GS Holistic, LLC v. New Paradise Inc et al

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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
X
GS HOLISTIC, LLC,
Plaintiff,
REPORT AND
RECOMMENDATION
-against- 	25-cv-02609 (NJC) (JMW)
NEW PARADISE INC d/b/a NEW PARADISE STORE,
and, SURENDRA PRADHAN,
Defendants.
X
A P P E A R A N C E S:
Anthony M Verna, III
Verna Law, P.C.
80 Theodore Fremd Ave.
Rye, NY 10580
Attorney for Plaintiff
-and-
No Appearance for Defendants
WICKS, Magistrate Judge:
Plaintiff GS Holistic, LLC (“GS” or “Plaintiff”), commenced the instant action against
Defendants, New Paradise Inc d/b/a New Paradise Store (“New Paradise”) and Surendra Pradhan
(“Pradhan” and collectively, the “Defendants”) to recover statutory damages for willful
trademark infringement, and false designation, and, among other things, to enjoin the Defendants
with regard to the product at issue. (See generally, ECF No. 1.) Before the Court on referral from
the Hon. Nusrat J. Choudhury is Plaintiff’s Motion for Default Judgment (ECF No. 15) against
all Defendants. (Electronic Order dated 10/20/2025.) For the reasons stated herein, the
undersigned respectfully recommends that Plaintiff’s Motion (ECF No. 15) be GRANTED.
11/13/2025
FILED
CLERK
U.S. DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
LONG ISLAND OFFICE
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BACKGROUND
I. 	Factual Background
The following allegations are drawn from the Complaint. (ECF No. 1.) GS is a Delaware
limited liability corporation with its principal place of business at 7162 Beverly Boulevard, #207,
Los Angeles, California 90036. (Id. at ¶ 4.) Defendant New Paradise is a New York corporation
with its principal place of business at 2024 New York Avenue, Huntington Station, New York
11746. (Id. at ¶ 5.) Defendant Pradhan is an individual domiciled in New York and residing at
520 Herzel Boulevard, Babylon, New York 11704. (Id. at ¶ 6.) Defendant Pradhan is the owner
of New Paradise. (Id.)
Since 2020, GS has marketed and sold products, such as gravity waterpipes, using the
trademark “Stündenglass.” (Id. at ¶ 7.) GS owns several United States trademarks in relation to
Stündenglass and their products. (Id. at ¶ 10.) These trademarks are distinctive to “both the
consuming public and the Plaintiff’s trade.” (Id. at ¶ 13.) GS has authorized approximately 3,000
stores in the United States to sell its products and has put substantial time and money into
developing consumer recognition. (Id. at ¶ 16-19.) Due to the high value of Stündenglass-
branded products, they are more likely to be targeted by counterfeiters. (Id. at ¶ 21.) GS alleges
Defendants are an example of such counterfeiters harming GS by selling illegitimate gravity
waterpipes. (Id. at ¶ 22-25.)
Defendants operate a retail smoke shop. (Id. at ¶ 26.) They have offered for sale
counterfeit Stündenglass products without the consent of GS. (Id. at ¶ 27.) The counterfeit items
are substantially indistinguishable by sight from the Stündenglass trademark products and
qualify as counterfeit marks as defined in 15 U.S.C. § 1116(d). (Id. at ¶ 30, 35.) The counterfeit
items are nearly identical to the authentic products, causing confusion in the marketplace among
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consumers. (Id. at ¶ 31.) On February 25, 2025, GS’ investigator visited New Paradise’s location
and observed the counterfeit gravity waterpipes on display. (Id. at ¶ 33.) GS alleges that the
Defendants’ use of the Stündenglass trademark began after the registration of said trademark.
(Id. at ¶ 37.) Defendants’ actions have caused GS to suffer losses and will likely damage their
reputation in association with Stündenglass trademark products. (Id. at ¶ 39.) Due to this, GS
brings two claims for (i) willful trademark infringement and (ii) false designation, and seeks
statutory damages, prejudgment interest, an Order enjoining New Paradise from inter alia selling
the product, as well as other equitable relief. (Id. at 15-21.)
II. 	Procedural History
On May 9, 2025, Plaintiff filed the instant Complaint. (ECF No. 1.) On May 22, 2025,
summonses were issued to both Defendants (ECF Nos. 9-10), and returned executed on May 27,
2025, and June 2, 2025, respectively (ECF Nos. 11-12). As a result of Defendants’ failure to
answer the Complaint or otherwise appear, Plaintiff requested a Certificate of Default. (ECF No.
