# Car-Freshner Corporation v. Just Funky LLC

> District Court, N.D. New York · November 25, 2019

URL: https://www.frixlaw.com/law-library/cases/10312539

## Case

- **Court:** District Court, N.D. New York
- **Decided:** November 25, 2019
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10312539

## How later opinions describe it (automated extraction)

- finding that the 15 tactical decision to file a trademark infringement lawsuit does not constitute an unconscionable act
- finding fabrication of testimony constituted an unconscionable act
- finding multiple misrepresentations to court regarding law and facts qualifies as an unconscionable act

## Opinion text

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK

CAR-FRESHNER CORPORATION; and JULIUS
SAMANN, LTD.,
Plaintiffs,
5:19-CV-0289
v. (GTS/ATB)
JUST FUNKY LLC,
Defendant.

APPEARANCES: OF COUNSEL:
BOND, SCHOENECK & KING, PLLC LOUIS ORBACH, ESQ.
Counsel for Plaintiffs LIZA R. MAGLEY, ESQ.
One Lincoln Center
Syracuse, NY 13202
RITZLER, COUGHLIN & PAGLIA, LTD PATRICK J. THOMAS, ESQ.
Counsel for Defendant
1360 East Ninth Street, 500 IMG Center
Cleveland, OH 44114
GLENN T. SUDDABY, Chief United States District Judge
DECISION and ORDER
Currently before the Court, in this trademark infringement action filed by Car-Freshener
Co. and Julius Sémann, Ltd. (“Plaintiffs”) against Just Funky LLC (“Defendant”), is Plaintiffs’
motion to strike sixteen of Defendant’s thirty affirmative defenses in its Answer pursuant to Fed.
R. Civ. P. 12(f). (Dkt. No. 8.) For the reasons stated below, Plaintiffs’ motion is granted.
1. RELEVANT BACKGROUND
In their Complaint, Plaintiffs allege that they have manufactured “Black Ice” products

under three federal trademarks in Watertown, New York, for more than 60 years. (Dkt. No. 1.)
Plaintiffs further allege that, despite their possession of these trademarks, Defendant sold
thousands of air fresheners using the term “Black Ice” to the retail chain Hot Topic, including at
least one allegedly infringing product at the Salmon Run Mall Hot Topic in Watertown, New
York. (d.)
In its Answer, Defendant asserts thirty affirmative defenses. (Dkt. No. 7.)
In their Motion to Strike, Plaintiffs argue that Defendant’s Answer “contains a litany of
boilerplate affirmative defenses, unadorned by any allegations of supporting facts.” (Dkt. No. 8,
Attach. 1, at 4 [attaching Page “1” of Plfs.” Memo. of Law].) More specifically, Plaintiffs argue
that sixteen of Defendant’s thirty affirmative defense should be stricken pursuant to Fed. R. Civ.
P. 12(f) due to an insufficient factual basis to support them. (/d.) Defendant has not responded
to Plaintiffs’ motion to strike. (See generally Docket Sheet.) Plaintiffs have confirmed with
Defendant that this non-response was intentional. (Dkt. No. 15.)
Il. RELEVANT LEGAL STANDARDS
A. Legal Standard Governing a Motion to Strike an Affirmative Defense for
Failure to State a Claim
Although district courts within the Second Circuit have in the past considered the
assertion of an affirmative defense without supporting facts to be sufficient, the Second Circuit
has recently clarified what qualifies as a sufficient affirmative defense in GEOMC Co. v.
Calmare Therapeutics Inc., 918 F.3d 92, 98-99 (2d Cir. 2019).
In its clarification of the affirmative-defense standard, the Second Circuit has focused on
the three-factor test used by the Southern District of New York to assess affirmative defenses in

