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Mayer Brown LLP
1221 Avenue of the Americas
New York, New York 10020
United States of America
T: +1 212 506 2500
www.mayerbrown.com
Jonathan W. Thomas
T: +1 212 506 2226
jwthomas@mayerbrown.com
December 8, 2022
Via ECF
The Honorable Jennifer E. Willis
United States Magistrate Judge
United States District Court, S.D.N.Y.
40 Foley Square
New York, New York 10007
Re: 3M Company v. Performance Supply, LLC; Case No. 1:20-cv-02949-JLR-JW
3M’s Pre-Motion Letter re Default Judgment, Permanent Injunction
Dear Judge Willis:
We represent Plaintiff 3M Company (“3M”) in the above-referenced civil action. Further
to our December 1, 2022 status letter (Dkt. 40), and pursuant to Rules I.B and II.A of this Court’s
Individual Practices for Civil Cases, 3M requests a pre-motion conference regarding its anticipated
motion for a default judgment under FED. R. CIV. P. 55(b)(2), and permanent injunction under 15
U.S.C. § 1116(a) (the “Motion”), against Defendant Performance Supply, LLC (“Defendant”).
I.
Background
Defendant is not—and never has been—a licensed or authorized distributor, agent, or
representative of any of Plaintiff’s products, and has no right to use Plaintiff’s famous 3M
trademarks for any purpose (the “3M Marks”). See 3M Co. v. Performance Supply, LLC, 458 F.
Supp. 3d 181, 190 (S.D.N.Y. 2020). Yet in March 2020—when healthcare workers were risking
their lives to treat COVID-19 patients at the beginning of the pandemic in the United States—
Defendant reproduced the famous 3M marks nine times on a written quote sent to New York City’s
Office of Citywide Procurement, wherein Defendant offered to sell millions of Plaintiff’s 3M-
branded N95 respirator masks at a grossly inflated aggregate price of approximately $45 million.
See id. at 190, 197. The quote also listed 3M’s corporate headquarters in St. Paul, Minnesota, and
falsely claimed the offer’s acceptance was at 3M’s discretion. See id. at 190-91. Defendant’s
conduct caused New York City officials to prepare a Bid Evaluation Request, wherein they
mistakenly identified Defendant as a “vendor” of 3M-branded N95 respirators—twice. See id. at
190. A New York City official also mistakenly contacted 3M the same day they received
Defendant’s aforementioned quote. See id. at 191.
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Based on the foregoing, as well as supporting affidavits from 3M officials, Judge Preska
“granted 3M’s Application for [an] Order to Show Cause in its entirety” on April 24, 2020 (the
“TRO”). See 3M Co., 458 F. Supp. 3d at 186. Judge Preska converted the TRO into a preliminary
injunction on May 4, 2020 (the “PI”). See id. at 198-99. Defendant’s deadline to respond to the
Complaint was the following day, but it failed to respond. See Doc. No. 18 (Summons Returned
Executed; setting “answer due 5/5/2020”). To date, Defendant has not responded to the Complaint
or appeared in this lawsuit.1 Accordingly, on November 29, 2022, the Clerk issued a Certificate
of Default against Defendant. See Dkt. 39. As a final step in this lawsuit, 3M seeks the entry of a
default judgment, and a permanent injunction. 3M previews its arguments for each remedy in turn.
II.
Default Judgment
“In determining whether to grant a motion for default judgment, a court within this district
considers three factors: (1) whether the defendant’s default was willful; (2) whether defendant has
a meritorious defense to plaintiff’s claims; and (3) the level of prejudice the non-defaulting party
would suffer as a result of the denial of the motion for default judgment.” Nespresso USA, Inc. v.
Africa America Coffee Trading Co. LLC, 2016 WL 3162118, at *2, *7 (S.D.N.Y. June 2, 2016)
(entering default judgment in trademark case). Each factor favors 3M. Defendant’s failure to
appear in this case and respond to the Complaint or any other notice it received from 3M
(i) “indicates willful conduct,” and (ii) prevents this Court from determining whether Defendant
“might be able to present any meritorious defense to [3M’s] claims.” Id. at *2 n.3. 3M also would
suffer prejudice in the absence of a default judgment in the form of “impaired reputation, brand
dilution, goodwill lost, and the destruction of the inherent value of the [3M] Marks.” Off-White
LLC v. anogar-32, 2022 WL 846755, at *2 (S.D.N.Y. Mar. 22, 2022) (entering default judgment,
permanent injunction in trademark case).
