The opinion
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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WITH YOU LLC,
Plaintiff, MEMORANDUM & ORDER
-against- 23-CV-5515-OEM-JRC
JESSICA TIRADO,
Defendant.
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ORELIA E. MERCHANT, District Judge:
Plaintiff With You LLC (“Plaintiff”) sued defendant Jessica Tirado (“Defendant”) for
direct and contributory infringement of federally registered trademarks, trademark infringement
and false designation, and other related violations of federal and state law. Before the Court is
Plaintiff’s motion to dismiss its action with prejudice pursuant to Federal Rule of Civil Procedure
41(a)(2) (“Rule 41”). For the reasons below, Plaintiff’s motion to dismiss with prejudice is
GRANTED.
BACKGROUND
A. Trademark Infringement Claims
This motion arises out of a trademark dispute. Plaintiff is a company created to own and
exploit intellectual property rights associated with the celebrity Jessica Simpson. Complaint ¶ 17,
ECF 1. Plaintiff is the owner of all rights, title, and interest in and to the trademark “JESSICA
SIMPSON,” per se, as well as various iterations thereof, for a variety of products sold and services
rendered under license in the United States (the “Jessica Simpson Trademarks”). Id. ¶ 18 (citing
a full list of registered trademarks associated with Jessica Simpson).
Defendant filed U.S. Trademark Application Serial No. 90/835,036 seeking to register
“JESSICA’S EVERYTHING SHOP *JES*” (“Defendant’s Mark”) as a trademark for “On-line
retail store services featuring a wide variety of consumer goods of others; On-line retail store
services featuring clothing, footwear, headwear, designer clothing, bags, cups, mugs, jewelry, key
chains, charms, blank journals, magnets” in International Class 35, on the basis of use allegedly
commencing on April 25, 2021. Id. ¶ 29.
Plaintiff alleges that Defendant’s Mark is confusingly similar in appearance, meaning,
sound and commercial impression to the Jessica Simpson Trademarks. Id. ¶ 32.
Plaintiff maintains it attempted to negotiate with Defendant, through counsel, before taking
any action with respect to Defendant’s trademark application, namely by proffering an
arrangement that would allow Defendant to proceed with her exploitation of her name “Jessica
Tirado” in a way that would never impede Plaintiff’s activities. Id. ¶ 6. After not receiving a
response, Plaintiff filed an opposition to Defendant’s application before the U.S. Patent and
Trademark Office’s Trademark Trial and Appeal Board. Id. ¶ 7. Defendant then retained counsel
and subsequently conditioned any settlement upon a monetary payment, which Plaintiff refused,
leading to the initiation of this suit. Id. ¶¶ 8-10.
B. Procedural History
Plaintiff filed the Complaint, ECF 1, on July 20, 2023, and Defendant filed an Answer,
ECF 7, on November 24, 2023. Defendant’s answer contains no counterclaims. See Answer, ECF
7. The parties subsequently engaged in paper discovery. See ECF 12. During discovery,
Defendant revealed that she had reassigned the rights in her mark to a third party rendering her no
longer the real party in interest in this action, precipitating the Rule 41 motion. See Joint Status
Report dated May 6, 2024, ECF 21.
On April 19, 2024, the parties filed the fully briefed motion to dismiss pursuant to Rule
41. See ECF 15. Plaintiff’s notice of motion stated that it sought dismissal with prejudice “and
without an award of costs or attorneys’ fees to either party.” ECF 15. Plaintiff filed a
memorandum in support (“Pl’s Memo”), ECF 16, and a reply (“Reply”), ECF 18. Defendant
filed her opposition (“Opp.”). ECF 17.
On May 7, 2024, the assigned magistrate judge entered an order staying discovery pending
the outcome of the present motion. See Order dated May 7, 2024.
DISCUSSION
Federal Rule of Civil Procedure 41(a)(2) provides in relevant part that “an action may be
dismissed at the plaintiff’s request only by court order, on terms that the court considers proper.”
FED. R. CIV. P. 41(a)(2). Notably, the parties both agree that the case may be dismissed with
prejudice but spar over what effect such a dismissal may potentially have in a later engagement
about the availability of attorneys’ fees. See Pl’s Memo at 1, 3 (requesting that any dismissal come
“without an award of costs or attorneys’ fees to either party”); Opp. at 4 (“Therefore, Defendant
respectfully asks that this Honorable Court dismiss this case with prejudice . . . and allow for
Defendant file a Motion for Attorney’s fees . . . .”).
However, the issue of attorneys’ fees is not appropriately before this Court in the present
posture of a Rule 41 motion, which only resolves the issue of dismissal. Further, no party has
properly briefed the issue or provided the required documentation. To the extent either party seeks
a ruling on attorneys’ fees, such a motion is denied without prejudice to renew upon enter of the
judgment in this action. See Mercer Tool Corp. v. Friedr. Dick GmbH, 175 F.R.D. 173, 176–77
(E.D.N.Y. 1997) (declining to address attorneys’ fees in a Rule 41 motion as not properly briefed,
the court ordered that “defendant[ ] may serve a new motion for costs, including attorneys’ fees,
as a separate motion in compliance with this Court’s individual rules, thereby providing the
plaintiff with an adequate opportunity to respond.”).
Turning to the merits of the motion, whether to dismiss a case under Rule 41 lies within
the “district court’s sound discretion[.]” Catanzano v. Wing, 277 F.3d 99, 109 (2d Cir. 2001)
(citing Zagano v. Fordham Univ., 900 F.2d 12, 14 (2d Cir. 1990)). While plaintiff does not have
a right to see a case dismissed without prejudice, Plaintiff appears to have no wish to continue this
litigation and does not ask the Court to dismiss the case without prejudice. See Travco Ins. Co. v.
Dinerman, No. 16-cv-1064 (HG) (RER), 2023 WL 130832, at *2 (E.D.N.Y. Jan. 9, 2023) (citing
Catanzano, 277 F.3d at 109, 110). Further, it is evident that neither plaintiff nor defendants wish
to continue this litigation. Here, plaintiff is willing to dismiss the litigation with prejudice and
there is no evidence of prejudice to defendants by such a dismissal and no other interests are at
stake. “In situations like this, where a plaintiff does not oppose dismissing a case with prejudice,
there is no risk of potential harm or legal prejudice to defendants.” Id. Accordingly, plaintiff's
motion to discontinue the action with prejudice is granted. See Beer v. John Hancock Life Ins. Co.,
211 F.R.D. 67, 68 (N.D.N.Y. 2002).
CONCLUSION
For the reasons stated above, Plaintiff’s motion to dismiss with prejudice is GRANTED.
Any request for attorneys’ fees is DENIED without prejudice. The parties shall jointly submit a
proposed briefing schedule on the issue of costs and attorneys’ fees no later than seven days after
entry of judgment.
SO ORDERED.
/s/ Orelia E. Merchant
ORELIA E. MERCHANT
United States District Judge
Dated: July 15, 2024
Brooklyn New York