Rupp Pfalzgraf’s IP Litigation team, led by attorneys James Graber and Taylor Kent, recently obtained a dismissal with prejudice of a federal trademark infringement action in the Eastern District of New York, bringing the case to a permanent close with no settlement payment and no admission of wrongdoing by the client.
The Case
Our client, a Long Island retail smoke shop and its owner, were named as defendants in a federal trademark infringement lawsuit alleging the sale of counterfeit products. The plaintiff, a company that appears to have a pattern of filing trademark claims against small businesses, also named a former owner of the business who had not been involved with operations for years.
From the outset, our team identified a central flaw in the plaintiff’s case: the products at issue had been purchased through distribution channels that the plaintiff itself publicly identified as authorized on its own website. We challenged the inclusion of the former owner as a defendant, highlighted that the individual claims arose from ordinary corporate retail operations rather than any personal conduct, and prepared to defend the case on the merits.
After the plaintiff failed to comply with a series of court orders, our team filed a renewed motion to dismiss. The Court agreed and recommended dismissal with prejudice, meaning the decision is final and the claims cannot be refiled.
What Small Businesses Should Know
Small businesses are increasingly being targeted by serial trademark plaintiffs who file large volumes of infringement claims against smaller companies. For business owners, facing these claims can be costly and disruptive, regardless of their merit.
This case is a reminder that settlement is not the only option. A well-prepared defense that holds the plaintiff to its burden and insists on compliance with the rules of litigation can produce a better outcome. Here, our client walked away with a permanent dismissal, no payment, and no ongoing exposure.
Our Intellectual Property Litigation team works with businesses to evaluate infringement allegations, assess the strength of the claims, identify practical defense strategies, and pursue efficient resolutions to protect their business from unnecessary exposure.
If your business is facing a trademark infringement claim, contact our IP Litigation team to learn how we can help you evaluate the allegations, build a practical defense strategy, and protect your business.