Opinion
05 Civ. 00181 (CSH).
March 16, 2006
MEMORANDUM, OPINION AND ORDER
Before the court are motions by defendants-counterclaimants Constantine Cossifos and Michael J. Panicci for a default judgment and summary judgment against plaintiff-counterclaim defendant Michael J. Powell. For the reasons that follow, the motion for a default judgment is granted, the complaint is dismissed, and a default judgment on the counterclaims will be entered.
This action was commenced on January 7, 2005 with the filing of a Summons and Complaint. A pleading containing an Answer and Counterclaims dated April 8, 2005 was filed by defendants-counterclaimants and served on plaintiff-counterclaim defendant that same day. By certificate dated July 19, 2005, which has been attached to defendants-counterclaimants' Notice of Motion for Default Judgment, the Clerk of the Court attests that plaintiff-counterclaim defendant has not filed a reply to the Counterclaims and that the time within which to do so has expired. In those circumstances, the defendants-counterclaimants moved for a default judgment on their counterclaims. The plaintiff has not filed any papers in opposition to that motion. The defendants-counterclaimants are therefore entitled to a default judgment in their favor on the counterclaims.
Fed.R.Civ.P 7(a) provides for "a reply to a counterclaim denominated as such." Fed.R.Civ.P. 12(a)(2) provides in pertinent part that a plaintiff "shall serve a reply to a counterclaim in the answer within 20 days after service of the answer."
This will dispose of the action entirely, since both the plaintiff's counterclaims concern the same subject matter and seek declaration as to the lawful ownership of the trademark CINEPRO. Entry of a default judgment in favor of defendants-counterclaimants as to their counterclaims precludes judgment in favor of plaintiff-counterclaim defendant's claims. Furthermore, exhibits and affidavits submitted by defendants-counterclaimants in support of their Motion for Summary Judgment, a motion that was not opposed by plaintiff-counterclaim defendant, provide evidence that plaintiff-counterclaim defendant does not have a registered trademark and was refused registration of his trademark application by the Trademark Trial and Appeal Board. Max Decl., Ex. E, F.
The complaint asserts Lanham Act claims for trademark infringement and false advertising, a common law claim for unfair competition, as well as a New York General Business Law § 133 trademark infringement claim. Plaintiff-counterclaim defendant demands declaratory relief declaring plaintiff-counterclaim defendant is the exclusive registrant of the "Cinepro" mark and entitled to all protections afforded by governing law. Plaintiff-counterclaim defendant seeks preliminary and permanent injunctions enjoining defendants-counterclaimants from infringing plaintiff-counterclaim defendant's mark, selling or marketing merchandise in a misleading manner, unfairly competing with plaintiff-counterclaim defendant, or diluting the distinctive quality of the trademark. Plaintiff-counterclaim defendant seeks an accounting as to defendants-counterclaimants' gains and profits realized from the sale of infringing merchandise, as well as damages, costs, and attorney fees.
Defendants-counterclaimants' Answer and Counterclaims seeks a declaration that defendant-counterclaimants are the lawful owners of the trademark CINEPRO, that their use of the mark does not and will not infringe upon or violate any trademark or other rights of Powell, that Defendants-counterclaimants' activities have not caused any harm to Powell nor brought any unjust enrichment to Defendants-counterclaimants, and that Defendants-counterclaimants are not liable to Powell. The Answer and Counterclaims furthermore seeks an injunction against Powell from using the CINEPRO trademark and from unfairly competing with Defendants-counterclaimants, as well as treble damages, punitive damages, costs and attorneys' fees.
For the reasons stated, defendants-counterclaimants' motion for default judgment is granted and the complaint is dismissed. It is SO ORDERED. A default judgment in the form included by the defendants-counterclaimants in their motion papers will be endorsed by the Court and entered concurrently with this Memorandum and Opinion.
It is SO ORDERED.