Pet Life, LLC v. KAS Pet, LLC

690 F.Supp.3d 41

PET LIFE, LLC, Plaintiff, v. KAS PET, LLC and Does 1-10 inclusive, Defendants.

Civil Action No. 23-CV-4882 (GRB) (SIL)

United States District Court, E.D. New York

Signed September 1, 2023

Richard S. Mandel, Cowan Liebowitz & Latman, Attorneys for Plaintiff, 114 West 47th St, New York, NY 10036.

Jonas Noah Hagey, BraunHagey & Borden LLP, Attorneys for Defendants, 118 West 22nd St, 12th Floor, New York, NY 10011.

MEMORANDUM OF DECISION AND ORDER

GARY R. BROWN, United States District Judge:

While marketing pet supplies to the public under the name "Pet Life," plaintiff and defendants attempt to portray an air of geniality. On its website, plaintiff vows that it is "dedicated to providing the most meaningful and innovative pet supplies to improve the daily lives of our pet's [sic]."¹ Defendants endeavor to lure consumers with its "Fur-ever Young Adoption Event" featuring photos of actress and model Christie Brinkley and "a whole lot of adorable senior pups."² Unfortunately, in this arena, both parties have abandoned all pretense of conviviality, opting instead to "Cry 'Havoc!' and let slip the dogs of war!"³ And like any ruthless battle, the result is a bloody mess.

In this seemingly simple trademark action, plaintiff seeks injunctive relief and a host of other remedies, while defendants counterclaim for similar relief. In the hands of misguided litigants and overly aggressive counsel, the dispute has assumed titanic proportions "full of sound and fury, signifying nothing."⁴ Amid a barrage of bloated filings and dubious procedural maneuvers by both sides, plaintiff belatedly seeks a preliminary injunction against defendants. Because of plaintiff's delay in filing, failure to effectively demonstrate irreparable harm and the anemic nature of the mark,⁵ the motion for a preliminary injunction is readily denied. Moreover, the Court dismisses defendants' second counterclaim as frivolous.

Background

The Trademark Filings

The history of trademark filings by the parties bears some relevance to this action, and is summarized in the table below:

Party

Trademark No.

Nature of Trademark

Registration Date

First Use Dates (per USPTO)

Citation

Plaintiff

5,533,692

Graphic Mark

Image materials not available for display.

8/7/2018

2009-10

Docket Entry ("DE") 10-3

Defendant

5,948,054

Words: Pet Life

12/31/2019

2018

DE 24-10

Defendant

97387766

(application)

Graphic Mark

pet life

5/28/2022

n/a

DE 24-11

Defendant

97387762

(application)

Words: Pet Life

4/28/2022

n/a

DE 24-12

Plaintiff

6,898,432

Words: Pet Life

11/15/2022

2009-2019

DE 10-4

Plaintiff

7,056,353

Words: Pet Life

5/16/23

2021-2023

DE 10-5

Litigation of this Action

According to the complaint, filed on June 29, 2023, plaintiff Pet Life, LLC brings "an action for infringement of a registered trademark in violation of Section 32 of the Lanham Act." Docket Entry ("DE") 1 at ¶ 1. The plaintiff claims to sell, under the name Pet Life, "a wide range of pet products, [such as] pet shampoo, pet wipes, pet deodorizers, pet dietary supplements, disposable training pads, pet waste bags, bark control devices, pet scratching posts, pet grooming products, pet toys, pet beds, pet carriers, pet bowls, pet harness collars and leashes, and pet apparel." Id. ¶ 14.⁶ The complaint alleges that plaintiff owns three relevant federal trademark registrations, one of which protects a stylized logo, while the other two apply to "Pet Life" using standard characters. Id. ¶ 16. Notably, the complaint omits the dates associated with these registrations. See id.

Allegedly, "[l]ong after Plaintiff had established rights to its PET LIFE mark, Defendants began using a confusingly similar mark," to wit: Pet Life Unlimited, sometimes omitting the word "unlimited." Id. ¶¶ 25-27. Plaintiff claims that "Defendants' pet products do not espouse the same degree of high-quality goods as Plaintiff's goods provided under the PET LIFE mark." Id. ¶ 33. Plaintiff further alleges that it sent a cease-and-desist letter to defendants on April 23, 2023, which went unheeded. Id. ¶ 39. Based on these scant allegations, plaintiff purports to bring causes of action sounding in federal trademark infringement, false designation of origin, "anticybersquatting" (emanating from defendants' registration of mypetlife.com domain name), and trademark dilution under New York law.

