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:

RVC Floor Decor, Ltd. (“Plaintiff”) brought this action

against Floor and Decor Outlets of America, Inc. (“Defendant”) for

violations of the Lanham Act, New York state common law, and New

York General Business Law. (See generally Complaint, ECF No. 1.)1

This case initially proceeded as a jury trial; however,

on April 18, 2023, after dismissing Plaintiff’s New York common

law unfair competition claim as a matter of law, this Court granted

Defendant’s Motion to Strike the Jury since the Court found that

the only remaining remedy which Plaintiff sought--an accounting of

profits under the Lanham Act--was an equitable remedy which did

not create a jury-trial right.2 (Reconsideration Order, at 22-24.)

This Memorandum, Decision, and Order contains the findings of fact

and conclusions of law required by Federal Rule of Civil Procedure

1 Plaintiff’s New York General Business Law § 349 claim was

dismissed during summary judgment by then-presiding Judge Hurley.

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

F. Supp. 3d 305, 332 (E.D.N.Y. 2021). Judge Hurley reasoned

Plaintiff’s § 349 claim should be dismissed because, inter alia,

Plaintiff implicitly conceded its case did not involve evidence of

actual injury. Id. at 322. Additionally, Judge Hurley precluded

Plaintiff from seeking compensatory damages as part of its Lanham

Act claim. Id. at 332.

Similarly, at the close of Plaintiff’s case, upon reconsideration,

this Court granted in part and denied in part Defendant’s Motion

for Judgment as a Matter of Law and dismissed both Plaintiff’s New

York common law unfair competition claim and its claim for punitive

damages pursuant to same. (See Apr. 26, 2023 Mem. & Order, ECF

No. 258, in toto (hereafter the “Reconsideration Order”).) The

Court reasoned, in sum, Plaintiff had not introduced sufficient

evidence of bad faith to sustain its New York common law unfair

competition claim. (Id. at 8-16.)

2 See also supra n.1.

52(a)(1)3 as to Plaintiff’s remaining claims, to wit: (1) trademark

infringement and unfair competition in violation of § 43(a) of the

Lanham Act; and (2) violations of New York General Business Law

§ 360-l. After carefully considering the evidence introduced at

trial, the arguments of counsel, and the controlling law on the

issues presented, the Court finds in favor of Defendant on all

remaining counts.

FINDINGS OF FACT4

Based on the evidence presented, the Court makes the

following findings of fact. They are drawn from witnesses’

testimony at trial, and the parties’ trial exhibits.

3 Rule 52(a)(1) provides:

In an action tried on the facts without a jury

or with an advisory jury, the court must find

the facts specially and state its conclusions

of law separately. The findings and

conclusions may be stated on the record after

the close of the evidence or may appear in an

opinion or a memorandum of decision filed by

the court.

FED. R. CIV. P. 52(a)(1).

4 To the extent any of the findings of fact may be deemed

conclusions of law, they shall also be considered

conclusions. Likewise, to the extent any of the conclusions

of law may be deemed findings of fact, they shall be

considered findings. See Miller v. Fenton, 474 U.S. 104,

113–14 (1985) (noting the difficulty, at times, of

distinguishing findings of fact from conclusions of law).

I. General Background: Plaintiff

A. Plaintiff’s Corporate Name and its Asserted Mark

Plaintiff is a New York corporation, incorporated on

October 4, 1974, with its principal place of business in Rockville

Centre, New York. (Tr. 178:24-179:1, 482:12-22.) Glenn Altarac

(“Altarac”) is the current, sole, owner of Plaintiff.

(Id. 178:20-23.) Robert Smith (“Smith”) was one of Plaintiff’s

original founders and owned fifty percent of the company.

(Id. 113:15-114:2.) Smith sold his interest in Plaintiff sometime

in 2000. (Id.)

Plaintiff’s corporate name is RVC Floor Decor, Ltd.

(Id. 178:13-14.) Nevertheless, Plaintiff asserts from its

inception to present it has operated under the name “Floor Decor”

(the “Asserted Name”) within the geographic region of Nassau,

Suffolk, Kings, and Queens County (the “Four-County Area”).

(Id. 116:11-22; 117:11-19; 185:25-186:6; 482:25-483:1.) Plaintiff

added “RVC” to its corporate name on the advice of its attorney,

who advised it “would be easier for [Plaintiff] to get the name

that [it] wanted”, i.e., “Floor Decor”, if it included “RVC”.

(Id. 117:13-19; 149:23-150:4.) Plaintiff included the words

“Floor Decor” in its name because it accurately “described the

[products] that [Plaintiff was] going to be selling.”

(Id. 150:5-7.) In formulating its corporate name, it was

understood by Smith that “somebody might [already] have” the name

“Floor Decor”. (Id. 117:20-118:1.) From its inception to present,

Plaintiff has neither applied to register the Asserted Name with

the United States Patent & Trademark Office, nor applied to

register it at the state level. (Id. 150:12-19; 346:20-347:12.)

Notwithstanding Plaintiff’s corporate name, when

operating the business, Smith, Altarac, and Plaintiff’s employees

have consistently referred to Plaintiff as “Floor Decor.”

(Id. 118:4-9; 182:23-25; 222:20-22; 417:2-17.) Nevertheless,

historically, Plaintiff has been inconsistent with its

presentation of the Asserted Name in various advertisements, and

online. (See PX017; PX019; DX1005; DX1006-DX1009; DX1018; see

also infra–Part I.D.)

B. Plaintiff’s Business Operations, Generally

In 1984, Plaintiff relocated to its present location at

456 Sunrise Highway, Rockville Centre (the “Rockville Location”).

(Tr. 121:15-20; 183:1-14; 482:23-24.) During this period, the

Rockville Location was approximately 11,500 square feet to which

6,000 square feet was allocated to warehousing, 2,000 square feet

was allocated to storage and fabrication of rugs, and the remainder

was allocated to the showroom. (Id. 135:6-16.) In the late 1980s

this was increased to approximately 13,500 square feet.

(Id. 183:12-19.)

The Rockville Location is approximately 3,000 feet from

the Long Island Railroad and Plaintiff has generated business from

commuters who saw the Rockville Location whilst commuting through

Rockville Centre. (Id. 137:10-139:13.) The Mayor of Rockville

Centre may have attended the grand opening of the Rockville

Location. (Id. 139:20-22.)

The Rockville Location features an exterior sign on the

fascia of the building which displays the Asserted Name alongside

the words: “carpet, tile, rugs”, in lowercase, font.

(Id. 136:3-16; 137:4-9; see also PX049.) Historically, the text

font of letters in Plaintiff’s sign was colored white.

(Id. 163:5-19.) Additionally, Plaintiff’s exterior sign includes

a stylized “fd” logo to the left of the Asserted Name. (PX049;

see also Tr. 155:4-12.) Plaintiff used variations of the “fd”

logo in certain of Plaintiff’s advertisements throughout this

period. (Compare e.g., PX006 with PX007; see also

Tr. 155:4-156:16.) In other advertisements, Plaintiff omitted the

“fd” logo entirely and instead presented a design in which the

Asserted Name was displayed at a right angle on the upper left-

hand side of the advertisement. (See PX007.) Notwithstanding

these design choices, Plaintiff’s advertisements from 1974-1996

consistently referred to Plaintiff by the Asserted Name.

Today, the exterior sign is largely similar; however,

the lettering on the sign is colored red.

(Tr. 163:5-21; 184:7-25.) Further, sometime in 2014, in

conjunction with Plaintiff’s plans to open a new store in Syosset,

Plaintiff added “& Design” to its name and adopted a new “FD&D”

logo which was affixed to Plaintiff’s exterior sign above the

entrance of the Rockville Location.5 (Id. 377:18-378:5; see also

PX049.) The “FD&D” logo became Plaintiff’s main logo from 2014

onwards and featured on all its subsequent advertising. (Id.; see

also DX1020.)

C. Plaintiff’s Target Customers and Asserted Market

At inception, Plaintiff sold “carpet, vinyl tile,

linoleum, wood floors and ceramic.” (Id. 116:23-117:1.) From

1975-1980, 75 to 80 percent of Plaintiff’s business consisted of

“mostly carpet, vinyl, tile, wood flooring and ceramic, in that

order.” (Id. 122:13-19.) Upon moving to the Rockville Location,

almost immediately, Plaintiff began selling decorative products in

addition to those products identified above. (Id. 121:15-122:5.)

Advertisements from the 2010s confirm Plaintiff’s contemporary

product offerings remain consistent with those offered in the past.

(See, e.g., DX 1009 (stating Plaintiff offers “the largest

selection of carpet, hardwood, ceramic, laminate and vinyl

flooring” and customers can “[v]isit

[the] . . . showroom . . . for all of [their] flooring, kitchen,

5 By referring to itself as “Floor Decor & Design”, Plaintiff

intended to eliminate concerns the Asserted Name, standing alone,

would not properly inform customers about the range of design

products Plaintiff intended to offer at its new Syosset store

location. (Tr. 223:15-226:1.)

bath, and interior design needs”); see also DX 1046 (stating, in

addition to those categories of products previously identified,

Plaintiff also offers “Fabrics Trim and Wall Covering

Draperies . . . Window Treatments[,] Custom

upholstery . . . Vinyl Sliding Windows[,] Roofing[,] General

Contracting[,] Interior and Exterior Painting[,] Custom Built

Cabinetry Kitchens and Bathrooms” and provides installation

services which are performed by Plaintiff’s “own craftsman”).)

Historically, Plaintiff’s customer base has extended

from Nassau County into Brooklyn, Queens, and Suffolk County.

(Tr. 133:16-24.) Plaintiff’s company policy is to have its

employees personally show customers around its showroom and to

discuss design options with them. (Id. 436:3-20.) The amount of

time Plaintiff’s employees will spend with any client varies;

however, some clients can spend up to two or three hours at

Plaintiff’s store. (Id. 435:8-436:2.) Generally, even clients

engaging in small projects will spend thousands of dollars with

Plaintiff. (Id. 438:5-14.)

Since 1996, Plaintiff has served approximately 18,000

customers. (Id. 283:8-10.) As much as 70 to 80 percent of

Plaintiff’s business consists of satisfied, repeat customers, and

referrals. (Id. 420:3-421:12; 437:13-16; see also PX115 (“Korner

Tr.”) 11:4-7; PX116 (“Lepkoff Tr.”) 7:18-24; 22:25-23:3; PX156

(“Venier Tr.”) 8:11-24; 20:12-18; 27:14-28:3.)

D. Plaintiff’s Advertising Efforts and Gross Sales Revenue

From 1975-1980, Plaintiff’s advertising budget was

approximately $10,000 to $12,000 per year; Plaintiff “tried to

keep [the advertising budget] to a minimum” because of the expense.

