# Fullsend, Inc. v. Cannafellas Group, Inc.

> District Court, E.D. New York · July 16, 2025

URL: https://www.frixlaw.com/law-library/cases/11121910

## Case

- **Court:** District Court, E.D. New York
- **Decided:** July 16, 2025
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
--------------------------------------------------------------------X
FULLSEND, INC.,

Plaintiff, AMENDED
REPORT AND
RECOMMENDATION
-against- 22-CV-03741 (OEM) (JMW)

CANNAFELLAS GROUP, INC.,
KASHICBD, INC., SCOTT CICERONE,
And GIACOMO PAMPINELLA

Defendants.
--------------------------------------------------------------------X
A P P E A R A N C E S:

Michael G. Gabriel
Gabriel & Pelaez, PLLC
72-11 Austin St.
Ste Pmb 406
Forest Hills, NY 11375
Attorneys for Plaintiff

-and-

Andrew Bochner
Bochner PLLC
1040 Avenue of the Americas
Ste 15th Floor
New York, NY 10018
Attorneys for Plaintiff

No Appearance for Defendant Cannafellas Group, Inc.

WICKS, Magistrate Judge:

Plaintiff FullSend, Inc. (“Plaintiff”) commenced this action against Defendants Cannafellas
Group, Inc., KashiCBD Inc., Scott Cicerone, and Giacomo Pampinella (“Defendants”) alleging:
(i) trademark infringement, (ii) trade dress infringement under the Lanham Act (the “Act”), (iii)
common law trade dress infringement, (iv) unfair competition under common law, (v) unfair
competition under the Lanham Act, (vi) deceptive practices and false advertising, (vii) trademark
dilution and (viii) passing off. (See generally ECF Nos. 1, 22.) Before the Court on referral from
the Hon. Orelia E. Merchant is Plaintiff’s Motion for Default Judgment (ECF No. 64) against

only Defendant Cannafellas Group, Inc. (“Cannafellas” or “Defaulting Defendant”). For the
reasons stated herein, the undersigned respectfully recommends that the Court GRANT
Plaintiff’s Motion for Default Judgment (ECF No. 64).
BACKGROUND
I. Factual Background
The following allegations are drawn from the Amended Complaint. (ECF No. 22.)
Plaintiff is an Oregon corporation specializing in CBD products, including CBD gummy
candies, with its principal place of business located in Holbrook, NY. (Id. at ¶ 4.) Plaintiff has
become well-known for its uniqueness and has established its distinct products. (Id. at ¶ 2.)
Defendant KashiCBD Inc. (“Kashi CBD”) is a New York corporation with a principal

place of business in Babylon, New York. (Id. at ¶ 6.) Defendant Cannafellas Group, Inc.
(“Cannafellas”) is a New York corporation with a principal place of business in Babylon, New
York. (Id. at ¶ 7.) Both Cannafellas and Kashi CBD share the same address. (Id.)
Defendant Scott Cicerone (“Cicerone”) is an individual and a resident of New York.
(Id. at ¶ 8.) Cicerone is the owner of Kashi CBD stores, CEO of Cannafellas.com CBD
products, and the principal of Kashi CBD. (Id. at ¶¶ 9, 12.) Defendant Giacomo Pampinella
(“Pampinella”), owner of Kashi CBD and Cannafellas, is a resident of New York. (Id. at ¶¶ 10–
11.)
Plaintiff alleges that Defendants sought to benefit from Plaintiff’s distinctive trade dress
and design and subsequently rebranded and redesigned its product to echo Plaintiff’s design
and therefore infringed on Plaintiff’s trade dress and trademarks. (Id. at ¶ 2.) These actions led
to the commencement of this lawsuit.
II. Procedural Background

Plaintiff filed the Original Complaint on June 24, 2022. (ECF No. 1.) Service was
effectuated on Defendants as of June 28, 2022. (ECF No. 7.) On July 18, 2022, Defendants
filed an Answer and Affirmative Defenses. (ECF No. 8.) The parties entered into two
stipulations, whereby the Defendants would file an amended answer with affirmative defenses
to include a counterclaim for declaratory relief to invalidate the subject mark, and Plaintiff
would file an amended complaint following the amended answer. (ECF Nos. 10, 16-17.) An
Initial Conference was held before the undersigned and a Scheduling Order was entered. (ECF
Nos. 14-15.) As stipulated to, Plaintiff filed their Amended Complaint against all Defendants
on October 7, 2022. (ECF No. 22.) As no answer was filed to the Amended Complaint, on
November 17, 2022, Plaintiff requested a Certificate of Default. (ECF No. 23.) The Clerk of

the Court entered a Certificate of Default against all Defendants. (ECF No. 24.) Thereafter,
Defendants filed an untimely Amended Answer, Affirmative Defenses, and Counterclaims on
December 28, 2022. (ECF No. 25.) On January 6, 2023, Plaintiffs filed their Motion for
Default Judgment against all Defendants. (ECF No. 26.) While Plaintiff’s Motion for Default
Judgment was pending, the Court preliminarily reviewed the Motion and directed Plaintiff to
supplement its pending motion with additional information to support the reasonableness of its
request for fees by January 24, 2023. (Electronic Order dated January 10, 2023.)
On January 16, 2023, Counsel for Defendants filed a Motion to Withdraw as Counsel,
which was subsequently granted at a hearing before the undersigned. (ECF Nos. 27-30, 35-36.)
At this time, Plaintiff also filed the supplemental information in support of its Motion for
Default Judgment. (ECF No. 31.) However, Plaintiff’s Motion for Default Judgment was
denied without prejudice and with leave to refile because based upon the grant of the
application to withdraw, the proceedings were stayed until June 9, 2023, to allow Defendants

time to retain new counsel. The two corporate entity Defendants were also advised that they
cannot proceed pro se. (ECF No. 36.) The pro se entities were served with copies of the Orders
reminding them that they cannot proceed pro se. (ECF No. 37.) On July 9, 2023, the
undersigned again reminded pro se entities that they cannot proceed pro se and forewarned that
if counsel does not appear on their behalf at the July 19, 2023 status conference, the Court
would recommend default judgment be entered against them. (Electronic Order dated
7/9/2023.) That Order was served on the pro se Defendants. (ECF No. 40.)
At the July 19, 2023 Conference, there was no appearance by Cicerone or Cannafellas,
and so the Court extended time for those parties to retain counsel while cautioning that failure
to do so, would result in Plaintiff being afforded the opportunity to refile for default. (ECF No.