S.E.C. v. McCaskey. GEOMC Co., 918 F.3d at 96-97 (citing S.E.C. v. McCaskey, 56 F. Supp. 2d
323, 326 [S.D.N.Y. 1999]). The McCaskey three-factor test requires a plaintiff to show as
follows: “(1) there is no question of fact which might allow the defense to succeed; (2) there is
no question of law which might allow the defense to succeed; and (3) the plaintiff would be
prejudiced by inclusion of the defense.” McCaskey, 56 F. Supp. 2d at 326.
In GEOMC Co., the Second Circuit refined the first McCaskey factor' by finding that the
plausibility standard of Bell Atlantic Corp. v. Twombly “applies to determining the sufficiency of
all pleadings, including the pleading of an affirmative defense, but with recognition that, as the
Supreme Court explained in /gbal, applying the plausibility standard is a ‘context-specific’ task.”
GEOMC Co., 918 F.3d at 98-99; see also Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 548-49
(2007); Ashcroft v. Igbal, 556 U.S. 662, 679 (2009).
The undersigned notes that, as originally articulated, the first McCaskey factor uses
language that is reminiscent of Conley v. Gibson’s “no set of facts” language.” McCaskey, 56 F.
Supp. 2d at 326; Conley v. Gibson, 355 U.S. 41, 46 (1957). “This ‘no set of facts’ language can
be read in isolation as saying that any statement revealing the theory of the claim will suffice
unless its factual impossibility may be shown from the face of the pleadings.” Twombly, 550
USS. at 561.
Because this “no set of facts” language allowed wholly conclusory statements to survive a

! Again, this factor is that “there is no question of fact which might allow the
defense to succeed[.]” McCaskey, 56 F. Supp. 2d at 326.
> More specifically, this language is as follows: “[A] complaint should not be
dismissed for failure to state a claim unless it appears beyond doubt that a plaintiff can prove no
set of facts in support of his claim which would entitle him to relief.” Conley, 255 U.S. at 46-47.

motion to dismiss, Twombly retired the “no set of facts” language and established the plausibility
standard to create a heightened threshold. Jd.
The Second Circuit in GEOMC Co. extended the Twombly plausibility standard to
affirmative defenses to equally ensure that affirmative defenses survive motions to strike only if
the defendant produces a sufficient factual basis. GEOMC Co., 918 F.3d at 98-99. To satisfy
the Twombly plausibility standard, a pleading must demonstrate that the pleading party has
grounds for relief beyond “labels and conclusions, and a formulaic recitation of the elements of a
cause of action[.]” Twombly, 550 U.S. at 555. Thus, the pleading party must produce allegations
of fact that provide a sufficient basis for the court to draw a reasonable inference in favor of the
party. Igbal, 556 US. at 678.
Iqbal contributed to the Twombly plausibility standard by acknowledging that a court’s
review of a pleading based on the plausibility standard is “a context-specific task that requires the
reviewing court to draw on its judicial experience and common sense.” /d. at 679.
The second McCaskey factor’ embodies the well-established point of law that courts may
not determine “disputed and substantial questions of law” at the motion-to-strike stage. William
Z. Salcer, Panfeld, Edelman v. Envicon Equities Corp., 744 F.2d 935, 939 (2d Cir. 1984). To
qualify as a disputed and substantial question of law, the question of law must not have been
previously addressed by the courts or must have been answered differently when courts
addressed the question, leaving the law “confus[ing] and unsettled[.]” Canadian St. Regis Band
of Mohawk Indians ex rel. Francis v. New York, 278 F. Supp. 2d 313, 325 (N.D.N.Y. 2003)

3 Again, this factor is that “there is no question of law which might allow the
defense to succeed[.]” McCaskey, 56 F. Supp. 2d at 326.

