Conopco, Inc. v. 2026 Third Realty, LLC.

Background

Unilever sued 2026 Third Realty, LLC, Hae Hee Kim, Courtney Haejin Kim, Daniel Hungsik Kim, Bryant Kim, K & K Footwear, Inc., Youssouf Diagouraga, Mustufa Ganchi, Amis Discounted Furniture, LLC, Vibrant Printing and Graphic Corp., Mohamad Ganchi, Lamin Humma, Sarjo Dambelly, and John Does 1–10. The action concerns alleged counterfeit Hellmann’s mayonnaise and related trademark violations.

Unilever owns registered Hellmann’s trademarks and logos. The court found that Unilever had used the Hellmann’s brand in the United States since at least 1926 and that the marks were well known. Unilever reported finding large quantities of products that appeared to be counterfeit at a storefront at 2026 3rd Avenue in New York.

The court described several alleged differences between the products and genuine Hellmann’s products, including different batch-code formats, pre-printed expiration dates, labels not used by Unilever, loose shrink-wrap, and differences in the label graphics. Unilever’s investigation and seizures at several locations also produced removed Hellmann’s labels, boxes from Vibrant Printing and Graphic Corp., and information about alleged manufacturing, relabeling, storage, and export activities.

The opinion states that the investigation remained preliminary. Based on the available information, the court found that some expired Hellmann’s products may have been purchased, relabeled with counterfeit expiration dates, stored at the first location, and prepared for shipment to Gambia. The court also described evidence that a container associated with the suspected shipment had been diverted back to the United States for investigation.

Prior emergency orders and hearing

Unilever initially sought an emergency temporary restraining order, an order allowing seizure of counterfeit goods, an order requiring the defendants to show cause why a preliminary injunction should not issue, and expedited discovery. The court granted the initial application, later entered amended temporary restraining orders, and authorized additional seizures and discovery. The case was later unsealed.

The defendants were served with notice of the hearing. The opinion states that the defendants did not file papers opposing a preliminary injunction. Daniel Kim, Hae Hee Kim, Courtney Kim, 2026 Third Realty, LLC, and K & K Footwear appeared through or with counsel and received additional time to locate counsel and respond. The remaining defendants did not appear.

Legal standard and findings

Under Rule 65 of the Federal Rules of Civil Procedure, a preliminary injunction generally requires a showing of likely success on the merits, likely irreparable harm without an injunction, a balance of hardships favoring the plaintiff, and consistency with the public interest. The court applied that standard here.

The court found that Unilever was likely to succeed on its trademark infringement and counterfeiting claims under the Lanham Act. It found that the Hellmann’s registrations were valid and that the defendants’ alleged unauthorized use of counterfeit labels was likely to confuse consumers into believing that the products came from or were authorized by Unilever.

The court also found a likelihood of success on Unilever’s false-designation and unfair-competition claims under federal law, its New York common-law unfair-competition claim, and its federal and New York trademark-dilution claims. The court stated that the alleged counterfeit products could create a false association with Unilever, threaten consumer health and safety, reduce Unilever’s control over its marks, and damage the goodwill associated with the Hellmann’s brand.

The court further stated that a landlord may be liable for contributing to trademark infringement when it knew or had reason to know that counterfeit goods were being sold. It did not make a final determination of liability; its findings concerned Unilever’s likelihood of success at the preliminary-injunction stage.

Order

The court ordered that the injunctive relief previously granted in the earlier temporary restraining orders remain in place during the litigation and granted Unilever’s preliminary-injunction application. The preliminary injunction immediately barred Youssouf Diagouraga, Mustufa Ganchi, Amis Discounted Furniture, LLC, Vibrant Printing and Graphic Corp., Mohamad Ganchi, Lamin Humma, and Sarjo Dambelly—the “PI Defendants”—along with specified related persons and entities, from:

- using the Hellmann’s marks in connection with manufacturing, selling, offering, distributing, or advertising products; - representing that counterfeit products were sold under Unilever’s control or supervision; - passing off non-genuine products as Unilever goods; - manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying, offering for sale, or selling the counterfeit products or counterfeit packaging; - using counterfeit or confusingly similar versions of the Hellmann’s marks; - making false descriptions or representations that goods were Unilever goods; and - diluting the Hellmann’s marks.

The order also prohibited the PI Defendants from destroying or failing to preserve relevant records and from assisting others in the prohibited activities. Unilever was authorized to inspect products bearing the Hellmann’s marks to determine whether they were genuine or counterfeit.

The court required preservation of electronic data, documents, electronically stored information, and tangible things relevant to the litigation. It authorized expedited discovery, including interrogatories and document requests requiring responses or production within fourteen days after service, and depositions to occur no later than ten days after notice.

The order allowed any PI Defendant or affected third party to move for dissolution or modification upon written notice and a proper showing. It also directed Daniel Kim, Hae Hee Kim, Courtney Kim, 2026 Third Realty, LLC, and K & K Footwear to file any opposition to an injunction against them by June 24, 2022. The opinion does not state a final judgment on the claims.

Uncertainty noted

The supplied opinion states that the hearing occurred on July 8, 2022, even though the order is dated June 8, 2022 and sets June 2022 deadlines. This appears to be an internal date inconsistency in the text.