same kinds of products that [Granite
Floor] sells through its stores and website
and thus the parties’ goods/services are very
closely related, if not
identical. . . . [Granite Floor’s] use of the
GRANITE FLOOR & DECOR mark and trade name on
its store signs, website, and other marketing
channels is likely to cause confusion among
consumers with [Defendant’s] stores and
website . . . .
(Id. at 6-7.)
5. Floor Décor, LTD v. F&D
In the final action, Defendant “was initially a
defendant in this [case]” which was “brought by a Texas entity
identically-named to Plaintiff (other than an accent mark).” (Id.
at 8.) The Texas entity was described as a “single showroom
location” which provided “sales, installation and service of
carpet, ceramic tile, wood floor, laminates, vinyl, stone, marble
and granite floor coverings and related products.” (Id.)
Plaintiff contends that Defendant “asserted a counterclaim [in the
Texas action], making identical arguments that it has made against
Plaintiff” in the present case “and the exact opposite arguments
it made as a plaintiff in the aforementioned cases.” (Id.
(emphases in original).) Specifically, Plaintiff asserts that
Defendant claimed: (1) “Floor Decor’s trademark was ‘highly
descriptive;’” (2) “that Floor Decor acquiesced to third-party use
of the words ‘floor’ and ‘decor’ and, therefore, had abandoned the
mark;” (3) “that [Defendant’s] mark is not confusingly similar to
Floor Decor’s mark ‘since both the words and design elements are
dissimilar and contain elements that will allow consumers to
distinguish between them;” (4) Floor Decor’s mark had “‘not
[acquired] secondary meaning sufficient for trademark
protection;’” and (5) “laches.” (Id. at 8-9.)
PROCEDURAL HISTORY
I. Judge Hurley’s Preliminary Injunction Ruling
Plaintiff previously made this motion “during the
hearing on Plaintiff’s motion for a preliminary injunction.” (Id.
at 1.) Judge Hurley denied Plaintiff’s motion, primarily due to
the inherent fact specific nature of the analysis required under
the Polaroid factors in trademark cases such as the one at bar;
specifically, Judge Hurley noted that:
[J]udicial estoppel is a very harsh
remedy. . . .
In this case we obviously have a different
scenario. We have different jurisdictions.
Is that an important point? No. Is it a
point? Yes, it is. The major problem, though,
with invoking judicial estoppel in this case
I think involves the Polaroid factors. The
parties agree that confusion is pivotal,
assuming there's secondary meaning that is
established by the plaintiff or will be
established at some point by the plaintiff and
that's contested by the defense, at least at
this juncture.
We are going to get into the Polaroid factors
which are multiple. The court is required to
make very specific factual inquires [sic] and
conclusions regarding each of the
eight . . . Polaroid factors. . . .
Then the next question is what were the
factors that influenced the Polaroid factors'
analysis in the five cases in Georgia and
Texas? I don't know. I do know that in all
probability they varied from case to case, and
they were complex in their own stead. The
problem I have, and this is addressed somewhat
because when we talk about equitable --
judicial equity, the question is addressed to
my discretion.
Do I feel it would be appropriate for me to
hamstring the defense to the extent that they
can't present a large field of evidence? I
don't. This is a nonjury trial. I'd like to
hear the evidence. I'm not going to invoke
judicial estoppel to somehow curb the evidence
that would otherwise be presented to me.
So the bottom line is plaintiff hasn't shown,
to my satisfaction, that the doctrine of
judicial estoppel, again primarily because of
this problem with the Polaroid factors, has
been appropriately laid. Over the objection
of plaintiff's counsel, and I will say this
too, there is a similarity in names here, but
as we know under Polaroid that's important,
but that's far from dispositive. That’s the
problem I'm having. . . .
I believe that the defendant has the better
side of the argument as to the issue of how I
should exercise my discretion in this case.
For the reasons indicated, I have declined to
preclude the defendant from going into these
particular areas under the doctrine of
judicial estoppel.
Tr. of Preliminary Inj. H’rg, ECF No. 105-2 at 3:10, 4:14-5:2,
5:5-6:1, 6:7-12, attached to Motion to Quash Subpoenas.
II. Plaintiff’s Motion
In the instant Motion, Plaintiff seeks to exclude
Defendant’s arguments pertaining to “evidence or arguments
inconsistent with those asserted, and succeeded upon, in other
litigation” based on equitable estoppel. (Support Memo at 1.)
Defendant filed an opposition to Plaintiff’s Motion. (See Opp’n,
ECF No. 198.) Afterwards, Plaintiff filed a reply. (See Reply,
ECF No. 199.)