(quoting Salcer, 744 F.2d at 939). Thus, the second McCaskey factor echoes the point of law that
“[ce]lose or new questions of law should not be resolved on a motion to strike[.]” Canadian St.
Regis, 278 F. Supp. 2d at 325 (quoting Mohegan Tribe v. State of Conn., 528 F. Supp. 1359,
1362 [D. Conn. 1982]) (emphasis added). Without this requirement, “courts would ‘run the risk
of offering an advisory opinion on an abstract and hypothetical set of facts.’” Canadian St.
Regis, 278 F. Supp. 2d at 325 (quoting Salcer, 744 F.2d at 939).
Regarding the third McCaskey factor,’ the Second Circuit in GEOMC Co. clarified the
circumstances in which prejudice may form the basis of dismissing an affirmative defense.
GEOMC Co., 918 F.3d at 98. According to GEOMC Co., “[a] factually sufficient and legally
valid defense should always be allowed if timely filed even if it will prejudice the plaintiff by
expanding the scope of the litigation.” /d. A reasonable implication (although not an
inescapable logical deduction) of this pronouncement is that a lack of factual sufficiency and/or
legal validity may tend to prejudice a plaintiff by expanding the scope of the litigation.
B. Effect of Defendant’s Failure to Respond to Plaintiffs’ Motion to Strike

In this District, when a non-movant fails to oppose a legal argument asserted by a
movant, the movant’s burden with regard to that argument is lightened, such that, to succeed on
that argument, the movant need only to show that the argument possess facial merit, which has
appropriately been characterized as a “modest” burden. See N.D.N.Y.L.R. 7.1(b)(3) (‘Where a
properly filed motion is unopposed and the Court determined that the moving party has met its
burden to demonstrate entitlement to the relief requested therein, the non-moving party’s failure

‘ Again, this factor is that “the plaintiff would be prejudiced by inclusion of the
defense.” McCaskey, 56 F. Supp. 2d at 326.

to file or serve any papers as this Rule requires shall be deemed as consent to the granting or
denial of the motion, as the case may be, unless good cause is shown.”); Rusyniak v. Gensini, 07-
CV-0279, 2009 WL2672105, at *1, n.1 (N.D.N.Y. Oct. 30, 2009) (Suddaby, J.) (collecting
cases), Este-Green v. Astrue, 09-CV-0722, 2009 WL2473509, at *2 & nn. 2,3 (N.D.N.Y. Aug.
7, 2009) (Suddaby, J.) (collecting cases).
ANALYSIS

With the movant’s lightened burden in mind, the Court evaluates the sixteen affirmative
defenses challenged by Plaintiffs’ motion to strike. The sixteen affirmative defenses are as
follows:

First Affirmative Defense: “Defendant is not subject to personal jurisdiction in this
District.”

Third Affirmative Defense: “Venue is not proper in this District.”

Twelfth Affirmative Defense: “At all times, Defendant had, and continues to have, a
reasonable, good faith belief that it has the legal right to make, use, sell, and promote any
goods or products, if any, claimed by Plaintiffs.”

Thirteenth Affirmative Defense: “Defendant has permission to use its products and
therefore cannot be held liable to Plaintiff.”

Fourteenth Affirmative Defense: “Plaintiffs’ claims are barred by doctrine of waiver.”

Fifteenth Affirmative Defense: “Plaintiffs’ claims are barred by estoppel by
acquiescence.”

Sixteenth Affirmative Defense: “Plaintiffs’ claims are barred by doctrine of laches.”

Seventeenth Affirmative Defense: “Plaintiffs’ claims are barred by doctrine of equitable

estoppel.”

Eighteenth Affirmative Defense: “Plaintiffs’ claims are barred by the doctrine of
unclean hands generally.”

Nineteenth Affirmative Defense: “Plaintiffs’ claims are barred by the doctrine of
unclean hands in that their selective enforcement of said marks.”

Twentieth Affirmative Defense: “Plaintiffs’ claims are barred by their failure to enforce
marks against others.”

Twenty-First Affirmative Defense: “Plaintiffs’ claims are barred by the benefit they
received by any act or omission of Defendant, if any.”

Twenty-Second Affirmative Defense: “Plaintiffs are estopped in bringing these claims
by their anti-competitive and unfair trade practices.”

Twenty-Third Affirmative Defense: “All marks are generic and not entitled to
protection.”