“Once the [C]ourt finds that these factors favor the plaintiff” (Nespresso USA, Inc., 2016
WL 3162118, at *2), as they do here, the “Court must follow a two-step procedure for the entry of
judgment against a party who fails to defend: (1) the entry of default, and (2) the entry of a default
judgment.” Mattel, Inc. v. www.fisher-price.online, 2022 WL 2801022, at *2 (S.D.N.Y. July 18,
2022) (entering default judgment, permanent injunction in trademark case). The first step “simply
‘formalizes a judicial recognition that a defendant has, through its failure to defend the action,
admitted liability to the plaintiff.’” Mattel, Inc., 2022 WL 2801022, at *2. Under the second step,
“the Court must determine whether allegations against the defaulting party are well-pleaded” under
the familiar standards of Iqbal and Twombly. Id. Given that 3M’s allegations satisfied the higher
burden of obtaining a PI, 3M’s allegations pass muster under Iqbal, and Twombly. See New Hope
Family Services, Inc. v. Poole, 966 F.3d 145, 165 (2d Cir. 2020) (establishing a “likelihood of
1 Defendant’s principal, Mr. Ronald Romano, was involved in criminal proceedings regarding an alleged “multi-
faceted scheme” to sell 3M-branded N95 respirators to government agencies at grossly inflated prices during the
COVID-19 global pandemic. See generally United States v. Ronald Romano, 20 Cr. 585 (ALC) (the “Criminal
Proceeding”). Mr. Romano was arrested on May 26, 2020. See id. at Doc. No. 68, p. 12. Two years later, on May
31, 2022, Mr. Romano pled guilty to one Count of conspiracy to violate the Defense Production Act, in violation of
18 U.S.C. § 371 and 50 U.S.C. § 4512. See id. at pgs. 12-13. On September 15, 2022, Judge Carter sentenced Mr.
Romano to five years probation, thus bringing the Criminal Proceeding to a close. See id. at Doc. No. 70.
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success” on the merits for purposes of a preliminary injunction is a “heavier burden” than
establishing plausibility under Iqbal and Twombly). But even in the absence of the PI, 3M’s
allegations plausibly establish Defendant’s liability. 3M’s federal and state trademark
infringement and unfair competition claims have two elements, namely, that: “(i) [the] 3M Marks
[…] are valid and entitled to protection, and (ii) Defendant is using the famous 3M Marks […] in
a manner that is likely to create consumer confusion.” 3M Co., 458 F. Supp. 3d at 192. Because
3M’s federal trademark registrations are either incontestable and/or on the Principal Trademark
Register, the 3M Marks are valid. See id. at 193. As Judge Preska detailed, all of the Polaroid
factors (which assess likelihood of confusion) tip decidedly in 3M’s favor given that Defendant
jeopardized the reputation of the 3M brand and caused actual confusion by reproducing the 3M
Marks in toto to create the false impression that it had the authorization to sell products widely
associated with the 3M brand and Marks. See id. at 193-96. 3M established its claim for false
advertising under the Lanham Act given that Defendant made false representations, which caused
actual deception. See id. at 196-97. 3M also established its claims under NY G.B.L. §§ 349 and
350 because Defendant’s conduct “presents a substantial threat to public health and safety.” Id.
III.
Permanent Injunction
It “is well-established that a court may grant a permanent injunction as part of a default
judgment.” Idealvillege Prods. Corp. v. OhMyGod 1, 2020 WL 6747033, at *4 (S.D.N.Y. Nov.
17, 2020) (entering default judgment, permanent injunction in trademark case). The decision to
grant a permanent injunction turns “on (1) the likelihood that plaintiff will suffer irreparable harm
if an injunction is not granted; (2) whether remedies at law such as monetary damages are
inadequate to compensate plaintiff for that harm; (3) the balance of hardships; and (4) whether the
public interest would not be disserved by a permanent injunction.” Id. at *4. 3M’s success on the
merits2 establishes a presumption of irreparable harm under the Trademark Modernization Act, to
wit, 15 U.S.C. § 1116(a). 3M also has proven irreparable harm insofar as it “cannot control
whether the products that Defendant [offered] for sale and/or [sold] outside of its authorized trade
channels adhere[d] to 3M’s rigorous quality-control standards.” 3M Co., 458 F. Supp. 3d at 192
(collecting cases). Moreover, “[n]o amount of money could repair the damage to 3M’s brand and
reputation [from being] associated with the crime of price-gouging at the expense of healthcare
workers and first responders in the midst of the COVID-19 crisis,” which is ongoing. Id.3 Also
“[i]t would not be a ‘hardship’ for Defendant to refrain from engaging in unlawful activities related
to 3M’s brand […].” Finally, “the public has an interest … in being assured that the mark it
associated with a product is not attached to goods of unknown origin and quality.” Mattel, Inc.,
2022 WL 2801022, at *12.
2 3M has achieved actual success on the merits via Defendant’s default. See, e.g., Pitbull Productions, Inc. v.
Universal Netmedia, Inc., 2007 WL 3287368, at *6 (S.D.N.Y. Nov. 7, 2007) (entering default judgment, permanent
injunction in trademark case; “[b]ecause the defendants’ default constitutes an admission of liability, Pitbull has
established success on the merits”).
3 As alleged in the Complaint, 3M will donate any monetary damages that it receives to charity. See Dkt. 1 at p. 25.
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The Honorable Jennifer E. Willis
December 8, 2022
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IV.
Conclusion
Based on the foregoing, 3M respectfully requests that the Court schedule a conference to
discuss 3M’s Motion for a default judgment, and permanent injunction, against Defendant. In the
meantime, we thank the Court for its time and consideration.
Respectfully submitted,
Jonathan W. Thomas
cc (via USPS):
Performance Supply, LLC
c/o Ronald Romano
3 Westbrook Way
Manalapan, New Jersey 07726
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