(Tr. 128:14-20.) The parties dispute whether Plaintiff’s

advertising was continuous in nature. What cannot be disputed is

that throughout 1974-1980, Plaintiff’s advertising campaign was

limited to small, local newspapers, including Pennysaver and the

Yellow Pages; Plaintiff’s advertising was targeted at the South

Shore of Long Island and into Suffolk County. (Id. 124:14-25;

125:5-8.) During this time Plaintiff advertised itself using the

Asserted Name. (Id. 125:23-25.) As to sales, Smith testified

Plaintiff’s first year sales in 1974 were approximately $500,000;

this figure later rose in 1978 to an estimated $1 million.6

(Id. 119:12-14; 126:4-10.)

Around 1982, Plaintiff began advertising in Newsday.

(Id. 126:24-127:18.) Likewise, Plaintiff utilized various other

forms of print media including pamphlets, direct brochures, and

6 Plaintiff’s historical sales numbers were wholly based upon

Smith’s recollection. Consequently, the Court accepts these

numbers with trepidation, and affords them less credence than it

would have had Plaintiff substantiated Smith’s estimations with

documentary evidence. (See id. 153:21-154:6.)

mailings to former customers. (Id. 127:19-128:7.) Sales in 1982

were estimated to be $1.5 million; this figure increased to $2

million in 1984. (Id. 126:4-10.)

Smith testified that, in the 1990s, Plaintiff’s

advertising budget was approximately $100,000.7

(Id. 139:25-140:5.) Around 1990, Plaintiff entered a business

relationship with Karastan Carpets (“Karastan”).

(Id. 142:20-143:13.) Subsequently, Plaintiff’s advertising budget

increased to approximately $125,000 per year. (Id. 144:13-17.)

To advertise its association with Karastan, Plaintiff began

prominently featuring the Karastan logo in some of its

advertisements. (Id. 154:19-22.) Throughout this period, Newsday

remained Plaintiff’s main source of advertisement (id. 140:3-9;

144:2-5), but Plaintiff did advertise “on TV at some point”,

including Channel 12 and some cable channels. (Id. 140:3-9.)

However, between 2000 and July of 2015, Plaintiff engaged in no

television advertising. (Id. 383:5-9.) Likewise, Plaintiff ran

a very limited amount of radio advertisement due to difficulty

tracking its effectiveness and the cost. (Id. 153:7-20.) While

Plaintiff did run some limited radio advertisement between

7 Smith’s estimations of Plaintiff’s historical advertising

budgets, like his estimations as to its historical sales volumes,

were based entirely upon his recollection. Plaintiff did not

introduce documentary evidence substantiating these figures. (See

id. 152:2-5.)

2012-2013, this was the total extent of Plaintiff’s radio

advertisement during the relevant period. (Id. 383:10-24.)8

Sometime in the 1990s, Plaintiff entered a business

relationship with Carpet One. (Id. 144:21-24.) Carpet One is a

membership buying group. (Id. 144:25-145:8.) Plaintiff’s

membership in Carpet One provided it with “advantages that other

stores” did not have, including, inter alia, rebates on products

Plaintiff purchased, and help from Carpet One in developing

advertisements. (Id. 145:9-18.) Plaintiff continued to operate

under the Asserted Name notwithstanding its membership in Carpet

One. (Id. 146:10-17.) Nevertheless, beginning in 1996, Plaintiff

began to include Carpet One’s brand-name “in a smaller font or

logo” on some of Plaintiff’s advertisements. (Id. 146:15-21;

159:3-163:4.) In exchange, Plaintiff received “a greater level of

reimbursement from Carpet One for the ad[vertisement].”

(Id. 162:5-163:4.) Additionally, Plaintiff began running

advertisements in which Carpet One’s brand-name was featured “more

centrally, such as including their name after [Plaintiff’s] in the

title of the ad[vertisement]”. (Id.; see also id. 159:13-19; PX019

(2011 advertisement which Smith agreed was demonstrative of what

he meant when he testified Plaintiff ran advertisements featuring

8 Plaintiff’s 2020 radio advertisement campaign is irrelevant

considering the secondary meaning cutoff date of July 2015.

“Carpet One” centrally with the Asserted Name).) Smith estimated

that by 1990, Plaintiff’s sales had risen to $3 million and peaked

at $3.8 million in 1995. (Id. 126:14-20.)

From 1996-2001, Altarac testified Plaintiff’s sales

remained above $3 million, grossing between approximately $3.1

million and $3.5 million. (Id. 284:24-285:1.)

On February 20, 1997, Plaintiff was featured in the “RVC

News Owl” in recognition of various donations of carpet it had

made to a local senior living project. (Id. 130:7-131:8; see also

PX027.)

From 1996-2011, Plaintiff’s advertising budget was

estimated to be consistently above $100,000. (Id. 284:24-286:13.)

From 2001-2002, Plaintiff began advertising in the Long Island

section of the New York Times, which covered the Four-County Area,

using the Asserted Name. (Id. 200:11-21.) Plaintiff discontinued

advertising in the New York Times shortly thereafter because the

expense was not worth the return on investment. (Id. 200:22-201:4;

384:2-15.)

Regarding online advertising, Plaintiff did not maintain

its own internet domain name as of 2004; however, during this time

Carpet One developed a website for Plaintiff with the URL:

www.CarpetOne.com/FloorDecor. (Id. 208:2-15; see also PX013.) A

later domain name, developed in 2012 for Plaintiff by Carpet One,

identified Plaintiff’s website as floordecorrockvillecentre.com.

(Id. 220:5-15; 359:12-361:6; see also DX1005.) This later

iteration of Plaintiff’s website referred to Plaintiff as “Floor

Decor Carpet One Floor & Home®” and referred to Altarac as the

owner of same. (DX1005.)9

As of July 2015, Plaintiff did not maintain any social

media accounts. (Tr. 381:22-382:8.) Likewise, prior to July 2015,

Plaintiff did not run any paid advertisements on Google.

(Id. 384:19-25.)

From 2012 onwards, Plaintiff’s advertising expenditures

and gross sales revenues are each substantiated by accounting

records. (Id. 385:3-10.) These records reveal that Plaintiff’s

advertising budgets from 2012-2015 were considerably lower than

those historical budgets estimated to by Smith. For example, in

2012, Plaintiff’s advertising expenditures were $56,381 (see id.

385:24-386:11; see also DX1037 at 58); this figure fell modestly

in 2013 to $48,037 (see id. 386:18-387:1; see also DX1037 at 50),

before falling precipitously to $23,497 in 2014 (see id. 387:4-9;

9 Record evidence further establishes that many of Plaintiff’s own

suppliers refer to Plaintiff on their websites as “RVC Floor Decor”

and that third-party listings, likewise, refer to Plaintiff using

names other than the Asserted Name. (See DX1010, DX1014-DX1017;

Tr. 372:14-375:2.)

see also DX1037 at 42.) In 2015, Plaintiff spent $44,654 on

advertising expenditures. (Id. 387:19-25; DX1037 at 34.)10

As to sales revenue, Plaintiff’s accounting records show

Plaintiff grossed: (1) $2,002,450 in 2012; (2) $2,573,759 in 2013;

(3) $2,072,294 in 2014; (4) $2,206,660 in 2015; (5) $2,793,872 in

2016; (6) $2,392,584 in 2017; and (7) $2,530,070 in 2018. (See

DX1037, in toto.)

II. General Background: Defendant

A. Defendant Owns a Registered Trademark For its Floor &

Decor Mark

Defendant is a Delaware corporation with its principal

place of business in Atlanta, Georgia. (Tr. 483:2-4.) Defendant

adopted its Floor & Decor mark (hereafter, Defendant’s “Mark”) in

2003 and applied to register same with the United States Patent

and Trademarks Office the same year. (Id. 663:19-23.) Defendant’s

Mark was first registered on June 13, 2006, under U.S. Registration

Number 3,102,586. (Id. 664:8-19; see also DX1100 at 2.)11

10 While Altarac disbelieved Plaintiff’s advertising expenditures

could be this low, the Court notes these accounting records were

prepared by Plaintiff’s own accountant. (Tr. 387:12-18.)

Moreover, Altarac’s admission he does not even review Plaintiff’s

financial records renders all his testimony as to Plaintiff’s

financials incredible. (See id. 408:16-409:12.)

11 Defendant’s application for protection of its “Floor & Decor”

name was registered on July 4, 2006, under U.S. Registration Number

3,110,827. (See DX1100 at 12.) Both the June 2006, and July 2006

applications were filed July 14, 2003. (Id.)

Defendant’s Mark covers “retail store services featuring flooring

materials and related home improvements [and] accessories.”

(DX1100 at 2.) Defendant was unaware of Plaintiff’s existence at

the time it adopted its Mark. (Tr. 662:12-16.) Plaintiff never

objected to any of Defendant’s applications or registrations.

(Id. 664:16-25.)

B. Defendant’s General Business Operations

Defendant’s brand proposition is “top quality floors at

everyday low prices.” (Id. 660:6-10.) Defendant maintains it

holds the “largest in stock position in the marketplace.” (Id.)

Defendant does not offer carpet or rugs but instead sells

hard surface flooring, to wit: “tile, wood, [and] stone.”

(Id. 660:14-17.) Similarly, Defendant does not offer furniture,

upholstery, window treatments, wall coverings, custom kitchens,

custom bathrooms, vinyl siding, windows, roofing, general

contracting, or painting. (Id. 746:5-748:13; 750:5-751:21.)

Defendant offers only limited design services such as helping

customers “make decisions on . . . matching color.”

(Id. 746:22-747:4.)

Defendant opened its Farmingdale store in November 2018.

(Id. 483:8-9.) Defendant’s Farmingdale store is approximately

80,000 square feet; this is typical of Defendant’s stores

nationwide, which, on average, measure 75,000 square feet.

(Id. 691:23-692:5; 734:19–735:3.) Customers entering the

Farmingdale store are confronted with multiple cash registers,

“high ceilings, bright lights, a lot of product, [and] a lot of

displays.” (Id. 735:18-23.) Customers purchasing product from

one of Defendant’s stores can take the product home that day. (Id.

663:9-15.)

Since 2009, Defendant has maintained a retail website

which is accessible to residents of Long Island.

(Id. 671:18-672:4; see also DX1130.) Members of the public

accessing Defendant’s website can shop, purchase product, and have

goods shipped directly to them. (Id. 666:20-669:24; see also

DX 1103.) Between January 1, 2014, and December 31, 2017, prior

to launching its Farmingdale Store, 38,436 users in the Four-County

Area visited Defendant’s website. (DX1130.) This traffic

culminated in 435 transactions, which generated $109,091.80 in

revenue for Defendant. (Id.)

