The opinion
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
1661, Inc., a Delaware corporation
doing business as GOAT,
Plaintiff, Case No. 2:24-cv-78
V. Judge Michael H. Watson
Goatlift, LLC, an Ohio limited Magistrate Judge Jolson
liability company,
Defendant.
OPINION AND ORDER
On January 9, 2024, 1661, Inc. (“Plaintiff’) sued Goatlift, LLC (“Defendant”)
and ten John and Jane Doe defendants under the Lanham Act, Ohio Deceptive
Trade Practices Act, and Ohio common law. Compl., ECF No. 2. Defendant was
served two days later. ECF No. 5. After Defendant failed to timely answer the
Complaint, Plaintiff received an entry of default pursuant to Federal Rule of Civil
Procedure 55(a). Entry of Def., ECF No. 7. Plaintiff voluntarily dismissed the
John and Jane Doe defendants but moves for default judgment against
Defendant. Mot. Dismiss, ECF No. 12; Mot. Def. J., ECF No. 11. Defendant
failed to timely respond to the motion for default judgment.
“Once default is entered, the defaulting party is deemed to have admitted
all of the well-pleaded factual allegations in the complaint regarding liability .. . .”
Zinganything, LLC v. Import Store, 158 F. Supp. 3d 668, 670 (N.D. Ohio 2016)
(citations omitted). But “[e]ven though the well-pleaded factual allegations of the
complaint are accepted as true for the purpose of determining liability, the Court
must still determine whether those facts are sufficient to state a claim for relief
.... Id. at 672 (citation omitted).
Here, even considering the factual allegations in the Complaint as true, the
Court seriously doubts whether Defendant’s marks pose a likelihood of confusion
and, accordingly, whether Plaintiff is entitled to default judgment on its claims.
Instead of deciding that issue, however, the Court elects to STAY this litigation
until conclusion of the opposition proceedings pending before the Trademark
Trial and Appeal Board (“TTAB”).
“Whether to grant . . .a stay pending an administrative proceeding appears
to be within this Court’s reasonable discretion.” CTP Innovations, LLC v. V.G.
Reed and Sons, Inc., 2014 WL 12726073, at *1 (W.D. Ky. July 18, 2014) (citation
omitted); Goulas v. Goulas, No. 08-cv-12712, 2009 WL 33431, at *1 (E.D. Mich.
Jan. 5, 2009) (“A district court can, at its discretion, stay an action pending the
conclusion of an alternative administrative proceeding.” (citation omitted)). The
Court considers the totality of the circumstances, including “(1) whether the stay
will unduly prejudice a non-moving party; (2) whether the stay will allow for
simplification of the issues in this litigation; . . . and (3) whether the particular
stage in the litigation makes a stay convenient.” CTP Innovations, LLC, 2014 WL
12726073, at *1 (citation omitted).
First, a stay will not prejudice Plaintiff. Plaintiff noticed its opposition to
Defendant’s marks (Applications 88/700640, 88/712447, and 88/712494) in the
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TTAB proceedings on September 2, 2020.' Unlike here, the TTAB docket
demonstrates that both parties have been actively involved in the opposition
proceedings, with briefing on each application to be completed within
approximately one month. Yet, Plaintiff waited until January of this year—over
three years—to file its civil suit in this Court. Given that Plaintiff proceeded
before the TTAB for three years before filing suit, Plaintiff will not be prejudiced
by waiting for a conclusion of those proceedings.
Second, the stay will simplify issues in this litigation. “Opposition
proceedings before the TTAB are in many ways similar to a civil action in a
federal district court.” B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
143 (2015) (internal quotations and citation omitted). Indeed, “the same
likelinood-of-confusion standard applies to both registration and infringement.”
Id. at 154. And, “[s]o long as the other ordinary elements of issue preclusion are
met, when the usages adjudicated by the TTAB are materially the same as those
before the district court, issue preclusion should apply.” /d. at 160.
Thus, if TTAB finds Defendant’s marks will cause a likelihood of confusion,
and that decision is either not appealed or upheld on appeal, Plaintiff is entitled to
default judgment in this case. Alternatively, an upheld TTAB decision of “no
likelihood of confusion” will mean Plaintiff is not entitled to default judgment.
Either way, a final TTAB decision will be binding on this Court. /d.
' The Court takes judicial notice of the existence of the filings on TTAB dockets. E.g.,
Davis v. Hollywood and Ivar, LLC, 2021 WL 4816822, at *2 (C.D. Cal. July 30, 2021).
Case No. 2:24-cv-78 Page 3 of 5
Third, the stage of litigation makes a stay convenient. Ordinarily, it would
be more efficient to resolve a motion for default judgment than to await a final
administrative decision that will affect the same. But, as alluded to above,
Plaintiff's success on its claims is not guaranteed. Instead, the Court would need
to perform a full “likelihood of confusion” analysis based on the alleged facts.
That requires analysis of an eight-factor test—a test Plaintiff did not even cite, let
alone engage fully with, in its motion. Thus, although the civil action is at the
default judgment stage, this is one of the rare instances where it is more
convenient to stay the litigation in favor of the administrative proceeding.
While many courts have refused to stay civil infringement actions pending
conclusion of TTAB opposition proceedings, others have granted a stay. E.g.,
Shaf Int'l, Inc. v. Ultimate Leather Apparel, Inc., 2021 WL 409757 (D.N.J. Feb. 5,
2021) (upholding a magistrate judge’s grant of a stay pending TTAB
proceedings); Branded, LLC v. Vans, Inc., No. SACV 20-2085 JVS (KESx), 2020
WL 8385656, at *4 (C.D. Cal. Dec. 7, 2020) (“Considering how advanced the
TTAB proceedings are, the Court considers it proper to let them run their course.
Regardless of the outcome, the issues will be simplified for this court, promoting
judicial economy.”); Tigercat Int'l, Inc. v. Caterpillar Inc., No. 16-cv-1047-GMS,
2018 WL 2049816, at *4 (D. Del. May 2, 2018) (“Even absent a preclusive effect,
courts look to the TTAB for its analysis on both the issues of likelinood-of-
confusion and dilution as highly instructive and persuasive.” (citation omitted));
Anstalt v. Bacardi & Co. Ltd., No. CV 16-06411-GHK (FFMx), 2016 WL 7635955,
Case No. 2:24-cv-78 Page 4 of 5
at *3 (C.D. Cal. Nov. 16, 2016) (“At a minimum, TTAB’s ruling on the likelinood-
of-confusion issue will be highly persuasive authority. It might even have
preclusive effect.” (citation omitted)). Given that all three factors favor a stay
here, a stay is appropriate.
Accordingly, the Clerk shall STAY this case. Plaintiff shall FILE a status
update every NINETY DAYS indicating the status of the TTAB opposition
proceedings.
IT IS SO ORDERED. | . □ ; J Mon
ICHAEL H. WATSON, JUDGE
UNITED STATES DISTRICT COURT
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