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IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
3M COMPANY,
Plaintiff,
-against-
PERFORMANCE SUPPLY, LLC,
Defendant.
Case No.: 1:20-cv-02949 (LAP)(KNF)
Jury Trial Demanded
PLAINTIFF 3M COMPANY’S
PROPOSED FINDINGS OF FACT AND CONCLUSIONS
OF LAW IN SUPPORT OF ITS APPLICATION FOR A PRELIMINARY
INJUNCTION AGAINST DEFENDANT PERFORMANCE SUPPLY, LLC
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 1 of 31
i
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ......................................................................................................... ii
PROPOSED FINDINGS OF FACT ............................................................................................. 1
I.
Procedural History ............................................................................................................ 1
II.
COVID-19 and the Current National Emergency .............................................................. 4
III.
Plaintiff 3M ........................................................................................................................ 4
A.
The 3M Brand ........................................................................................................ 5
B.
The 3M Marks ....................................................................................................... 5
C.
3M’s N95 Respirators ............................................................................................ 6
D.
3M’s Production and Sale of N95 Respirators During COVID-19 ....................... 7
E.
3M’s Efforts to Help Curtail Unlawful Conduct During COVID-19 ................... 7
IV.
Defendant Performance Supply, LLC ............................................................................... 9
PROPOSED CONCLUSIONS OF LAW ................................................................................... 12
II.
3M Has Established a Likelihood of Success on the Merits of its Claims ...................... 12
A.
3M is Likely to Establish the Validity of its 3M Marks and 3M Slogan ............. 14
B.
3M is Likely to Establish that Defendant’s Use of the 3M Marks and 3M
Slogan is Likely to Cause Confusion as to Source and/or Quality ...................... 15
C.
3M is Likely to Succeed on its Claim for False Advertising Under Section
43(a)(1)(B) ........................................................................................................... 21
D.
3M is Likely to Succeed on its Claims for Deceptive Acts and Practices,
and False Advertising, Under GBL §§ 349, 350 ................................................. 22
III.
The Balance of Hardships Tips Decidedly in 3M’s Favor .............................................. 22
IV.
Issuing a Preliminary Injunction Would Serve the Public Interest of Avoiding
Confusion and Protecting Healthcare Workers, First Responders, and Critical
Infrastructure Operations from the Risk of Receiving Protective Equipment of
Unknown Quality and Inflated Prices .............................................................................. 23
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TABLE OF AUTHORITIES
Page(s)
CASES
3M Co. v. Christian Investments LLC,
No. 1:11CV0627 TSE/JFA, 2012 WL 6561732 (E.D. Va. July 12, 2012)..............................16
725 Eatery Corp. v. City of New York,
408 F. Supp. 3d 424 (S.D.N.Y. 2019)......................................................................................14
Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4 (2d Cir. 1976).........................................................................................................16
Avela, Inc. v. Estate of Marilyn Monroe, LLC,
131 F. Supp. 3d 196 (S.D.N.Y. 2015)......................................................................................14
Benihana, Inc. v. Benihana of Tokyo, LLC,
784 F.3d 887 (2d Cir. 2015).....................................................................................................12
Cadbury Beverages, Inc. v. Cott Corp.,
73 F.3d 474 (2d Cir. 1996).......................................................................................................17
Christian Louboutin, S.A. v. Yves Saint Laurent America Holdings, Inc.,
696 F.3d 206 (2d Cir. 2012).....................................................................................................16
Church & Dwigh v. SPD Swiss Precision Diagnostics,
843 F.3d 48 (2d Cir. 2016) ......................................................................................................22
Coty Inc. v. Excell Brands, LLC,
277 F. Supp. 3d 425 (S.D.N.Y. 2017)......................................................................................20
El Greco Leather Prods. Co., Inc. v. Shoe World,
806 F.2d 392, 395 (2d Cir. 1986) ............................................................................................13
Gucci America, Inc. v. Guess?, Inc.,
868 F. Supp. 2d 207 (S.D.N.Y. 2012)......................................................................................18
Guthrie Healthcare System v ContextMedia, Inc.,
826 F.3d 27 (2d Cir. 2016)...........................................................................................15, 18, 21
Henegan Const. Co., Inc. v. Heneghan Contracting Corp.,
No. 00 CIV.9077 JGK, 2002 WL 1300252 (S.D.N.Y. June 12, 2002) ...................................20
In re Houbigant Inc.,
914 F. Supp. 964 (S.D.N.Y. 1995) .........................................................................................22
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 3 of 31
TABLE OF AUTHORITIES—continued
Page(s)
iii
Landscape Forms, Inc. v. Columbia Cascade Co.,
113 F.3d 373 (2d Cir. 1997).....................................................................................................16
Lane Capital Mgmt., Inc. v. Lane Capital Mgmt, Inc.,
192 F.3d 337 (2d Cir. 1999).....................................................................................................16
Lexington Mgmt. Corp. v. Lexington Capital Partners,
10 F. Supp. 2d 271 (S.D.N.Y. 1998)..................................................................................14, 15
Long Island R.Co. v. Int’l Ass’n of Machinists,
874 F.2d 901 (2d Cir. 1989).....................................................................................................12
Louis Vuitton Malletier v. Sunny Merchandise,
97 F. Supp. 3d 485 (S.D.N.Y. 2015)..................................................................................19, 20
Mahmood v. Nielsen,
312 F. Supp. 3d 417 (S.D.N.Y. 2018)......................................................................................12
Marks Org., Inc. v. Joles,
784 F. Supp. 2d 322 (S.D.N.Y. 2011) .....................................................................................12
Mobil Oil Corp. v. Pegasus Petroleum Corp.,
818 F.2d 254 (2d Cir. 1987).....................................................................................................18
Mister Softee, Inc. Tsirkos,
2014 WL 2535114 (S.D.N.Y. June 5, 2014) ...........................................................................18
Mister Softee, Inc. v. Tsirkos,
No. 14-cv-1975-LTS-RLE, 2015 WL 7458619 (S.D.N.Y. Nov. 23, 2015) ...........................13
New York City Triathlon, LLC v. NYC Triathlon Club, Inc.,
704 F. Supp. 2d 305 (S.D.N.Y. 2010)..........................................................................13, 23, 24
NYP Holdings v. New York Post Pub. Inc.,
63 F. Supp. 3d 328 (S.D.N.Y. 2014)........................................................................................24
Paddington Corp. v. Attiki Importers & Distrib.,
996 F.2d 577 (2d Cir. 1993).....................................................................................................20
Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir.)...................................................................................................... passim
Securitron Magnalock Corp. v. Schnabolk,
65 F.3d 256 (2d Cir. 1995) ......................................................................................................22
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 4 of 31
TABLE OF AUTHORITIES—continued
Page(s)
iv
Streetwise Maps, Inc. v. VanDam, Inc.,
159 F.3d 739 (2d Cir. 1998).....................................................................................................15
Times Mirror Magazines, Inc. v. Field & Stream Licenses Co.,
294 F.3d 383 (2d Cir. 2002).....................................................................................................16
Virgin Enterprises Ltd. v. Nawab,
335 F.3d 141 (2d Cir. 2005).....................................................................................................18
WpIX, Inc. v. lvl, Inc.,
691 F.3d 275 (2d Cir. 2012).....................................................................................................23
STATUTES
15 U.S.C. § 1065 ........................................................................................................................6, 14
15 U.S.C. § 1072 ............................................................................................................................19
15 U.S.C. § 1114 ..............................................................................................................................1
15 U.S.C. § 1115 ............................................................................................................................14
15 U.S.C. § 1125 ..............................................................................................................................1
NY GBL § 349 ...........................................................................................................................1, 22
NY GBL § 350 ...........................................................................................................................1, 22
NY GBL § 360-l ..............................................................................................................................1
OTHER AUTHORITIES
42 C.F.R. Part 84......................................................................................................................3, 4, 5
FED. R. CIV. P. 65 .....................................................................................................................20, 21
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PROPOSED FINDINGS OF FACT
I.