C. Defendant’s Target Customer Base

Defendant’s customer base consists predominantly of

professional contractors (“Pros”) and homeowners.

(Tr. 713:25-714:4.) Defendant estimates Pros comprise 85 percent

of its business, either directly or through their client

homeowners, with only “15 percent of [Defendant’s] business

being . . . customer[s] who buy[] and install[]” Defendant’s

products themselves. (Id. 714:7-16.) Defendant holds Pro-only

events and sends out teams to meet local Pros before the grand

openings of its stores. (Id. 741:15-25.) Defendant provides Pros

with private parking, and a separate entrance, as well as a

“Pro-Desk”, and dedicated “Pro Services” to help Pros manage and

grow their businesses. (Id. 739:8-740:6.) To avoid competing

with Pros, Defendant does not personally provide installation

services; however, Defendant does offer opportunities for

customers to connect with third-party installers. (Id. 709:16-18;

709:22-710:16.)

As to average revenue per customer, Defendant estimated

each Pro, individually, spends approximately “$20,000 plus

annually” at Defendant’s stores. (Id. 740:18-20.) Comparatively,

non-Pro customers, on average, spend approximately $5,000 per

project with Defendant. (Id. 742:24-743:2.) Customers typically

conduct research for approximately six months before making a

flooring purchase with Defendant. (Id. 742:9-22.) Before a

customer makes a purchase, Defendant expects the customer to shop

around at competitor stores and make multiple visits to Defendant.

(Id.) Defendant posits customers predominantly choose to purchase

from Defendant because of the quality and pricing of its products.

(Id. 743:6-10.) None of Defendant’s customers have affirmatively

stated the strength of Defendant’s name motivated their purchase;

Defendant speculates this is because flooring customers do not

shop by brand. (Id. 743:11-23.)

D. Defendant’s Advertising and Marketing Channels

Defendant advertises through “traditional channels”

including “TV, radio, print, [and on] Billboard[s]” and various

digital channels like “Google search, banner ads . . . [s]ocial

media” and “email.” (Id. 666:2-15.)

Further, Defendant bids on approximately 8,000 keywords

as part of its Google Adwords campaign, including the search term

“Floor Decor”. (Id. 699:5-23.) Defendant bids on the term “Floor

Decor” nationally, not simply in the Long Island market. (Id.)

Defendant continued to bid on the “Floor Decor” ad term through

2018-2023. (Id. 700:2-701:8; 708:3-709:1.) Defendant does not

purchase or bid on negative keywords. (Id. 706:20-23.)

E. Entrance into the Four-County Area

In 2012, Defendant became aware of Plaintiff’s existence

when Defendant’s attorney, Paul Owens (“Owens”), prepared a list

of potential competitors that included “Floor Decor” in their name.

(Id. 680:3-681:10.) Despite this awareness, when Defendant opened

its Farmingdale Location it did not contact Plaintiff to alert it

of the opening. (Id. 291:5-20; 681:24-682:4.)

Wendy Martin (“Martin”) is Defendant’s Chief Marketing

Officer. (Id. 659:19-660:2.) Martin explained Defendant was not

worried about causing potential confusion when it opened its

Farmingdale Location because of the difference in the parties’

brand propositions (id. 717:7-19). Likewise, Martin stated

Defendant did not foresee any public confusion between the

Defendant’s Mark and Plaintiff’s Asserted Name because Defendant

owned a registered trademark for its Mark, had consistently used

it on its website since 2009, and had been advertising using the

Mark in the marketplace for several years prior to the grand

opening of the Farmingdale Location. (Id. 690:5-12.)

Martin estimated Defendant invested approximately $3.5

million in advertising ahead of the opening of its Farmingdale

Location. (Id. 678:5-8.) From July 2015 to the end of 2017,

Defendant spent approximately $1.1 million on radio advertisement.

(Id. 675:20-22.)

After deducting the reasonable and undisputed costs and

expenses incurred in connection with the sale of products and

services, Defendant has made approximately $10.9 million in

profits from sales at its Long Island stores. (See Id. 771:5-17;

774:1-5; see also DX1135.)

III. The Findings of Dr. Neal’s Secondary Meaning Survey

Dr. David Neal (“Neal”) is a qualified expert with

extensive experience in consumer psychology and the design of

surveys, including in the context of trademark litigation.

(Id. 484:23-486:12; see also DX 1111.) As part of its rebuttal

case, Defendant offered Neal as an expert witness to opine about

the results of two surveys he had conducted in December 2018 and

January 2019, the key takeaway of which was that only three percent

of the relevant consuming public in the Four-County Area identified

the Asserted Name with a single company. (Id. 488:9-489:3.)

Neal testified his survey methodology was “conservative”

and that he “err[ed] on the side of what would be logically

beneficial to [Plaintiff].” (Id. 493:23-501:25; 521:15-522:3.)

In designing his survey, Neal utilized a large panel company,

“Survey Sampling International” (“SSI”), to find a representative

sample of 900 residents from the Four-County Area who had purchased

the kinds of products sold by Plaintiff in the past two years, or

would, in the next two years, be in the market for those types of

products. (Id. 490:23-496:7.) SSI paid the participants of Neal’s

survey a small sum in points which could be exchanged for products

or money. (Id. 544:22-545:4.)

Potential respondents were asked a series of screening

questions to ensure their suitability for the survey.

(Id. 531:5-17; see also DX 1112, DX1113.) Qualified respondents

were shown the Asserted Name and a control cell, each presented in

the same typeface and red coloring as that emblazoned on the

exterior sign of Plaintiff’s Rockville Location.

(Id. 497:12-498:6; 518:12-20; see also DX 1112, DX1113.)

Qualified respondents were then asked questions to assess whether

they associated the Asserted Name with: (1) one company; or

(2) more than one company. (DX1112, DX1113.) Likewise, qualified

respondents were asked whether they associated the Asserted Name

with a particular company, or particular companies. (Id.) Both

questions also allowed qualified respondents to respond, “I don’t

know”, to either question. (Id.)

Neal conceded, notwithstanding his survey results, that

he did not have data on consumers’ perceptions as to secondary

meaning as of July 2015; further, Neal acknowledged he could not

opine as to whether the Asserted Name had attained secondary

meaning at any time between 1975-2006. (Tr. 570:4-574:21.)

IV. Plaintiff’s “Likelihood of Confusion” Evidence

A. Geographic Proximity

Defendant’s Farmingdale store is approximately 14 miles

from Plaintiff’s Rockville Location; the Farmingdale Location was

approximately 8.2 miles from Plaintiff’s Syosset Location.

(Id. 320:15-321:17; 324:12-18.) Since the launch of its

Farmingdale Store, Defendant has opened several other locations in

the Four-County Area including: (1) Garden City (in March 2021);

(2) Commack; and (3) Bohemia. (Id.) From the Rockville Location,

Defendant’s: Garden City store is approximately 6.2 miles away;

Commack store is an estimated 27 miles away; and, Bohemia store is

around 34 miles from said Location. (Id.)

B. Consumer Confusion

1. Craig Cosgrove

Craig Cosgrove (“Cosgrove”) is presently the store

manager at Plaintiff’s Rockville Location. (Id. 416:11-14.) At

the time of trial, Cosgrove had worked for Plaintiff for almost

three years. (Id. 416:15-16.) Cosgrove’s duties as store manager

include serving and greeting clients. (Id. 418:7-16.) Cosgrove

has known Altarac his whole life having “gr[own] up with [him].”

(Id. 416:7-10.) Cosgrove testified he has never heard Plaintiff’s

business referred to by any name other than the Asserted Name.

(Id. 417:2-17.)

Cosgrove’s first recounted instance of consumer

confusion involved his roommate “Alicia.” (Id. 421:13-422:7.)

Cosgrove testified he became aware Alicia had installed new

flooring in her upstairs apartment and, when he inquired as to

where she had purchased it, Alicia responded, “I bought it from

[Plaintiff’s] store in Farmingdale.” (Id.) Alicia only knew

Cosgrove worked at a company called “Floor Decor”. (Id.) Cosgrove

subsequently explained to her that Plaintiff did not own the

Farmingdale store. (Id.)

Next, Cosgrove recalled working with a client he

referred to as “Jaime from Massapequa” (“Jamie”). Cosgrove spent

many hours assisting Jaime in finding bathroom tile at the

Rockville Location. (Id. 423:3-424:15.) Jaime later left the

Rockville Location and returned with a sample tile she had

purchased from Defendant’s Farmingdale store, which she believed

was owned by Plaintiff. (Id. 428:11-20; 431:6-16.) Jamie was

attempting to match the tile she purchased at Defendant’s

Farmingdale store with the samples she had initially viewed at

Plaintiff’s Rockville Location. (Id. 428:4-20.) Jaime told

Cosgrove she intended on “return[ing] it and buy[ing] it from

[Cosgrove], so that [he] could get credit”. (Id.) Cosgrove

informed Jamie that the Farmingdale Location was not associated

with Plaintiff’s store. (Id. 431:17-22.)

Cosgrove could not recount any other specific instances

of confusion, but testified generally that he had to deal often

with situations in which customers informed him that they purchased

products from, what they believed to be, Plaintiff’s “other store

in Farmingdale”. (Id. 445:17-446:3.) Specifically, Cosgrove

testified:

I can’t even tell you how many times I lend

the samples out. Client disappears. I call

them. Where are my samples? Oh, I’ll bring

them back. They come back in like a drive-by,

the shadiest thing. They come in. They wait

‘til like no one is there to drop it at the

counter and try to escape out the door.

Always, like, hey. How did it work out? Oh,

I got tiles somewhere else. Where else? Oh,

your other location.

I have heard it plenty of times. People think

that that’s our location -- we have other

locations. . . . It actually blows my mind the

loyalty that people have to our stores,

because people are not loyal anymore. . . . We

have such loyal clients[.]

(Id. 432:25-433:25.) Cosgrove estimated that for every ten people

he helped, approximately two to four customers, after Cosgrove

followed up with them, would respond thusly. (Id. 434:15-24.)

2. Lauren Korner

Lauren Korner (“Korner”) is a resident of Port

Washington, New York, who grew up in Rockville Centre. (See Korner

Tr. 8:13-9:2.) Korner learned of Plaintiff through her parents’

recommendation. (Id. 11:4-7.) Korner first became aware of

Defendant sometime in October 2018 when she was driving with her

husband on Route 110 and saw the Farmingdale store.