13.) Entry of Default Judgment by the Clerk was entered on September 12, 2025. (ECF No. 14.)
Subsequently, Plaintiff moved for default judgment. (ECF No. 15.) On October 20, 2025,
the motion was referred to the undersigned for a Report and Recommendation. (Electronic Order
dated 10/20/2025.) Upon a preliminary review, the Court directed Plaintiff to file supplemental
documentation and comply with certain procedural requirements, which Plaintiff did. (ECF Nos.
20-22; Electronic Order dated 10/22/2025.)
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. Loc. Civ. R. 55.1(b) and 55.2.
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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. Loc. Civ. 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. 21-CV-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 Defendants
(ECF No. 14), the Court is primarily concerned with Plaintiff’s compliance with E.D.N.Y. Loc.
Civ. 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., 2016
WL 3365313, at *4).
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
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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
Loc. 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 Court analyzes the instant application.
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 Defendants, (B) the movant has
complied with the SCRA, and (C) that the individual defaulting defendants are not minors or
incompetent people, 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 have been personally served on or mailed to the defaulting defendants’
residences or business addresses. 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).
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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.” 50 U.S.C. § 3931; see also Windward Bora, LLC v. Ortiz, No. 21-
CV-04154 (MKB) (JMW), 2022 WL 3648622, at *5 (E.D.N.Y. July 5, 2022), report and
recommendation adopted, 2022 WL 3647586 (E.D.N.Y. Aug. 24, 2022). Because Defendant
New Paradise is an entity and not an individual, this requirement is not at issue. See Loc. 1992
Pension Fund v. All Serv. Equip. Corp, No. 22-CV-02522 (HG) (JMW), 2023 WL 11868244, at
*3 (E.D.N.Y. July 28, 2023) (noting that the SCRA's affidavit requirement does not apply to
corporate defendants). However, for Defendant Pradhan, an SCRA is required. Plaintiff provided
an Affirmation Regarding Non-Military Status and the relevant SCRA documentation. (ECF No.
19.)
Here, the motion against the defaulting Defendants fully complies with Local Rule 7.1
and Local Rule 55.2(a)(2) because it includes (1) a notice of motion (ECF No. 15); (2) a
memorandum of law (ECF No. 16); (3) affidavits and exhibits to support Plaintiff’s contentions
(ECF Nos. 17-18); and (4) a proposed order detailing the proposed judgment (ECF No. 15). 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 September 12,
2025 (ECF No. 17) and a declaration that Defendant Pradhan, is not in the military and that no
Defendant is an infant nor incompetent as the Local Rules require. (ECF Nos. 17 at ¶ 4; 19.)
Plaintiff also filed a certificate of service certifying that the requisite documents were served on
Defendants via certified mail and FedEx. (ECF No. 20-21.)
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Finally, Local Rule 55.2(c) has been satisfied since Plaintiff filed a statement of damages
demonstrating the proposed damages and basis for the element of damages. E.D.N.Y. Local R.
55.2(c). Plaintiff submitted the amount of statutory damages owed totaling $200,000, and costs
of $977.87, consisting of filing fees, process server fees, and investigation fees. (ECF Nos. 17 at
4-5; 22.) Plaintiff is not seeking attorneys’ fees.
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, Defendants
have wholly failed to appear and present any defense, and Plaintiff is left with no further steps to
take to secure relief. ADI Glob. Distribution, 2023 WL 3355049, at *4; see also Flooring
Experts, Inc., 2013 WL 4042357, at *3 (when a defendant is continuously and completely
unresponsive the failure to respond is considered willful), report and recommendation adopted,
2013 WL 4761151 (E.D.N.Y. Sept. 3, 2013); Empire State Carpenters Welfare v. Darken
Architectural Wood, No. 11-CV-46 (JS)(AKT), 2012 WL 194075, at *3 (E.D.N.Y. Jan. 17,
2012) report and recommendation adopted, 2012 WL 832452 (E.D.N.Y. Mar. 12, 2012) (“[T]he
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Court is unable to make a determination whether the Defendants have a meritorious defense
since no such defense has been presented to the Court”); Northwell Health, Inc. v. Northwell
Staffing Agency, LLC, No. 17-CV-1611 (DRH)(AKT), 2018 WL 1525803, at *9 (Mar. 1, 2018)
report and recommendation adopted, 2018 WL 1525698 (E.D.N.Y. Mar. 28, 2018) (citations
omitted) (noting that denying the motion for default judgment would be prejudicial to Plaintiff
since “there are no additional steps available to secure relief in this Court”)).
