Kinsley Enterprises, Inc. v. Kinsley Roofing, LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

KINSLEY ENTERPRISES, INC., et. al., : Civil No. 1:24-CV-00810

:

Plaintiffs, :

:

v. :

:

KINSLEY ROOFING, LLC, et. al., :

:

Defendants. : Judge Jennifer P. Wilson

MEMORANDUM

Before the court is a motion for default judgment seeking statutory damages,

attorney’s fees, and a permanent injunction filed by Plaintiffs, Kinsley Enterprises,

Inc., and Kinsley Construction, LLC. (Doc. 24.) The claims in this case arise from

Defendants Kinsley Roofing, LLC and Nigel Correa’s trademark infringement of

Plaintiffs’ registered marks. (Doc. 1.) For the reasons that follow, the court finds

that Plaintiffs have established that they are entitled to default judgment and a

permanent injunction. However, Plaintiffs have not established that Defendants

engaged in counterfeiting so as to entitle them to statutory damages under the

Lanham Act, nor does this case qualify as exceptional to justify an award of

attorney’s fees. Accordingly, the court will grant in part and deny in part

Plaintiffs’ motion.

FACTUAL BACKGROUND AND PROCEDURAL HISTORY

As alleged in the complaint, Plaintiff Kinsley Enterprises is the corporation

that manages Kinsley Construction, which is a construction company operating in

the mid-Atlantic region and “is nationally recognized as a leader in the commercial

and residential construction industries.” (Doc. 1, ¶¶ 10, 11.) Kinsley Roofing is an

LLC which was established in December 2023, and believed to consist of one

member, Defendant Nigel Correa. (Id. ¶¶ 12, 14.)

Plaintiffs have three trademarks at issue in the instant case: “Kinsley

Construction” at U.S. registration number 3920618, “K Kinsley Construction” at

U.S. registration number 97638216, and “Kinsley” at U.S. registration number

5589385. (Id. ¶¶ 16, 17, 18.) Plaintiffs allege that “[a]s a result of Kinsley

Construction’s continuous and substantial use . . . [,] advertising, promotion and

sales of construction services using the ‘Kinsley’ name and the Kinsley Marks, its

Marks and name [have] come to represent an invaluable symbol of the goodwill of

Kinsley Construction and Kinsley Enterprises’ business.” (Id. ¶ 22.) Plaintiffs

allege that Defendants are using business cards with a substantially similar mark, a

similar stylized font, and a “distinctive ‘K’” on its contracts. (Id. ¶¶ 26, 27.)

Plaintiffs further allege that they received various calls from customers

seeking to resolve or complain of disputes with Defendants Correa and Kinsley

Roofing. On January 23, 2024, Plaintiffs received a call “reporting that Correa

represented himself [as] an employee of ‘Kinsley Construction,’ which he noted

was ‘right down the road.’” (Id. ¶ 28.) This caller further “reported that Correa

represented several of Kinsley Construction’s projects as being projects that

Kinsley roofing had worked on, though this was false.” (Id. ¶ 31.) On April 2,

2024, Plaintiffs received another call in which the caller stated that “his friend had

just sent a check to Correa and [sought] to confirm that Correa was affiliated with

Kinsley Construction.” (Id. ¶ 32.) At this juncture, on April 4, 2024, Plaintiffs

sent a cease-and-desist letter to Defendants, to which Defendants did not respond.

(Id.¶ 33.) On April 16, 2024, Plaintiffs again received a call from an “individual

who claimed to have paid Correa $10,000 to repair his roof and was threatening to

sue Kinsley Construction for breach of contract, clearly believing there was some

affiliation between Kinsley Construction and Kinsley Roofing.” (Id. ¶ 35.)

Plaintiffs filed the complaint, alleging one count of federal trademark

infringement, one count of federal unfair competition, and one count of common

law unfair competition against Defendants on May 15, 2024. (Id. ¶¶ 42–56.) On

the same day, Plaintiffs filed a motion for preliminary injunction and brief in

support. (Doc. 3.) The complaint and motion were served on Defendants on June

7, 2024. (Doc. 9, 10.) Defendants filed no entry of appearance or response.

On June 28, 2024, this court ordered Defendants to respond by July 12,

2024, or the motion for preliminary injunction would be deemed unopposed. (Doc.

11.) In an abundance of caution, the court ordered the Clerk of Courts to serve

Defendants again with notice to respond to the motion for preliminary injunction.