41.) That Order was served on non-appearing Defendants. (ECF No. 42.) The undersigned
held another Status Conference, where Cicerone and Cannafellas failed to appear again and
because of this, Plaintiff was directed to file a letter indicating its intent to renew its Motion for
Default Judgment and, specifically whether such motion will be as to all or only some of the
Defendants. (ECF No. 44.) At this time, Defendants Kashi CBD and Pampinella had retained
counsel. (ECF Nos. 38, 43.) Pro se Defendants were served with the previous mentioned
Order. (ECF No. 45.)
Throughout the next few months, Plaintiff intended to move for default and instead,
engaged in settlement discussions. (ECF Nos. 46-51.) A Settlement Conference was held
before the undersigned and the case settled. (Electronic Order dated 1/12/2024.) On August 12,
2024, the parties filed a Stipulation of Dismissal. (ECF No. 59.) However, the Stipulation was
deficient because, contrary to Rule 41, all parties did not sign the stipulation. (Electronic Order
dated 8/13/24.) On August 17, 2024, the undersigned issued an Order again advising

Cannafellas that a corporate entity cannot proceed pro se in federal court. (Electronic Order
dated 8/17/2024.)
On October 22, 2024, Plaintiff filed a letter stating that the parties intend to dismiss all
claims and counterclaims with prejudice but discovered that Cannafellas is “no longer
operating.” (ECF No. 60.) Plaintiff indicated at the November 7, 2024 Status Conference, its
intent to file a Motion for Default Judgment against Cannafellas (ECF No. 61), and filed such
Motion on January 21, 2025 (ECF No. 64). Plaintiff’s Motion for Default Judgment was
referred to the undersigned by Judge Merchant. (See Electronic Order dated January 23, 2025.)
In sum, Cannafellas was forewarned by the Court no less than five times, that if it
continued to appear pro se that would lead to a recommendation of default judgment. (ECF

Nos. 36, 44; Electronic Orders dated 5/23/23, 7/9/23, 8/17/2024.)
THE LEGAL FRAMEWORK
There is a two-step process for the granting of default judgments under Fed. R. Civ. P.
55. First, as here, the Clerk of the Court enters default when a party fails to plead or otherwise
defend the action. See Fed. R. Civ. P. 55(a); see also E.D.N.Y. Local R. 55.1(b) and 55.2. After
the clerk’s certificate of default is issued and posted on the docket, a party may apply for entry of
a default judgment. Fed. R. Civ. P. 55(b); see also E.D.N.Y. Local R. 55.2. The decision to
grant a motion for default is left to the sound discretion of the district court. No Limit Auto
Enterprises, Inc. v. No Limit Auto Body, Inc., No. 2-1CV-4755 (AMD)(JMW), 2022 WL
18399477, at *2 (E.D.N.Y. Dec. 12, 2022), report and recommendation adopted, 2023 WL
348271 (E.D.N.Y. Jan. 19, 2023). As the Clerk has already entered default against Defaulting
Defendant (ECF No. 24), the Court is primarily concerned with Plaintiff’s compliance with
E.D.N.Y. Local R. 55.2.

A default constitutes an admission of all well-pleaded factual allegations in the
complaint, except those relating to damages. See Greyhound Exhibitgroup, Inc. v. E.L.U.L.
Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992); see also Joe Hand Promotions, Inc. v. El
Norteno Rest. Corp., No. 06-CV-1878 (RJD)(JMA), 2007 WL 2891016, at *2 (E.D.N.Y. Sept.
28, 2007) (finding that a default constitutes an admission of all well-pleaded factual allegations
in the complaint and the allegations as they pertain to liability are deemed true). “Where
damages are susceptible to simple mathematical calculation and the plaintiff provides a
‘sufficient basis from which to evaluate the fairness’ of the requested damages, no evidentiary
hearing is necessary.” Euro Pac. Capital Inc. v. Bohai Pharm. Grp., Inc., No. 15-CV-4410
(VM), 2018 WL 1596192, at *5 (S.D.N.Y. Mar. 28, 2018) (quoting Am. Jewish Comm. v.

Berman, No. 15-CV-5983 (LAK) (JLC), 2016 WL 3365313, at *4 (S.D.N.Y. June 15, 2016),
report and recommendation adopted-, No. 15-CV-5983 (LAK), 2016 WL 4532201 (S.D.N.Y.
Aug. 29, 2016)).
However, a plaintiff must still demonstrate that the allegations set forth in the Complaint
state valid claims. See City of N.Y. v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir.
2011) (“[A] district court is ‘required to determine whether the plaintiff’s allegations establish
the defendant’s liability as a matter of law’” prior to entering default judgment) (quoting Finkel
v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009)) (alterations omitted). The Court, thus, must
ensure: (i) Plaintiff satisfied all required procedural steps in moving for default judgment, see
Local Civ. R. 55.2; and (ii) Plaintiff’s allegations, when accepted as true, establish liability as a
matter of law. See Finkel, 577 F.3d at 84; and (iii) Plaintiff’s request for damages is adequately
supported.
With this legal framework in mind, the undersigned analyzes the Motion for Default

Judgment.
DISCUSSION
I. Procedural Compliance
Local Civil Rule 7.1 requires motions to include a notice of motion, a memorandum of
law, and supporting affidavits or exhibits containing any necessary factual information for the
decision of the motion. E.D.N.Y. Local R. 7.1(a)(1) - (3). Local Civil Rule 55.2 requires that a
party moving for default judgment append to its application an affidavit or declaration
demonstrating that (A) the Clerk has entered default against the Defendant, (B) the movant has
complied with the Servicemembers Civil Relief Act, 50 U.S.C. § 3901 (“SCRA”), and (C) that
the individual defaulting defendant is not a minor or incompetent person, as well as all papers

required by E.D.N.Y. Local Rule 7.1 (supra), and a proposed judgment and certificate of service
that all documents in connection with the motion for default judgment has been personally
served on or mailed to the defaulting defendant residence or business address. E.D.N.Y. Local
R. 55.2(a)(1)-(3). Recently added under the Local Rules is that the moving party “must file a
statement of damages, sworn or affirmed to by one or more people with personal knowledge, in
support of the request, showing the proposed damages and the basis for each element of
damages, including interest, attorney’s fees, and costs.” E.D.N.Y. Local R. 55.2(c).
With respect to the non-military affidavit, before a default judgment can be entered for
the plaintiff, the SCRA commands that the Court “require the plaintiff to file with the court an
affidavit . . . stating whether or not the defendant is in military service and showing necessary
facts to support the affidavit.” ADI Glob. Distribution v. Green, No. 20-CV-03869 (AMD)
(JMW), 2023 WL 3355049, at *3 (E.D.N.Y. Apr. 24, 2023), report and recommendation
adopted, 2023 WL 3346499 (E.D.N.Y. May 10, 2023) (citing 50 U.S.C. § 3931(A)). The SCRA