Procedural History
1.
Plaintiff 3M Company (“3M”) commenced this lawsuit against Defendant
Performance Supply, LLC (“Defendant”) on April 10, 2020. See Dkt. No 1 (as re-filed at Dkt No.
9; hereinafter, the “Cplt.”). 3M duly served the Defendant’s President, Mr. Ronald Romano, with
the Summons and Complaint on April 14, 2020. See Dkt. No. 18.
2.
In the Cplt., 3M alleges that Defendant is using the “3M” trademarks to perpetrate
a false and deceptive price-gouging scheme on unwitting consumers, including agencies of
government, in connection with the attempted sale of 3M’s N95 respirators during the global
COVID-19 pandemic. Cplt. at ¶ 1.
3.
In the Cplt., 3M seeks relief for: (i) federal trademark infringement under Section
32 of the Lanham Act, 15 U.S.C. § 1114; (ii) federal unfair competition, false association, false
endorsement, and false designation of origin under Section 43(a)(1)(A) of the Lanham Act, 15
U.S.C. § 1125(a)(1)(A); (iii) federal trademark dilution under Section 43(c) of the Lanham Act,
15 U.S.C. § 1125(c); (iv) federal false advertising under Section 43(a)(1)(B) of the Lanham Act,
15 U.S.C. § 1125(a)(1)(B); (v) deceptive acts and practices under NEW YORK GENERAL BUSINESS
LAW (“GBL”) § 349; (vi) false advertising under GBL § 350; (vii) dilution and injury to business
reputation under GBL § 360-l; (viii) trademark infringement under New York common law; and
(ix) unfair competition under New York common law. See generally Cplt.
4.
On April 24, 2020, 3M duly filed an application (the “Application”) for a temporary
restraining order (“TRO”) and preliminary injunction (“PI”) against Defendant. See Dkt. No. 12.
In support of 3M’s Application, it submitted: (i) a Memorandum of Law; (ii) the Declaration of
Charles Stobbie (the “Stobbie Decl.”); (iii) the Declaration of David A. Crist (the “Crist Decl.”);
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 6 of 31
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and (iv) the Declaration of A. John P. Mancini, Esq. (the “Mancini Decl.”). See Dkt. No. 13-16.
3M also duly served all of the aforementioned documents on Mr. Romano on April 22, 2020 before
filing them on April 24. See Dkt Nos. 13-16
5.
In the Application, 3M sought an Order, pursuant to FED. R. CIV. P. 65(a), that
directed Defendant to show cause (the “Order to Show Cause”) as to why this Court should not
preliminarily enjoin Defendant, its agents, servants, employees, officers, attorneys, and all persons
and entities in active concert or participation with any of them, from engaging in any of the
following acts and conduct during the pendency of this lawsuit:
a.
using the “3M” trademarks (the “3M Marks,” as defined in the Application), the
slogan “3M. Science Applied to Life” (the “3M Slogan”), and any other word, name, symbol,
device, or combination thereof that is confusingly similar to the 3M Marks and/or the 3M Slogan,
for, on, and/or in connection with the manufacture, distribution, advertising, promoting, offering
for sale, and/or sale of any goods or services, including, without limitation, Plaintiff’s 3M-brand
N95 respirators, during the pendency of this action, and
b. engaging in any false, misleading, and/or deceptive conduct in connection with 3M
and its products, including, without limitation, representing itself as being an authorized
distributor, vendor, agent, representative, retailer, and/or licensee of 3M and/or any of 3M’s
products (including, without limitation, 3M-brand N95 respirators); falsely representing to have
an association or affiliation with, sponsorship by, and/or connection with, 3M and/or any of 3M’s
products; falsely representing that 3M has increased the price(s) of its 3M-brand N95 respirators;
and offering to sell any of 3M’s products at a price and/or in a manner that would constitute a
violation of GBL § 369-R. See Dkt. No. 12 at ¶ 1(a)-(b).
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6.
In the Application, 3M also sought an Order, pursuant to FED. R. CIV. P. 65(b), that
temporarily restrained Defendant, its agents, servants, employees, officers and all persons and
entities in active concert and participation with them from engaging in any of the acts and/or
conduct described in Paragraph 5(a)-(b), supra, from the date of this Court’s granting of 3M’s
Application, through and including the Date of the Show Cause Hearing. See Dkt. No. 12 at ¶ 2.
7.
On April 24, 2020, this Court granted 3M’s Application for the Order to Show
Cause in its entirety. See Dkt. No. 17. This Court did not require 3M to post a bond. See Order
to Show Cause at ¶ 3.
8.
In the Order to Show Cause, the Court ordered 3M to serve the Order, together with
3M’s Memorandum of Law, and the Stobbie, Crist, and Mancini Decls., respectively, on Mr.
Romano by overnight courier or mail and/or personal service by April 25, 2020 at 5 pm. See Order
to Show Cause at ¶ 4. Pursuant to the Order to Show Cause, 3M duly served Mr. Romano with
the aforementioned documents via personal service on April 24, 2020 at 5:20 pm. See Dkt. No.
19.
9.
In the Order to Show Cause, the Court ordered Defendant to file its opposition to
3M’s Application by April 30, 2020 at Noon Eastern Daylight Time. See Order to Show Cause at
¶ 6. The Court ordered 3M to file its reply papers, if any, by May 2, 2020 at Noon Eastern Daylight
Time. Id. Defendant did not oppose 3M’s application. Accordingly, 3M did not file a reply in
further support of its Application.
10.
The Court scheduled a telephonic hearing on 3M’s Application for May 4, 2020 at
11 am Eastern Daylight Time. See Order to Show Cause at ¶ 1.
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11.
The following Findings of Fact (“FOF”) derive from 3M’s Application (including
its supporting Memorandum of Law, and the Stobbie, Crist, and Mancini Decls.), the record, and
the proceedings held to date in this lawsuit.
II.
COVID-19 and the Current National Emergency
12.