(Doc. 12.) The order was returned undeliverable. (Docs. 13, 14.) No other

response was received. The court waited until the expiration of the date set in its

July 26, 2024 order and received no response. Accordingly, on August 27, 2024,

the court granted Plaintiffs’ motion for preliminary injunction. (Doc. 15.)

The court sent the order granting Plaintiffs’ motion for preliminary

injunction to Defendants, but the order was returned undeliverable. (Doc. 16.) On

October 29, 2024, Plaintiffs requested an entry of default, which the Clerk of

Courts subsequently entered. (Docs. 18, 20.) The order of the entry of default was

similarly returned undeliverable. (Docs. 21, 22.) On March 3, 2025, Plaintiffs

filed a motion for default judgment against Defendants. (Doc. 24.) In their

motion, Plaintiffs requested a permanent injunction that prevents Defendants from

infringing on Plaintiffs’ trademarks and sought monetary damages of $36,995.00.

(Id.) There has been no response to the motion for default judgment. Accordingly,

the motion is deemed unopposed and is ripe for review.

JURISDICTION

The court has subject matter jurisdiction over this matter pursuant to 28

U.S.C. § 1331, because the case arises under the laws of the United States,

specifically 15 U.S.C. §§ 1114, 1125. The court has supplemental jurisdiction over

Plaintiffs’ state law claims pursuant to 28 U.S.C. § 1367. Venue is proper in this

court pursuant to 28 U.S.C § 1391.

STANDARD OF REVIEW

Federal Rule of Civil Procedure 55 permits courts to enter a default

judgment following an entry of default. FED. R. CIV. P. 55(b)(2). Parties seeking

default judgment, however, are not entitled to it per se. BMO Harris Bank N.A. v.

JRD Trucking, LLC, No. 3:21-cv-02161, 2022 WL 18635326, at *3 (M.D. Pa.

Sept. 13, 2022). Rather, entering a default judgment “is left primarily to the

discretion of the district court.” Bugg v. Just Wing It, LLC, No. 18-cv-02399, 2020

WL 1675953, at *2 (M.D. Pa. Apr. 6, 2020) (quoting Hritz v. Woma Corp., 732

F.2d 1178, 1180 (3rd Cir. 1984)). Three factors guide the court’s exercise of

discretion: “(1) prejudice to the plaintiff if default is denied, (2) whether the

defendant appears to have a litigable defense, and (3) whether defendant’s delay is

due to culpable conduct.” Chamberlain v. Giampapa, 210 F.3d 154, 164 (3rd Cir.

2000). In considering these factors, the court proceeds knowing “the factual

allegations in the complaint are treated as proven, except for the contentions

related to damages.” Bugg, 2020 WL 1675953, at *3 (citing Comdyne I, Inc. v.

Corbin, 908 F.2d 1142, 1149 (3rd Cir. 1990)).

The Chamberlain analysis is not, however, the sole consideration. The court

also must be satisfied that the “unchallenged facts constitute a legitimate cause of

action.” United States v. Kline, 18-cv-02174, 2019 WL 1354150, at *2 (M.D. Pa.

Mar. 26, 2019) (quoting 10A Charles Alan Wright & Arthur R. Miller, Federal

Practice and Procedure § 2688 (3d ed. 2007)).

DISCUSSION

First, the court will consider whether default judgment is warranted.

Second, the court will consider whether a permanent injunction is appropriate to

enjoin Defendants from using Plaintiffs’ “Kinsley” trademarks. Third, the court

will determine whether Plaintiffs are entitled to statutory damages and attorney’s

fees.

A. Default Judgment is Warranted

As a threshold matter, the court analyzes the sufficiency of Plaintiffs’ state

law claims under the same standard as its federal claims. “The test for

[Pennsylvania] common law trademark infringement and unfair competition is

essentially the same as the test for infringement and unfair competition under the

Lanham Act.” Giannone v. Giannone, 429 F. Supp. 3d 34, 39 (E.D. Pa. 2019)

(quoting Gideons Int’l, Inc. v. Gideon 300 Ministries, Inc., 94 F. Supp. 2d 566, 580

(E.D. Pa. 1999)). Plaintiffs’ two federal claims are for trademark infringement in

violation of 15 U.S.C. § 1114 and unfair competition in violation of 15 U.S.C.

§ 1125(a). (Doc. 1, ¶ 47–56.)