requirement is inapplicable where, as here, a defendant is a corporation, rather than an
individual. See Guanglei Jiao v. Shang Shang Qian Inc., No. 18-CV-5624 (ARR) (VMS), 2020
WL 6370148, at *9 (E.D.N.Y. Aug. 11, 2020), report and recommendation adopted, 2020 WL
5105063 (E.D.N.Y. Aug. 31, 2020) (only applying service members civil relief act to the
individual defendants).
Here, the motion against the defaulting Defendant fully complies with Local Rule 7.1 and
Local Rule 55.2(a)(2) because it includes (1) a notice of motion (ECF No. 64); (2) a
memorandum of law (ECF No. 64-1); (3) affidavits and exhibits to support Plaintiff’s
contentions (see ECF Nos. 64-2, 64-6); and (4) a proposed order detailing the proposed judgment
(ECF No. 64-7). The motion further complies with Local Rule 55, as Plaintiff properly attached

and submitted a declaration affirming that the Certificate of Default was entered by the Court on
December 5, 2022 (ECF No. 64-2 at ¶ 18, 64-5.) Plaintiff has also filed affidavits of service
certifying that the requisite documents were served on Defaulting Defendant via mail. (ECF Nos.
62-63, 65-66.) Finally, Local Rule 55.2(c) requiring a statement of damages is not applicable
here given that Plaintiff seeks injunctive relief rather than money damages. E.D.N.Y. Local R.
55.2(c). Accordingly, the undersigned finds that the Motion for Default Judgment is procedurally
proper and now turns to the merits.
II. Default Factors
In evaluating whether to grant a default judgment, courts consider: (i) whether the
defendant’s default is willful; (ii) whether the defendant has a meritorious defense to plaintiff’s
claims; and (iii) the level of prejudice the non-defaulting party would suffer if the motion for
default judgment is denied. See Trustees of Empire State Carpenters Annuity, Apprenticeship,
Lab. Mgmt. Co-op., Pension & Welfare Funds v. Flooring Experts, Inc., No. 12-CV-6317

(ADS)(AKT), 2013 WL 4042357, at *2 (E.D.N.Y. Aug. 8, 2013), report and recommendation
adopted, 2013 WL 4761151 (E.D.N.Y. Sept. 3, 2013). Consideration of these three factors leads
to a recommendation that an entry of default judgment is appropriate where, as here, Defendant
continues to proceed pro se after fair warnings that proceeding as such may result in default
judgment.1 See Reagan v. Jennifer Matthew Nursing & Rehab. Ctr., No. 07-CV-6150P, 2010
WL 2869551, at *1 (W.D.N.Y. July 20, 2010) (citing R. Maganlal & Co. v. M.G. Chem. Co., No.
88-CV-4896 (MJL) (THK), 1996 WL 715526, at *2 (S.D.N.Y. Dec. 12, 1996) (“A corporation's
failure to retain counsel within a specified period of time may result in a default judgment
against the corporation.”)); Grace v. Bank Leumi Tr. Co. of NY, 443 F.3d 180, 192 (2d Cir. 2006)
(collecting cases on pro se corporate defendants and the ability to enter default judgment against

such unrepresented entities); see also DMKA LLC v. Chandler W T LLC, No. 23-CV-3296
(BMC), 2024 WL 406549, at *1 (E.D.N.Y. Feb. 2, 2024) (granting default judgment against a
pro se corporate defendant).
III. Jurisdiction
A. Personal Jurisdiction
“[B]efore a court grants a motion for default judgment, it may first assure itself that it has
personal jurisdiction over the defendant.” Sinoying Logistics Pte Ltd. v. Yi Da Xin Trading
Corp., 619 F.3d 207, 213 (2d Cir. 2010). Since a judgment rendered against a defendant over

1 The Court has warned of the consequences and reminded the Defaulting Defendant of its requirement to
retain counsel five times. See ECF Nos. 36, 44; Electronic Orders dated 5/23/2023, 7/9/2023, 8/17/2024.
whom the Court does not have personal jurisdiction can be vacated pursuant to Rule 60(b)(4), it
“preserves judicial economy for the court to assess personal jurisdiction from the outset and
thereby avoid rendering a void judgment.” ADI Glob. Distribution, 2023 WL 3355049, at *3
(citation omitted). Here, a sua sponte assessment of personal jurisdiction is appropriate in this

action. Id.
For a court to exercise personal jurisdiction: (i) a plaintiff must complete proper service
of process, (ii) there must be a statutory basis for personal jurisdiction that renders such service
of process effective, and (iii) the exercise of personal jurisdiction must comport with
constitutional due process principles. See Licci ex rel. Licci v. Lebanese Canadian Bank, SAL,
673. F.3d 50, 60–61 (2d Cir. 2012).
Service was procedurally proper here. Rule 4(c) requires that a summons must be served
with a copy of the Complaint and by a person who is at least 18 years old and not a party to the
case. See Fed. R. Civ. P. 4(c). Further, Rule 4(h) provides that a domestic or foreign corporation
may be served by “delivering a copy of the summons and of the complaint to an officer, a

managing or general agent, or any other agent authorized by appointment or by law to receive
service of process . . . .” See Fed. R. Civ. P. 4(h)(1)(B); Hartford Fire Ins. Co. v. Queens Cnty.
Carting, Inc., No. 20-CV-01844 (NSR), 2022 WL 254367, at *2 (S.D.N.Y. Jan. 27, 2022)
(quoting Fed. R. Civ. P. 4(h)(1)(A); (e)(1)) (“Under Rule 4(h)(1)(A), a corporation may be
served ‘in the manner prescribed by Rule 4(e)(1) for serving an individual,’ which includes
‘following state law for serving a summons in an action brought in courts of general jurisdiction
in the state where the district court is located or where service is made[.]’”). Under New York
law, service on a corporation may be made by serving a designated agent of the corporation or by
serving one of its officers. See N.Y. Bus. Corp. Law § 305(a) (“every domestic corporation or
authorized foreign corporation may designate a registered agent in this state upon whom process
against such corporation may be served. The agent shall be a natural person who is a resident of
or has a business address in this state or a domestic corporation or foreign corporation of any
type or kind formed, or authorized to do business in this state, under this chapter or under any