Twenty-Fifth Affirmative Defense: “Plaintiffs have failed to join necessary and
indispensable parties for just adjudication of these claims. Therefore, Plaintiffs’ claims
cannot stand.”

Twenty-Seventh Affirmative Defense: “Defendant is entitled to use any claimed mark
under the fair use doctrine.”

(Dkt. No. 7.)

A. First Affirmative Defense

Regarding the first McCaskey factor’s application to the first affirmative defense (lack of
personal jurisdiction), Defendant offers no factual basis to substantiate the defense.

Regarding the second McCaskey factor, the Court finds that there are no disputed and

substantial questions of law with respect to the Court’s authority to assert personal jurisdiction
over anon-domiciliary. Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir.
2010). To assert jurisdiction, the Court conducts a two-step analysis by (1) applying New York’s
long-arm statute and (2) analyzing whether the personal jurisdiction complies with the Due
Process Clause of the United States Constitution. Chloé, 616 F.3d at 163-64. New York's
long-arm statute states as follows: “As to a cause of action arising from any of the acts
enumerated in this section, a court may exercise personal jurisdiction over any non-domiciliary . .

. who in person or through an agent: 1. transacts any business within the state or contracts
anywhere to supply goods or services in the state... .” N.Y. C.P.L.R. § 302(a) (McKinney). To
analyze whether the personal jurisdiction complies with the Due Process Clause, the Court must
conduct a minimum-contacts inquiry and a reasonableness inquiry. Chloé, 616 F.3d at 164. To
evaluate whether Defendant has sufficient contacts within the forum state, the Court assesses
“the quality and nature of the defendant's contacts with the forum state under a totality of the
circumstances test[.]” Best Van Lines, Inc. v. Walker, 490 F.3d 239, 242 (2d Cir. 2007) (internal
quotation marks and citations omitted). To conduct the reasonableness inquiry, the Court uses
the following factors:

(1) the burden that the exercise of jurisdiction will impose on the
defendant; (2) the interests of the forum state in adjudicating the case;
(3) the plaintiff's interest in obtaining convenient and effective relief;
(4) the interstate judicial system's interest in obtaining the most
efficient resolution of the controversy; and (5) the shared interest of
the states in furthering substantive social policies.
Chloé, 616 F.3d at 164.
Regarding New York’s long-arm statute, the Court may exercise personal jurisdiction

over Defendant, a domiciliary of Ohio, because Defendant sold its allegedly infringing product to
Hot Topic, a retailer who resold the product in the Northern District of New York. (Dkt. Nos. 1,
7, 8.) Regarding the minimum-contacts and reasonableness inquiries, the Due Process Clause is
complied with because nearly all of the five factors set forth in Chloé weigh in favor of

exercising personal jurisdiction here.
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the first
affirmative defense should be stricken.
B. Third Affirmative Defense
Regarding the first McCaskey factor’s application to the third affirmative defense

(improper venue), Defendant did not offer any factual basis for this defense. (Dkt. No. 7.)
Plaintiffs have specified that they have manufactured the “Black Ice” air fresheners in
Watertown, New York, for more than 60 years. (Dkt. Nos. 1, 8.) Furthermore, Plaintiffs
highlighted the fact that Defendant sold its allegedly infringing product to Hot Topic, a retailer
who resold the product in the Northern District of New York. (Id.) Specifically, according to
Plaintiffs, a customer purchased one of Defendant’s allegedly infringing products at the Salmon
Run Mall Hot Topic in Watertown, New York. (Id.) Based on the information both parties
provided to the Court, the Court finds that there is no substantial evidentiary basis for the Court

to draw a reasonable inference in Defendant’s favor.
Regarding the second McCaskey factor, the Court finds that there is no disputed and
substantial question of law with respect to the availability of venue here. 28 U.S.C. § 1391.