Proving a violation of either Section 1114 or Section 1125 requires a

plaintiff to show: “(1) it has a valid and legally protectable mark; (2) it owns the

mark; and (3) the defendant’s use of the mark to identify goods or services causes a

likelihood of confusion.” A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,

237 F.3d 198, 210 (3rd Cir. 2000). The first two elements of the claim are easily

satisfied here, because Plaintiffs have proffered its trademark registration

certificates. (Docs. 25-3, 25-4, 25-5.) See also Members First Fed. Credit Union

v. Members 1st Fed. Credit Union, 54 F. Supp. 2d 393, 403 (M.D. Pa. 1999)

(“Registration of a mark under the Lanham Act constitutes prima facie evidence of

a mark’s validity and its ownership by a registrant.”).

As for the third element, “[a] likelihood of confusion exists when consumers

viewing the mark would probably assume that the product or service it represents

is associated with the source of a different product or service identified by a similar

mark.” Pa. State Univ. v. Vintage Brand LLC, 4:21-cv-01091, 2024 WL 456139,

at *22 (M.D. Pa. Feb. 6, 2024) (quoting A & H Sportswear, 237 F.3d at 211). The

Third Circuit has developed a muti-factor test to analyze the likelihood of

confusion between marks. See generally Interpace Corp. v. Lapp, Inc., 721 F.2d

460 (3rd Cir. 1983). When goods are in direct competition, however, courts need

“consider only the similarity of the marks themselves” when analyzing this

element. A & H Sportswear, 237 F.3d at 214.

Here, Plaintiffs satisfy the likelihood of confusion factor by alleging actual

confusion. Plaintiffs received calls on three separate occasions from customers

who believed an affiliation between Plaintiffs and Defendants existed. (Doc. 1, pp.

7–8.)1 The confusion was great enough that Plaintiffs added a public alert to their

website to warn customers of “Defendants’ misleading conduct.” (Doc. 5, p. 6.)

Accordingly, Plaintiffs have established causes of action under the Lanham Act

and state law by meeting all three elements of a statutory violation.

Moving to the Chamberlain factors, the court is satisfied that they weigh in

favor of granting default judgment. The first Chamberlain factor asks whether

denial of default judgment would prejudice Plaintiffs. It is clear that denying

Plaintiffs judgment would lead to continued harm to its business and hinder the

ability to protect its trademark.2 Cf. JUUL Labs, Inc. v. Zoey Trading LLC, 21-cv-

19299, 2022 WL 970412, at *6 (D.N.J. Mar. 31, 2022) (finding denial of default

judgment prejudicial to plaintiff in trademark infringement claim). The second

Chamberlain factor asks whether Defendants have a litigable defense. “Where a

party completely fails to respond to the claims against it, this factor weighs in favor

of granting default . . . .” Bugg, 2020 WL 1675953, at *5. Since Defendants have

1 For ease of reference, the court uses the page numbers from the CM/ECF header.

2 Plaintiffs argue that Defendants “have attempted to capitalize on [Plaintiffs’] excellent

reputation by usurping the ‘Kinsley’ name for their own economic benefit.” (Doc. 25, p. 4.)

put forth no appearance or defense in this action, it is unlikely Defendants have a

litigable defense. Finally, the third Chamberlain factor asks whether Defendants’

delay is due to culpable conduct, meaning conduct “taken willfully or in bad faith.”

Id. A presumption of bad faith arises when “a defendant fails to respond to a

complaint and offers no reason for its failure to engage in the action.” Id.; accord

Travelers Cas. & Sur. Co. of Am. v. Perlman, 351 F. Supp. 3d 930, 933–34 (E.D.

Pa. 2019) (finding failure to respond to complaint after being served properly

“culpable conduct”). Here, there have been numerous attempts to properly serve

Defendants with subsequent filings with no success. (See Docs. 13, 14, 16, 21,

22.) Default, therefore, is a product of Defendants’ culpable conduct. Having

found that the Chamberlain factors weigh uniformly in favor of default judgment

and that Plaintiffs’ allegations establish the trademark infringement claims, the

court concludes that Plaintiffs are entitled to default judgment.

B. Injunctive Relief

Plaintiffs seek a permanent injunction to prevent Defendants from using the

Kinsley mark or any substantially similar mark. (Doc. 25, p. 8.) A party moving

for a permanent injunction must show: “(1) it will suffer irreparable injury, (2) no

remedy available at law could adequately remedy that injury, (3) the balance of

hardships tips in its favor, and (4) an injunction would not disserve the public

interest.” TD Bank N.A. v. Hill, 928 F.3d 259, 278 (3rd Cir. 2019).

a. Factor One

As to the first factor, Plaintiffs argue that, for the non-Lanham Act claims,

trademark infringement demonstrates an irreparable injury as a matter of law,

relying on S & R Corp. v. Jiffy Lube International, 968 F.2d 371, 378 (3rd Cir.