Over the last four months, the world has seen an outbreak of a highly contagious
virus, known as COVID-19, creating an international state of emergency. See Mancini Decl. at
¶ 5, Ex. 1. According to the Center for Disease Control and Prevention, reported illnesses from
COVID-19 “range[] from very mild (including some with no reported symptoms) to severe,
including illness resulting in death.” Id. at Ex. 1, p. 4.
13.
The virus that causes COVID-19 (namely, the novel coronavirus) is believed to
pass from person-to-person via airborne particles and liquids. See Mancini Decl. at Ex. 1. N95
respirators can prevent virus-carrying particles from reaching the wearer when appropriately
selected, fitted, and worn over the mouth and nose. See Stobbie Decl. at ¶ 5; see also Mancini
Decl. at Ex. 4, p. 1. Accordingly, current guidelines recommend that healthcare personnel wear
respiratory protection, including N95 respirators, when interacting with infected patients in order
to reduce the workers’ risk of exposure to the virus. See Mancini Decl. at Ex. 2, p. 5.
III.
Plaintiff 3M
14.
3M (then, Minnesota Mining and Manufacturing company) began over 100 years
ago as a small-scale mining venture in Northern Minnesota. See Crist Decl. at ¶ 4. 3M has grown
into an industry-leading provider of scientific, technical, and marketing innovations throughout
the world. Id. 3M’s portfolio includes more than 60,000 goods and services, ranging from
household and school supplies, to medical devices and equipment. See id. at Ex. 1.
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A.
The 3M Brand
15.
3M provides goods and services throughout the world under numerous brands,
including well-known brands such as: ACE; POST-IT; SCOTCH; NEXCARE; and more. See
Crist Decl. at Ex. 2.
16.
However, 3M’s most famous and widely recognized brand is its eponymous “3M”
brand. See Crist Decl. at ¶ 7. The 3M brand encompasses products and materials for a wide array
of medical devices, supplies, and personal protective equipment (“PPE”), including, for example:
stethoscopes; medical tapes; surgical gowns; blankets; bandages and other wound-care products;
and respirators. See id. at Ex. 3. 3M-branded products are highly visible throughout numerous
hospitals, nursing homes, and other care facilities where patients, care providers, and procurement
officers value and rely on the high quality and integrity associated with the 3M brand. Id. at ¶ 8.
3M employs strict quality-control standards in manufacturing all of its products, including its
products used in the fields of healthcare and worker safety. Id. at ¶ 9.
B.
The 3M Marks
17.
Over the past century, 3M has invested hundreds of millions of dollars in
advertising and promoting its 3M-brand products to customers throughout the world (including its
3M-brand N95 respirators) under the standard-character mark “3M” and the 3M design mark
(together, the “3M Marks”). See Crist Decl. at ¶ 10. 3M also uses its famous “3M Science. Applied
to Life” slogan (the “3M Slogan”) in connection with the promotion of its goods and services. Id.
18.
During this period, 3M’s goods and services offered under its 3M Marks, in
particular, have been the subject of widespread, unsolicited media coverage and critical acclaim.
See Crist Decl. at ¶ 11. Products offered by 3M using its 3M Marks have also enjoyed enormous
commercial success (including, without limitation, its range of 3M-brand N95 respirators). Id. at
¶ 12.
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19.
To strengthen 3M’s common-law rights in and to its 3M Marks and 3M Slogan,
3M has obtained numerous federal trademark registrations, including, without limitation: (i) U.S.
Trademark Reg. No. 3,398,329, which covers the standard-character 3M mark in Int. Classes 9
and 10 for, inter alia, respirators (the “‘329 Registration”); (ii) U.S. Trademark Reg. No. 2,793,534,
which covers the 3M design mark in Int. Classes 1, 5, and 10 for, inter alia, respirators (the “‘534
Registration”); and (iii) U.S. Trademark Reg. No. 5,469,903, which covers the “3M Science.
Applied to Life” slogan in a number of Int. Classes, including Int. Class 9 for facial masks and
respirators (the “‘903 Registration”). See Crist Decl. at ¶¶ 13-5, Exs. 4, 6, 8.
20.
Pursuant to Section 15 of the Lanham Act, namely, 15 U.S.C. § 1065, on April 2
2014, the United States Patent and Trademark Office (the “PTO”) issued a Notice of
Acknowledgement of 3M’s Declaration of Incontestability of the ‘329 Registration. See Crist
Decl. at Ex. 5. On December 21, 2009, the PTO issued a Notice of Acknowledgement of 3M’s
Declaration of Incontestability of the ‘534 Registration. See id. at Ex. 7.
C.
3M’s N95 Respirators
21.
3M is a leading manufacturer of N95 respirators. See Stobbie Decl. at ¶ 4. In fact,
“3M’s N95 [respirators] are considered the gold standard by medical workers and public-health
officials.” Mancini Decl. at Ex. 4, p. 3. 3M’s N95-rated filtering facepiece respirators have a
filtration efficiency of at least 95% against non-oily particles when tested using the U.S. National
Institute for Occupational Safety and Health criteria. Id. at p. 1; see also Stobbie Decl. at ¶ 5.
22.
3M has sold N95 respirators in the United States under the 3M brand name and 3M
Marks for decades. See Crist Decl. at ¶ 10. Since the COVID-19 outbreak began, the public has
become even more familiar with 3M as a manufacturer of N95 respirators and other equipment
essential to protecting healthcare personnel and workers from exposure to airborne particles. See
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id. at ¶ 17; Stobbie Decl. at ¶ 13. For example, in early March 2020, Vice President Pence and Dr.
Deborah Birx, made a highly publicized visit to 3M’s corporate headquarters in Minnesota, during
which they discussed and “praise[d]” 3M and its N95 respirators. See Mancini Decl. at Ex. 5.
D.
3M’s Production and Sale of N95 Respirators During COVID-19
23.
Among the PPE that 3M is providing to the heroic individuals on the front lines of
the battle against COVID-19 are 3M-brand N95 respirators. Stobbie Decl. at. ¶¶ 6, 7.
24.
Since the outbreak of COVID-19 in early 2020, 3M has doubled its global output
rate of filtering facepiece respirators, such as N95 respirators, to 1.1 billion per year, to seek to
ensure that adequate supply is available to governments and healthcare personnel, as well as to
workers in other critical industries, including food, energy and pharmaceutical. See Stobbie Decl.
at Ex. 1. 3M is currently producing 35 million of its 3M-brand N95 respirators each month in the
United States. Id. at Exs. 1, 2. Approximately 90% of these respirators are now distributed for
use by healthcare workers. Id. at Exs. 1, 3.
25.
Notwithstanding the surging demand and public need for PPE during COVID-19,
3M has confirmed publicly that it will not increase the prices of its 3M-brand N95 respirators as a
result of the COVID-19 crisis. See Stobbie Decl. at ¶ 12, Ex. 3.
E.
3M’s Efforts to Help Curtail Unlawful Conduct During COVID-19
26.
Opportunistic third parties in the United States are seeking to exploit the increased
demand for 3M-brand N95 respirators by offering to sell them for exorbitant prices, associating
3M with those exorbitant prices, falsely claiming that their exorbitant prices are a result of 3M
price increases, selling counterfeit versions of 3M-brand N95 respirators, and seeking and
accepting money for purported quantities of 3M-brand N95 respirators that they do not possess or
are not authorized to sell. See Stobbie Decl. at ¶ 17.
