Pita v. Tulcingo Car Serv., Inc.

Full title: EDUARDO PITA, Plaintiff, v. TULCINGO CAR SERVICE, INC., et al., Defendants.

Court: UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK

Date published: Apr 7, 2011

10-CV-0481 (DLI) (JO) (E.D.N.Y. Apr. 7, 2011)

Opinion

10-CV-0481 (DLI) (JO)

04-07-2011

EDUARDO PITA, Plaintiff, v. TULCINGO CAR SERVICE, INC., et al., Defendants.

JAMES ORENSTEIN, Magistrate Judge

REPORT AND RECOMMENDATION

JAMES ORENSTEIN, Magistrate Judge :

In a Complaint filed on February 3, 2010, plaintiff Eduardo Pita ("Pita") accused defendants Tulcingo Car Service, Inc. ("TCS") and Humberto Campoverde ("Campoverde") of trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq., and unfair competition under New York State law. Docket Entry ("DE") 1 (Complaint). TCS and Campoverde have never responded to the Complaint and the Clerk has entered the default of each. Pita now seeks a default judgment against both defendants. DE 9. On referral from the Honorable Dora L. Irizarry, United States District Judge, I now make this report and, for the reasons set forth below, respectfully recommend that the court grant the motion. Specifically I recommend that the court enter judgment against both defendants jointly and severally in the amount of $2,977.00 (consisting of nothing in damages, $2,910.00 in attorneys' fees, and $67.00 in costs) and also issue a permanent injunction ordering both defendants to cease using Pita's registered "Tulcingo" mark.

I. Background

A. Facts

The following recitation of the facts is drawn from the Complaint's uncontested allegations and the uncontroverted documents submitted in support of the instant motion for default judgment. Pita is the owner and operator of the Tulcingo Mexican restaurant in the Corona neighborhood of Queens, New York. Pita has used the "Tulcingo" mark for restaurant services since 1994. The mark is registered with the United States Patent and Trademark Office ("USPTO"). Pita has extensively advertised and promoted the Tulcingo mark in connection with the restaurant and has achieved substantial commercial success. Complaint ¶¶ 2-4 & Ex. A; DE 9-1 (Declaration of [Pita Counsel] Richard A. Schurin ("Schurin") in Support of Default Judgment) ("Schurin Dec.") Ex. A.

Defendant Campoverde lives in Corona, where he owns and operates defendant TCS, which is a car service. Campoverde and TCS have used the "Tulcingo" name for the car service without Pita's consent. Both defendants have also solicited customers at Pita's restaurant, distributing business cards for TCS bearing the restaurant's logo on the back - again without Pita' consent. After learning of that activity, on June 10, 2009, Pita's counsel sent a letter to both defendants advising them of Pita's ownership of the Tulcingo mark and demanding that they cease engaging in infringing conduct. The defendants have nevertheless continued as before. Complaint ¶¶ 1, 6-7, 17, 22 & Ex. B; Schurin Dec. ¶¶ 5-6 & Ex. A.

B. Proceedings

Pita filed the instant Complaint on February 3, 2010. DE 1. He asserts claims under both state and federal law. The first two claims, under the federal Lanham Act, allege trademark infringement and false designation of origin, respectively. Complaint ¶¶ 18-33; see 15 U.S.C. §§ 1114(1) & 1125(a). The third claim alleges unfair competition under the common law of New York. Complaint ¶¶ 34-40.

Pita served the Complaint on the two defendants on February 17 and 18, 2010. DE 3; DE 4. Neither defendant has responded. On June 7, 2010, at Pita's request, DE 5, the Clerk entered the default of each. DE 7; DE 8. In an order dated June 8, 2010, Judge Irizarry referred the matter to me for a report and recommendation as to the appropriate relief. Over four months passed without Pita filing the required motion for default judgment. Accordingly, on October 14, 2010, I set a deadline for Pita to file the instant motion and submit any supporting materials. The next day, Pita filed his motion, DE 9, and Judge Irizarry referred it to me. The motion papers include a proposed judgment against each defendant providing for a total monetary award of $4,154.50 (consisting of $4,087.50 in attorneys' fees and $67.00 in litigation costs, and making no mention of damages) as well as injunctive relief barring further infringement of the Tulcingo mark. See DE 9-3 & DE 9-4 (the "Proposed Judgments"); see also Schurin Dec. ¶¶ 8, 13. Pita has served a copy of the docket sheet reflecting the pendency of the motion on both defendants. See DE 11; DE 12. He has also served the motion papers themselves on Campoverde alone. DE 14.

