Polaris Industries Inc v. TBL International Inc.
- Wilhelmina Wright
- 0:19-cv-00291
- U.S. District Court · District of Minnesota
- 21
In Polaris Industries v. TBL International, Judge Wright granted default judgment, finding trademark violations and awarding an injunction, destruction, damages, fees, and costs.
Polaris Industries Inc. received default judgment, injunctive relief, destruction of infringing products, $109,500 in statutory damages, $10,574.50 in attorneys’ fees, $897.71 in costs, and post-judgment interest. TBL International Inc. was barred from using the “RHINO GRIP” mark or similar marks, required to destroy infringing goods, and required to pay the judgment.
What happened
Polaris Industries Inc. sued TBL International Inc., alleging that TBL sold counterfeit products using Polaris’s registered “RHINO GRIP” trademark. TBL did not answer the lawsuit, file another pleading, or attend the hearing, so the clerk entered default against it.
The court granted Polaris’s motion for default judgment on five claims involving trademark infringement, false designation of origin, deceptive trade practices, and related common-law claims. It permanently barred TBL from using “RHINO GRIP” or similar marks, ordered TBL to destroy infringing goods, and awarded $109,500 in statutory damages, $10,574.50 in attorneys’ fees, and $897.71 in costs. The court denied prejudgment interest but granted post-judgment interest.
Judge Wilhelmina M. Wright ruled that TBL’s unchallenged conduct established the claims and that its continued use of the mark after receiving cease-and-desist letters was willful. The total judgment amount was $120,972.21, plus post-judgment interest calculated under federal law.
The detailed version
- Polaris Industries Inc v. TBL International Inc. · No. 0:19-cv-00291
- Wilhelmina Wright
- Mar. 6, 2020
Background
Polaris manufactures recreational vehicles and accessories, including the Rhino Grip mounting bracket. Polaris registered the “RHINO GRIP” trademark with the United States Patent and Trademark Office in 2015. The opinion states that TBL manufactures, sells, and distributes mounting brackets labeled as “Rhino Grip” products and appears to do business under the name Maggift LLC.
Polaris alleged that TBL sold counterfeit Rhino Grip products identical in appearance to Polaris’s products. Polaris sued TBL in February 2019. TBL’s answer was due March 5, 2019, but TBL did not file an answer or any other pleading. The clerk entered default in April 2019. TBL also did not appear at the October 2, 2019 hearing on Polaris’s motion for default judgment.
Liability
Under Federal Rule of Civil Procedure 55, default judgment involves two steps: entry of default by the clerk and an application to the district court for judgment. After default is entered, the complaint’s factual allegations generally are treated as true, except allegations concerning damages. The court must still determine whether those facts establish valid legal claims.
The court concluded that Polaris had established legitimate causes of action on all five counts:
- Counterfeiting and trademark infringement under 15 U.S.C. § 1114. The court found a likelihood of consumer confusion based on the distinctiveness and registration of Polaris’s mark, the substantial similarity of the products, competition in the same market, TBL’s notice of Polaris’s trademark, and the court’s inference that TBL intended to pass off its goods as Polaris’s products.
- Unfair competition and false designation of origin under 15 U.S.C. § 1125(a). The same likelihood-of-confusion analysis supported this claim.
- Deceptive trade practices under Minnesota law. The court concluded that the alleged passing off and confusion about the goods’ source stated a claim.
- Common-law trademark infringement. The court stated that the elements were the same as for the federal trademark-infringement claim.
- Common-law unfair competition. The court concluded that the alleged conduct also stated this claim.
The court further concluded that TBL’s use of the counterfeit mark was willful. TBL had received two cease-and-desist letters and continued its conduct after being notified of the alleged infringement and after Polaris filed the lawsuit.
Relief
The court granted Polaris’s request for a permanent injunction. TBL was prohibited from using the “RHINO GRIP” mark or any similar mark and from representing that it was an authorized seller of Rhino Grip products or similar products. TBL also was ordered to destroy all infringing and counterfeit goods using the “RHINO GRIP” mark or a similar mark. TBL was required to file and serve a sworn compliance report within 30 days after service of the injunction.
Statutory damages
Polaris elected statutory damages under the Lanham Act instead of actual damages and profits and requested the $2 million maximum for willful counterfeiting. The court found that the record supported a substantial award but that the statutory maximum was not warranted because the record contained little concrete information about TBL’s sales, profits, or the amount of Polaris’s lost revenue.
The court used the products’ approximate average retail value of $36.50 as a starting point, multiplied it by $1,000, and then trebled the resulting $36,500 to account for the willfulness of TBL’s conduct. It awarded Polaris $109,500 in statutory damages.
Fees, costs, and interest
The court awarded Polaris $10,574.50 in attorneys’ fees based on 26.7 hours of work at hourly rates ranging from $315 to $510. It also awarded $897.71 in litigation costs.
The court denied Polaris’s request for prejudgment interest. It concluded that the statutory damages award was intended to compensate Polaris, punish TBL, and deter similar conduct, and that prejudgment interest would not further those purposes. The court also concluded that Minnesota’s prejudgment-interest statute did not apply because the damages award arose under federal law.
The court granted post-judgment interest at the rate and under the formula required by 28 U.S.C. § 1961. The interest applies to the total judgment amount of $120,972.21, consisting of statutory damages, attorneys’ fees, and costs.
Disposition
The court granted Polaris’s motion for default judgment. It granted the requests for a permanent injunction and destruction of infringing products, awarded statutory damages, attorneys’ fees, and costs, denied prejudgment interest, and granted post-judgment interest.
Read the full 21-page opinion on CourtListener, the free public archive maintained by the Free Law Project.