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
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 because
Defendants have failed to appear 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 of process 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
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party to the case. See Fed. R. Civ. P. 4(c). Additionally, Rule 4(e) permits service on individuals
to be made (i) pursuant to the law of the state in which the district court is located, or (ii)
delivering the summons and complaint to the individual personally, (iii) leaving a copy of the
summons and complaint “at the individual's dwelling or usual place of abode with someone of
suitable age and discretion who resides there. …” Fed. R. Civ. P. 4(e). Moreover, under New
York law, service by “nail and mail” may be used where attempts have been made to serve the
party. See N.Y. C.P.L.R. § 308(4) (“where service under paragraphs one and two cannot be made
with due diligence, by affixing the summons to the door of either the actual place of business,
dwelling place or usual place of abode within the state of the person to be served and by either
mailing the summons to such person at his or her last known residence….”) Here, Defendant
Pradhan was served with a copy of the Summons and Complaint on June 2, 2025, when a
process server affixed the documents to the Defendant’s dwelling after multiple attempts and
mailing it to Pradhan’s address (ECF No. 12.)
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 the Secretary of State. See N.Y. Bus. Corp. Law §
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306(b)(1) (“Service of process on the secretary of state as agent of a domestic or authorized
foreign corporation shall be made in the manner of…(i) personally delivering to and leaving with
the secretary of state or a deputy, or with any person authorized by the secretary of state….”).
Here, Defendant New Paradise was served with a copy of the Summons and Complaint on May
27, 2025, when a process server delivered it to an authorized agent of the Secretary of State of
the State of New York, Mary Taylor. (ECF No. 11.)
Additionally, Plaintiff brought this action pursuant to the Lanham Act, 15 U.S.C. § 1051
et. seq. (the “Act”), 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 Defendants 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.
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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 undersigned considers each separately.
1. 	General Jurisdiction
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, Defendant New Paradise is a New York corporation with a
principal place of business located at 2024 New York Avenue, Huntington Station, New York
11746. (See ECF No. 1 at ¶ 7.) The Court additionally has jurisdiction over the individual
defendant, Defendant Pradhan, who resides in New York at 520 Herzel Boulevard, Babylon,
New York 11704. (See ECF No. 1 at ¶ 6.) See Daimler AG, 571 U.S. at 117 (“For an individual,
the paradigm forum for the exercise of general jurisdiction is the individual’s domicile.”)
In order to satisfy the minimum 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 both Defendant New Paradise and Defendant Pradhan
are domiciled in New York, thereby availing both Defendants of jurisdiction, the minimum
contacts and reasonable test are unnecessary. Accordingly, the undersigned recommends a
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finding that the Court does have “general jurisdiction” over Defendants.
2. 	Specific Jurisdiction
On the other hand, specific jurisdiction is present when “a [s]tate exercises personal
jurisdiction over a defendant in a suit arising out of or related to the defendant's contacts with the
forum.” Great W. Ins. Co. v. Graham, No. 18-CV-6249 (VSB), 2020 WL 3415026, at *10
(S.D.N.Y. June 22, 2020) (citing Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S.
408, 414 n.8 (1984)). However, having found general jurisdiction is present, a finding of specific
jurisdiction is not required. See Posven, C.A. v. Liberty Mut. Ins. Co., 303 F. Supp. 2d 391, 397
n.1 (S.D.N.Y. 2004) (“Where general jurisdiction is asserted, the claim need not arise out of the
defendant's contacts with the forum state ….”) Indeed, specific jurisdiction is required over non-
residents, unlike here, where Defendants are domiciled in New York. See In re Stillwater Cap.
Partners Inc. Litig., 851 F. Supp. 2d 556, 567 (S.D.N.Y. 2012) (stating that a court may exercise
specific jurisdiction over a non-domiciliary if certain requirements are met).
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., 973 F.2d at 158. Here, Plaintiff is alleging: (i) willful
trademark infringement and (ii) false designation. (See ECF No. 1.)
To determine liability, the undersigned must first consider what law is to be applied. As
Plaintiff brought this action pursuant to federal question, it follows, therefore that jurisdiction is
conferred under the same allowing the Court to conduct an analysis pursuant to federal law.