other statute of this state.”); N.Y. C.P.L.R. § 311(a)(1) (“Personal service upon a corporation …
shall be made by delivering the summons as follows: [] upon any domestic or foreign
corporation, to an officer, director, managing or general agent, or cashier or assistant cashier or
to any other agent authorized by appointment or by law to receive service.”).
Here, the Affidavit of Service for Defaulting Defendant shows that Scott Cicerone, as
Owner and President of Defendant was personally served on June 27, 2022. (ECF Nos. 7 at 1;
64-3 at 2.) Accordingly, service upon Defaulting Defendant was proper. See Foley v. Cap. One,
N.A., No. 25-CV-1526 (VB) (RWL), 2025 WL 958758, at *3 (S.D.N.Y. Mar. 31, 2025) (citing
N.Y. CPLR § 311(a)(1) (“Under New York law, personal service on a corporation can be made
by delivering the summons “to an officer, director, managing or general agent, or cashier or

assistant cashier or to any other agent authorized by appointment or by law to receive service.”
N.Y. CPLR § 311(a)(1); Duff v. Northwell Health Inc. - Syosset Hosp., No. 24-CV-5683
(NJC)(ARL), 2025 WL 1235117, at *2 (E.D.N.Y. Apr. 29, 2025) (same)).
Additionally, Plaintiffs brought this action pursuant to the Lanham Act, 15 U.S.C. §§
1052 and 1125, et seq., alleging claims of trademark infringement, and thus, the Court has
subject matter jurisdiction under federal question jurisdiction. See 28 U.S.C. § 1331. In cases
arising under federal question jurisdiction, where, like here, the statutes conferring jurisdiction
do not contemplate nationwide service of process, personal jurisdiction is determined by the law
of the state in which the district court sits. See Pettenato v. Beacon Health Options, Inc., 425 F.
Supp. 3d 264, 277 (S.D.N.Y. 2019). Thus, the Court first looks to New York law for the purpose
of determining personal jurisdiction over Defaulting Defendant in New York. Then, the Court
evaluates whether the “exercise of jurisdiction under state law satisfies federal due process
requirements of ‘fair play and substantial justice.’” Mortg. Funding Corp. v. Boyer Lake Pointe,

LLC, 379 F. Supp. 2d 282, 286 (E.D.N.Y. 2005) (quoting Burger King Corp. v. Rudzewicz, 471
U.S. 462, 477 (1985)).
Pursuant to New York law, “[f]or a plaintiff to demonstrate personal jurisdiction over a
defendant … the plaintiff must show either that the defendant was present and doing business in
New York within the meaning of C.P.L.R. § 301,” known as general jurisdiction, “or that the
defendant committed acts within the scope of New York's long-arm statute, C.P.L.R. § 302,”
known as specific jurisdiction. Stroud v. Tyson Foods, Inc., 91 F. Supp. 3d 381, 385 (E.D.N.Y.
2015) (quoting Reich v. Lopez, 38 F.Supp.3d 436, 454 (S.D.N.Y.2014) (internal alterations and
quotations omitted) (quoting Schultz v. Safra Nat'l Bank of New York, 377 Fed. Appx. 101, 102
(2d Cir.2010)).

The Court considers this issue in light of the Supreme Court’s pronouncements in
Daimler and Goodyear, where the Court noted that other than in “exceptional cases” the exercise
of general jurisdiction is confined to a corporation’s “place of incorporation and principal place
of business.” See Aybar v. Aybar, 177 N.E.3d 1257, 1265 (N.Y. 2021) (citing Daimler AG v.
Bauman, 571 U.S. 117, 119 (2014)); Goodyear Dunlop Tires Operations, S.A. v. Brown, 564
U.S. 915, 924 (2011)). Here, Defaulting Defendant is a New York corporation with a principal

place of business located in 65 Deer Park Ave, Babylon, New York, 11702. (See ECF No. 22 at ¶
7.) Thus, the Court has general jurisdiction over Defendant.
Moreover, to satisfy the requirements of due process, the Defendant’s activities in New
York must constitute “some act by which the defendant purposefully avails itself of the privilege
of conducting activities within the forum States, thus invoking the benefits and the protection of
its laws.” Burger King, 471 U.S. at 475. This involves a two-fold inquiry: (1) “minimum
contacts,” and (2) “reasonableness.” Sea Tow Servs. Int'l, Inc v. Pontin., 472 F. Supp. 2d 349,

360 (E.D.N.Y. 2007). Here, since Defaulting Defendant is domiciled in New York, thereby
availing itself of jurisdiction, the minimum contacts and reasonable test is unnecessary. With this
in mind, the Court finds a sufficient basis for the Court to exercise in personam jurisdiction here.
IV. Liability
In cases of default, the court “is required to accept all of the [plaintiff’s] factual
allegations as true and draw all reasonable inferences in its favor[.]” Finkel, 577 F.3d at 84. A
defendant’s default is considered an admission of all of the well-pleaded allegations of liability.
See Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d. Cir. 1992).
Here, Plaintiff is alleging: (i) trademark infringement, (ii) trade dress infringement, (iii) common
law trade dress infringement, (iv) false designation of origin, (v) dilution, (vi) and unfair

competition and passing off. (ECF No. 22 at ¶ 1.)
To determine liability, the undersigned must first consider what law is to be applied.
Plaintiff brought this action under federal trademark laws and related claims under New York law.
Therefore, this Court has both federal question jurisdiction and supplemental jurisdiction. Seeing
as these claims arise under both Federal Law and New York law, the following analysis will
proceed accordingly.
A. Count I: Trademark Infringement
Plaintiff seeks default judgment against Defaulting Defendant for trademark infringement
of the asserted marks under Section 43(a) of the Act. (ECF No. 22 at ¶¶ 47-55.) The Act
prohibits using “any word, term, name, symbol, or device, or any combination thereof . . . which
is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person.” 15 U.S.C. § 1125(a)(1)(A).
A plaintiff can prevail on a trademark infringement claim if it shows that the plaintiff

“owns a valid trademark, and that the defendant's use of that trademark is likely to cause
confusion regarding the source of the relevant product or services.” A.M. Surgical, Inc. v. Akhtar,
No. 15-CV-1318, 2016 WL 11543560 at *4 (E.D.N.Y. Apr. 19, 2016), report and
recommendation adopted, 2016 WL 11543427 (E.D.N.Y. May 10, 2016) (quoting Century 21
Real Est., LLC v. Raritan Bay Realty, Ltd., No. CV-07-1455, 2008 WL 4190955 at *4 (E.D.N.Y.
Sept. 3, 2008)). When evaluating whether the defendant’s use of the trademark is likely to cause
confusion, courts consider the eight Polaroid factors. See Polaroid Corp. v. Polarad Elecs.
Corp., 287 F.2d 492, 495 (2d Cir. 1961). These factors are:
(1) strength of the plaintiff's mark; (2) the degree of similarity between the two
marks; (3) the proximity of the products in the marketplace; (4) the likelihood that
the plaintiff will bridge the gap between the products (enter a market related to that
in which the defendant sells its product); (5) evidence of actual confusion; (6) the
defendant's bad faith; (7) quality of the defendant's product; and (8) sophistication
of the relevant consumer group.