(Id. 19:14-24.) Korner testified Defendant’s name “rang a bell

from [her] parents’ conversation”, that she thought the

Farmingdale store “must be the place” and so she spontaneously

opted to visit Defendant’s store. (Id.) Korner purchased

approximately $1,300 of vinyl flooring from Defendant when she

made this initial visit. (Id. 27:12-21.) The flooring purchased

from Defendant was installed sometime in December. (Id. 28:2-7.)

Korner subsequently returned to Defendant’s Farmingdale store to

purchase carpet but, when she learned Defendant does not sell

carpet, she realized Plaintiff and Defendant were not affiliated

stores. (Id. 30:14-18.) Later, in January 2019, while at her

parents’ house, Korner informed her parents of her experience at

Defendant’s store, including her failed attempt to purchase

carpet. (Id. 24:5-23.) Korner’s parents then guided, and

accompanied, Korner to Plaintiff’s Rockville Location.

(Id. 24:5-23.)

At her deposition, Korner testified, while the two

stores did not look similar, she experienced confusion because she

had no context for what Plaintiff’s store was meant to look like,

that her parents had just recommended “Floor Decor”, and that it

was those two words which stuck in her mind. (Id. 39:9-22.)

3. Wendy Lepkoff

Wendy Lepkoff (“Lepkoff”) is an interior designer who

has resided on Long Island for more than 40 years. (Lepkoff Tr.

5:4-23.) Lepkoff’s customers are in Nassau and Suffolk County,

with an emphasis on Nassau County. (Id. 6:4-14.) During those

40-plus years, Lepkoff has been familiar with Plaintiff and has

made purchases from Plaintiff for both her personal use and

business use. (Id. 8:14-17; 11:10-16; 27:8-19.) Lepkoff learned

of Plaintiff from her neighbors. (Id. 7:14-24.) Lepkoff only

refers to Plaintiff’s business using the Asserted Name.

(Id. 18:6-16.) Lepkoff was unaware of any instances in which

clients she referred to Plaintiff ended up at Defendant’s stores.

(Id. 29:10-20.)

4. Mary Venier

Mary Venier (“Venier”) is a resident of Syosset.

(Venier Tr. 5:13-19.) Venier has known of Plaintiff for more than

38 years and has been a repeat customer during this time span.

(Id. 8:6-24.) Venier has repeatedly hired Plaintiff to do work at

her place of business, purchased several of Plaintiff’s products,

and has consistently referred people to Plaintiff, including

personal and professional referrals. (Id. 8:11-9:15; 20:12-21:9.)

When making these referrals, Venier refers to Plaintiff using the

Asserted Name. (Id. 20:12-15.)

V. Plaintiff’s Evidence of “Blurring”

Altarac testified to several purported instances of

“blurring” including the receipt of multiple reviews from

Defendant’s customers, not meant for Plaintiff, on Google and/or

Yelp which mentioned Defendant’s Farmingdale store and/or

products. (Id. 787:17-788:9; 792:20-793:8.) Similarly, Altarac

testified to instances in which Defendant’s employees, or former

disgruntled employees, left negative reviews on websites

associated with Plaintiff, rather than with Defendant.

(Id. 788:10-23.) Altarac also recounted an instance in which a

job applicant initially applied to Plaintiff’s store for part-time

work, who later told Altarac she “went to [Plaintiff’s] Garden

City store and [was] working there now.” (Id. 788:24-789:18.)

Finally, Altarac generally testified to instances in

which Defendant’s call centers would send Defendant’s customers

into Plaintiff’s store to pick up merchandise they had purchased

from Defendant. (Id. 789:19-790:8.) Further, on two occasions,

Plaintiff’s customers mistakenly ended up on Defendant’s website

and were confused into believing that Plaintiff no longer sold

carpet. (Id. 790:9-791:6.)

CONCLUSIONS OF LAW

I. Violation of § 43(a) of the Lanham Act

“Section 43(a) of the Lanham Act ‘protect[s] an

unregistered trademark[] . . . against infringement.’” RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 316 (quoting Genesee Brewing Co.,

Inc. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997)). To

prevail under Section 43(a) on a trademark infringement claim, “a

plaintiff must show, first, that he or she has a valid mark that

is entitled to protection, and, second, that the defendant’s

actions are likely to cause confusion as to the origin or

sponsorship of the defendant’s goods.” LVL XIII Brands, Inc. v.

Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 649 (S.D.N.Y.

2016); see also Gruner + Jahr USA Publ’g., a Div. of Gruner + Jahr

Printing and Publ’g. Co. v. Meredith Corp., 991 F.2d 1072, 1074

(2d Cir. 1993) (“[T]o succeed in a Lanham Act suit for trademark

infringement, a plaintiff has two obstacles to overcome: the

plaintiff must prove that its mark is entitled to protection and,

even more important, that the defendant’s use of its own mark will

likely cause confusion with plaintiff’s mark.”).

An unregistered mark merits protection under the Lanham

Act only where it “would qualify for registration as a trademark”.

Star Indus. v. Bacardi & Co. Ltd., 412 F.3d 373, 381 (2d Cir.

2005). A mark qualifies for registration as a trademark if it

“either (1) is inherently distinctive or (2) has acquired

distinctiveness through secondary meaning”. Two Pesos, Inc. v.

Taco Cabana, Inc., 505 U.S. 763, 769 (1992) (emphasis in original).

The Court previously found, and Plaintiff conceded, that

Plaintiff’s mark is not inherently distinctive. See RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 316 (“Plaintiff concedes its mark

is not inherently distinctive.”); (see also Tr. 150:5-7 (Smith

testifying that Plaintiff chose the name Floor Decor because it

“described the stuff that [Plaintiff was] going to be selling”)).

Nevertheless, “if a mark is not inherently distinctive, it may

‘acquire’ distinctiveness by achieving ‘secondary meaning’ among

the relevant consumer market.” LVL XIII Brands, Inc., 209 F. Supp.

3d at 649-50 (citing Two Pesos, 505 U.S. at 769).

A mark acquires “secondary meaning” when, “in the minds

of the public, the primary significance of a product

feature . . . is to identify the source of the product rather than

the product itself.” Christian Louboutin S.A. v. Yves Saint

Laurent Am. Holdings, Inc., 696 F.3d 206, 216 (2d Cir. 2012)

(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851

n.11 (1982)). “The crucial question in a case involving secondary

meaning always is whether the public is moved in any degree to buy

an article because of its source.” Easy Spirit, LLC v. Skechers

U.S.A., Inc., 515 F. Supp. 3d 47, 61 (S.D.N.Y. 2021) (quoting

Genesee Brewing Co., 124 F.3d at 143 n.4). The Second Circuit has

articulated six non-exclusive factors that are relevant in

determining secondary meaning; they are: “(1) advertising

expenditures, (2) consumer studies linking the mark to a source,

(3) unsolicited media coverage of the product, (4) sales success,

(5) attempts to plagiarize the mark, and, (6) length and

exclusivity of the mark's use.” Christian Louboutin S.A., 696

F.3d at 226 (quoting Genesee Brewing Co., 124 F.3d at 143 n.4).

“No single factor is determinative, and every element need not be

proved.” RVC Floor Decor, Ltd., 527 F. Supp. 3d at 317 (quoting

Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir.

1985)).

“[P]roof of secondary meaning entails vigorous

evidentiary requirements.” Easy Spirit, LLC, 515 F. Supp. 3d at

61 (quoting Thompson Med. Co., 753 F.2d at 217 (alteration in

original)). “[P]laintiff bears the burden of proving that [its]

mark acquired secondary meaning by the time the allegedly

infringing product came on the market.” LVL XIII Brands, Inc.,

209 F. Supp. 3d at 654 (citing Thompson Med. Co., 753 F.2d at 217);

see also Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037,

1043 (2d Cir. 1980) (“[Plaintiff] could not successfully rely upon

secondary meaning if [defendant] obtained a mark established prior

to the earliest time when [plaintiff’s] mark could have acquired

secondary meaning.”). The time by which Plaintiff must have

established secondary meaning was previously determined by Judge

Hurley to be July 2015.12 See RVC Floor Decor, Ltd., 527 F. Supp.

3d at 317 (“Plaintiff’s mark must have achieved secondary meaning

by July 2015.”).

Having considered the record evidence and for the

reasons articulated herein, the Court concludes Plaintiff’s

Asserted Name, i.e., “Floor Decor”, has not achieved Secondary

Meaning in the Four-County Area and, thus, is not entitled to

protection under the Lanham Act.

A. Plaintiff Has Not Proven that its Predominantly Local,

Low-Budget, Advertising Was Effective in Reaching its

Target Audience

“Advertising expenditures are regarded as ‘indirect

evidence of the possible effect that advertising may have on

consumers’ association of the [trademark] with the source of the

product.’” Capri Sun GmbH v. Am. Beverage Corp., 595 F. Supp. 3d

83, 150 (S.D.N.Y. 2022) (quoting LVL XIII Brands, Inc., 209 F.

Supp. 3d at 654-55). “When considering advertising expenditures,

12 Notwithstanding Judge Hurley’s previous determination of this

issue, Defendant argues that Plaintiff should be required to prove

that its name attained secondary meaning “on the date [Defendant]

entered the Four-County Area.” (See Def. Proposed Findings &

Conclusions of Law, ECF No. 259, at 11-12.) Effectively, Defendant

argues Plaintiff should not be permitted to establish historical

secondary meaning without also establishing such historical

secondary meaning persisted until July 2015. Since the Court finds

Plaintiff has not established the Asserted Name achieved Secondary

Meaning at any time, it need not resolve this issue.

‘[c]ourt[s] should consider not only the total amount . . . but

also whether the plaintiff’s advertising specifically directed

consumers to the mark as an indication of source.’” RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 319 (quoting LVL XIII Brands, Inc.,

209 F. Supp. 3d at 655); see also Jewish Sephardic Yellow Pages,

Ltd. v. DAG Media, Inc., 478 F. Supp. 2d 340, 371 (E.D.N.Y. 2007)

(“[M]erely showing that a certain amount was spent on advertising

provides little support for secondary meaning. It must be shown

that there was promotion of the mark as an identifier for the

product.”). Indeed, “targeted albeit low-cost advertising may

establish this factor, but only if the plaintiff can show that it

was successful in reaching the targeted audience.” Easy Spirit,

LLC, 515 F Supp. 3d at 62 (quoting LVL XIII Brands, Inc., 209 F.

Supp. 3d at 655); see also Jewish Sephardic Yellow Pages, Ltd.,

478 F. Supp. 2d at 345 (“[P]laintiff has not submitted any concrete

evidence showing that these efforts succeeded in reaching the

Jewish phonebook users who are plaintiff’s target audience.”).