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A. Count I: Trademark Infringement
Plaintiff seeks default judgment against Defendants for trademark infringement under the
Act pursuant to 15 U.S.C. § 1114. (ECF No. 1 at ¶¶ 56-64.) To prevail on such a claim, the
following is required, “that (1) it has a valid mark that is entitled to protection and that (2) the
defendant's ‘actions are likely to cause confusion with [that] mark.” Easter Unlimited, Inc. v.
Rozier, No. 18-CV-06637 (KAM), 2021 WL 4409729, at *18 (E.D.N.Y. Sept. 27, 2021)
(internal citations and quotations omitted); see also 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) (same). “The Lanham Act is a strict liability
statute, and accordingly, a trademark registrant does not need to prove knowledge or intent in
order to establish liability.” Easter Unlimited, Inc, 2021 WL 4409729, at *18.
When evaluating whether a 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 the above leads to a finding that Plaintiff has sufficiently
established a claim for trademark infringement. Plaintiff has ownership of a valid trademark.
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(See ECF No. 1 at ¶ 10; 1-1.) Plaintiff asserts that Defendants have offered counterfeit products
that “are almost identical to authentic products,” with “indistinguishable marks.” (ECF No. 1 at ¶
30.) Furthermore, Plaintiff states that Defendant New Paradise “used images and names identical
to or confusingly similar to” the Stündenglass products. (Id. at ¶ 41; ECF No. 1-2.) Plaintiff
asserts that Defendants are merchants of tobacco shop goods, selling their products within the
same marketplace that GS sells the Stündenglass products in. (Id. at ¶ 46.) Therefore, Plaintiff
has properly pled a trademark infringement claim.
Accordingly, it is respectfully recommended that default judgment be entered as to
Defendants for joint and several liability for Count One of trademark infringement. See
Innovation Ventures, LLC v. Ultimate One Distrib. Corp., 176 F. Supp. 3d 137, 172, 179–80
(E.D.N.Y. 2016) (finding joint and several liability on trademark infringement claims, where
defendants were the owners or principals of the infringing companies and the “‘moving, active,
conscious’ force behind” the infringement); see also WM Int'l, Inc. v. 99 Ranch Mkt. #601, 329
F.R.D. 491, 497 (E.D.N.Y. 2019) (quoting Sygma Photo News, Inc. v. High Soc. Mag., Inc., 778
F.2d 89, 92 (2d Cir. 1985) (“all persons and corporations who ... benefit from the infringement
are jointly and severally liable as copyright infringers”)).
B. Count II: False Designation
Plaintiff additionally seeks default judgment against Defendants for false designation of
origin and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a). (ECF No. 1 at ¶¶ 65-73.) “[U]nfair competition and false designation of origin…[are]
the same cause of action under Section 43(a)…” Thurber v. Finn Academy: An Elmira Charter
Sch., 583 F. Supp. 3d 437, 447 (W.D.N.Y. 2022) (citing Allied Interstate LLC. v. Kimmel &
Silverman P.C., No. 12-CV-4204 (LTS) (SN), 2013 WL 4245987, at *5 (S.D.N.Y. Aug. 12,
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2013)).
The same analysis applied to a claim for trademark infringement is applied to a claim of
false designation of origin or unfair competition. See Sola Franchise Corp. v. Solo Salon Studios
Inc., No. 14-CV-0946 (JS) (AKT), 2015 WL 1299259, at *7 (E.D.N.Y. Mar. 23, 2015)
(collecting cases) (“The standards for false designation of origin claims under Section 43(a) of
the Lanham Act (15 U.S.C. § 1125) are the same as for trademark infringement claims under
Section 32 (15 U.S.C. § 1114).”) A plaintiff must establish “(1) that it owns a mark deserving of
protection, and (2) that the mark is used in such a way as to create a ‘likelihood of confusion’ as
to the source or sponsorship of the defendant’s goods or services. Thurber, 583 F. Supp. 3d at
447 (citing Allied Interstate LLC., 2013 WL 4245987, at *5); Kohler Co. v. Bold Int'l FZCO, 422
F. Supp. 3d 681, 733 (E.D.N.Y. 2018) (same).
As the Court found Plaintiff has established liability for trademark infringement, and
applying the same standard to Count Two of False Designation, it is respectfully recommended
that default judgment be entered as to Defendants for joint and several liability for false
designation as well.