Id. However, no single Polaroid factor is dispositive; the court must weigh the factors as
a whole and determine if consumers are likely to be confused. Brennan's Inc. v.
Brennan's Rest., 360 F.3d 125, 130 (2d Cir.2004).
Here, consideration of these factors leads to a finding that Plaintiff has
sufficiently alleged a claim for trademark infringement. Specifically, Plaintiff asserts that
the term “CANNA” on Defendant’s products has caused confusion because Plaintiff’s
customers have “come to associate the word ‘CANNA’ with [Plaintiff’s] unique Product
packaging.” (ECF No. 22 at ¶¶ 38-39.) Likewise, Plaintiff’s “asserted marks” also
include the words “Send It!” and it appears that Defendant uses “Eat it!” in a very similar
manner to cause customer deception. (Id. at ¶¶ 53, 55.) Therefore, Plaintiff properly pled
a trademark infringement claim.
B. Counts II and III: Trade Dress Infringement

Plaintiff further seeks default judgment against Defaulting Defendant for trade dress
infringement under the Act and under common law. (ECF No. 22 ¶¶ 57-73.) Trade dress includes
“the design and appearance of the product as well as that of the container and all elements making
up the total visual image by which the product is presented to customers. Jeffrey Milstein, Inc. v.
Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995). In a trade dress infringement claim
involving the appearance of a product, Plaintiff must:
(1) offer a precise expression of the character and scope of the claimed trade dress;
(2) allege that the claimed trade dress is nonfunctional; (3) allege that the claimed
trade dress has secondary meaning; and (4) allege that there is a likelihood of
confusion between the plaintiff's good[s] and the defendant's.

Eliya, Inc. v. Kohl’s Corp., No. CV 15–2123, 2016 WL 929266, at *4 (E.D.N.Y. Feb. 22, 2016),
report and recommendation adopted, 2016 WL 929321 (E.D.N.Y. Mar. 9, 2016) (quoting
Sherwood 48 Assoc. v. Sony Corp., of Am., 76 F. App’x 389, 391 (2d Cir. 2003)). Further, Plaintiff
must “offer a precise expression of the character and scope of the claimed trade dress and articulate
the elements of their product design with specificity to be afforded trade dress protection.” Bubble
Genius LLC v. Smith, 239 F.Supp.3d 586, 593 (E.D.N.Y. 2017) (citation modified). “The standard
for proving trade dress infringement under New York common law generally parallels the standard
under the Lanham Act, except that there is no requirement to show secondary meaning for
distinctive designs.” Capri Sun GmbH v. Am. Beverage Corp., 595 F. Supp. 3d 83, 187–88
(S.D.N.Y. 2022) (collecting cases).
Here, Plaintiff attaches pictures of the infringing products in its Amended Complaint
illustrating that there is potential for significant confusion in the marketplace. (ECF No. 22 at ¶¶
57, 68.) Further, in the Amended Complaint, Plaintiff includes images of both products
demonstrating the character and scope of the trade dress allegations. (Id. at 7-9, 11-14.) Lastly,
Plaintiff outlines that their “trade dress includes unique, distinctive, and non-functional designs …

[and] has extensively and continuously promoted and used its trade dress.” (Id. at ¶¶ 59, 70) Thus,
“[t]hrough that extensive and continuous use, [Plaintiff’s] trade dress has become a well-known
indicator of the origin and quality of [Plaintiff’s] Products, and has also acquired substantial
secondary meaning in the marketplace.” (Id.)
Accordingly, Plaintiff has pled trade dress infringement under the Act and New York
common law.
C. Count IV and V: Unfair Competition Under Lanham Act and Common Law
Plaintiff further brings claims for unfair competition under section 43(a) of the Act and
New York common law. As an initial matter, unfair competition claims are analyzed in a similar
fashion under both the Act and New York common law. Louis Vuitton Malletier v. Burlington

Coat Factory Warehouse Corp., 426 F.3d 532, 539 n.5 (2d Cir. 2005); Sussman-Automatic Corp.
v. Spa World Corp., 15 F. Supp. 3d 258, 273 (E.D.N.Y. 2014) (quoting Medisim Ltd. v. BestMed
LLC, 910 F.Supp.2d 591, 606 (S.D.N.Y. 2012) (“The elements of unfair competition under New
York State common law closely parallel the elements of unfair competition under the Lanham
Act, except that a plaintiff must show ‘either actual confusion or a likelihood of confusion, and
there must be ‘some showing of bad faith’ on the part of the defendants.’”)).
To establish a claim for unfair competition, plaintiff must show (i) a likelihood of
confusion and (ii) bad faith. Miss Universe, L.P., LLLP v. Villegas, 672 F. Supp. 2d 575, 596
(S.D.N.Y. 2009) (citing Milstein, 58 F.3d at 35). “The essence of an unfair competition claim
under New York law is that the defendant has misappropriated the labors and expenditures of
another with some element of bad faith.” Superb Motors Inc. v. Deo, No. 23-CV-6188 (JMW),
2025 WL 888464, at *26 (E.D.N.Y. Mar. 21, 2025) (quoting ML Genius Holdings LLC v.
Google LLC, No. 20-3113, 2022 WL 710744 at *4 (2d. Cir. Mar. 10, 2022) (quoting Universal