II. Discussion

A. Default

When a defendant defaults, the court must accept as true all well-pleaded allegations in the complaint, except those pertaining to the amount of damages. Fed. R. Civ. P. 8(b)(6); see Finkel v. Romanowicz, 577 F.3d 79, 83 n.6 (2d Cir. 2009) (citing Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992)). The fact that a complaint stands unanswered does not, however, suffice to establish liability on its claims: a default does not establish conclusory allegations, nor does it excuse any defects in the plaintiff's pleading. A defendant's default does no more than concede the complaint's factual allegations; it remains the plaintiff's burden to demonstrate that those uncontroverted allegations, without more, establish the defendant's liability on each asserted cause of action. See, e.g., id. at 84; Directv, Inc. v. Neznak, 371 F. Supp. 2d 130, 132-33 (D. Conn. 2005); see also Trans World Airlines, Inc. v. Hughes, 449 F.2d 51, 69 (2d Cir. 1971), rev'd on other grounds, 409 U.S. 363 (1973); Greyhound Exhibitgroup, 973 F.2d at 159; Levesque v. Kelly Commc'ns, Inc., 1993 WL 22113, at *5 (S.D.N.Y. Jan. 25, 1993) (citing Trans World Airlines, 449 F.2d at 63). Accordingly, I first examine whether the Complaint successfully states claims for relief.

If the defaulted complaint suffices to establish liability, the court must conduct an inquiry sufficient to establish damages to a "reasonable certainty." Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d 151, 155 (2d Cir. 1999) (quoting Transatl. Marine Claims Agency, Inc. v. Ace Shipping Corp., 109 F.3d 105, 111 (2d Cir. 1997)). Detailed affidavits and other documentary evidence can suffice in lieu of an evidentiary hearing. Action S.A. v. Marc Rich & Co., 951 F.2d 504, 508 (2d Cir. 1991); Credit Lyonnais, 183 F.3d at 155. As discussed below, Pita has apparently abandoned any claim for monetary damages, but it has submitted evidence in support of its claims for injunctive relief, attorneys' fees and costs, including a declaration from his counsel, documentary exhibits, and his counsel's billing records. Pita has had an ample opportunity to put additional information before me but has chosen not to do so. Upon this record, I have declined to convene an evidentiary hearing and make the instant report and recommendations on the basis of the submitted documents. Action S.A., 951 F.2d at 508; Transatl. Marine Claims Agency, 109 F.3d at 111.

B. Liability

1. Lanham Act

Pita asserts two claims under the Lanham Act: trademark infringement in violation of 15 U.S.C. § 1114(1) and false designation of origin in violation of 15 U.S.C. § 1125(a). Trademark infringement is the use without consent of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive[.]" 15 U.S.C. § 1114(1)(a). A claim of false designation of origin, or "trade dress infringement," requires the use of "any word, term, name, symbol, or device, or any combination thereof" which "in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of ... goods, services, or commercial activities[.]" 15 U.S.C. § 1125(a)(1).

To prove both of his federal claims, Pita must show that he owns a valid trademark, that the defendants used the trademark in commerce, and that their use of that mark is likely to cause confusion regarding the source of the relevant product or services. Johnson & Johnson Consumer Cos., Inc. v. Aini, 540 F. Supp. 2d 374, 388 (E.D.N.Y. 2008); see also Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 114 (2d Cir. 2006); GMA Accessories, Inc. v. Croscill, Inc., 2008 WL 591803, at *3 n.2 (S.D.N.Y. Mar. 3, 2008); Cartier v. Samo's Sons, Inc., 2005 WL 2560382, at *3 n.3 (S.D.N.Y. Oct. 11, 2005) (citing Chambers v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002)).