V. 	Relief Requested
Apart from joint and several liability, Plaintiff seeks (i) statutory damages in the amount
of $200,000 pursuant to 15 U.S.C. § 1117(c), (ii) costs of the litigation for a total of $977.87,
(iii) post-judgment interest, (iv) an Order enjoining Defendants and any of their officers, agents,
employees, or persons acting in concert with the Defendants from further infringement, and (v)
that Defendants be ordered to destroy all of the infringing products. (ECF Nos. 15-1; 16.) The
undersigned considers each request.
Plaintiff’s first request for statutory damages for willful trademark counterfeiting
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pursuant to 15 U.S.C. § 1117(c) in the amount of $200,000 ($50,000 per mark) should be
granted. (ECF No. 16 at 5.)
15 U.S.C. § 1117 entitles a plaintiff who has established a violation of any right of
the registrant of a mark ... to recover (1) defendant's profits, (2) any damages
sustained by the plaintiff, and (3) the costs of the action. In the Second Circuit, a
finding of defendant's willful deceptiveness is a prerequisite for awarding profits
under the Lanham Act. But many courts in [the Second Circuit] treat a default as
evidence of willfulness. This Court does that here.
Ampion Corp. v. AXXA Tech, Inc., No. 18-CV-660 (LJV), 2019 WL 2119621, at *7 (W.D.N.Y.
May 15, 2019) (internal citations and quotations omitted).
It is within the Court’s discretion whether to award these damages. See Kelly Toys
Holdings, LLC v. Guangzhou Lianqi Tech. Co., No. 21-CV-8111(AS)(GWG), 2024 WL
1360919, at *3 (S.D.N.Y. Apr. 1, 2024), report and recommendation adopted, No. 21-CV-8111
(AS) (GWG), 2024 WL 1908435 (S.D.N.Y. May 1, 2024) (citing Malletier v. Artex Creative
Int'l Corp., 687 F. Supp. 2d 347, 355 (S.D.N.Y. 2010)). However, Courts employ a seven-factor
test when making its determination, which are
(1) the expenses saved and the profits reaped by the defendant infringer; (2) the
revenues lost by the plaintiff; (3) the value of the [trademark]; (4) the deterrent
effect on others besides the defendant; (5) whether the defendant's conduct was
innocent or willful; (6) whether a defendant has cooperated in providing particular
records from which to assess the value of the infringing material produced; and (7)
the potential for discouraging the defendant.
FoxMind Canada Enters. Ltd. v. Beijing Hui Xin Zhi Xiang Shangmao Youxian Gongsi, No. 22-
CV-9383 (JGK), 2024 WL 532056, at *4 (S.D.N.Y. Feb. 9, 2024).
Application of these factors leads to the conclusion that Plaintiff should be awarded the
full amount sought. Defendants reaped the benefits of using Plaintiff’s trademark while Plaintiff
received none of these profits. Indeed, Defendants will likely continue to do so if not deterred
and the failure to appear in this action further demonstrates willfulness. See Ampion Corp., 2019
WL 2119621, at *7. Likewise, other potential or current infringers should be cautioned not to
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behave in this manner as Courts have awarded theses sums in trademark cases. Notably, the
“statutory damages [sought] of … $50,000 per mark are well below the statutory maximum.”
All-Star Mktg. Grp., LLC v. Media Brands Co., 775 F. Supp. 2d 613, 625 (S.D.N.Y. 2011)
(collecting cases awarding statutory damages in the same amount).
Accordingly, the undersigned recommends awarding statutory damages in the amount of
$200,000.
Next, Plaintiff seeks $977.87 in litigation costs pursuant to 15 U.S.C. § 1117(a), which
allows for recovery of such costs. Section 1117(a) provides that “[w]hen a violation of any right
of the registrant of a mark registered in the Patent and Trademark Office, … shall have been
established in any civil action arising under this chapter, the plaintiff shall be entitled, … the
costs of the action.” The amount sought is supported and reflects the Court’s filing fee ($405.00),
service costs ($228.87), and investigative costs ($344.00). (ECF No. 22.) These types of costs
have been routinely awarded. See Holiday Park Drive, LLC v. Newist Corp., No. 23-CV-2623
(AMD) (JMW), 2024 WL 4802751, at *11 (E.D.N.Y. Nov. 15, 2024) (awarding similar fees and
finding that such fees are typical in trademark cases); see also Eu Yan Sang Int'l Ltd. v. S & M
Enters. (U.S.A.) Enter. Corp., No. 09-CV-4235 (RRM) (RER), 2010 WL 3824129, at *8
(E.D.N.Y. Sept. 8, 2010), report and recommendation adopted sub nom. Eu Yan Sang, Int'l LTD.