Instruments Corp. v. Micro Sys. Eng’g, Inc., 924 F.3d 32, 50-51 (2d Cir. 2001)).
Misappropriation claims “will fail where a plaintiff cannot demonstrate the bad faith
misappropriation of a commercial advantage which belonged exclusively to him.” Big Vision
Priv. Ltd. v. E.I. du Pont de Nemours and Co., 610 F. App'x 69, 70 (2d Cir. 2015)
(quoting LoPresti v. Mass. Mut. Life Ins. Co., 920 N.Y.S.2d 275, 277 (N.Y. App. Div. 2d Dep't
2006)).
In this case, Plaintiff has satisfied the elements of an unfair competition claim and
sufficiently pled that (1) there is a likelihood of confusion and (2) Defendant acted in bad faith.
Plaintiff asserts that infringing products are “likely to cause confusion, mistake, or deception as
to the affiliation, connection, and/or association” between Defendant and Plaintiff. (ECF No. 22

at ¶ 75.) Second, Plaintiff asserts that the Defendant acted “intentional[ly], willful[ly], and
malicious[ly].” (Id. at ¶¶ 79, 85.) Plaintiff further demonstrates Defendant’s bad faith by
incorporating photos of the infringing products to elucidate the similarity to Plaintiff’s products.
(Id. at 7-9, 11-14, ¶¶ 79, 85.) Thus, Plaintiff has sufficiently pled a claim for unfair competition
under the Act and New York common law.
However, Courts have made it clear that stand-alone claims of unfair competition under
the Lanham Act are deemed duplicative of a trademark infringement act. Under those
circumstances, liability will only be granted as to unfair competition under New York common
law. See OSF Int'l, Inc. v. Spellicy, No. 23-CV-00013 (MAD) (TWD), 2023 WL 6599087, at *4
(N.D.N.Y. Oct. 10, 2023) (“However, to the extent the amended complaint asserts a standalone
cause of action for unfair competition under the Lanham Act, such a claim must be dismissed as
duplicative of the federal trademark infringement claim, i.e., First Cause of Action.”); see also
Sussman-Automatic Corp., 15 F. Supp. 3d at 272-73 (holding the same).

Accordingly, Plaintiff has set forth a claim only for unfair competition under New York
law. It therefore follows, that the District Judge should dismiss Plaintiff’s Count V of unfair
competition claim under the Lanham Act as it is duplicative of Count I – Trademark
Infringement Claim under the Act.
D. Count VI: Deceptive Practices and False Advertising
Next, Plaintiff seeks liability for deceptive practices and false advertising under New
York Gen. Bus. Law §§ 349-50. Section 349 prohibits “[d]eceptive acts or practices in the
conduct of any business, trade or commerce or in the furnishing of any service in this state.” Lin
v. Miracle Curtains, NY, Inc., No. 19-CV-5627 (VMS), 2022 WL 4386834, at *11 (E.D.N.Y.
Sept. 22, 2022) (quoting N.Y. Gen. Bus. L. § 349(a)). Thus, a plaintiff must demonstrate “that a

defendant has engaged in (1) consumer-oriented conduct that is (2) materially misleading and
that (3) [the] plaintiff suffered injury as a result of the allegedly deceptive act or practice.” Id.
(quoting Orlander v. Staples, Inc., 802 F.3d 289, 300 (2d Cir. 2015) (quoting Koch v. Acker,
Merrall & Condit Co., 967 N.E.2d 675 (N.Y. 2012))). “Additionally, Section 350 of the statute
prohibits ‘[f]alse advertising in the conduct of any business, trade or commerce or in the
furnishing of any service in this state.’” OSF Int'l, Inc., 2023 WL 6599087, at *7 (quoting N.Y.
Gen. Bus. L. § 350). Under with Section, the same elements are required. See Medisim Ltd., 910
F. Supp. 2d at 607 (discussing the elements); Stutman v. Chem. Bank, 95 N.Y.2d 24, 29, 731
N.E.2d 608 (N.Y. 2000) (outlining the elements); Bowring v. Sapporo U.S.A., Inc., 234 F. Supp.
3d 386, 390 (E.D.N.Y. 2017) (same).
Even if the undersigned were to find Plaintiff properly pled these claims, New York
courts “have routinely dismissed trademark claims brought under Sections 349 and 350 as being
outside the scope of the statutes, because ordinary trademark disputes do not ‘pose a significant

risk of harm to the public health or interest’ and are therefore not the type of deceptive conduct
that the statutes were designed to address.” Kaplan, Inc. v. Yun, 16 F. Supp. 3d 341, 352–53
(S.D.N.Y. 2014) (collecting cases). Judge Oetken aptly described the interplay of these statutes
as follows:
The standards for bringing a claim under § 43(a) of the Lanham Act are
substantially the same as those applied to claims brought under [§] 349. That is
significant, because to fall within § 349, a claim must threaten an injury to the
public interest over and above ordinary trademark infringement or dilution. Thus,
courts in New York have routinely dismissed trademark claims brought under [§
349] as being outside the scope of the statute[ ], because ordinary trademark
disputes do not pose a significant risk of harm to the public health or interest and
are therefore not the type of deceptive conduct that the statutes were designed to
address.

Portkey Techs. Pte Ltd. v. Venkateswaran, No. 23-CV-5074 (JPO), 2024 WL 3487735, at *11
(S.D.N.Y. July 19, 2024), reconsideration denied sub nom. Portkey Techs. Pte Ltd v.
Venkateswaran, No. 23-CV-5074 (JPO), 2024 WL 4404127 (S.D.N.Y. Oct. 4, 2024) (internal
citations and quotations omitted) (cleaned up).

Accordingly, it is recommended that judgment not be entered on the Section 349 and 350
claim as asserted in the Complaint. However, if the District Judge disagrees, the Court proceeds
with its analysis of that claim.
Plaintiff has not sufficiently alleged a claim for deceptive practices and false advertising
under the General Business Law. Plaintiff has alleged that Plaintiff suffered injury through
Defendant’s conduct and will continue to suffer absent injunctive relief. (ECF No. 22 at ¶ 92.)
Second, Plaintiff alleged that Defendant’s actions were materially misleading through
Defendant’s platforms such as its website and social media, where Defendant “made statements
that contained deceptive associations between Plaintiff’s Asserted Marks, trade dress, and the
Infringing Products.” (Id. at ¶ 89.) However, the first element of consumer-oriented conduct is
not pled, and it is of most importance here. That is because, to be successful, Plaintiff must
outright at the least, show the conduct is consumer oriented. See Katsorhis v. 718 W. Beech St,

LLC, 234 A.D.3d 744, 748, 226 N.Y.S.3d 249, 254 (App. Div. 2d Dep’t 2025) (“[P]arties ...
must, at the threshold, charge conduct that is consumer oriented.”)
Therefore, the undersigned finds that this claim is not properly pled, and Defaulting
Default should not be found liable for Count VI and the claim should be dismissed.
E. Count VII: Trademark Dilution Under New York Law
Plaintiff further alleges trademark dilution under N.Y. Gen. Bus. L. § 360-l. Section 360-l
states that “[l]ikelihood of injury to business reputation or of dilution of the distinctive quality of
a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark
registered.” N.Y. Gen. Bus. L. § 360-l.
“Under New York state law, a plaintiff may obtain injunctive relief if it can show a