ANALYSIS
I. Legal Standard
A. Motion 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)). In ruling 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. 2d 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).
B. Judicial Estoppel
Judicial estoppel “prevents a party from asserting a
claim in a legal proceeding that is inconsistent with a claim taken
by that party in a previous proceeding.” New Hampshire v. Maine,
532 U.S. 742, 749 (2001) (quoting 18 MOORE’S FEDERAL PRACTICE § 134.30
(3d ed. 2000)); see also 18 C. Wright, A Miller, & E. Cooper,
FEDERAL PRACTICE AND PROCEDURE § 4477 (1981) (“Absent any good
explanation, a party should not be allowed to gain an advantage by
litigation on one theory, and then seek an inconsistent advantage
by pursing an incompatible theory.”). The purpose of the doctrine
of judicial estoppel is “to protect the integrity of the judicial
process, by prohibiting parties from deliberately changing
positions according to the exigencies of the moment.” New
Hampshire, 532 U.S. at 749-50 (citations omitted).
“Courts have observed that ‘[t]he circumstances under
which judicial estoppel may appropriately be invoked are probably
not reducible to any general formulation of principle.’” New
Hampshire, 532 U.S. at 750 (alteration in original) (quoting Allen
v. Zurich Ins. Co., 667 F.2d 1162, 1166 (4th Cir. 1982)). In
determining whether to apply the doctrine of judicial estoppel,
courts consider three factors: (1) that “a party’s later position
must be clearly inconsistent with its earlier position;” (2) that
“the party has succeeded in persuading a court to accept that
party’s earlier position, so that judicial acceptance of an
inconsistent position in a later proceeding would create the
perception that either the first or the second court was misled;”
and (3) that “the party seeking to assert an inconsistent position
would derive an unfair advantage or impose an unfair detriment on
the opposing party if not estopped.” Id. at 750 (citations
omitted).
“[T]he application of the judicial estoppel doctrine
depends heavily on the ‘specific factual context[]’ before the
court.” Adelphia Recovery Tr. v. Goldman Sachs & Co., 748 F.3d
110, 116 (2d Cir. 2014) (quoting New Hampshire, 531 U.S. at 751.
While previous positions can be “facially inconsistent, [the
Second Circuit has] emphasized the need to ‘carefully consider the
contexts in which apparently contradictory statements are made to
determine if there is, in fact, direct and irreconcilable
contradiction.’” United States v. Apple, Inc., 791 F.3d 290, 337
(2d Cir. 2015) (quoting Rodal v. Anesthesia Grp. of Onondaga, P.C.,
369 F.3d 113, 119 (2d Cir. 2004)) (“[C]ontext is particularly
important.”).
C. Likelihood of Confusion
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) (citing Polaroid, 287 F.2d at 495). The
“evaluation of the Polaroid factors in not a mechanical process
where the party with the greatest number of factors weighing in
its favor wins. Rather, a court should focus on the ultimate
question of whether consumers are likely to be confused.” Tiffany
& Co. v. Costco Wholesale Corp., 971 F.3d 74, 85 (2d Cir. 2020)
(quoting Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d
Cir. 2000)). “[T]he Polaroid test . . . is a fact-intensive
inquiry that depends greatly on the particulars of each case.”
Kelly-Brown v. Winfrey, 717 F.3d 295, 307 (2d Cir. 2013)).
II. Discussion
A. Allegedly Inconsistent Arguments Regarding the
Likelihood of Confusion
Plaintiff’s asserts that “[i]n this case, while
[Defendant] vehemently argues [that] the Polaroid factors militate
against a finding of . . . confusion,” Defendant’s “arguments are
inconsistent with and . . . at odds with those it made and
succeeded upon” in the Unrelated Cases. (Support Memo at 10.)
Plaintiff’s judicial estoppel request is threefold: (1) that
Defendant should be “[j]udicially [e]stopped from [c]laiming
[that] the [parties’] [m]arks are [d]issimilar”; (2) that
Defendant should be judicially estopped from “[a]rguing [a]gainst
the [p]roximity of the [parties’] [p]roducts and [s]ervices; and
(3) that Defendant should be judicially estopped from “[a]rguing
that [c]ustomer [c]onfusion is [u]nlikely.” (Id. at 10-14.)
1. Similarity in Trademarks
Plaintiff first contends that, here, Defendant “argues
that, primarily due to the different typefaces used, the marks
give distinct commercial impressions.” (Id. at 11.) Plaintiff
emphasizes that, in the Unrelated Cases, Defendant successfully
argued that the marks in those cases “were ‘confusingly similar’
to [Defendant’s] mark and this argument was adopted by the courts.”