About three weeks after filing its complaint, plaintiff filed a motion for an Order to Show Cause seeking a broad preliminary injunction against defendants. DE 10. The Court promptly scheduled a conference with counsel. See DE 16. The motion did not seek a temporary restraining order, and plaintiff declined the Court's invitation for an evidentiary hearing. DE 16 at 5. At that hearing, held in early July, counsel for plaintiff summarized its argument regarding irreparable harm: plaintiff was approaching its "[busy] season" which begins in September. Id. at 25. Counsel also acknowledged that defendants have not been using plaintiff's stylized logo mark, subject of its earliest trademark. Id. at 11. Counsel for defendants argued for pre-decisional discovery because "if there was a hearing, there would be no way to impeach any of their witnesses," id. at 18, even though plaintiff had waived a hearing.⁷ Meanwhile, plaintiff's counsel responded that it was entitled to relief simply because "the declarations are true. They state facts." Id. at 21. The parties completed briefing plaintiff's motion for preliminary relief with filings, exhibits, responses, replies and sur-replies comprising thousands of pages that fill eight large binders.⁸

And still, battle raged.⁹ After exhaustively briefing the motion, defendants submitted a supplemental filing containing a 2018 arbitration decision concerning the petlife.com website. DE 30-2.¹⁰ That decision found that a registrant had registered the domain name in 2003, long before plaintiff began using the trademark at issue and rejected plaintiff's claim to the domain name, finding that plaintiff had engaged in "reverse domain name hijacking." Id. Plaintiff's opposition to this filing constitutes mainly procedural grousing. See DE 34. Clearly, the decision bears some relevance to plaintiff's claim, though its import seems to have been exaggerated by defendant.

Having no legitimate procedural mechanism to further argue against plaintiff's application for preliminary relief, defendants essentially invented one: counsel created a submission entitled "Objections to Evidence in Support of Plaintiff's Motion for a Preliminary Injunction," lodging nearly three dozen "objections," including "relevance," "authenticity," "lack of personal knowledge" and "misleading description," to exhibits and assertions contained in plaintiff's reply documents. See DE 41. As the deployment of an imaginary advocacy device cannot go unaddressed, plaintiff filed a 13-page "Response to Objections." See DE 42.¹¹

Defendants, meanwhile, answered the complaint, adding counterclaims seeking "to cancel PLLLC's trademark registrations and stop PLLLC from menacing KAS Pet's thriving business with baseless claims." DE 22 at 11. Specifically, defendants seek cancellation of plaintiff's trademark registrations based on fraudulent representations, and a declaratory judgment that plaintiff has no right its claimed trademarks. Id. at 17. That second counterclaim is apparently based upon an alleged assignment of plaintiff's trademark rights to a third party, a notion entirely predicated upon an erroneous filing in the U.S. Patent and Trademark Office, which plaintiff made clear in its complaint. See DE 1 at 5. Rather than resolve this matter, counsel for plaintiff began the process of filing a formal motion to dismiss. See DE 36. Defendants, for their part, retained the unbridled temerity to oppose dismissal of this baseless counterclaim, attempting to conjure up different grounds to support it. See DE 43.

Surveying this procedural history proves daunting. While courts often resort to Latin phrases to help articulate the inexpressible, here a Yiddish expression comes to mind: oy veh.¹²

This opinion follows.

DISCUSSION

Preliminary Injunction Standard

As this Court has previously observed:

A party seeking preliminary injunctive relief must demonstrate:

(1) irreparable harm absent injunctive relief; (2) either a likelihood of success on the merits, or a serious question going to the merits to make them a fair ground for trial, with a balance of hardships tipping decidedly in the plaintiff's favor; and (3) that the public's interest weighs in favor of granting an injunction. Red Earth LLC v. United States, 657 F.3d 138, 143 (2d Cir. 2011). The Court has "wide discretion in determining whether to grant a preliminary injunction," as it is "one of the most drastic tools in the arsenal of judicial remedies." Grand River Enter. Six Nations, Ltd. v. Pryor, 481 F.3d 60, 66 (2d Cir. 2007).

Cablevision Sys. Corp. v. Verizon New York Inc., 119 F. Supp. 3d 39, 49 (E.D.N.Y. 2015). For at least three important reasons, plaintiff's motion for a preliminary injunction utterly fails.

Delay

Unexplained delay in the filing of an application for preliminary relief can undermine a showing of irreparable harm. Christmas House USA, Inc. v. Christmasland Experience LLC, No. 22-CV-7691 (GRB), 2022 WL 17852025, at *2 (E.D.N.Y. Dec. 22, 2022) (finding that the delay of just over a month, in a seasonal business, supported denial of preliminary injunction); Weight Watchers Int'l, Inc. v. Luigino's, Inc., 423 F.3d 137, 144-45 (2d Cir. 2005) ("We have found delays of as little as ten weeks sufficient to defeat the presumption of irreparable harm that is essential to the issuance of a preliminary injunction.").

Exactly when plaintiff learned of defendants' use of Pet Life is unclear. In its motion papers, plaintiff's principal represents "[t]o the best of Pet Life's recollection,"¹³ it first learned of defendants' use of the mark in March 2023. DE 25-13 at 3. That def...