Courts evaluate the latter element - likelihood of confusion - by considering the eight "Polaroid factors." See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those factors are: (1) strength of the plaintiff's mark; (2) the degree of similarity between the two marks; (3) the proximity of the products in the marketplace; (4) the likelihood that the plaintiff will bridge the gap between the products (enter a market related to that in which the defendant sells its product); (5) evidence of actual confusion; (6) the defendant's bad faith; (7) quality of the defendant's product; and (8) sophistication of the relevant consumer group. Id.; Louis Vuitton Malletier, 454 F.3d at 116-117. No single factor is dispositive - the court's task is to weigh them with an eye toward the ultimate question of whether consumers are likely to be confused. Brennan's Inc. v. Brennan's Rest., 360 F.3d 125, 130 (2d Cir. 2004).

I conclude that the Complaint's factual allegations, deemed true by virtue of the defendants' default, suffice to establish Pita's federal claims. First, Pita has alleged that his Tulcingo mark is on the principal register of the USPTO and has provided proof of this registration. Complaint ¶ 4 & Ex. A. Second, Pita has proved that the defendants made unauthorized use of the Tulcingo mark in commerce. Id. ¶¶ 16-17. Finally, as discussed below, the Polaroid factors weigh heavily in Pita's favor, compelling the conclusion that consumers are likely to be confused by the defendants' use of the Tulcingo mark.

As to the first Polaroid factor, the Tulcingo mark is presumed to be strong by virtue of being registered. See Rolex Watch U.S.A., Inc. v. Jones, 2000 WL 1528263, at *2 (S.D.N.Y. Oct. 13, 2000) (citing Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 393 n.6 (2d Cir. 1995)). Moreover, Pita has devoted substantial time and resources to developing goodwill in his mark and to causing consumers to associate it exclusively with his restaurant. Complaint ¶¶ 2-4. As to similarity, the defendants are using the identical Tulcingo mark to market their car service. Id. ¶ 1. In addition, the defendants are exacerbating the likelihood of confusion by using the logo of Pita's restaurant on the back of business cards promoting TCS. Id. Ex. B. The defendants demonstrated bad faith by continuing to engage in infringing conduct after receiving Pita's letter advising of the mark's registration and demanding that they cease. Id. ¶ 4 & Ex. A; Schurin Dec. ¶¶ 5-6 & Ex. A. To be sure, the marketplace factors of the Polaroid test do not weigh heavily in Pita's favor: the parties offer different services, and Pita does not suggest that he has any desire to bridge that gap by offering a car service. However, considering all of the factors together, I conclude that Pita has made the showing necessary to prevail on his Lanham Act claims.

The foregoing suffices to explain my recommendation of liability as to TCS, but a further note is warranted as to Campoverde. A corporate officer can be held personally liable under the Lanham Act if he is a "moving, active conscious force" behind the corporation's infringement. Johnson & Johnson, 540 F. Supp. 2d at 393 (quoting Bambu Sales, Inc. v. Sultana Crackers, 683 F. Supp. 899, 913 (E.D.N.Y. 1988)); Kuklachev v. Gelfman, 2009 WL 804095, at *5 (E.D.N.Y. Mar. 25, 2009); ABC Rug & Carpet Cleaning Serv., Inc. v. ABC Rug Cleaners, Inc., 2009 WL 773256, at *1, 3 (S.D.N.Y. Mar. 23, 2009). The phrase "moving active conscious force" has not been defined, although it is sufficient to show that the officer "authorized and approved the acts of unfair competition which are the basis of the corporation's liability." Kuklachev, 2009 WL 804095, at *5 (quoting Bambu Sales, Inc., 683 F. Supp. at 913); see also Cartier, a Div. of Richemont N. Am., Inc. v. Samo's Sons, Inc., 2005 WL 2560382, at *10 (S.D.N.Y. Oct.11, 2005) (finding individual defendant officer personally liable on trademark infringement claims on the basis of his responsibility for making purchasing decisions). An officer's "authoriz[ation] and approv[al] [of] the acts of unfair competition which are the basis of the corporation's liability is sufficient participation in the wrongful acts" to make the officer individually liable. Bambu Sales, Inc., 683 F. Supp. at 913 (internal punctuation and quotation marks omitted); see also Cartier, 2005 WL 2560382, at *10 (finding individual defendant officer personally liable on trademark infringement claims on the basis of his responsibility for making purchasing decisions).