(Id.) Plaintiff contends that “this Court can easily conclude
that [Defendant’s] mark is more similar to Plaintiff’s mark than
it is/was to the marks of [the] other entities” in the Unrelated
Cases. (Id. at 12.) Defendant argues that since “none of the
marks and logos in the Unrelated Cases [were] identical to
[Plaintiff’s] Asserted Name . . . none of [Defendant’s] statements
in those cases concerning similarity is a direct and irreconcilable
contradiction.” (Opp’n at 5 (citation omitted).)
The similarity of trademarks is a fact-specific inquiry,
and requires analysis of “the mark’s overall impression on a
consumer, considering the context in which the marks are displayed
and the ‘totality of factors that could cause confusion among
prospective purchasers.’” Louis Vuitton Malletier v. Dooney &
Bourke, Inc., 454 F.3d 108, 117 (2d Cir. 2006) (quoting Louis
Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426
F.3d 532, 537 (2d Cir. 2005)). These marks must be considered in
the fact-specific context in which they are presented to customers.
See Kelly-Brown, 717 F.3d at 307.
Here, the Court agrees with Defendant that to judicially
estop it from arguing that the parties’ marks are dissimilar it
would have to find as a matter of law that Defendant position is
a direct and irreconcilable contradiction to what it argued
previously. In reviewing the various marks presented in the
Unrelated Cases and in the present case, the Court notes that they
vary in design, font, and color, and none is identical to
Plaintiff’s mark. Consequently, Defendant is not estopped from
arguing in this case that the parties’ marks are dissimilar.
2. The Proximity of the Products and Services
i. Geographic Proximity
Plaintiff highlights next that in one of the previous
Unrelated Cases, Defendant successfully argued that a store
“located approximately thirty (30) miles from [Defendant’s] store”
would likely “cause confusion among consumers between the parties’
stores.” (Support Memo at 12.) Plaintiff contends that, because
of this argument, Defendant “should be estopped from arguing that
its Farmingdale store, which is a mere 11 miles from [Plaintiff’s]
Syosset store and 14 miles from [Plaintiff’s] Rockville Center
store, is sufficiently remote not to cause confusion.” (Id.)
Defendant counters that “proper analysis of proximity demands
consideration of [different] shopping environments” and that
“[n]one of the parties in the [Unrelated Cases] [were], like
[Plaintiff], an interior-design showroom that offered primarily
design services and was willing to order ‘higher-end’ products for
its customers.” (Opp’n at 6.) Consequently, Defendant contends
that its “statements in those cases concerning proximity of goods
and services between [Defendant] and those unrelated third parties
do no constitute a direct and irreconcilable contradiction.” (Id.
at 6-7 (citation omitted).)
Proximity of the parties’ goods and services is a highly
fact-intensive inquiry. See Kelly-Brown, 717 F.3d at 307.
“Geographic proximity looks to the geographic separation of the
products.” Brennan’s, Inc. v. Brennan’s Rest, LLC., 360 F.3d 125,
134 (2d Cir. 2004). Geographic proximity, like market proximity,
“seek[s] to determine whether the two products have an overlapping
client base that creates a potential for confusion.” Id.
Here, the parties dispute whether any of the stores in
the Unrelated Cases were similarly situated to Plaintiff, that is,
Defendant argues that none of the parties in the Unrelated Cases
were “interior-design showroom[s]” offering “primarily design
services,” while Plaintiff contends it has evidence to the
contrary. Notwithstanding the parties’ dispute, because of the
fact-intensive inquiry required under Polaroid, at this stage, the
Court will not judicially estop Defendant from arguing that the
geographic proximity of the parties’ respective stores is distant
enough to avoid confusion.
ii. Market Proximity
Plaintiff next states that Defendant “argues that it is
unlike [Plaintiff] because while it is a ‘large warehouse-style
store,’ Plaintiff . . . is ‘by contrast, a small interior-design
company.’” (Support Memo at 12.) Plaintiff contends that the
Unrelated Cases demonstrate that Defendant “continually shift[s]
[the] description of its business to fit its needs.” (Id.) For
example, Plaintiff emphasizes that “when suing ‘retail flooring-
products stores,’ [Defendant] describe[s] itself as ‘retail stores
featuring flooring materials and related home-improvement
accessories.’” (Id.) Similarly, when suing stores that describe
their business as providing granite countertop or wood and
porcelain flooring, Defendant changes its description to include
those products as part of its business offerings. (Id. at 12-13.)