v. S & M Enters. (U.S.A) Enters. Corp., No. 09-CV-4235 (RRM)(RER), 2010 WL 3806136
(E.D.N.Y. Sept. 23, 2010) (“Recovery of private investigator fees has been permitted in
trademark cases as part of an award of attorneys' fees.”) Plaintiff has provided a receipt that
demonstrates the private investigator purchasing the counterfeit and infringing products at
Defendants’ store. (See ECF No. 22-2.)
Moreover, “[f]iling fees are recoverable without supporting documentation if verified by
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the docket.” Arch Specialty Ins. Co. v. Apco Indus., Inc., No. 18-CV-4041 (ENV)(SJB), 2020
WL 6581000, at *7 (E.D.N.Y. Oct. 5, 2020). Here, the docket reflects that the $405.00 fee was
paid. (See ECF No. 1.) Lastly, with respect to process server fees, they are “also recoverable, but
they must be supported by documentation.” Id. Plaintiff provided an invoice for a process server
fees of $228.87. (See ECF No. 22-1.) Therefore, all the requested costs are supported by the
record and should be awarded.
Third, Plaintiff seeks post-judgment interest. (ECF No. 16 at 17.) “[T]he award of post-
judgment interest is mandatory on awards in civil cases as of the date judgment is entered.”
Ghost L.L.C. v. Ghost Fitness NYC, LLC, No. 21-CV-3557 (NCM)(MMH), 2025 WL 2487826,
at *16 (E.D.N.Y. Aug. 29, 2025), report and recommendation adopted, No. 21-CV-03557
(NCM) (MMH), 2025 WL 2772887 (E.D.N.Y. Sept. 26, 2025) (quoting Tru-Art Sign Co. v.
Local 137 Sheet Metal Workers Int'l Ass'n, 852 F.3d 217, 223 (2d Cir. 2017) (citing 28 U.S.C. §
1961)). Accordingly, the undersigned recommends that Plaintiff be granted post-judgment
interest, which “shall be calculated from the date of the entry of the judgment, at a rate equal to
the weekly average 1-year constant maturity Treasury yield, as published by the Board of
Governors of the Federal Reserve System, for the calendar week preceding.” 28 U.S.C. §
1961(a).
Finally, 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)).
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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 at 159 (“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 Defendants’ products. (See ECF No. 1 at ¶¶ 31, 40-41, 45-46, 60.) “In
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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), aff'd, 511 F. App'x 81 (2d Cir. 2013) (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 from the confusion 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 Defendants from any further infringing conduct. It likewise follows that Plaintiff
is entitled to a judgment directing Defendants to destroy all counterfeit products and items
related to their sale 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 N.Y. v.
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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 Defendants to serve Plaintiff
with a report 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. 15) be GRANTED as follows:
(i) 	Defaulting Defendants to be found liable, jointly and severally, on all of Plaintiff’s
claims asserted in the Complaint (ECF No. 1);
(ii) 	Awarding Plaintiff statutory damages in the amount of $200,000.00, costs in the
amount of $977.87, and post-judgment interest to be calculated from the date the
Clerk of Court enters judgment in this action until the date of payment, at the rate set
forth in 28 U.S.C. § 1961;
(iii) 	Enter a Permanent Injunction against Defaulting Defendants enjoining it from any
further infringement conduct as outlined in the Proposed Order (ECF No. 15-1);
(iv) 	Enter judgment directing Defaulting Defendants to destroy all trade dress products
and remove the products from the market as part of the permanent injunction; and
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(v) 	Issue an Order directing the Defaulting Defendants 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 through ECF
on all counsel. 	Any written objections to this Report and Recommendation must be filed 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); see also Nambiar v. The Central Orthopedic Group LLP, No. 24-1103 (2d Cir.
Oct. 28, 2025) (addressing timing and scope of objections to Reports and Recommendations).
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 precludes 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.
November 13, 2025
RESPECTFULLY RECOMMENDED,
/S/ James M. Wicks
JAMES M. WICKS
United States Magistrate Judge
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