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27.
3M is working with law enforcement, retail partners, and others to help thwart third-
party price-gouging, counterfeiting, and fraud in relation to 3M-brand N95 respirators during
COVID-19. See Stobbie Decl. at ¶ 14. For example, on March 24, 2020, 3M’s Chief Executive
Officer, Mike Roman, sent a letter to U.S. Attorney General William Barr, and the President of
the National Governors’ Association, Larry Hogan of Maryland, to offer 3M’s partnership in
combatting price-gouging. See id. at Ex. 4. Additional examples of 3M’s efforts to thwart price-
gouging, counterfeiting, and fraud during COVID-19 include:
a.
3M posted the single-case U.S. list price for several of its 3M-brand N95 respirators
on its website so that customers can more readily identify and avoid inflated prices (see id. at Ex.
5);
b. 3M created a form on its website through which customers can report suspected
incidents of price-gouging and counterfeiting (see id. at Ex. 6); and
c.
3M established a fraud “hotline” that customers can call to verify the authenticity
of purported 3M authorized distributors and to report suspect incidents of price-gouging and
counterfeiting. See id. at Ex. 3. p. 3.
28.
3M also actively investigates and acts on complaints in order to protect the goodwill
and reputation of the 3M brand, as well as to protect customers and healthcare workers who rely
upon the availability and proven quality of authentic 3M-brand N95 respirators. See Stobbie Decl.
at ¶ 16.
29.
Additionally, 3M has taken legal action against third parties who use the 3M Marks
and/or 3M Slogan to confuse and deceive consumers into believing that they are authorized 3M
distributors, vendors, or representatives, as well as third parties who offer to sell purported 3M-
brand N95 respirators for exorbitant prices. Examples of this legal action include:
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 13 of 31
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a.
3M Company v. Rx2Live, LLC, Case No. 1:20-cv-00523, presently pending in the
United States District Court for the Eastern District of California (see Mancini Decl. at Ex. 7);
b.
3M Company v. John Doe, claiming to be the “3M Company Trust Account,” Cause
No. DC-20-05549, presently pending in Dallas County, Texas District Court (id. at Ex. 8);
c.
3M Company v. Geftiko, LLC, Case No. 6:20-cv-00648, presently pending in the
United States District Court for the Middle District of Florida, Orlando Division (id. at Ex. 9);
d.
3M Company v. King Law Center, Chartered, Case No. 6:20-cv-00760, presently
pending in the United States District Court for the Middle District of Florida, Orlando Division;
e.
3M Company v. TAC2 Global LLC, Case No. 8:20-cv-01003, presently pending in
the United States District Court for the Middle District of Florida, Tampa Division;
f.
3M Company v. 1 Ignite Capital, LLC, et al., Case No. 4:20-cv-00225, presently
pending in the United States District Court for the Northern District of Florida, Tallahassee
Division;
g.
3M Company v. Zachary Puznak, et al, Case No. 1:20-cv-01287, presently pending
in the United States District Court for the Southern District of Indiana, Indianapolis Division; and
h.
3M Company v. Hulomil LLC, Case No. 3:20-cv-00394, presently pending in the
United States District Court for the Western District of Wisconsin.
IV.
Defendant Performance Supply, LLC
30.
Defendant purportedly operates out of Englishtown, New Jersey. See Stobbie Decl.
at ¶ 19, Ex. 7; see also Crist Decl. at ¶ 19, Ex. 9. Defendant does not appear to have any website
or social media. See Mancini Decl. at ¶¶ 14, 15. Defendant’s president, Mr. Ronald Romano,
appears to sell vehicles as his primary business. Id. at ¶ 16, Exs. 10-12.
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 14 of 31
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31.
Defendant is not, and has never been, a licensed or authorized distributor, agent, or
representative of 3M-brand N95 respirators. See Stobbie Decl. at ¶¶ 21, 23; Crist Decl. at ¶¶ 21,
23. Yet, on or about March 30, 2020, Defendant sent Ms. Ebony P. Roberson, a Purchasing Agent
at New York City’s Office of Citywide Procurement, a detailed Formal Quote, offering to sell
seven million 3M N95 respirators. See id. at ¶ 19, Ex. 17; ¶ 19, Ex. 9. Defendant stated that it
would sell the respirators for $6.05 per mask for 2 million 3M 8210 masks and for $6.35 per mask
for 5 million 3M 1860 masks. See id. As shown in the table below, Defendant’s mark-up over
3M’s listed single-case prices is more than five times as much:
3M Model
3M’s
Per-Respirator List
Price
Defendant’s
Per-Respirator
Price
Markup
1860
$1.27
$6.35
500%
8210
$1.02-$1.31
$6.05
460-590%
32.
In its one-page Formal Quote, Defendant reproduced 3M’s marks nine times and
referenced 3M’s headquarters in St. Paul, Minnesota, seeking to imply a connection with 3M that
does not exist. See Stobbie Decl. at ¶ 20; Crist Decl. at ¶ 20. Defendant also attached to the Formal
Quote a 3M Technical Specification Sheet for both Models of 3M-brand N95 respirators that
Defendant offered for sale. See id. The 3M design mark and 3M Slogan prominently appeared on
both Technical Specification Sheets. Id. The 3M design mark also appeared on both Technical
Specification Sheets. Id. The standard-character 3M mark also appeared in the Technical
Specification Sheets. Id.
33.
Based on Defendant’s Formal Quote, Ms. Roberson prepared an “Evaluation
Request – Bid Document Review” as part of the City’s quality-assurance measures. See Stobbie
Decl. at ¶ 21; Crist Decl. at ¶ 21. In the Evaluation Request, New York City officials twice
identified Defendant as a “vendor” of 3M-brand, N95 Model 8210 and 1860 respirators. See id.
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However, the New York City officials were mistaken. As stated, supra, Defendant is not, and
never has been, an authorized distributor, vendor, or representative of 3M’s products. Defendant
also does not have, and has never had, an association or affiliation with 3M. See Stobbie Decl. at
¶¶ 21, 23; Crist Decl. at ¶¶ 21, 23.
34.
In the Formal Quote, Defendant also stated:
Due to the national emergency, acceptance of the purchase order is at the full
discretion of 3M and supplies are based upon availability. The N95 masks 3M can
begin shipping in 2-4 weeks CIF at any of 3M [sic] plants in the USA or 3M Plants
Overseas according to their manufacturing schedule. 3M chooses the plant. Order
may be shipped in whole or in part.
See Stobbie Decl. at ¶ 22; Crist Decl. at ¶ 22. (emphasis added).
35.
However, as stated, supra, Defendant is not authorized to solicit purchase orders
from customers for submission to 3M for approval. See Stobbie Decl. at ¶ 22; Crist Decl. at ¶ 23.
Nor is Defendant authorized to state how, where, or in what quantity such orders would be filled.
Id.
36.