Plaintiff notes that “[o]nly as a defendant, where it attempts to
distance itself from the senior user (like [the present] action),
does [Defendant] describe itself as a ‘large, warehouse-style
store,’ or ‘big box store.’” (Id. at 13.) Plaintiff avers that
because Plaintiff’s “business easily fits within the market
description [Defendant] described in the foregoing cases”
Defendant “should be estopped from arguing its products and
[Plaintiff’s] products are not in related areas of commerce.”
(Id.) Defendant counters that Defendant’s “descriptions of its
stores and products in Unrelated Cases and this case . . . do not
present a direct and irreconcilable contradiction” since all of
its self-descriptions “contain the same elements,” that is, that
Defendant “is a retail store that sells flooring and related
products, occasionally with different example products and sub-
categories listed.” (Opp’n at 7.) Defendant contends that the
“addition of the word ‘warehouse’ to its self-descriptions in this
case does not render it inconsistent with any of its other self-
descriptions,” and instead “[i]t is simply an additional detail
concerning the size of its retail stores.” (Id. at 7-8.)
Market proximity is an inquiry into whether the parties
are in related areas of commerce. Brennan’s, 360 F.3d at 134.
Like geographic proximity, the relevant inquiry is whether the
“two products have an overlapping client base that creates a
potential for confusion.” Id.
In reviewing the descriptions provided by Defendant in
the instant case and in the Unrelated Cases, the Court finds no
direct, irreconcilable contradiction that would warrant imposition
of judicial estoppel. Instead, the Court agrees with Defendant in
that Defendant has consistently described itself as a retail store
that sells a variety of flooring and related products. Since the
Polaroid factors are an inherently factual inquiry, elaborating on
its description when necessary to outline the various products it
sells or the size of its store in comparison to other parties seems
entirely appropriate when necessary based on the facts of the case.
3. Customer Confusion
Finally, Plaintiff argues that, in the Unrelated Cases,
Defendant successfully argued that trade names similar to
Plaintiffs, signage less similar to Plaintiff’s, and business
identical to Plaintiff’s, would likely cause customer confusion.
(Support Memo at 13.) For these reasons, Plaintiff contends that
Defendant should be “estopped from arguing that consumer
confusion” between the parties is unlikely. (Id. at 14.)
Defendant highlights that Plaintiff “fails to address the issue of
unfair advantage” in this arm of its motion and that Plaintiff
“has no genuine interest in [Defendant’s] statements in the prior
Unrelated Cases and . . . has not relied upon them in this
litigation to its detriment.” (Opp’n at 9.) Plaintiff addresses
this argument in its Reply, arguing that Defendant has “caused the
permanent closure of four other businesses based upon its argument
that the marks under which those businesses operated, along with
the proximity of the goods and services offered, would cause
consumer confusion that would irreparably harm [Defendant].”
(Reply at 4-5.) Plaintiff contends that here, Defendant seeks an
unfair advantage in that it intends to make directly irreconcilable
arguments to those made in the prior cases “and hopes the jury
accepts” these arguments. (Id. at 5.)
Here, for substantially the same reasons articulated by
Judge Hurley in his previous denial of Plaintiff’s motion, the
Court finds that given the fact-intensive inquiry required under
the Polaroid factors, it would be inappropriate in this case to
judicially estop Defendant from making relevant arguments in this
case based upon the unique facts of this case.3 Similarly, the
3 To the extent that Plaintiff argues that Judge Hurley’s ruling is not helpful
because this case will be heard by a jury, (see Support Memo at 1; Reply at 1),
Plaintiff offers no caselaw as to why this should weigh in its favor with regard
to imposing judicial estoppel. The Court, in disregarding this argument,
restricts its analysis to the elements of judicial estoppel articulated above.
Court is unconvinced by Plaintiff’s arguments that Defendant has
made direct, irreconcilable statements in the Unrelated Cases.
B. Plaintiff’s Request to Present Evidence from the Prior
Litigations
The Court reserves decision on whether Plaintiff may
offer evidence from the prior litigations at trial. The Court
will be in a better position to consider the relevance of such
evidence at trial, as well as whether it would violate any of the
tenets articulated in Rule 403.
CONCLUSION
For the stated reasons, IT IS HEREBY ORDERED that the
Defendant’s Motion in limine (ECF No. 197) based on Judicial
Estoppel is DENIED.
SO ORDERED.
/s/ JOANNA SEYBERT______
Joanna Seybert, U.S.D.J.
Dated: April 10, 2023
Central Islip, New York
The Court notes further that Judge Hurley primarily based his decision to deny
Plaintiff’s original motion on the fact specific inquiry required under the
Polaroid factors.