As an initial matter, the Court finds the

unsubstantiated modest, historical sums Plaintiff contends it

spent on advertising, from 1974-2000, are insufficient to support

a finding of secondary meaning, especially in the absence of some

demonstration that Plaintiff’s advertising was effective in

reaching the target audience. See LVL XIII Brands, Inc., 209 F.

Supp. 3d at 655 (finding $82,000 spent in a single year on

marketing and promotion was insufficient to support secondary

meaning). This conclusion is buttressed by the Court finding that,

while Smith testified Plaintiff’s advertising expenditures

exceeded $100,000 every year from approximately 1990-2000,

documentation from 2012-2015 highlighting Plaintiff spent

significantly less in advertising expenditure, thereby rendering

Smith’s estimated figures of suspect value.13

Of greater significance, Plaintiff adduced no evidence

at trial regarding the effect its advertising efforts had on

consumers’ perceptions of the Asserted Name during the relevant

time period. In fact, the record evidence establishes Plaintiff’s

advertising outreach was ineffective in reaching its target

audience. For example, Smith, a resident of Suffolk County, who

became a customer of Plaintiff’s after retiring, admitted on

cross-examination he had never seen any of Plaintiff’s

advertisements run from 2005 through 2011. (See Tr. 164:20-165:12;

169:6-18; 170:3-14.) Similarly, McVeigh, Defendant’s Farmingdale

store manager, testified, notwithstanding having resided on Long

Island for approximately 35 years and having held positions in the

flooring industry his entire career, he had never seen any of

Plaintiff’s advertisements. (Id. 745:7-9.) Moreover, much of the

13 Smith’s testimony on Plaintiff’s historical advertising figures

carries little persuasion because they were unsubstantiated with

documentary evidence.

testimony of Plaintiff’s own witnesses emphasized the importance

of repeat customers and referrals to Plaintiff’s business model.

Significantly, none of these customer witnesses testified they

became customers of Plaintiff because they had seen one of its

advertisements.

Finally, the evidence shows Plaintiff has been

inconsistent in its presentation of the Asserted Name post-1996,

when it began including the Carpet One brand name on certain of

its advertisements.14 Plaintiff did not establish which percentage

of its advertisements bore only the Asserted Name versus those

which bore the Asserted Name alongside Carpet One’s branding; given

this void, it is reasonable to conclude the effectiveness of

Plaintiff’s advertising on the consumers’ perception of the

Asserted Name was limited. See Grout Shield Distrib., LLC v. Elio

E. Salvo, Inc., 824 F. Supp. 2d 389, 412 (E.D.N.Y. 2011) (finding

where plaintiff sold goods under several different marks, it was

not clear how much was actually spent on the mark at issue, and,

as such, plaintiff’s advertising expenditures did not weigh in

favor of finding secondary meaning); see also Jewish Sephardic

Yellow Pages, Ltd., 478 F. Supp. 2d at 345 (“[M]any of the

marketing efforts undertaken by plaintiff . . . did not

exclusively showcase the [Asserted Name]. Rather, these materials

14 This is also true as to the post-2014 advertisements bearing the

Floor Decor and Design, “FD&D”, mark.

display the [Asserted Name] alongside and sometimes less

prominently than [plaintiff’s] other identifying marks.”).

For the foregoing reasons the Court concludes this

factor weighs against finding secondary meaning.

B. The Neal Survey Establishes Plaintiff’s Mark Has Not

Achieved Secondary Meaning in the Four-County Area

“While consumer surveys are ‘not necessary to establish

secondary meaning,’ they offer ‘the most direct and persuasive

evidence of secondary meaning.’” Easy Spirit, LLC, 515 F. Supp.

3d at 63 (first quoting MZ Wallace Inc. v. Fuller, No. 18-CV-2265,

2018 WL 6715489, at *11 (S.D.N.Y. Dec. 20, 2018); then quoting

Lopez v. Gap, Inc., 883 F. Supp. 2d 400, 426 (S.D.N.Y. 2012)); see

also RVC Floor Decor, Ltd., 527 F. Supp. 3d at 319 (“[C]onsumer

surveys are the most persuasive evidence of secondary meaning”.

(quoting LVL XIII Brands, Inc., 209 F. Supp. 3d at 638-39)).

Indeed, “the ultimate determination of whether a particular

trademark . . . has acquired secondary meaning remains an

‘empirical question of consumer association.’” LVL XIII Brands,

Inc., 209 F. Supp. 3d at 639 (quoting Two Pesos, Inc., 505 U.S. at

770-71). “In the Second Circuit, survey data showing 50 percent

or greater recognition has generally been required to establish

secondary meaning.” Jackpocket, Inc. v. Lottomatrix NY LLC,

No. 22-CV-5772, 2022 WL 17733156, at *39 (S.D.N.Y. Dec. 7, 2022)

(citing Empresa Cubana del Tabaco v. Culbro Corp., No. 97-CV-8399,

2004 WL 602295, at *36 (S.D.N.Y. Mar. 26, 2004) (collecting cases),

aff’d in part, rev’d in part on other grounds, 399 F.3d 462 (2d

Cir. 2005)); see also id. (finding survey results showing 14.9

percent awareness of plaintiff’s asserted mark was “far below what

would be necessary to establish acquired meaning”).

The Neal Survey concluded that a mere 3 percent of the

relevant consuming public associate the Asserted Name with

Plaintiff. Of note, Neal’s findings were unrebutted by Plaintiff

who presented no counter survey evidence of its own, despite the

importance of this factor as part of the secondary meaning

analysis. While Plaintiff argues the Court should consider this

factor neutral due to various “deficiencies” in the Neal Survey,

the Court finds Neal’s Survey to be, on the whole, fairly designed.

Cf. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 350

(S.D.N.Y. 1998) (“While this Court is well aware that the results

from secondary meaning surveys are open to criticisms from party

opponents . . . such studies are helpful tools in assessing

secondary meaning.”). Likewise, the Court finds Neal was credible

and highly qualified to opine on this issue.

Recognizing the Neal Survey “does not have any

relevan[ce] to a secondary meaning determination as of 1975, 1980,

1990, 2000, 2003, 2005 or . . . 2006”, the Court, nonetheless,

concludes the Survey does provide relevant evidence, i.e., that

from approximately 2016, whatever percentage of consumer

recognition Plaintiff’s Asserted Name may have accumulated at some

indeterminate point in the past had since faded to almost nothing.15

This is significant regarding the issue of establishing secondary

meaning. See Capri Sun GmbH, 595 F. Supp. 3d at 153 (disregarding

historical consumer surveys conducted between February 1983 and

June 1984 where cut-off date to establish secondary meaning was

November 2017 because “[c]onsumer association may fade over time,

when one generation of consumers has given way to another”); J.T.

Colby & Co., Inc. v. Apple Inc., No. 11-CV-4060, 2013 WL 1903883,

15 Further, as highlighted by Neal on cross-examination, because

Neal’s survey included both a two-year-forward-looking and a two-

year-backward-looking window, even if the Survey had been

conducted in 2015--before Plaintiff initiated this case--utilizing

the same parameters and methodology, such hypothetical, earlier,

study would result in certain overlap with respondents eligible to

take the hypothetical study and the December 2018 study--the study

Neal actually conducted. Indeed, a portion of the hypothetical

respondents taking a hypothetical 2015 survey, who intended on

purchasing the type of products sold by Plaintiff two years in the

future--and who did so--could have qualified as participants in

Neal’s December 2018 survey, since they would have been part of

the group that purchased the relevant products two years

previously. (Tr. 573:9-574:5.) Consequently, the Neal Survey

does have relevance regarding the potential state of affairs as of

July 2015.

In any event, and as highlighted above, any deficiencies in the

survey’s methodology simply go to the weight of the evidence. Even

if the Court were to afford minimal evidentiary weight to the

Survey, Plaintiff’s failure to present any contrary survey

evidence means this factor would still weigh in Defendant’s favor.

Cf. LVL XIII Brands, Inc., 209 F. Supp. 3d at 657-58 (acknowledging

plaintiff’s argument that survey evidence measured secondary

meaning from the wrong point in time as having “merit”, but

highlighting this deficiency merely went to the weight of the

evidence before finding this factor favored defendant).

at *11 (S.D.N.Y. May 8, 2013) (“Just as secondary meaning can be

built-up over time, it can also diminish over time. That which

the market has learned can be unlearned.”) (citing Landers, Fray

& Clark v. Univ. Cooler Corp., 85 F.2d 46, 48 (2d Cir. 1936)).

Consequently, this factor weighs in Defendant’s favor.

C. The Single Instance of Unsolicited Media Coverage in the

Record is De Minimis and Fails to Support a Finding of

Secondary Meaning

“Precedent holds ‘extensive, unsolicited media coverage

of a product is a strong indication that a mark has obtained

secondary meaning.’” RVC Floor Decor, Ltd., 527 F. Supp. 3d at

320 (quoting Tri-Star Pictures 14 F. Supp. 2d at 350).

Here, the Court finds the single instance of unsolicited

media coverage in the record, namely Plaintiff’s coverage in the

RVC Owl in 1984, is de minimis and far too temporally attenuated

to support a finding of secondary meaning. Accord Jewish Sephardic

Yellow Pages, Ltd., 478 F. Supp. 2d at 374 (finding evidence of a

single instance of unsolicited media coverage insufficient and,

consequently, this “weigh[ed] against a finding of secondary

meaning”).

D. Plaintiff’s Sales Figures Are Unreliable and Lack

Context

“The sales success of a product ‘may be indicative of

whether or not a substantial portion of the purchasing public

associates the [mark] with the source of the goods.’” RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 320 (quoting Tri-Star Pictures, 14

F. Supp. 2d at 351). “In assessing sales success, courts have

considered sales volume, market share, whether sales grew over

time, whether sales data was broken down by year, and whether sales

data was convincingly linked to the mark-bearing product”. Focus

Prods. Grp. Int’l, LLC v. Kartri Sales Co., Inc., 647 F. Supp. 3d

145, 213-14 (S.D.N.Y. 2022) (internal citations omitted).

As an initial matter and like Plaintiff’s historical

advertising figures, the Court emphasizes the historical revenue

figures Smith testified to at trial were entirely unsubstantiated

with documentary evidence.16 Further, Smith conceded,

notwithstanding he was asked to opine as to sales figures from

16 This lack of documentary evidence diminishes any persuasive

value Smith’s testimony could offer, especially considering

Smith’s testimony that such records apparently existed at the time

he left the Company in early 2000. (Tr. 154:3-6.) Cf. Chum Ltd.

v. Lisowski, 198 F. Supp. 2d 530, 535 (S.D.N.Y. 2002) (finding the

lack of “hard numbers in the record” to substantiate plaintiff’s

revenue figures “glaring” where plaintiff “undoubtedly ha[d] such

numbers at its fingertips”).