Defendant’s Formal Quote also does not accurately describe how 3M fills N95
orders. See Stobbie Decl. at ¶ 23; Crist Decl. at ¶ 23. 3M fills orders for its N95 respirators by
accepting purchase orders from 3M’s authorized distributors and wholesalers, or directly from the
government. Id. 3M does not accept purchase orders from unauthorized resellers, like Defendant.
Id.
37.
The same day that Ms. Roberson received the Formal Quote, she contacted Eileen
Simmons, a 3M Business Development Manager for government markets, for verification of
Defendant’s claim. See Stobbie Decl. at ¶ 24; Crist Decl. at ¶ 24. Ms. Simmons informed Ms.
Roberson that Defendant is not associated with 3M, and so that potential sale was averted. Id.
Absent injunctive relief, however, there is nothing to prevent Defendant from making similar
offers to other government or healthcare entities around the United States. Id.
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PROPOSED CONCLUSIONS OF LAW
1.
“In the Second Circuit, the same legal standard governs the issuance of preliminary
injunctions and [TROs].” Mahmood v. Nielsen, 312 F. Supp. 3d 417, 421 (S.D.N.Y. 2018). To
obtain either, 3M must show: “(1) a likelihood of success on the merits […]; (2) a likelihood of
irreparable injury in the absence of an injunction; (3) that the balance of hardships tips in the
plaintiff’s favor; and (4) that the public interest would not be disserved by the issuance of an
injunction.” Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887, 895 (2d Cir. 2015).
2.
3M is entitled to a PI because: (i) 3M faces irreparable harm in the absence of a PI;
(ii) 3M is likely to succeed on the merits of its claims; (iii) the balance of equities favors issuing a
PI; and (iv) entering a PI against Defendant would serve the public’s interest in avoiding confusion
about the source and quality of goods and services during the COVID-19 global pandemic. See
discussion infra.
I.
3M Will Suffer Irreparable Harm in the Absence of a Preliminary Injunction
3.
Irreparable harm exists when “remedies available at law, such as monetary
damages, are inadequate to compensate the plaintiff.” Marks Org., Inc. v. Joles, 784 F. Supp. 2d
322, 334 (S.D.N.Y. 2011) (granting preliminary-injunction motion). Of particular significance
here and now, harm both to parties within a lawsuit and to the public may be considered when
determining if failure to issue a preliminary injunction will result in irreparable harm. Long Island
R .Co. v. Int’l Ass’n of Machinists, 874 F.2d 901 (2d Cir. 1989) (preliminary injunction prohibiting
union from striking was appropriate where the general public would sustain irreparable harm).
4.
Here, Defendant’s conduct is likely to irreparably harm 3M in two respects,
namely: (i) quality and (ii) reputation.
5.
The 3M brand and Marks are synonymous with superior quality. This is not a
coincidence. For more than a century, 3M has invested hundreds of millions of dollars in
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advertising and marketing products under its 3M Marks and 3M Slogan. FOF at ¶¶ 17, 21. 3M
also implements rigorous quality-control standards to ensure that all products offered under its
famous 3M Marks and 3M Slogan are consistent and of the highest quality. Id. at ¶ 16.
6.
However, 3M cannot control whether the products that Defendant is offering for
sale and/or selling outside of its authorized trade channels adhere to 3M’s rigorous quality-control
standards. See Crist Decl. at ¶¶ 28-9. This constitutes irreparable harm. See El Greco Leather
Prods. Co., Inc. v. Shoe World, 806 F.2d 392, 395 (2d Cir. 1986) (“One of the most valuable and
important protections afforded by the Lanham Act is the right to control the quality of the goods
manufactured and sold under the holder’s trademark”); Mister Softee, Inc. v. Tsirkos, No. 14-cv-
1975-LTS-RLE, 2015 WL 7458619, *5 (S.D.N.Y. Nov. 23, 2015) (Finding irreparable harm
because “Plaintiffs have no actual control over the quality of Defendant’s products or services”).
7.
Defendant also is using the 3M Marks to create the false impression that it is
authorized to solicit large orders for N95 respirators at inflated prices on 3M’s behalf during the
COVID-19 global pandemic. No amount of money could repair the damage to 3M’s brand and
reputation if it is associated with the crime of price-gouging at the expense of healthcare workers
and other first responders in the midst of the COVID-19 crisis. See Crist Decl. at ¶¶ 25-7. This
too constitutes irreparable harm. See, e.g., New York City Triathlon, LLC v. NYC Triathlon Club,
Inc., 704 F. Supp. 2d 305, 325 (S.D.N.Y. 2010) (“It is well-settled that a trademark owner’s loss
of goodwill and ability to control its reputation constitutes irreparable harm sufficient to satisfy
the preliminary injunction standard”).
8.
In short, 3M should not have its carefully curated brand and reputation left to the
devices of Defendant’s scheme to profit from a pandemic. Yet, that is precisely what will happen
in the absence of PI. Accordingly, 3M has established irreparable harm.
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II.
3M Has Established a Likelihood of Success on the Merits of its Claims
9.
To obtain a PI, 3M must establish a likelihood of success on the merits of only one
of its claims. See 725 Eatery Corp. v. City of New York, 408 F. Supp. 3d 424, 459 (S.D.N.Y.
2019). However, because 3M is likely to succeed on the merits of its claims for trademark
infringement, unfair competition, false endorsement, false association, and false designation of
origin under Section 32 and 43(a)(1)(a) of the Lanham Act, and New York common law
(collectively, the “Claims”), 3M seeks a PI on all of these Claims.
10.
For 3M to prevail on its Claims, it must satisfy two elements, namely: (i) that its
3M Marks and 3M Slogan are valid and entitled to protection, and (ii) Defendant is using the
famous 3M Marks and/or 3M Slogan in a manner that is likely to create consumer confusion. See
Lexington Mgmt. Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271, 277 (S.D.N.Y. 1998)
(The same standard governs Section 32 and 43(a)(1)(A) claims; granting preliminary injunction);
Avela, Inc. v. Estate of Marilyn Monroe, LLC, 131 F. Supp. 3d 196, 209 (S.D.N.Y. 2015).
A.
3M is Likely to Establish the Validity of its 3M Marks and 3M Slogan
11.
The ’329 and ’534 Registrations for the 3M Marks are “incontestable” within the
meaning of 15 U.S.C. § 1065. FOF at ¶¶ 19, 20. Accordingly, the 3M Marks are conclusively
valid and entitled to protection. See 15 U.S.C. § 1115(b); accord Lexington Mgmt. Corp., 10 F.
Supp. 2d at 277-78. The ’903 Registration for the 3M Slogan is on the Principal Trademark
Register. FOF at ¶¶ 19, 20. Accordingly, the 3M Slogan is prima facie valid and entitled to
protection. See 15 U.S.C. § 1115(a).
12.
Based on the foregoing, 3M is likely to establish the validity and
protectability of its 3M Marks and 3M Slogan.
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B.
3M is Likely to Establish that Defendant’s Use of the 3M Marks and 3M
Slogan is Likely to Cause Confusion as to Source and/or Quality
13.