‘[l]ikelihood of injury to business reputation or of dilution of the distinctive quality of a mark or
trade name[.]’” E.A. Sween Co., Inc. v. A & M Deli Express Inc., 787 F. App'x 780, 786 (2d Cir.
2019) (citing Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 113-14 (2d Cir.
2009)). “[T]o establish dilution, a plaintiff must demonstrate ‘(1) ownership of a distinctive
mark, and (2) a likelihood of dilution.’” Shakuff LLC v. Shakuff Custom Glass Lighting Inc., No.
23-CV-123-EK-JRC, 2025 WL 977725 at *8 (E.D.N.Y. Mar. 7, 2025) (quoting Hormel Foods
Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506 (2d Cir. 1996)). Distinctiveness is measured
by “the strength of the mark for infringement purposes.” Id. at *8 (quoting Johnson & Johnson
Consumer Cos. v. Aini, 540 F. Supp. 2d 374, 394 (E.D.N.Y. 2008)).
Here, Plaintiff has demonstrated (1) ownership of a distinctive mark, and (2) likelihood
of dilution. First, Plaintiff has incorporated images of its distinctive marks including “FullSend
Canna” and “Send It!” and has further alleged that their marks have become “distinctive and
famous . . . and were famous prior to the acts committed by Defendants.” (ECF No. 22 at ¶¶ 40,

99.) Moreover, Plaintiff has also established a likelihood of dilution by alleging that Defendant
was “destroying the exclusive association between the trade dress and FullSend’s products, or
otherwise lessening the capacity of the trade dress to exclusively identify FullSend and its
products, and otherwise injure the business reputation of FullSend.” (Id. at ¶ 100.) Moreover,
Plaintiff alleges that Defendant’s acts have caused Plaintiff “loss of control over its reputation
and loss of substantial consumer goodwill.” (Id. at ¶ 103.) Therefore, Plaintiff has established a
claim for trademark dilution under New York law.
F. Count VIII: Passing Off Under New York Common Law
Lastly, Plaintiff alleges a claim for passing off, also known as palming off, under New
York common law. Palming off is “the sale of the goods of one manufacturer as those of

another.” N. Am. Olive Oil Ass’n v. D’Avolio Inc., 457 F.Supp.3d 207, 228 (E.D.N.Y. 2020)
(quoting ITC Ltd. v. Punchgini, Inc., 880 N.E.2d 852, 858 (N.Y. 2007)). To prevail on a palming
off theory, Plaintiff “must show a likelihood of confusion or deception of the consuming public
as to the source of the allegedly infringing product [or service] and bad faith on the part of the
Defendants.” Rockland Exposition, Inc. v. All. of Auto. Serv. Provider, 894 F.Supp.2d 288, 326
(S.D.N.Y. 2012) (quoting Tri-Star Pictures, Inc. v. Unger, 14 F.Supp.2d 339, 363–64 (S.D.N.Y.
1998)).
Here, Plaintiff alleged that Defaulting Defendant passed off Plaintiff’s good as their own.
Plaintiff demonstrated that the public was likely to be confused as to the source of the infringing
products. Plaintiff’s Amended Complaint states that Defendant’s use of “CANNA” on the
infringing product causes substantial confusion to consumers as Plaintiff also utilizes “CANNA”
in its trademark. (ECF No. 22 at ¶ 39.) Likewise, Defendant’s use of Plaintiff’s trade dress is
likely to cause confusion as to any affiliation between Plaintiff and Defendant. (Id. at ¶ 57.)

Plaintiff contends that Defendant acted in bad faith through “the similarity of its Infringing
Products to FullSend’s trade dress.” (Id. at ¶¶ 65, 72, 79, 85.) Thus, Plaintiff sufficiently
demonstrated that Defendant passed off Plaintiff’s products as their own.
V. Relief Requested
As mentioned, Plaintiff seeks only injunctive relief and not damages. (ECF No. 64-1 at
1.) Specifically, Plaintiff requests that upon granting default, for the Court to dismiss all of
Defaulting Defendant’s counterclaims so that this matter may be resolved. (Id. at 5.) Next,
Plaintiff seeks a permanent injunction that would prevent Defendant from any further trademark
infringement. (Id. at 18, 24.) Plaintiff also requests an Order that would have Defaulting
Defendant destroy all trade dress products, remove all infringement products from the market

and to serve Plaintiff with an affidavit that it complied with the injunction. (Id. at 25.) The
undersigned considers each request.
As an initial matter, Plaintiff’s request to dismiss all of Defaulting Defendant’s
counterclaims so that this matter may be resolved should be granted because as discussed above
Defendant may not proceed pro se. (Id. at 5.) Moreover, Plaintiff is entitled to a permanent
injunction. “A court may issue an injunction on a motion for default judgment provided that the
moving party shows that (1) it is entitled to injunctive relief under the applicable statute, and (2)
it meets the prerequisites for the issuance of an injunction.” CommScope, Inc. of N. Carolina v.
Commscope (U.S.A.) Int'l Grp. Co., 809 F. Supp. 2d 33, 41 (N.D.N.Y. 2011) (quoting Pitbull
Prods., Inc. v. Univ. Netmedia, Inc., No. 07-cv-1784, 2007 WL 3287368, at *5 (S.D.N.Y. Nov.
7, 2007)).
Here, the first prong is met because “the Lanham Act vests the court with the “power to
grant injunctions, according to the principles of equity and upon such terms as the court may

deem reasonable, to prevent the violation of any right of the registrant . . . .” See Rolls-Royce
PLC v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150, 159 (E.D.N.Y. 2010) (quoting 15 U.S.C. §
1116); see also Century 21 Real Est. LLC, 666 F. Supp. 2d at 295 (“‘[A]ccording to the
principles of equity and upon such terms as the court may deem reasonable to prevent the
violation of . . . [the Act.]’” (quoting 15 U.S.C. § 1116)).
As to the second prong, “[a]n injunction is warranted where a party has succeeded on
the merits, there is an absence of an adequate remedy at law, and an injunction is necessary to
prevent irreparable harm.” Id. (citing Roach v. Morse, 440 F.3d 53, 56 (2d Cir. 2006)). Here,

there is actual success on the merits for Plaintiff’s claims. See Rolls-Royce PLC, 688 F. Supp.
2d 150, 159 (E.D.N.Y. 2010) (“Actual success on the merits is shown by virtue of the
defendant's default.”).
It is well-established that a court may grant a permanent injunction as part of a
default judgment. A permanent injunction should be granted when a plaintiff
demonstrates: (1) that it has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate to compensate for that
injury; (3) that, considering the balance of hardships between the plaintiff and
defendant, a remedy in equity is warranted; and (4) that the public interest would
not be disserved by a permanent injunction.