Likewise, the Court rejects Plaintiff’s attempts to bolster

Smith’s testimony by emphasizing the testimony was credible and

uncontradicted. The mere fact Smith’s testimony was unrebutted

has no bearing upon whether it was credible. Cf. Latin Am. Music

Co., Inc. v. Spanish Broad. Sys., Inc., 232 F. Supp. 3d 384, 390

(S.D.N.Y. 2017) (stating the Second Circuit has held “that a

district court is not obligated to accept the truth of trial

testimony from an ‘interested’ witness merely because the

testimony is ‘uncontradicted, unimpeached by anything appearing in

the record, and not inherently improbable’” (quoting Broad. Music

v. Havana Madrid Rest. Corp., 175 F.2d 77, 79-81 (2d Cir. 1949))).

decades previous, he had not looked at Plaintiff’s financials in

approximately 23 years. (Tr. 149:17-22.) These considerations

seriously denigrate the evidentiary value of Smith’s testimony,

which the Court finds unpersuasive on this matter.

Furthermore, Plaintiff failed to place its sales figures

into context; for example, the record evidence neither shows

Plaintiff’s market share in the Four-County Area, nor does it frame

Plaintiff’s “sales success” with reference to similarly situated

competitors. Therefore, Plaintiff’s level of historical “sales

success” is unclear. See EBIN N.Y. Inc. v. SIC Enter., Inc., No.

19-CV-1017, 2023 WL 6141275, at * 9 (E.D.N.Y. Sept. 20, 2023) (“Raw

sales figures need to be put into context to have any meaning.

That is, if a company says that its sales of goods or services

under the mark are $x, that number cannot be said to be

‘impressive’ or ‘persuasive’ evidence of secondary meaning without

knowing how $x compares with the norms of that industry.” (quoting

2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

§ 15:49 (5th Ed. 2023))); Nulux, Inc. v. Ramirez, No. 01-CV-3023,

2008 WL 11411300, at *7 (E.D.N.Y. Oct. 31, 2008) (“Evidence

defining the size of the market and the plaintiff’s share of that

market bolsters raw sales figures by providing the context out of

which the figures are derived.”); BigStar Ent., Inc. v. Next Big

Star, Inc., 105 F. Supp. 2d 185, 203 (S.D.N.Y. 2000) (“[T]here is

no documentary support in the record regarding plaintiff’s market

share, sales volume or the number of visitors to its

website . . . all important considerations in relation to sales

success.”).

Further, and as previously highlighted, post-1996,

Plaintiff began featuring Carpet One branding prominently

alongside the Asserted Name in an indeterminate number of its

advertisements. Consequently, for all Plaintiff’s sales revenues

post-1996, substantiated or unsubstantiated, the Court cannot

conclusively determine the true volume of sales that are

attributable solely to the Asserted Name. Cf. Erchonia Corp. v.

Bissoon, 410 F. App’x 416, 418 (2d Cir. 2011) (“These non-itemized

sales and advertising figures are insufficient to raise a triable

issue of fact because Erchonia’s laser has been known by different

names at different times, so none of these data convey any

information about consumers’ relationship with the ‘lipolaser’

mark.”).

To the extent there is documentary evidence in the record

establishing that for the years 2012-2018 Plaintiff has

consistently grossed more than $2 million in revenue each year,

such evidence would ordinarily support a finding of secondary

meaning. See, e.g., Easy Spirit, LLC, 515 F. Supp. 3d at 65

(describing sale of 396,090 units of product which “likely

reflect[ed] millions-of-dollars in sales revenue” a “not

insignificant” sum for purposes of determining sales success in

the context of secondary meaning analysis); R.F.M.A.S., Inc. v.

Mimi So, 619 F. Supp. 2d 39, 81 (S.D.N.Y. 2009) (stating $4 million

in sales was indicative of secondary meaning); Metrokane, Inc. v.

The Wine Enthusiast, 160 F. Supp. 2d 633, 640 (S.D.N.Y. 2001)

(describing $3 million in sales as “indisputable sales success”).

However, like Plaintiff’s historical figures which fail to

differentiate between revenue attributable solely to the Asserted

Name versus to the “Floor Decor Carpet One” branding, the gross

sales receipts for the years 2014 through 2018 do not separate out

the percentage of sales which are attributable solely to the

Asserted Name versus those attributable to Plaintiff’s Floor Decor

& Design “FD&D” mark, which, by Plaintiff’s own admission, became

its main logo post-2014.

Additionally, the record evidence establishes

Plaintiff’s sales revenues actually represent a low total volume

of sales since: (1) Plaintiff has only served approximately 18,000

paying customers in the Four-County Area since 1996; and (2) a

large percentage of Plaintiff’s customer base is comprised of

repeat customers. See Audemars Piguet Holding S.A. v. Swiss Watch

Int’l, Inc., 46 F. Supp. 3d 255, 277 (S.D.N.Y. 2014) (stating

despite “high” sales revenues totaling $167 million, the number of

units sold in the United States “each year hovers around 3,000”,

and that this “low volume favors Defendants”).

In view of the foregoing, the Court concludes the Sales

Success factor does not support a finding of secondary meaning.

E. There is No Evidence of Any Attempts by Third-Parties to

Plagiarize Plaintiff’s Mark

“Evidence that a mark has been widely copied is

persuasive evidence of secondary meaning because it demonstrates

that the mark has become a ‘strong source identifier in the eyes

of the purchasing public.’” LVL XIII Brands, Inc., 209 F. Supp.

3d at 660 (quoting Lopez, 883 F. Supp. 2d at 428). “The key

question is ‘whether the copying was done deliberately, so as to

benefit from [the plaintiff’s] name and good will.’” Id. (quoting

Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp.

2d 217, 243 (S.D.N.Y. 2004) (alteration in original)).

Defendant highlights Plaintiff failed to adduce any

evidence of intentional copying or plagiarism of its Asserted Name

at trial and contends Plaintiff’s failure in this regard cautions

against finding secondary meaning. The Court agrees. See Bobcar

Media, LLC v. Aardvark Event Logistics, Inc., 554 F. Supp. 3d 606,

619 (S.D.N.Y. 2020) (“Here, [plaintiff] presents no evidence of

any third-party copying. That alone may be enough for this factor

to weigh against [plaintiff].”) (citing Metrokane, Inc., 160 F.

Supp. 2d at 637); Nulux, Inc., 2008 WL 11411300, at *7 (“[T]he

absence of previous instances of plagiarism by third parties weighs

against a finding of secondary meaning.”). To the extent Plaintiff

adduced evidence it had sent a cease-and-desist letter to a company

in the Hamptons that was using the Asserted Name (see

Tr. 400:8-25), “this alone falls short of demonstrating that [the]

business[] [was] intentionally copying or plagiarizing”

Plaintiff’s Asserted Name. Kelly-Brown v. Winfrey, 95 F. Supp. 3d

350, 359 n.6 (S.D.N.Y. 2016), aff’d, 659 F. App’x 55 (2d Cir.

2016).

F. The Length and Exclusivity of Use Factor Weighs in

Plaintiff’s Favor

While “‘there is no magic time span that confers

secondary meaning’ . . . ‘the longer and more exclusive the trade

use, the more likely it is that a mark has acquired secondary

meaning’”. Rockland Exposition, Inc. v. All. of Auto. Serv.

Providers of N.J., 894 F. Supp. 2d 288, 322-23 (S.D.N.Y. 2012)

(first quoting Jewish Sephardic Yellow Pages, Ltd., 478 F. Supp.

2d at 346; then quoting BigStar Ent., Inc. 105 F. Supp. 2d at 203).

Generally, “[c]ourts often point to five years of exclusive use of

a mark as evidence of secondary meaning.” RVC Floor Decor, Ltd.,

527 F. Supp. 3d at 318 (alteration in original) (quoting Hello I

Am Elliot, Inc. v. Sine, No. 19-CV-6905, 2020 WL 3619505, at *10

(S.D.N.Y. July 2, 2020)). However, “whatever the length of use by

one party, use of part or all of a mark by third parties weakens

the mark’s strength and is a factor weighing against a finding of

exclusivity.” Rockland Exposition, Inc., 894 F. Supp. 2d at 323

(collecting cases).

The record evidence establishes that from 1974 until

approximately 1996, Plaintiff operated, and consistently marketed

itself under, the Asserted Name, notwithstanding that it did so

through various variations in design. Approximately twenty years

of continuous use of the Asserted Name certainly weighs in

Plaintiff’s favor. Nevertheless, the significance of this length

of time is tempered by Plaintiff’s unsubstantiated historical

sales record, and the limited effect of its advertising efforts.

Moreover, Plaintiff’s inclusion of the Carpet One brand name on an

indeterminate number of its advertisements from 1996-2014, and its

transition in 2014 to the Floor Decor & Design Mark, further

denigrates the level of significance the Court places on this

factor, since such inclusion may have stymied and/or weakened any

secondary meaning the Asserted Name may have had with the relevant

consuming public.17

In sum, the “Length & Exclusivity of Use” factor is the

only factor the Court finds weighs, though slightly, in Plaintiff’s

favor. Given the remainder of the relevant factors are neutral or

cut against Plaintiff, the Court concludes Plaintiff has not met

17 While there was evidence of potential third-party use of

Plaintiff’s Asserted Name (see Tr. 398:2-401:4), Defendant did not

fully develop this part of the record in a meaningful way; hence,

the Court attributes little weight to this evidence.

its burden in establishing its Asserted Name attained Secondary

Meaning by July 2015.

II. Even if Plaintiff’s Mark had Achieved Secondary Meaning,

Plaintiff Failed to Prove a Likelihood of Confusion

“To prevail in a trademark infringement action under the

Lanham Act, a plaintiff must prove, in addition to protectability

of the mark, ‘a probability of confusion, not a mere possibility,’

affecting ‘numerous ordinary prudent purchasers.’” Star Indus.,

Inc., 412 F.3d at 383 (quoting Gruner + Jahr, 991 F.2d at 1077);

see also Hamilton Int’l Ltd. v. Vortic LLC, 13 F.4th 264, 274 (2d

Cir. 2021) (“[I]mportantly, in a trademark infringement case, the

plaintiff bears the burden of proving a likelihood of consumer

confusion in the alleged infringer’s use of the mark.”). To

determine whether there is a likelihood of confusion, courts in

this Circuit “apply the eight-factor Polaroid balancing test

introduced by Judge Friendly in Polaroid Corp. v. Polarad

Electronics Corp., 287 F.2d 492 (2d Cir. 1961)” (the “Polaroid

Factors”). Id. at 384. The eight Polaroid Factors are:

(1) strength of the trademark; (2) similarity

of the marks; (3) proximity of the products

and their competitiveness with one another;

(4) evidence that the senior user may “bridge

the gap” by developing a product for sale in

the market of the alleged infringer’s product;

(5) evidence of actual consumer confusion;

(6) evidence that the imitative mark was

adopted in bad faith; (7) respective quality

of the products; and (8) sophistication of

consumers in the relevant market.