1992) (Doc. 25, p. 9.) Similarly, for the Lanham Act claims, Plaintiffs contend

that “[t]he Trademark Modernization Act establishes the presumption of

irreparable harm when assessing injunctive relief in trademark litigation.” (Id.)

However, this is no longer the law of this circuit. See Ferring Pharm., Inc. v.

Watson Pharm., Inc., 765 F.3d 205, 217 (3rd Cir. 2014). The Ferring court made

clear that a Lanham Act violation does not give rise to a presumption of irreparable

harm for purposes of seeking an injunction. Id. Rather, Plaintiffs must establish

that they are “likely to suffer irreparable harm if an injunction is not granted.” Id.

“Loss of control of reputation, loss of trade, and loss of good will” are all bases

that can give rise to irreparable harm. Opticians Ass’n of Am. v. Indep. Opticians

of Am., 920 F.2d 187, 195 (3rd Cir. 1990).

Here, the marks of the two companies are substantially similar, and

Defendants have “attempted to create the impression that there is a relationship”

with Plaintiffs. (Doc. 1, ¶ 36.) If allowed to continue, Defendants’ infringement of

Plaintiffs’ trademarks and the resulting consumer confusion makes it likely that

Plaintiffs would continue to suffer a loss of control of their reputation, loss of

potential customers, and loss of good will. (Id. at 37.) This satisfies the first

factor, as harm will likely result in the absence of granting a permanent injunction.

b. Factor Two

As to the second factor, the injuries referenced above are the types of

injuries that legal remedies cannot adequately address. See Crocs, Inc. v. Dr.

Leonard’s Healthcare Corp., 21-cv-13583, 2022 WL 3754858, at *4 (D.N.J. Aug.

30, 2022) (explaining damage to reputation and good will did not have adequate

remedy at law). Thus, this factor is also satisfied.

c. Factor Three

As to the third factor, the balance of harms weighs in Plaintiffs’ favor. Any

harm Defendants would suffer from an injunction is “self-inflicted.” (Doc. 25, p.

10.) See Platypus Wear, Inc. v. Bad Boy Club, Inc., No. 08-cv-02662, 2009 WL

2147843, at *8 (D.N.J. July 15, 2009) (emphasizing that defendant would not be

subject to harm from permanent injunction if it had not infringed plaintiff’s mark);

see also Opticians, 920 F.2d at 197 (stating that defendant “can hardly claim to be

harmed, since it brought any and all difficulties occasioned by the issuance of an

injunction upon itself”). The third factor, therefore, weighs in favor of Plaintiffs.

d. Factor Four

Finally, as to the fourth factor, the consumer confusion that trademark

infringement creates is detrimental to the public interest. See S & R Corp., 968

F.2d at 379. As Plaintiffs indicate, “the public interest in upholding intellectual

property protections will be severely undermined” in the absence of relief. (Doc.

25, p. 11.) Accordingly, an injunction in this case to prevent ongoing trademark

infringement and to provide business service clarity would serve the public

interest. Thus, Plaintiffs are entitled to a permanent injunction enjoining

Defendants’ future trademark infringement.

C. Damages

Plaintiffs request $20,000 for statutory damages, under 15 U.S.C. § 1117(c),

and $16,995 in attorney’s fees, under 15 U.S.C. § 1117(a). (Id. at 11–12.) The

court will address each claim in turn.

1. Statutory Damages

By its plain language, Section 1117(c) limits statutory damages to cases

involving the “use of a counterfeit mark.” 15 U.S.C. § 1117(c). This section is

distinct from Section 1117(a), which concerns the broader category of any

trademark violation under the Lanham Act. See Avco Corp. v. Turn & Bank

Holdings, LLC, 659 F. Supp. 3d 483, 494–95 (M.D. Pa. 2023).

Turning first to whether Plaintiffs are entitled to statutory damages for use of

a counterfeit mark, Plaintiffs argue that Defendants have “willfully and

purposefully infringed on Plaintiffs’ marks for profit,” entitling Plaintiffs to

damages. (Doc. 25, p. 12.) Because Defendants failed to respond to any motion

filed to the court and “Plaintiffs cannot ascertain Defendants’ actual profits,”

Plaintiffs believe damages are appropriate to “deter wrongful conduct.” (Id.)