“The likelihood-of-confusion prong turns on whether ordinary consumers are likely
to be misled or confused as to the source of the product in question because of the entrance in the
marketplace of [the junior user’s] mark.” Guthrie Healthcare System v. ContextMedia, Inc., 826
F.3d 27, 37 (2d Cir. 2016).
14.
To determine whether a likelihood of confusion exists, courts in this Circuit use the
eight “Polaroid” factors, namely: “1) the strength of the plaintiff’s mark; 2) the degree of similarity
between marks; 3) the proximity of the products or services; 4) the likelihood that the senior user
will ‘bridge the gap’ into the junior user’s product or service line; 5) evidence of actual confusion
between the marks; 6) whether the defendant adopted the mark in good faith; 7) the quality of
defendant’s products or services; and 8) the sophistication of the parties’ customers.” Lexington
Mgmt. Corp., 10 F. Supp. 2d at 278 (referencing Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d
492 (2d Cir.))
15.
Here, 3M is likely to establish that the balance of relevant Polaroid factors weighs
overwhelmingly in its favor.
i.
The First Polaroid Factor: the 3M Marks and Slogan are Strong
16.
“The strength of a mark refers to its distinctiveness, that is to say, the mark’s ability
to identify goods sold under it as coming from one particular source.” Streetwise Maps, Inc. v.
VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). Courts measure a mark’s distinctiveness in two
ways, namely: (i) conceptual strength (i.e., “inherent distinctiveness”), and (ii) commercial
strength (i.e., “acquired distinctiveness”). See Streetwise Maps, Inc., 159 F.3d at 743-44.
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a.
The 3M Marks are Conceptually Strong
17.
To determine a mark’s conceptual strength, courts use “Judge Friendly’s familiar
test for the inherent distinctiveness of trademarks in Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 11 (2d Cir. 1976).” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d
373, 377 (2d Cir. 1997). “The Abercrombie test classifies verbal marks into four categories which
run in a continuum: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.”
Landscape Forms, Inc., 113 F.3d at 377.
18.
Here, “3M” is not a word, and has no inherent relationship to the goods or services
for which the marks are used, namely, N95 respirators. Accordingly, the 3M Marks are fanciful
and, thus, inherently distinctive when used for respirators. Lane Capital Mgmt., Inc. v. Lane
Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999) (“[A] fanciful mark is not a real word at all,
but is invented for its use as a mark”); Landscape Forms, Inc., 113 F.3d at 377 (“[F]anciful
trademarks are inherently distinctive […]”).
b.
The 3M Marks are Commercially Strong and Famous
19.
A mark is commercially strong if it has acquired “secondary meaning,” i.e.: “in the
minds of the public, the primary significance of [the mark] […] is to identify the source of the
product rather than the product itself.” Christian Louboutin, S.A. v. Yves Saint Laurent America
Holdings, Inc., 696 F.3d 206, 216 (2d Cir. 2012).
20.
As discussed, supra, the 3M Marks are incontestable. Accordingly, the 3M Marks
have acquired secondary meaning as a matter of law. See Times Mirror Magazines, Inc. v. Field
& Stream Licenses Co., 294 F.3d 383, 391 (2d Cir. 2002) (“Because FSLC continually maintained
its registration of the mark, FSLC’s mark is incontestable and, as a matter of law, it has acquired
secondary meaning”).
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21.
Even in the absence of 3M’s incontestable registrations, it is likely to establish that
its 3M Marks and 3M Slogan have acquired secondary meaning. As discussed, supra, 3M has
invested hundreds of millions of dollars in advertising, marketing, and promoting goods and
services under the 3M Marks and 3M Slogan; goods sold under the 3M Marks and 3M Slogan,
including 3M’s N95 respirators, enjoy enormous commercial success; the 3M Marks and 3M
Slogan are recognized and well-known in households around the U.S.; and 3M has been the
exclusive source of goods and services offered under the 3M Marks and 3M Slogan for several
decades. FOF at ¶¶ 17-8, 21-22; accord 3M Co. v. Christian Investments LLC, No. 1:11CV0627
TSE/JFA, 2012 WL 6561732, at *8 (E.D. Va. July 12, 2012) (Holding 3M Marks were distinctive
and famous; “Plaintiff has used the 3M mark since 1906, it offers more than 50,000 products and
services in a wide variety of fields and markets under the 3M mark, the 3M mark is distinctive and
distinguishes the source of plaintiff's products and services […]”).
22.
Based on the foregoing, the first Polaroid factor favors 3M.
ii.
The Second Polaroid Factor: Defendant Reproduced the 3M Marks and
Slogan in Their Entirety
23.
Defendant reproduced the 3M Marks and Slogan in their entirety in the Formal
Quote and Technical Specification Sheets. FOF at ¶¶ 32, 33. Accordingly, the second Polaroid
factor favors 3M. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996)
(“For the purpose of considering the question of the similarity of the marks, the district court
correctly determined that as a matter of law these marks [i.e., “COTT” v. “COTT”] are identical”).
iii.
The Third Polaroid Factor: Defendant Purported to Sell the Same
Products that 3M is Widely Known for Selling
24.
It has become commonplace knowledge that 3M manufactures and sells N95
respirators under its 3M Marks. FOF at ¶¶ 21-2. Accordingly, Defendant’s offering of N95
respirators under the 3M Marks heightens the likelihood of consumers confusing the source of
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18
products from Defendant as originating from 3M. See Guthrie Healthcare Sys., 826 F.3d at 39
(Under the third Polaroid factor, courts consider “the subject matter of the commerce in which the
two parties engage [...]”; finding a likelihood of confusion because, among other things, both
parties provides healthcare-related goods and services); Virgin Enterprises Ltd. v. Nawab, 335
F.3d 141, 150 (2d Cir. 2005) (“[T]he closer the secondary user’s goods are to those the consumer
has seen marketed under the prior user’s brand, the more likely that the consumer will mistakenly
assume a common source.”). Accordingly, the third Polaroid factor favors 3M.
iv.
The Fourth Polaroid Factor: There is No “Gap” to Bridge
25.
The fourth Polaroid “factor addresses the question of whether the two companies
are likely to compete directly in the same market.” Gucci America, Inc. v. Guess?, Inc., 868 F.
Supp. 2d 207, 239-40 (S.D.N.Y. 2012). When, as here, the parties’ goods are the same, this
Polaroid factor is irrelevant because there is no gap to bridge. See, e.g., Mister Softee, Inc. Tsirkos,
2014 WL 2535114, *5 (S.D.N.Y. June 5, 2014) (issuing preliminary injunction; fourth Polaroid
factor irrelevant where both parties sold ice cream).
v.
The Fifth Polaroid Factor: Defendant Actually Confused New York City
Officials into Identifying Him as a 3M “Vendor”
26.