9
Specifically, 28 U.S.C. § 1391(b)(2) establishes that this Court has venue because the events
giving rise to the claim occurred within this jurisdiction, in Watertown, New York. /d.
Regarding the third McCaskey factor, that Court finds that, because of the factual and
legal invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of
time and undue delay of discovery completion and trial. As a result, the Court finds that the third
affirmative defense should be stricken.
C. Twelfth Affirmative Defense
Regarding the first McCaskey factor’s application to the twelfth affirmative defense (good
faith), Defendant asserted that it has a “good faith belief that it has the legal right to make, use,
sell, and promote any goods or products, if any, claimed by Plaintiffs.” (Dkt. No. 7.) However,
Defendant offers no factual basis for this good-faith belief. (/d.)
Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the lack of an effect of a copyright infringer’s good-faith belief here. See On
Davis v. The Gap, Inc., 246 F.3d 152, 172 (2d Cir. 2001) (“Honest users can infringe by reason
of oversight or good faith mistake . . . [by believing] that the work was in the public domain, that
his licensor was duly licensed, or that his use was protected by fair use.”).
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the twelfth
affirmative defense should be stricken.

D. Thirteenth Affirmative Defense

Regarding the first McCaskey factor’s application to the thirteenth affirmative defense
10

(permission), Defendant has stated only that it had permission to use its products and could
therefore not be held liable, without providing any factual basis for this statement. (Dkt. No. 7.)
Regarding the second McCaskey factor, a trademark owner (and not a third-party) must
be the entity that grants permission to use its marks, because it possesses the exclusive right to

use the mark. 15 U.S.C. § 1065 (2010). Defendant does not allege that Plaintiffs granted it
permission. Thus, there is no disputed and substantial question of law with respect to the
unavailability of this defense here.
Regarding the third McCaskey factor, because of the factual and legal invalidity of the
defense, the defense would cause prejudice to Plaintiff through waste of time and undue delay of
discovery completion and trial. As a result, the Court finds that the thirteenth affirmative defense

should be stricken.
E. Fourteenth Affirmative Defense
Regarding the first McCaskey factor’s application to the fourteenth affirmative defense
(waiver), Defendant has not provided any factual basis for waiver. (Dkt. No. 7.) Therefore, the

fourteenth affirmative defense does not meet the Twombly plausibility standard.
Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the inapplicability of New York’s waiver law here. Coach, Inc. v. Kmart
Corps., 756 F. Supp. 2d 421, 428 (S.D.N.Y. 2010) (citing Voest-Alpine Int'l Corp. v. Chase
Manhattan Bank, N.A., 707 F.2d 680, 685 [2d Cir. 1983]). “To establish waiver under New
York law one must show that the party charged with waiver relinquished a right with both

knowledge of the existence of the right and an intention to relinquish it.” Coach, Inc., 756 F.

11
Supp. 2d 421, 428 (citing Voest-Alpine Int'l Corp., 707 F.2d at 685).
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the
fourteenth affirmative defense should be stricken.

F. Fifteenth Affirmative Defense

Regarding the first McCaskey factor’s application to the fifteenth affirmative defense
(estoppel by acquiescence), Defendant has not provided any factual basis for estoppel by
acquiescence. (Dkt. No. 7.)
Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the unavailability of estoppel by acquiescence here. Times Mirror
Magazines, Inc. v. Field & Stream Licenses Co., 294 F.3d 383, 395 (2d Cir. 2002). The elements
of estoppel by acquiescence are as follows: “(1) the senior user actively represented that it would
not assert a right or a claim; (2) the delay between the active representation and assertion of the
right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.”
Times Mirror Magazines, 294 F.3d at 395.

Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the fifteenth
affirmative defense should be stricken.

G. Sixteenth Affirmative Defense

12

Regarding the first McCaskey factor’s application to the sixteenth affirmative defense
(laches), Defendant has not provided any factual basis for the application of laches. (Dkt. No. 7.)

Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the inapplicability of the doctrine of laches here. While the Lanham
Trademark Act does not have a specific statute of limitations, this Court applies New York’s six-
year statute of limitations for fraud claims in a New York suit. Excelled Sheepskin & Leather
Coat Corp. v. Oregon Brewing Co., 897 F.3d 413, 419 (2d Cir. 2018) (citing Conopco, Inc. v.
Campbell Soup Co., 95 F.3d 187, 192 [2d Cir. 1996]).