Elegant Furniture & Lighting, Inc. v. GOLIGHTS, Inc., No. 22-CV-07172 (JMA) (ST), 2024
WL 343974, at *4 (E.D.N.Y. Jan. 30, 2024) (internal citations and quotations omitted)
(granting permanent injunction against the defaulting defendant because “all four factors weigh
in favor of Plaintiff”). Here, consideration of these factors also leads to granting a permanent
injunction.
First, Plaintiff has demonstrated that there is a likelihood of confusion between
Plaintiff’s and the Defaulting Defendant’s products. (See ECF Nos. 64-1 at 13; 22 at ¶¶ 57,
68.) “In trademark infringement cases, irreparable injury may be established by demonstrating

‘a likelihood of confusion.’ … Because of ‘[t]he unique nature of the trademark's ... function in
representing such an intangible asset ‘as reputation and good will’ ... irreparable harm is almost
always found [in infringement cases] where probability of confusion exists.’” Johnson &
Johnson v. Azam Int'l Trading, No. 07 -CV-4302 (SLT) (SMG), 2013 WL 4048295, at *12
(E.D.N.Y. Aug. 9, 2013).
Second, since “the losses of reputation and goodwill and resulting loss of customers are
not precisely quantifiable, remedies at law cannot adequately compensate Plaintiff for its
injuries.” U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 541 (S.D.N.Y.
2011), -af-f'd-, 511 F. App'x 81 (2d Cir. 2013) (citing and quoting Northwestern Nat'l Ins. Co. of
Milwaukee, Wisc. v. Alberts, 937 F.2d 77, 80 (2d Cir.1991) (“The irreparable injury requisite

for the preliminary injunction overlaps with the absent lack of adequate remedy at law
necessary to establish the equitable rights.”). Third, balancing the hardships between the
parties, shows that Plaintiff will suffer more by the confusing caused to its customers. See New
York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 344 (S.D.N.Y.
2010) (discussing confusion of customers caused by defendant’s conduct favors the plaintiff).
Fourth, the Court has a duty to ensure the public’s interest. See id. (“the public has an interest
in not being deceived”).
With that, the undersigned recommends that the Court enter judgment permanently
enjoining the Defaulting Default from any further infringing conduct. It likewise follows that
Plaintiff is entitled to a judgment directing the Defaulting Defendant to destroy all trade dress
products and remove the products from the market as part of the permanent injunction to
ensure no infringement products are being sold. This requested relief squarely fits with the
trademark violation. See City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 144 (2d

Cir. 2011) (citing Peregrine Myanmar Ltd. v. Segal, 89 F.3d 41, 50 (2d Cir.1996)) (“We have
instructed that injunctive relief should be ‘narrowly tailored to fit specific legal violations[.]’”).
Finally, the judgment should also direct the Defaulting Defendant to serve Plaintiff
with an affidavit that it complied with the injunction within thirty days after service is made.
See 15 U.S.C.A. § 1116(a) (“Any such injunction may include a provision directing the
defendant to file with the court and serve on the plaintiff within thirty days after the service on
the defendant of such injunction, or such extended period as the court may direct, a report in
writing under oath setting forth in detail the manner and form in which the defendant has
complied with the injunction.”); see also Ultra Recs. LLC v. Ultra Int'l Music Publ'g, No. 22-
CV-9667 (AS), 2025 WL 602943, at *11 (S.D.N.Y. Feb. 25, 2025) (ordering Defendant to

serve a sworn statement pursuant to 15 U.S.C. § 1116, within thirty days of service).
CONCLUSION
Accordingly, for the reasons set forth above, the Court respectfully recommends that
Plaintiff’s Motion for Default Judgment (ECF No. 64) be GRANTED as follows:

(i) Defaulting Defendant to be found liable on all of Plaintiff’s claims asserted in the
Amended Complaint (ECF No. 22) except for Count V for Unfair Competition and
False Designation of Origin under the Lanham Act, and Count VI for Deceptive
Practices and False Advertising, which should be dismissed;
(ii) Dismissing all of Default Defendant’s counterclaims set forth in ECF No. 25;
(iii) Enter a Permanent Injunction against Defaulting Defendant enjoining it from any
further infringement conduct as outlined in the Proposed Order (ECF No. 64-7);
(iv) Enter judgment directing Defaulting Defendant to destroy all trade dress products
and remove the products from the market as part of the permanent injunction; and

(v) Enter judgment directing the Defaulting Defendant to serve Plaintiff with an affidavit
that it complied with the Injunction within thirty (30) days after service is made.
OBJECTIONS
A copy of this Report and Recommendation is being electronically served on Plaintiff’s
Counsel. Counsel for Plaintiff is to serve the Defaulting Defendant with this Report and
Recommendation and file proof of service on ECF within two business days. Any written
objections to this Report and Recommendation must be filed with the Clerk of the Court within
fourteen (14) days of service of this Report. 28 U.S.C. § 636(b)(1) (2006 & Supp. 2011); Fed. R.
Civ. P. 6(a), 72(b). Any requests for an extension of time for filing objections must be directed to
the district judge assigned to this action prior to the expiration of the fourteen (14) day period for

filing objections. Failure to file objections within fourteen (14) days will preclude further review
of this Report and Recommendation either by the District Court or the Court of Appeals. Thomas
v. Arn, 474 U.S. 140, 145 (1985) (“a party shall file objections with the district court or else
waive right to appeal”); Caidor v. Onondaga Cnty., 517 F.3d 601, 604 (2d Cir. 2008) (“failure to
object timely to a magistrate's report operates as a waiver of any further judicial review of the

magistrate’s decision”); see Monroe v. Hyundai of Manhattan & Westchester, 372 F. App’x 147,
147–48 (2d Cir. 2010) (summary order) (same).
Dated: Central Islip, New York.
July 16, 2025
RESPECTFULLY RECOMMENDED,
James M. Wicks
/S/
JAMES M. WICKS
United States Magistrate Judge

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/11121910. Public record. Not legal advice.