However, counterfeiting requires a higher degree of similarity between

marks than does trademark infringement. See Lontex Corp. v. Nike, Inc., 107 F.4th

139, 158 (3rd Cir. 2024). The term “counterfeit” is statutorily defined as “a

spurious mark which is identical with, or substantially indistinguishable from, a

registered mark.” 15 U.S.C. § 1127. In interpreting “substantially

indistinguishable,” courts have found that a mark differing from a registered mark

by a few letters is not a counterfeit. See Lontex Corp. v. Nike, Inc., 384 F. Supp.

3d 546, 557 (E.D. Pa. 2019) (collecting cases). For instance, toothpaste bearing

the name “Colddate” was not a counterfeit of “Colgate” toothpaste, even when the

two marks were on boxes with similar graphical elements. Colgate-Palmolive Co.

v. J.M.D. All-Star Imp. & Exp. Inc., 486 F. Supp. 2d 286, 291 (S.D.N.Y. 2007); see

also, e.g., Waiter.com, Inc. v. Waitr, Inc., 2:16-cv-01041, 2016 WL 7443656, at *4

(W.D. La. Dec. 22, 2016) (finding “waitr” trademark was not a counterfeit of

“waiter.com” trademark). These holdings reflect the well-established proposition

that a “colorable imitation” does not rise to the level of counterfeiting. See Lontex,

107 F.4th at 158.

In determining whether a mark is counterfeit, the Third Circuit measures

“the ‘overall impression’ ordinary consumers would have upon encountering the

marks.” Id. This court recently considered the counterfeit issue in a comparable

case, determining that while a permanent injunction was appropriate, statutory

damages were not. See Laughing Smith, LLC v. PPNC, Inc., No. 1:23-CV-01285,

2024 WL 4253346, at *1 (M.D. Pa. Sept. 20, 2024). In Laughing Smith, plaintiff

sought relief for its “Bubble Beads” product that it believed to be infringed by

defendant’s “Bubble Beadz” product. Id. The court found that because “Laughing

Smith does not allege that PPNC’s mark was a counterfeit, just that it was very

similar to Laughing Smith’s” mark, statutory damages were not appropriate

because the “Bubble Beadz” product was not a counterfeit mark. Id. at *4.

Here, Plaintiffs do not meet the heightened factual basis for the court to

conclude that Defendants used a counterfeit mark. Similar to Laughing Smith,

Plaintiffs do not allege that Defendants’ mark was a counterfeit, just that it was

very similar to Plaintiffs. (See Doc. 1, ¶ 26) (Defendants “are currently using

business cards with a mark substantially similar to the Kinsley Marks.”). While

Defendants’ mark may be “substantially similar” to Plaintiffs, this is insufficient to

warrant a finding that the mark is counterfeit. See Lontex, 107 F.4th at 158. As

shown in the complaint, Defendants’ business cards and contracts use a mark with

a similar “stylized font and distinctive ‘K,’” but the mark also includes the words

“Roofing LLC,” which differentiates the two marks for counterfeit purposes. See

Lontex Corp., 384 F. Supp. 3d at 557. (See Doc. 1, ¶¶ 26–27.) The inclusion of a

different company name and address are enough to put an ordinary consumer on

notice that the marks are not the same. Further, Defendants’ false representations

about their relationship with Plaintiffs resemble “colorable imitation,” which does

not satisfy the counterfeit standard. See Lontex, 107 F.4th at 158; (Doc. 1, p. 8.)

While Defendants’ failure to participate in the litigation could be classified as

“willful” infringement, Plaintiffs fail to prove that this case involves the “use of a

counterfeit mark.” 15 U.S.C. § 1117(c)(2). Therefore, the court cannot conclude,

on the record before it, that Defendants’ mark rises to the level of counterfeit under

the Lanham Act.

Plaintiffs’ motion for default judgment seeks statutory damages reserved for

counterfeiting cases. Plaintiffs presented no argument as to why they are entitled

to other damages available for ordinary trademark infringement, such as “(1)

defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the cost of

the action.” 15 U.S.C. §1117(a). Accordingly, Plaintiffs have not shown they are

entitled to statutory damages under § 1117(c).