Here, evidence of actual confusion is demonstrated by Ms. Roberson’s March 30
Evaluation Request, wherein New York City officials mistakenly identified Defendant as a
“vendor”—twice—of 3M-brand N95 respirators. FOF at ¶¶ 32-34. Accordingly, the fifth
Polaroid factor favors 3M. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259
(2d Cir. 1987) (“The existence of some evidence of actual confusion, the fifth Polaroid factor,
further buttresses the finding of a likelihood of confusion”).
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vi.
The Sixth Polaroid Factor: Defendant is Using the 3M Marks in Bad Faith
27.
“A defendant’s good faith—or lack thereof—in adopting its mark is highly
consequential among the Polaroid factors.” Louis Vuitton Malletier v. Sunny Merchandise, 97 F.
Supp. 3d 485, 496 (S.D.N.Y. 2015). To be sure, “where the second-comer has adopted its mark
in bad faith, the equitable balance is tipped significantly in favor of a finding of infringement.
Courts have found a presumption of likelihood of confusion in such circumstances.” Louis Vuitton
Malletier, 97 F. Supp. 3d at 496.
28.
Prior to the rise of COVID-19, 3M’s federal trademark registrations placed
Defendant on constructive notice of 3M’s superior rights in and to, among other things, the 3M
Marks. See 15 U.S.C. § 1072 (“Registration of a mark on the principal register [...] [constitutes]
constructive notice of the registrant’s claim of ownership thereof”). Subsequent to COVID-19,
3M’s manufacture and sale of N95 respirators has become common, household knowledge, with
government officials like President Donald Trump and Vice President Mike Pence drawing
extensive attention to 3M and its respirator masks over the last month. See Stobbie Decl. at ¶ 13,
Ex. 4.
29.
Accordingly, there is no question that Defendant also adopted the 3M Marks with
actual knowledge of 3M’s rights therein. There is likewise no question that Defendant uses the
3M Marks to exploit the Marks’ widespread fame and goodwill. Indeed, Defendant’s primary line
of business is selling vans and other vehicles, and it did not begin attempting to sell purported 3M-
brand N95 respirators until after the COVID-19 global pandemic began. FOF at ¶ 31. This is
textbook bad faith. See Louis Vuitton Malletier v. Sunny Merchandise, 97 F. Supp. 3d 485, 496
(S.D.N.Y. 2015) (explaining that the sixth Polaroid factor “is an equitable inquiry which seeks to
answer the overarching question of whether defendant adopted its mark with the intention of
capitalizing on plaintiff's reputation and goodwill”).
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20
30.
Based on the foregoing, the sixth Polaroid factor favors 3M. See Paddington Corp.
v. Attiki Importers & Distrib., 996 F.2d 577, 586-87 (2d Cir. 1993) (when actual or constructive
knowledge “is accompanied by similarities so strong that it seems plain that deliberate copying
has occurred, we have upheld findings of bad faith”).
vii.
The Seventh Polaroid Factor: Defendant’s Use of the 3M Marks
Jeopardizes – Irreparably – the Reputation of the 3M Brand and Marks
31.
The seventh Polaroid factor concerns “whether the senior user’s reputation could
be jeopardized by virtue of the fact that the junior user’s product is of inferior quality.” Louis
Vuitton Malletier, 97 F. Supp. 3d at 497-98. As discussed, supra, that is precisely what will happen
to carefully curated 3M brand if Defendant continues using the 3M Marks to create the false
impression that it is an authorized representative of 3M products and/or in connection with
unlawful price-gouging. Accordingly, the seventh Polaroid factor favors 3M. See Henegan Const.
Co., Inc. v. Heneghan Contracting Corp., No. 00 CIV.9077 JGK, 2002 WL 1300252, at *8
(S.D.N.Y. June 12, 2002) (“The fact that the plaintiff has maintained high-quality services for so
many years makes it more likely that it would be damaged if its reputation were placed beyond its
control”).
viii.
The Eighth Polaroid Factor: In the Era of COVID-19, Normally Prudent
Purchasers Must Make Rash Purchasing Decisions
32.
The eighth and final Polaroid factor concerns “the sophistication of the consumers
and the degree of care likely to be exercised in purchasing the product.” Coty Inc. v. Excell Brands,
LLC, 277 F. Supp. 3d 425, 456 (S.D.N.Y. 2017). In the current pandemic, purchasers of N95
respirators are government entities and hospitals and healthcare providers. See, e.g., Stobbie Decl.
at ¶ 25. These customers are sophisticated and prone to exercise high degrees of care; however,
the current state of emergency has stymied the ability of customers to take the time and conduct
the diligence necessary to show extensive care. For example, to obtain purported 3M-brand N95
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21
respirators as quickly as possible, one New York City procurement official offered to drive an
unknown distance, late at night, to inspect the respirators. See Stobbie Decl. at ¶ 25. Accordingly,
in this unique environment, the eighth Polaroid factor favors 3M.
ix.
All of the Polaroid Factors Strongly Favor 3M
33.
In sum, each of the relevant Polaroid factors strongly favor 3M. This “powerful
showing of a likelihood of confusion” (Guthrie Healthcare Sys., 826 F.3d at 46), combined with
the overwhelming strength and validity of the 3M Marks, and Defendant’s bad faith, establish that
3M is likely to succeed on the merits of its Claims.
C.
3M is Likely to Succeed on its Claim for False Advertising Under Section
43(a)(1)(B)
34.
3M also is likely to succeed on the merits of its claim for false advertising under
Section 43(a)(1)(B) of the Lanham Act.
35.
In the Formal Quote, Defendant made detailed factual representations concerning
the nature of 3M’s business operations. See FOF at ¶ 34. For example, Defendant represented
that, “[d]ue to the national emergency, acceptance of the purchase order is at the full discretion of
3M.” Id. Defendant further represented in the Formal Quote that 3M allegedly ships its products
CIF, and that 3M will determine the production site for the order. Id. However, these
representations are false on their face. See FOF at ¶ 36. Given the level of specificity in these
representations, they also are likely to – and, in fact, did – deceive a reasonable consumer into
believing that Defendant is an authorized distributor of 3M products and/or has an association or
affiliation with 3M. Sadly, in this case, Defendant’s Formal Quote actually misled and deceived
experienced buyers in the Procurement Office of one of the world’s largest cities into believing
that Defendant was an authorized “vendor” of approximately $45 million-worth of 3M-brand N95
respirators. See FOF at ¶¶ 31-37.
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36.
Based on the foregoing, 3M also is likely to succeed on its claim under Section
43(a)(1)(B) of the Lanham Act for false advertising. Accord Church & Dwigh v. SPD Swiss
Precision Diagnostics, 843 F.3d 48, 65 (2d Cir. 2016).
D.
3M is Likely to Succeed on its Claims for Deceptive Acts and Practices, and
False Advertising, Under GBL §§ 349, 350
37.
In addition to creating confusion about the source and quality of the purported 3M-
brand N95 respirators that Defendant attempted to sell, Defendant’s conduct results in a diversion
of critical public resources, which places lives at risk. See Crist Decl. at ¶ 29. These resources
include the time spent by public officials to pursue false/fraudulent leads and the money spent to
purchase products at inflated prices. Id. This waste of resources further diminishes the ability of
public officials and procurement officers to investigate and identify other counterfeit and inferior
quality supplies as buyers are pressured to place large orders swiftly for essential PPE. Id.