RVC Floor Decor, Ltd., 527 F. Supp. 3d at 323. “The ‘analysis is

not mechanical, but rather, focuses on the ultimate question of

whether, looking at the products in their totality, consumers are

likely to be confused.’” Id. (quoting Star Indus., Inc., 412 F.3d

at 384). In applying the Polaroid Factors, “[t]he proper approach

is to weigh each factor in the context of the others to determine

if, on balance, a likelihood of confusion exists.” W.W.W. Pharm.

Co., Inc. v. Gillette Co. 984 F.2d 567, 572 (2d Cir. 1993). “The

court ‘generally should not treat any single factor as dispositive;

nor should [it] treat the inquiry as a mechanical process by which

the party with the greatest number of factors wins.’” LVL XIII

Brands, Inc., 209 F. Supp. 3d at 667 (quoting Playtex Prods., Inc.

v. Ga.-Pacific Corp., 390 F.3d 158, 162 (2d Cir. 2004)). “Instead,

the court should focus on the ultimate question of whether

consumers are likely to be confused.” Id.

A. Strength of Mark

As highlighted above, Plaintiff has conceded its

Asserted Name is not inherently distinctive; consequently, it can

only be deemed worthy of trademark protection through the

acquisition of secondary meaning. The Court has already found

Plaintiff has not met its burden in proving the Asserted Name

achieved secondary meaning; thus, the Court concludes, this factor

“strongly militates against a finding of a likelihood of

confusion.” LVL XIII Brands, Inc., 209 F. Supp. 3d at 668.

B. Similarity of the Marks

“In assessing similarity, courts look to the overall

impression created by the [marks] and the context in which they

are found and consider the totality of factors that could cause

confusion among prospective purchasers.” Capri Sun GmbH, 595 F.

Supp. 3d at 162-63 (quoting Gruner + Jahr, 991 F.2d at 1078)

(alteration in original).

Judge Hurley previously determined, “[t]he marks at

issue—‘Floor Decor’ and ‘Floor & Decor’—are ‘strikingly similar,”

that they “possess[ed] a strong visual and phonetic resemblance

and . . . are almost identically named.’” RVC Floor Decor, Ltd.,

527 F. Supp. 3d at 323 (quoting Syntex Labs., Inc. v. Norwich

Pharmacal Co., 437 F.2d 566, 569 (2d Cir. 1971)); see also Reply

All Corp. v. Gimlet Media, LLC, 843 F. App’x 392, 396 (2d Cir.

2021) (observing “that using two identical words in sequence to

form a mark is ‘extremely unusual’ and therefore weighs in favor

of finding confusing similarity”). The record evidence did little

to change the Court’s view on this factor; consequently, the Court

adheres to Judge Hurley’s previous determination and concludes the

similarity factor weighs in favor of confusion.

C. Competitive Proximity

Competitive proximity examines both “market proximity”

and “geographic proximity.” See Guthrie Healthcare Sys. v.

ContextMedia, Inc., 826 F.3d 27, 39-40 (2d Cir. 2016). Market

proximity measures “‘whether and to what extent the two products

compete with each other,’ considering ‘the nature of the products

themselves and the structure of the relevant market.’” RVC Floor

Decor, Ltd., 527 F. Supp. 3d at 324 (first quoting Cadbury

Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996);

then quoting Vitarroz v. Borden, Inc., 644 F.2d 960, 967 (2d Cir.

1981)). Geographic proximity measures “the ‘geographic separation

of the products.’” Id. (quoting Brennan’s Inc. v. Brennan’s Rest.,

L.L.C., 360 F.3d 125, 134 (2d Cir. 2004)).18

While the parties’ catalog of products is not

coextensive, Judge Hurley previously found them to be in

competitive proximity since their products, generally, “serve the

same purpose [and] fall within the same general class.” Id.

(quoting W.W.W. Pharm. Co., Inc., 984 F.2d at 575) (alteration in

original). The Court agrees. While Defendant highlights the

parties’ target customers are diverse in that Plaintiff targets

homeowners and interior designers, whereas Defendant predominantly

targets “Pros”, the record evidence shows homeowners, whether

individually or through a Pro, do transact business at Defendant’s

18 The parties’ geographic proximity is undisputed since they

occupy the same geographic market, i.e., the Four-County Area.

See RVC Floor Decor, Ltd., 527 F. Supp. 3d at 324. Defendant does

not contend otherwise. (See Def. Proposed Findings of Fact and

Conclusions of Law, in toto.)

store; hence there is a certain degree of overlap in the parties’

customer base. Brennan’s Inc., 360 F.3d at 134 (stating

competitive proximity seeks “to determine whether the two products

have an overlapping client base that creates a potential for

confusion”). Accordingly, the Court concludes this Polaroid

Factor favors Plaintiff.

D. Bridging the Gap

“This factor inquires whether a plaintiff is likely to

enter defendant’s market, or ‘bridge the gap.’” Morningside Grp.

Ltd. v. Morningside Cap. Grp., L.L.C., 182 F.3d 133, 141 (2d Cir.

1999).

Since the Court finds Plaintiff and Defendant occupy the

same market (see supra-Part II.C.), this factor is neutral. See

Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir.

1998) (“The [fourth] factor—bridging the gap—is not relevant

because, in assessing this factor, we consider the likelihood that

the plaintiff will enter the market occupied by the defendant's

product to compete against the defendant. Since plaintiff and

defendants already occupy the same market of simplified, laminated

street maps, the gap has been bridged. In addition, this factor is

subsumed by one to be discussed in a moment, that is, the

competitive proximity of the products, and thus is not relevant as

an individual factor.” (internal citation omitted)).

E. Actual Customer Confusion

This factor concerns whether “there was confusion that

could lead to ‘a diversion of sales, damage to goodwill, or loss

of control over reputation.’” RVC Floor Decor, Ltd., 527 F. Supp.

3d at 325-26 (quoting Reply All Corp., 843 F. App’x at 397). While

evidence of actual consumer confusion “is not necessary to

establish a likelihood of confusion” it “can often provide highly

probative evidence of this likelihood.” Akiro LLC v. House of

Cheatham, Inc., 946 F. Supp. 2d 324, 336 (S.D.N.Y. 2013) (quoting

Henegan Const. Co., Inc v. Heneghan Contracting Corp.,

No. 00-CV-9077, 2002 WL 1300252, at *7 (S.D.N.Y. June 12, 2002));

see also Morningside Grp. Ltd., 182 F.3d at 141 (“Evidence that

confusion has actually occurred is of course convincing evidence

that confusion is likely to occur.”) Evidence of actual confusion

can be “anecdotal or survey-based.” RVC Floor Decor, Ltd., 527 F.

Supp. 3d at 325 (citing Paco Sport, Ltd. v. Paco Rabanne Parfums,

86 F. Supp. 2d 305, 319 (S.D.N.Y. 2000)).

The Court concludes this Polaroid Factor favors

Defendant. As an initial matter, Plaintiff presented no

survey-based evidence tending to establish actual confusion; this

is significant since “the absence of surveys is evidence that

actual confusion cannot be shown.” Reply All Corp., 843 F. App’x

at 397 (quoting The Sports Auth., Inc. v. Prime Hosp. Corp., 89

F.3d 955, 964 (2d Cir. 1996)). The evidence of confusion Plaintiff

did adduce was limited to a handful of anecdotal instances; this

strikes the Court as de minimis in light of the parties’ sales

histories. See Nora Beverages, Inc. v. Perrier Grp. Of Am., Inc.,

269 F.3d 114, 124 (2d Cir. 2001) (“[T]wo anecdotes of confusion

over the entire course of competition constituted de minimis

evidence.”);

As to Cosgrove’s anecdotal testimony that two to four

out of every ten customers exhibit confusion as to the ownership

of the Farmingdale Location, the Court finds it to be unpersuasive.

Indeed, record evidence is unclear as to whether these customers

were “confused” consumers, as opposed to consumers who knowingly

opted to purchase product elsewhere.19

Likewise, the Court affords Korner’s testimony little

evidentiary weight because Plaintiff failed to prove that, at the

point of confusion, Korner was aware of Plaintiff’s business,

products, or how its Asserted Name appeared to consumers in the

market. See, e.g., Therma-Scan, Inc. v. Thermoscan, Inc., 295

F.3d 623, 634 (6th Cir. 2002) (“[C]onfusion that . . . occurs

19 This conclusion is further based upon Cosgrove’s testimony that

he has been reprimanded for giving out samples to customers

because, when customers have samples, they can use said samples to

shop at other stores. While Cosgrove contends customers returning

Plaintiff’s samples told him they ended up purchasing product as

Plaintiff’s “other location”, that does not compel a conclusion of

confusion. It is as likely these customers were simply shopping

the competition and, when questioned, offered this as an excuse as

to why they did not follow through with Plaintiff.

among individuals who are not familiar with the products in

question is entitled to considerably less weight.” (citation

omitted)). As highlighted by Korner herself, she was unaware of

Defendant’s existence prior to seeing the Farmingdale store;

likewise, all she knew about Plaintiff was the name she had been

given by her parents and that it sold flooring; it was the name

that stuck when she saw Defendant’s store and mistook it for

Plaintiff’s. Therefore, Korner’s confusion had nothing to do with

how Defendant’s and Plaintiff’s marks were presented in the

marketplace.20 See Alzheimer’s Disease and Related Disorders

Ass’n, Inc. v. Alzheimer’s Found. of Am., 307 F. Supp. 3d 260, 293

(S.D.N.Y. 2018) (“However, not all confusion counts: evidence of

actual confusion must show more than a fleeting mix-up of names;

rather it must show that the confusion was caused by the trademarks

and it swayed consumer purchase.” (quoting Streamline Prod. Sys.,

Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 457 (5th Cir. 2017))

(emphasis added)); see also id. (“We have rejected anecdotal

evidence of actual confusion when the proponent did not show that

a misleading representation by the defendant, as opposed to some

other source, caused a likelihood of confusion.” (quoting

Streamline Prod. Sys., Inc., 851 F.3d at 457)).

20 Similarly, Cosgrove’s anecdotal account concerning his roommate

is afforded little weight for the same reason.