2. Attorney’s Fees

Plaintiffs also seek attorney’s fees pursuant to 15 U.S.C. § 1117(a). Under

the Lanham Act, courts “in exceptional cases may award reasonable attorney fees.”

15 U.S.C. § 1117(a). While the statute does not explicitly define the term

“exceptional,” generally a trademark case is exceptional for purposes of an award

of attorneys’ fees when the infringement is malicious, fraudulent, deliberate or

willful and the award is “justified by equitable considerations.” Securacomm

Consulting, Inc. v. Securacom Inc., 224 F.3d 273, 280 (3d Cir.2000). The

Supreme Court has held that “[d]istrict courts may determine whether a case is

‘exceptional’ in the case-by-case exercise of their discretion, considering the

totality of the circumstances.” Octane Fitness, LLC v. ICON Health & Fitness,

Inc., 572 U.S. 545, 545 (2014).3

Evidence of culpable conduct and willful infringement “does not

automatically render a case exceptional,” but can be a consideration, particularly

when defendants have clear knowledge of their infringing conduct. Hershey Co. v.

Anykiss, No. 1:18-CV-00843, 2019 WL 5692738, at *5 (M.D. Pa. Nov. 4, 2019)

(ruling that attorney’s fees were appropriate because defendants continued to use a

KISSES trademark that was confusingly similar with plaintiffs even after

3 While the Octane decision does not rule on the meaning of 15 U.S.C. § 1117(a) explicitly, the

Third Circuit has held “that the Court was sending a clear message that it was defining

‘exceptional’ not just for the fee provision in the Patent Act, but for the fee provision in the

Lanham Act as well.” Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 315 (3d Cir. 2014).

defendants were denied attempts to register their patent and partner with plaintiffs);

see also World Ent., Inc. v. Brown, No. CIV.A. 09-5365, 2011 WL 2036686, at *3

(E.D. Pa. May 20, 2011), aff’d, 487 F. App’x 758 (3d Cir. 2012) (holding that a

case was exceptional when defendant received numerous cease and desist letters

and continued to infringe upon plaintiff’s mark up until the time of a damages

hearing); Piquante Brands Int'l, Ltd. v. Chloe Foods Corp., No.

CIVA3:08CV4248FLW, 2009 WL 1687484, at *2–7 (D.N.J. June 16, 2009)

(finding that “due to Defendant’s abject failure to respond in any fashion to

Plaintiffs’ Complaint, the Court can infer that the trademark infringement was

indeed willful” after defendant asked plaintiffs to set aside the Entry of Default,

was refused, and then continued its infringement).

Unlike Hershey Co., World Ent., Inc., and Piquante Brands Int'l, Ltd., here

there has been no responsive communication from Defendants whatsoever. See

2019 WL 5692738, at *5; 2011 WL 2036686, at *3; 2009 WL 1687484, at *2–7.

While attempts were made to serve Defendants with multiple filings subsequent to

service of the complaint, there is a lack of proof that Defendants received those

filings. (See Docs. 13, 14, 16, 21, 22.) Plaintiffs’ argument that Defendants

“willfully adopted Plaintiffs’ trademarks to deceive the public and capitalize on

Plaintiffs’ goodwill,” does not automatically render this case exceptional in the

absence of further proof of Defendants’ continued infringement. (Doc. 25, p. 13)

(See Hershey Co., 2019 WL 5692738, at *5.)

Plaintiffs rely on Securacomm to argue why they present a “model case for

the award of attorney’s fees.” (Doc. 25, p. 13.) In Securacomm, the Third Circuit

upheld the district court’s award of attorney’s fees because the case “involve[d] a

sweeping attempt to beat a financially weaker opponent through the use of

vexatious litigation.” 224 F.3d at 283. Securacomm is distinguishable from the

instant case because Defendant has not engaged in vexatious litigation conduct.

Accordingly, the court will not exercise its discretion to award attorney’s fees of

$16,995 in this case.

CONCLUSION

For the reasons set forth above, Plaintiffs are entitled to default judgment

and a permanent injunction enjoining Defendants’ future trademark infringement.

However, Plaintiffs have failed to demonstrate they are entitled to statutory

damages for counterfeiting under 15 U.S.C. § 1117(c)(2) and attorney’s fees under

15 U.S.C. § 1117(a). Therefore, the court will grant in part and deny in part

Plaintiffs’ motion. An appropriate order will issue.

s/Jennifer P. Wilson

JENNIFER P. WILSON

United States District Judge

Middle District of Pennsylvania

Dated: August 6, 2025