This court has held that a defendant is not considered a "moving, active, conscious force" if the only allegation made by the plaintiff is that the defendant holds a particular title "without alleging that [the defendant] authorized or approved any allegedly infringing action." Eu Yan Sang v. S&M Enters. Corp. (U.S.A.), 2010 WL 3824129, at *2 (E.D.N.Y. Sept. 8, 2010) (quoting Kuklachev, 2009 WL 804095, at *5). Pita's allegations, however, do not suffer from this defect. He explicitly includes both defendants in each of his factual allegations, including the allegation that they solicited business at his restaurant using cards bearing the names and logos of both businesses. Campoverde could have chosen to contest his individual liability by denying he had personally engaged in such conduct and arguing that the allegations concerning his ownership and operation of TCS, without more, would not be legally sufficient. But Campoverde did not do so, and instead chose to default. He has therefore admitted all of the Complaint's factual allegations, including those asserting that he personally engaged in the infringing activity. Accordingly, I respectfully recommend that the court find both defendants liable on each of the first two causes of action.

2. New York Common Law

Having established the defendants' liability for trademark infringement under the Lanham Act, Pita can also establish liability on its unfair competition claim under New York common law by showing that their infringement was in bad faith. See Jeffrey Milstein v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 34 (2d Cir. 1995)). A determination of bad faith centers around "whether the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill, and any confusion between his and the senior user's product." Lang v. Ret. Living Pub. Co., 949 F.2d 576, 583 (2d Cir. 1991) (quoting Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F. Supp. 1547, 1560 (S.D.N.Y. 1987)). A defendant's awareness of the plaintiff's mark may give rise to an inference of bad faith, which is bolstered if the defendant offers no credible explanation for its adoption of the mark. Artisan Mfg. Corp. v. All Granite & Marble Corp., 559 F. Supp. 2d 442, 452 (S.D.N.Y. 2008).

The defendants here adopted a mark identical to the plaintiffs and have offered no explanation for doing so. They manifestly sought to take advantage of Pita's mark by distributing cards to his customers bearing the names of both Pita's restaurant and their car service. And they persisted in such misconduct even after being warned of its illegitimacy. Such facts, established by the defendants' default, easily demonstrate bad faith. I therefore respectfully recommend that the court find the defendants liable for unfair competition under New York common law.

C. Relief

1. Damages

The Lanham Act allows a prevailing plaintiff to recover either actual damages or an amount within a statutorily prescribed range. See 15 U.S.C. § 1117(c). Pita predicted in his Complaint that his actual damages would exceed $200,000 by the time of a trial, Complaint ¶ 40, and in his prayer for relief he asked for both those actual damages and the defendants' profits from the infringement. Id. at 7 (prayer for relief ¶ (2)). In his default motion, however, Pita neither requests monetary damages nor makes any effort to prove their amount; he likewise fails to propose any amount of statutory damages, and there is no provision for damages - actual or statutory - in the Proposed Judgments. The defendants may well have relied on that fact in deciding not to contest the relatively modest requests for relief set forth in the instant motion and the Proposed Judgments. Accordingly, it appears that Pita has abandoned any claim for monetary damages, and I respectfully recommend against any such award.