Applying this statute of limitations, “there is no presumption of laches and the burden
remains on the [infringer] to prove the defense” if the trademark owner brought the claim within
six years of when the owner knew or should have known that he had a valid infringement claim.
Excelled Sheepskin & Leather Coat Corp., 897 F.3d at 419 (citing Conopco, Inc., 95 F.3d at 192,
and ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy P.C.,
314 F.3d 62, 70 [2d Cir. 2002]). Based on the information provided to the court, Plaintiffs
brought the claim within six years of knowing they had a claim. (Dkt. No. 1.) Therefore, there is
no question of law that might allow the doctrine of laches affirmative defense to succeed.

Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the sixteenth
affirmative defense should be stricken.

H. Seventeenth Affirmative Defense

13
Regarding the first McCaskey factor’s application to the seventeenth affirmative defense
(equitable estoppel), Defendant simply states that Plaintiffs’ claims are barred by the doctrine of
equitable estoppel without providing factual basis for this statement. (Dkt. No. 7.) Therefore,
the seventeenth affirmative defense does not meet the Twombly plausibility standard.

Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the inapplicability of the doctrine of equitable estoppel here. Veltri v. Bldg.
Serv. 32B-J Pension Fund, 393 F.3d 318, 326-27 (2d Cir. 2004). The elements of equitable
estoppel are as follows: “(1) a misrepresentation by the plaintiff, (2) reasonable reliance by the
defendant, and (3) prejudice.” Veltri, 393 F.3d at 326-27. Because Defendant has not alleged
any misrepresentation by Plaintiffs, there is no question of fact or law that would allow the
doctrine of equitable estoppel to bar Plaintiffs’ claims.

Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the
seventeenth affirmative defense should be stricken.

I. Eighteenth and Nineteenth Affirmative Defenses

The eighteenth affirmative defense invokes the doctrine of unclean hands generally
whereas the nineteenth affirmative defense reiterates that the doctrine of unclean hands bars
Plaintiffs’ claims but specifies that Plaintiffs’ selective enforcement of their trademarks invoked
the doctrine of unclean hands. (Dkt. No. 7.) Regarding the first McCaskey factor’s application
to the eighteenth affirmative defense (unclean hands generally) and the nineteenth affirmative

14

defense (selective enforcement), Defendant did not provide any factual bases for either of these
affirmative defenses.

Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the inapplicability of the doctrine of unclean hands here. To bar a party’s
claim pursuant to the unclean hands doctrine, the Court must find that “the party asking for the
invocation of an equitable doctrine has committed some unconscionable act that is ‘directly
related to the subject matter in litigation’ and has injured the party attempting to invoke the
doctrine.” PenneCom BV. vy. Merrill Lynch & Co., 372 F.3d 488, 493 (2d Cir. 2004) (citing
Weiss v. Mayflower Doughnut Corp., 135 N.E.2d 208 [1956]).
To constitute an unconscionable act, the conduct must rise to the level of “brazen
behavior.” Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 126, 131 (S.D.N.Y.
1999). The court may determine what qualifies as an unconscionable at its discretion, which is
“not bound by formula or restrained by any limitation that tends to trammel the free and just
exercise of discretion.” Aris-Isotoner Gloves, Inc. v. Berkshire Fashions, Inc., 792 F. Supp. 969,
969-70 (S.D.N.Y. 1992) (quoting Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240,
245-46 [1933]).
However, that discretionary power does not create a question of law regarding whether
selective trademark enforcement qualifies as an unconscionable act. See Goldstein v. Delgratia
Mining Corp., 176 F.R.D. 454, 458 (S.D.N.Y. 1997) (finding multiple misrepresentations to
court regarding law and facts qualifies as an unconscionable act); Aris-Isotoner Gloves, Inc., 792
F.Supp. at 970 (finding fabrication of testimony constituted an unconscionable act); but see
Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 256 (S.D.N.Y. 2012) (finding that the
15