38.
Accordingly, because Defendant’s trademark infringement, unfair competition, and
false advertising presents a substantial threat to public health and safety, 3M also is likely to prevail
on the merits of claims for deceptive acts and practices, and false advertising, under GBL §§ 349,
350. See Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256, 265-22 (2d Cir. 1995) (§ 349
claim stated where defendant provided false information to regulatory agency tasked with
protecting public health and safety); In re Houbigant Inc., 914 F. Supp. 964, 983-84 (S.D.N.Y.
1995) (§§ 349, 350 claims stated where defendants were part “of an unlawful scheme” to, inter
alia, “deceive customers as to the source and origin of the products” at issue).
III.
The Balance of Hardships Tips Decidedly in 3M’s Favor
39.
It would not be a “hardship” for Defendant to refrain from engaging in unlawful
activities related to 3M’s brand (which constitute, inter alia, trademark infringement, false
association, and price-gouging). This is especially true given that Defendant sells products
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23
unrelated to 3M’s brand (e.g., vehicles and automobiles), and could continue doing so under a PI.
FOF at ¶ 31; see also WpIX, Inc. v. lvl, Inc., 691 F.3d 275, 287 (2d Cir. 2012) (“It is axiomatic that
an infringer […] cannot complain about the loss of ability to offer its infringing products”; “[t]he
balance of hardships, therefore, clearly tips in plaintiffs’ favor”); see also New York City Triathlon
Club, LLC, 704 F. Supp. 2d at 344 (Entering preliminary injunction that did “not prohibit
Defendant from operating a training club [in general]. It only prohib[ited] Defendant from
operating a training club using the name that infringes upon Plaintiff’s Marks”).
40.
Unlike Defendant, 3M would suffer substantial hardship in the absence of a TRO
and PI. Indeed, as discussed, supra, Defendant’s unlawful conduct is likely to irreparably harm
the 3M brand, 3M Marks and 3M Slogan. Accordingly, the balance of hardships tips decidedly in
3M’s favor. See New York City Triathlon Club, LLC, 704 F. Supp. 2d at 345 (“The balance of
hardships in this case clearly favors Plaintiff. As explained above, Plaintiff faces the threat of
irreparable harm absent injunctive relief”).
IV.
Issuing a Preliminary Injunction Would Serve the Public Interest of Avoiding
Confusion and Protecting Healthcare Workers, First Responders, and Critical
Infrastructure Operations from the Risk of Receiving Protective Equipment of
Unknown Quality and Inflated Prices
41.
During the current COVID-19 pandemic, consumers and government officials,
including those here in New York City, understandably lack the time and resources they would
have in normal purchasing environments to ensure that sellers are who they purport to be (e.g,
authorized distributors of 3M-brand products), and that products are what sellers claim they are
(e.g., genuine 3M-brand products). Accordingly, when the public sees purported 3M-brand N95
respirators available for sale, they are relying on the 3M Marks and 3M Slogan and standards
associated with the 3M brand now, more than ever, to indicate that the respirators offered for sale
are, in fact, genuine and adhere to the 3M brand’s rigorous standards.
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42.
Sellers, such as Defendant, are seeking to exploit the fact that consumers are
making rapid purchasing decisions during COVID-19 by falsely representing themselves as
authorized distributors of 3M-brand products, as well as offering to sell those products at
exorbitantly high prices. Not only is this unlawful conduct likely to confuse and deceive the public
about the source and quality of purported 3M-brand products offered under the 3M Marks and 3M
Slogan, but also it creates an overall purchasing environment that is materially different from, and
irreparably harms, the carefully curated 3M brand and customer experience.
43.
Accordingly, unless this Court enjoins Defendant’s unlawful conduct, the public
will continue suffering harm in the form of confusion and deception about the source and quality
of the purported 3M-brand N95 respirators that Defendant is offering to sell for exorbitantly high
prices. See New York City Triathlon, LLC, 704 F. Supp. 2d at 344 (consumers have an “interest
in not being deceived—in being assured that the mark [they] associate [] with a product is not
attached to goods of unknown origin and quality”); see also NYP Holdings v. New York Post Pub.
Inc., 63 F. Supp. 3d 328, 342 (S.D.N.Y. 2014) (consumers have a “protectable interest in being
free from confusion, deception and mistake”).
44.
Unquestionably, the protection of healthcare professionals who are putting their
lives on the line in the fight against COVID 19 is in the public interest. Those brave and selfless
professionals deserve trustworthy supply lines of authentic PPE, including N95 respirators, that
are free of misrepresentations, false designations of origin, and unscrupulous profiteering.
45.
Likewise, precious public resources should not be squandered on needless inquiries
and investigations into the truth and the legality of basic commercial terms and representations
made in the procurement process. If the market (and the participants in the market) cannot be
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 29 of 31
25
trusted, procurement will grind to a halt. When lives are at stake and time is of the essence, as is
clearly the case in this crisis, the public interest demands accountability.
Dated: May 4, 2020
New York, New York
MAYER BROWN LLP
/s/ Carmine R. Zarlenga
Carmine R. Zarlenga (pro hac vice)
1999 K Street, NW
Washington, D.C. 20006
Tel.: (202) 263-3000
Email: CZarlenga@mayerbrown.com
A. John P. Mancini
Andrew J. Calica
Jordan Sagalowsky
Jonathan W. Thomas
1221 Avenue of the Americas
New York, New York 10020-1001
Tel.: (212) 506-2500
Email: JMancini@mayerbrown.com
Email: ACalica@mayerbrown.com
Email: JSagalowsky@mayerbrown.com
Email: JWThomas@mayerbrown.com
Richard F. Bulger (to apply pro hac vice)
Richard M. Assmus (to apply pro hac vice)
Kristine M. Young (to apply pro hac vice)
71 South Wacker Drive
Chicago, Illinois 60606
Tel.: (312) 782-0600
Email: RBulger@mayerbrown.com
Email: RAssmus@mayerbrown.com
Email: KYoung@mayerbrown.com
Attorneys for Plaintiff 3M Company
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 30 of 31
CERTIFICATE OF SERVICE
I, Carmine R. Zarlenga, certify that, on May 4, 2020, I filed a true and correct copy of the
foregoing document, titled Plaintiff 3M Company’s Proposed Findings of Fact and Conclusions
of Law in Support of its Application for a Preliminary Injunction Against Defendant Performance
Supply, LLC, using this Court’s ECF Filing System. I also certify that, on May 4, 2020, I arranged
for service of a true and correct copy of the foregoing document on Defendant Performance
Supply, LLC via personal service and First Class Mail at:
Performance Supply, LLC
c/o Ronald Romano
3 Westbrook Way
Manalapan, New Jersey 07726
/s/ Carmine R. Zarlenga
Carmine R. Zarlenga
Attorney for Plaintiff 3M Company
Case 1:20-cv-02949-JLR-JW Document 21 Filed 05/04/20 Page 31 of 31