2. Injunctive Relief

Pita asks the court to issue a permanent injunction enjoining the defendants from, among other things, using the Tulcingo mark or any other mark confusingly similar to Pita's registered trademark in connection with the advertising or offering of services. Proposed Judgments ¶ 2. The Lanham Act provides for such relief, "according to the principles of equity and upon such terms as the court may deem reasonable to prevent the violation of ... [the Act.]" 15 U.S.C. § 1116. Under the case law of this circuit, a permanent injunction is warranted where a party has succeeded on the merits, Roach v. Morse, 440 F.3d 53, 56 (2d Cir. 2006), and establishes:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and the defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

Salinger v. Colting, 607 F.3d 68, 77 (2d. Cir. 2010) (quoting eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006)); see also U.S. v. Pugh, 717 F. Supp. 2d 271, 301 (E.D.N.Y. 2010); New York City Triathlon v. NYC Triathlon Club, 704 F. Supp. 2d 305, 313 (S.D.N.Y. 2010); Microsoft Corp. v. AGA Solutions, Inc., 589 F. Supp. 2d 195, 204 (E.D.N.Y. 2008). Accordingly, Pita - having succeeded on the merits of his Lanham Act claims - is entitled to an injunction if it establishes the remaining factors. I consider each in turn.

Irreparable injury in trademark cases is established where "there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source" of the goods or services in question. Lobo Enters., v. Tunnel, Inc., 822 F.2d 331, 333 (2d Cir. 1987) (internal quotation marks and citations omitted); see also Burndy Corp. v. Teledyne Indus., Inc. 748 F.2d 767, 772 (2d Cir. 1984) ("permanent injunctive relief will be granted only upon proof of the likelihood that purchasers of the product may be misled in the future"); Collins v. Aztar Corp., 210 F.3d 354, 354 (2d Cir. 2000); cf. SEC v. Manor Nursing Ctrs, Inc., 458 F.2d 1082, 1100 (2d Cir. 1972) (injunction unnecessary if there is no reasonable likelihood that the conduct at issue will be repeated). The record establishes that in the absence of an injunction, the defendants will continue to infringe the Tulcingo mark, and that such use is likely to mislead consumers. Complaint ¶¶ 32-33; DE 9-2 (Memorandum of Law) at II. In particular, the record shows that the defendants ignored Pita's warning that their conduct was infringing a valid mark, and continued in their misconduct. See Complaint ¶¶ 16-17; Schurin Dec. ¶¶ 5-6. Moreover, the defendants appear to be intent on sowing confusion among Pita's customers about the provenance of their car service by distributing business cards for the latter that bear the name and logo of Pita's restaurant.

Pita has also established that he has no adequate remedy at law. Such a remedy exists if an injured party can be compensated by a monetary damages award. Borey v. Nat'l Union Fire Ins. Co., 934 F.2d 30, 34 (2d Cir. 1991). However, in cases where confusion about the origin of goods or services leads to damage to reputation or loss of a potential relationship with a client that "would produce an indeterminate amount of business in years to come[,]" monetary damages are difficult to establish and are unlikely to present an adequate remedy at law. Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 404 (2d Cir. 2004) (citing Ticor Title Ins. Co. v. Cohen, 173 F.3d 63, 69 (2d Cir. 1999)). If the defendants are allowed to continue to use the Tulcingo mark, it may adversely affect Pita's reputation and business in ways that may be difficult to quantify and that will not lend themselves easily to monetary compensation. Complaint ¶¶ 33-34.

Balancing the relative hardships also favors granting Pita a permanent injunction. As explained above, absent injunctive relief, Pita faces the threat of irreparable harm to the reputation and good will associated with the Tulcingo mark. Further, any harm to the defendants would not outweigh the irreparable harm and damage to Pita should they continue their infringing behavior. An injunction will not prevent the defendants from continuing to engage in a car service business; it would only prohibit them from doing so using the name that infringes on Pita's mark.

Finally, the public interest will not be disserved by the issuance of a permanent injunction in this case. "The public interest lies in avoiding confusion, particularly where defendant would be able to continue its activities under another mark." New York City Triathlon, 704 F. Supp. 2d at 344 (citing Nat'l Rural Elec. Co-op Ass'n v. National Agr. Chemical Ass'n, 26 U.S.P.Q. 2d (BNA) 1294, 1299 (D.D.C. 1992). As set forth above, Pita has established a likelihood of confusion and thus the public interest would not be disserved by an injunction that will reduce the risk of confusion. I therefore conclude that all factors favor the issuance of the requested permanent injunction and respectfully recommend that the court enter an injunction against both defendants in the form Pita has submitted in its Proposed Judgments.