tactical decision to file a trademark infringement lawsuit does not constitute an unconscionable
act); Coach, Inc. v. Kmart Corp., 756 F. Supp. 2d 421, 429 (S.D.N.Y. 2010) (“Filing a trademark
or trade dress infringement lawsuit, therefore, cannot be a basis for an unclean hands defense to
that lawsuit because any bad faith or inequitable conduct in filing the lawsuit is unrelated to the
plaintiff's acquisition or use of the trademark or trade dress rights.”); 6 McCarthy on Trademarks
and Unfair Competition § 31:51 (5th ed.) (“The allegedly unfair or improper filing of a
trademark infringement lawsuit cannot itself constitute a basis for an unclean hands defense to
that lawsuit.”). Therefore, even if Defendant provided sufficient factual support to establish that
Plaintiffs had selectively enforced their trademarks, that selective enforcement would not bar
their claims.
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the
eighteenth and nineteenth affirmative defenses should be stricken.
J. Twentieth Affirmative Defense
Regarding the first McCaskey factor’s application to the twentieth affirmative defense
(failure to enforce), Defendant provides no factual basis for this defense beyond the nineteenth
affirmative defense’s conclusory assertion of selective enforcement. (Dkt. No. 7.) This
insufficient factual basis satisfies the first McCaskey factor.
Regarding the second McCaskey factor, there is no disputed and substantial question of
law that would allow Defendant to prevail on this defense. Construing the defense in the light
most favorable to Defendant, the reference to failure to enforce marks refer to abandonment

16

of the mark or selective enforcement of the mark, neither of which would allow Defendant to
succeed.
Abandonment does not create a question of law because courts have clearly defined what
constitutes abandonment. A trademark owner’s mere failure to police its marks does not cause
those marks to become generic and unenforceable. Hermes Int'l v. Lederer de Paris Fifth Ave.,
Inc., 219 F.3d 104, 110 (2d Cir. 2000). An owner has abandoned a mark when (1) the owner’s
conduct causes the mark to become generic or lose significance, or (2) the owner intends to
abandon the mark. 15 U.S.C. § 1127.
A violation of equal protection by selective enforcement equally fails to establish a
question of law. While courts acknowledge that “selective enforcement is a murky corner of
equal protection law in which there are surprisingly few cases,” this murkiness does not create a
question of law that would allow Defendant to succeed. LaTrieste Rest. & Cabaret Inc. v.
Village of Port Chester, 40 F.3d 587, 590 (2d Cir. 1994) (quoting LeClair v. Saunders, 627 F.2d
606, 608 (2d Cir. 1980)) (quotations omitted).
A violation of equal protection by selective enforcement arises if: (1)
the person, compared with others similarly situated, was selectively
treated; and (2) . . . such selective treatment was based on
impermissible considerations such as race, religion, intent to inhibit
or punish the exercise of constitutional rights, or malicious or bad
faith intent to injure a person.
Crowley v. Courville, 76 F.3d 47, 52-53 (2d Cir. 1996) (citations omitted).
Thus, while selective enforcement may be a murky doctrine, there is no question of law
that arises from the doctrine that would allow Defendant’s claim to succeed.
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
17

and undue delay of discovery completion and trial. As a result, the Court finds that the twentieth
affirmative defense should be stricken.
K. Twenty-First Affirmative Defense
Regarding the first McCaskey factor’s application to the twenty-first affirmative defense
(benefit received), Defendant does not provide a sufficient factual basis to meet the Twombly
standard. (Dkt. No. 7.)
Regarding the second McCaskey factor, there is no disputed and substantial question of
law that would allow Defendant to prevail on this defense. Moreover, courts focus on the
dilution that another party’s use of a mark may cause, not on the alleged benefits of that use. 15
U.S.C. § 1125. Therefore, there is no question of fact or law that would allow the twenty-first
affirmative defense to bar Plaintiffs’ claims.
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the twenty-
first affirmative defense should be stricken.
L. Twenty-Second Affirmative Defense
Regarding the first McCaskey factor’s application to the twenty-second affirmative
defense (estoppel), Defendant provides no factual basis for this defense.
Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to whether trademark enforcement qualifies as anti-competitive and unfair trade
practices, because the Lanham Trademark Act seeks to promote competition, not hinder it. Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992). The Lanham Trademark Act’s