Therefore, upon the evidence presented, the Court

concludes Plaintiff has not established the actual-customer-

confusion Polaroid Factor weighs in its favor.

F. Bad Faith

“The sixth Polaroid factor is bad faith, which concerns

‘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.’” Akiro LLC,

946 F. Supp. 2d at 339 (quoting Lang v. Ret. Living Pub. Co., Inc.,

949 F.2d 576, 583 (2d Cir. 1991)). “[T]he only relevant intent is

intent to confuse.” Starbucks Corp. v. Wolfe Borough Coffee, Inc.,

588 F.3d 97, 117 (2d Cir. 2009) (quotation omitted). “In order to

establish that a defendant acted with the relevant intent to

confuse in adopting its mark, the plaintiff must show, among other

things, that the defendant had knowledge—be it actual or

constructive—of the plaintiff’s ‘prior similar mark’”. Kohler Co.

v. Bold Int’l FZCO, 422 F. Supp. 3d 681, 726 (E.D.N.Y. 2018)

(quoting Star Indus., 412 F.3d at 388-89).

The Court previously determined Plaintiff failed to

adduce any evidence of bad faith during its case-in-chief. (See

Reconsideration Order at 8-16.) Indeed, the record evidence shows

Defendant has owned a valid trademark for its Mark since 2006,

that this Mark was adopted long before Defendant had any knowledge

of Plaintiff’s existence, and Defendant has been consistent in its

use of its Mark. See LVL XIII Brands, Inc., 209 F. Supp. 3d at

675 (“[T]he Second Circuit ‘has never held adoption of a mark with

no knowledge of a prior similar mark to be in bad faith[.]’”

(quoting Star Indus., 412 F.3d at 388)).21

Likewise, as to Defendant’s decision to bid on keywords

as part of its Google Adwords campaign, including the term “floor

decor”, the record evidence establishes such practice was not

motivated by Plaintiff’s presence in the market, rather this is

Defendant’s ordinary practice nationally, and is motivated by the

way consumers behave when they type words into the Google search

engine. See Alzheimer’s Disease & Related Disorders Ass’n, Inc.,

307 F. Supp. 3d at 287 (“The sine qua non of trademark infringement

is consumer confusion caused by the infringing behavior, and

behavior meant to harm a competitor does not necessarily entail

infringement if a consumer is unlikely to be confused. For this

reason, courts have repeatedly found that the purchase of a

competitor's marks as keywords alone, without additional behavior

that confuses consumers, is not actionable.”).

21 The Court credits Martin’s testimony that Defendant was not

worried about potential consumer confusion when it entered the

Four-County Area because it was using its registered Mark, which

had been used consistently nationwide across approximately 100

stores, in a market which Defendant, and its Mark, had been present

in, through its website, since 2009.

Therefore, the Court concludes the record evidence does

not weigh in Plaintiff’s favor as to the bad-faith Polaroid Factor.

Quality of the Products

In analyzing this factor “the court must determine

‘whether defendant’s products or services are inferior to

plaintiff’s, thereby tarnishing plaintiff’s reputation if

consumers confuse the two’”. Capri Sun GmbH, 595 F. Supp. 3d at

175 (quoting Akiro LLC, 946 F. Supp. 2d at 340).

Plaintiff adduced no evidence at trial tending to show

that Defendant’s products were of inferior quality. Consequently,

the Court finds this factor is neutral. See LVL XIII Brands, Inc.,

209 F. Supp. 3d at 676 (finding, where “there is insufficient

evidence in the record indicating the superiority or inferiority

of the products at issue . . . this factor is neutral”) (citation

omitted)).

G. Sophistication of Consumers

“The final Polaroid factor, consumer sophistication,

‘consider[s] the general impression of the ordinary purchaser,

buying under the normally prevalent conditions of the market and

giving the attention such purchasers usually give in buying that

class of goods.’” LVL XIII Brands, Inc., 209 F. Supp. 3d at 676

(quoting Star Indus., 412 F.3d at 390). “In a reverse confusion

case, ‘the consumers relevant to [this] inquiry are those who

purchase [the plaintiff’s] products.’” Id. (quoting Sterling

Drug, Inc. v. Bayer AG, 14 F.3d 733, 742 (2d Cir. 1994)

(alterations in original)). “In general, ‘[t]he greater the value

of an article the more careful the typical consumer can be expected

to be.’” Id. (quoting McGregor-Doniger, Inc v. Drizzle Inc., 599

F.2d 1126, 1137 (2d Cir. 1979)); see also Manhattan Indus., Inc.

v. Sweater Bee by Banff, Ltd., 627 F.2d 628, 631 (2d Cir. 1980)

(“The greater the value of an article the more careful the typical

consumer can be expected to be; the average purchaser of an

automobile will no doubt devote more attention to examining the

different products and determining their manufacturer or source

than will the average purchaser of a ball of twine.” (citation

omitted)). “The Second Circuit has noted one possible exception

to this principle: where the parties’ marks are identical and their

goods are in very close competitive proximity, a highly

sophisticated consumer may be the most vulnerable to confusion.”

Kohler Co., 422 F. Supp. 3d at 730 n.20 (collecting cases).

Here, the record evidence establishes both parties’

customers are highly sophisticated. This is reasonably inferred

from, inter alia: (1) the high price point of both parties’

products; (2) the extremely personal nature of the customer

service that Plaintiff offers clients; and (3) the research that

customers who purchase the products at issue will typically engage

in, prior to committing to a purchase.

Additionally, while the parties’ marks are similar, they

are not identical.22 Compare Lois Sportswear, U.S.A., Inc. v. Levi

Strauss & Co., 799 F.2d 867, 868-69 (2d Cir. 1986) (Applying

exception where appellee jeans manufacturer owned federal

trademark for “a distinct back pocket stitching

pattern . . . consist[ing] of two intersecting arcs which roughly

bisect[ed] both pockets of appellee’s jeans” and appellant’s jeans

bore “a back pocket stitching pattern substantially similar to

appellee’s trademark stitching pattern”, and observing, “it is a

sophisticated jeans consumer who is most likely to assume that the

presence of appellee’s trademark stitching pattern on appellants’

jeans indicates some sort of association between the two

manufacturers. Presumably it is these sophisticated jeans buyers

who pay the most attention to back pocket stitching patterns and

their ‘meanings’.”).

Here, Plaintiff’s Asserted Name is presented in

lower-case font and includes a design logo, originally the “fd”

design and, post 2014, the “FD&D” design; comparatively,

Defendant’s Mark is presented as two words in uppercase-font

stacked atop each other with a large ampersand to the right of

22 While Judge Hurley previously determined that the Parties’ Marks

were similar enough to trigger the exception, Judge Hurley’s

conclusion was formed based upon the parties’ framing of the issue

at summary judgment. This Court’s conclusion is formed based upon

its review of the fully developed record at trial.

Defendant’s name. These differences, in conjunction with the

carefulness with which purchasers of the parties’ products exhibit

prior to committing to purchase, warrants the conclusion that this

factor does not support a likelihood of confusion.

H. Weighing the Factors

In sum, when viewed in their totality, the Court finds

the Polaroid Factors do not support a likelihood of confusion.

While the similarity and the proximity factors weigh in Plaintiff’s

favor, the strength of Plaintiff’s mark, i.e., the Asserted Name,

is extremely weak; indeed, Plaintiff failed to meet its burden of

proving that its mark was entitled to protection through secondary

meaning. Further, the bridging-the-gap, and quality factors are

neutral. Conversely, the remaining factors weigh in Defendant’s

favor. RiseandShine Corp. v. PespiCo, Inc., 41 F.4th 112, 124 (2d

Cir. 2022) (“Weak marks are entitled to only an ‘extremely narrow

scope’ of protection, ‘unless a convincing combination of other

Polaroid factors militates strongly in favor of likelihood of

confusion.’” (quoting Plus Prod. V. Plus Discount Foods, Inc., 722

F.2d 999, 1006 (2d Cir. 1983))). Accordingly, in the absence of

a convincing combination of other Polaroid Factors militating

strongly in favor of likelihood of confusion, the Court concludes

Plaintiff has failed to prove likelihood of confusion.

III. N.Y. GBL § 360-l

“New York General Business Law § 360-l requires

plaintiff to prove ‘(1) that it possess[es] a strong mark—one which

has a distinctive quality or has acquired a secondary

meaning . . . and (2) a likelihood of dilution by either blurring

or tarnishment.’” RVC Floor Decor, Ltd., 527 F. Supp. 3d at 330

(quoting Fireman’s Ass’n of State of N.Y. v. French Am. School of

N.Y., 839 N.Y.S.2d 238, 241-42 (2007)). “The same factors relevant

to secondary meaning under the Lanham Act are relevant to secondary

meaning under New York General Business Law § 360-l” Id. (citing

DeBeers LV Trademark Ltd. v. DeBeers Diamond Syndicate Inc., 440

F. Supp. 2d 249, 280 (S.D.N.Y. 2006) (collecting cases)).

Plaintiff’s Asserted Name is not inherently distinctive,

and as this Court has found in its conclusions of law, Plaintiff

has failed to meet its burden in proving its Asserted Name acquired

secondary meaning. (See supra-Part I.A-F.) Consequently,

Plaintiff’s dilution claim falls at the first hurdle, and the Court

need not address the second element of Plaintiff’s dilution claim.

Cf. Shandong Shinho Food Indus. Co., Ltd. v. May Flower Int’l,

Inc., 521 F. Supp. 3d 222, 262 (E.D.N.Y. 2021) (dismissing dilution

claim pursuant to N.Y. GBL § 360-l where plaintiff had not shown

its trade dress was protectible); Therapy Prods., Inc. v. Bissoon,

623 F. Supp. 2d 485, 495 (S.D.N.Y. 2009) (granting summary judgment

in favor of defendant because, in interpreting N.Y. GBL § 360-l,

the Second Circuit has stated “New York law accords protection

against dilution to marks that are distinctive as a result of

acquired secondary meaning as well as to those that are inherently

distinctive” and plaintiff’s mark was neither (quoting N.Y. Stock

Exch., Inc. v. N.Y., N.Y. Hotel, LLC, 293 F.3d 550, 557 (2d Cir.

2002))).

CONCLUSION

For the foregoing reasons, IT IS HEREBY ORDERED that the

Court finds in favor of Defendant on all of Plaintiff’s remaining

claims. The Clerk of the Court is directed to enter judgment

consistent with these Findings of Fact and Conclusions of Law, and

thereafter to mark this matter CLOSED.

SO ORDERED.

/s/ JOANNA SEYBERT

Joanna Seybert, U.S.D.J.

Dated: June 5, 2024

Central Islip, New York