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purpose is to “secure to the owner of the mark the goodwill of his business and to protect the
ability of consumers to distinguish among competing producers. National protection of
trademarks is desirable, Congress concluded, because trademarks foster competition and the
maintenance of quality by securing to the producer the benefits of good reputation.” Two Pesos,
Inc., 505 US. at 774.
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the twenty-
second affirmative defense should be stricken.

M. Twenty-Third Affirmative Defense

Regarding the first McCaskey factor’s application to the twenty-third affirmative defense
(marks are generic and not entitled to protection), Defendant provides no factual basis for this
defense.

Regarding the second McCaskey factor, there is no disputed and substantial question of
law that would allow Defendant to prevail on this defense. The Court notes that Plaintiffs own
three federal trademarks for the “Black Ice” marks. (Dkt. No. 7.) The most relevant of these
marks is the air freshener trademark (Registration No. 3,126,834) effective August 8, 2006.
(Dkt. Nos. 1, 8.) According to the Lanham Trademark Act, generic marks do not meet the
trademark registration standards. 15 U.S.C. § 1052 (2006). The air freshener’s 2006 registration
undermines Defendant’s assertion. This Court will not second guess the United States Patent and
Trademark Office’s decision that this “Black Ice” mark meets trademark standards solely based
on the assertion that these “marks are generic and not entitled to protection.” (Dkt. Nos. 1, 8.)
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Because the factual information provided to the Court undermines Defendant’s claim and the
Lanham Trademark Act delineates what qualifies as generic, there is no question of fact or law.

Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the twenty-
third affirmative defense should be stricken.

N. Twenty-Fifth Affirmative Defense

Regarding the first McCaskey factor’s application to the twenty-fifth affirmative defense
(failure to join), Defendant did not indicate which party qualified as necessary and indispensable
or provide any factual allegations to support the defense. (Dkt. No. 7.)
Regarding the second McCaskey factor, there is no disputed and substantial question of
law that would allow Defendant to prevail on this defense. Rather, Fed. R. Civ. P. 19 clearly
defines what constitutes a necessary and indispensable party. Fed. R. Civ. P. 19.

Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the twenty-
fifth affirmative defense should be stricken.

O. Twenty-Seventh Affirmative Defense
Finally, regarding the first McCaskey factor’s application to the twenty-seventh
affirmative defense (fair use), Defendant provides no factual basis for this defense. (Dkt. Nos. 1,
8.)

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Regarding the second McCaskey factor, there is no disputed and substantial question of
law with respect to the inapplicability of the fair use doctrine here. To establish a fair use
affirmative defense, “the defendant must prove three elements: that the use was made (1) other
than as a mark, (2) in a descriptive sense, and (3) in good faith.” Kelly-Brown v. Winfrey, 717
F.3d 295, 305 (2d Cir. 2013); see also 15 U.S.C. § 1115(b)(4).
Regarding the third McCaskey factor, the Court finds that, because of the factual and legal
invalidity of the defense, the defense would cause prejudice to Plaintiff through waste of time
and undue delay of discovery completion and trial. As a result, the Court finds that the twenty-
seventh affirmative defense should be stricken.

ACCORDINGLY, it is

ORDERED that Plaintiffs’ motion to strike sixteen of Defendant’s affirmative defenses
for failure to state a claim upon which relief can be granted (Dkt. No. 8) is GRANTED, and
those affirmative defenses are STRICKEN.

Dated: November 25, 2019
Syracuse, New York

Hon. Glenn T.
Chief U.S. District Judg

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10312539. Public record. Not legal advice.