3. Attorneys' Fees

Pita also seeks a total of $4,087.50 in attorneys' fees. Under the Lanham Act, a prevailing party may recover its attorneys' fees in "exceptional cases." 15 U.S.C. § 1117(b); see also Lyons Partnership, L.P. v. D & L Amusement & Entertainment, Inc., 702 F. Supp. 2d 104, 119 (E.D.N.Y. 2010). Exceptional cases are those that evidence "fraud, bad faith, or willful infringement." Protection One Alarm Monitoring, Inc. v. Exec. Protection One Security Serv., LLC, 553 F. Supp. 2d 201, 207-208 (E.D.N.Y. 2008) (citing cases). Because I conclude, for the reasons set forth above, that the defendants have acted willfully and in bad faith, I conclude that an award of fees is appropriate.

Courts in this circuit assess fee applications using the "lodestar method," under which a reasonable hourly rate is multiplied by a reasonable number of hours expended. See Luciano v. Olsten Corp., 109 F.3d 111, 115 (2d. Cir. 1997); King v. JCS Enterprises, Inc., 325 F. Supp. 2d 162, 166 (E.D.N.Y. 2004) (citing Green v. Torres, 361 F.3d 96, 98 (2d Cir. 2004); Quarantino v. Tiffany & Co., 166 F.3d 422, 425 (2d Cir. 1999)).¹ District courts have broad discretion, using "'their experience with the case, as well as their experience with the practice of law, to assess the reasonableness'" of each component of a fee award. Fox Indus., Inc. v. Gurovich, 2005 WL 230500, at *2 (E.D.N.Y. Sept. 21, 2005) (quoting Clarke v. Frank, 960 F. 2d 1146, 1153 (2d. Cir. 1992)). I therefore examine the reasonableness of both the hourly rates claimed by Pita's attorneys and the number of hours of work they billed in this litigation.

1 I use the term "lodestar" only for ease of reference. See Arbor Hill Concerned Citizens Neighborhood Ass'n v. County of Albany, 522 F. 3d 182, 190 n.4 (2d. Cir. 2008).

a. Hourly Rate

A reasonable hourly rate is the rate a "reasonable, paying client" would be willing to pay. Arbor Hill, 522 F.3d at 184; see also McDaniel v. Cty of Schenectady, 595 F.3d 411, 420 (2d Cir. 2010) (a presumptively reasonable fee represents an approximation of "what a competitive market would bear"); Manzo v. Sovereign Motor Cars, Ltd., 2010 WL 1930237, at *7 (E.D.N.Y. May 11, 2010) (a presumptively reasonable fee "boils down to what a reasonable, paying client would be willing to pay, given that such a party wishes to spend the minimum necessary to litigate the case effectively") (quoting Simmons v. N.Y.C. Transit Auth., 575 F.3d 170, 174 (2d Cir. 2009) (quotation marks omitted)). Relevant rates are generally those that prevail in the district in which the court is located. See Luciano, 109 F.3d at 115; Coated Fabrics Co. v. Mirle Corp., 2008 WL 163598, at *7 (E.D.N.Y. Jan. 16, 2008). While a court "may use an out-of-district hourly rate - or some rate in between the out-of-district rate sought and the rates charged by local attorneys ... if it is clear that a reasonable, paying client would have paid those higher rates[,]" it is presumed "that a reasonable, paying client would in most cases hire counsel whose rates are consistent with those charged locally." Arbor Hill, 522 F.3d at 191.

Pita seeks to have its attorneys reimbursed at the following hourly rates: $400 and $425 for partner Schurin, and $150 for associate Maris Kessel ("Kessel"). He cites no cases in support of the request, but claims that the proposed rates requested are reasonable and commensurate with the hourly rates charged by other law firms located in New York City. Schurin Dec. ¶ 13. I do not quarrel with the latter proposition, but it is irrelevant: the court must assess the request against the backdrop of prevailing rates in this district rather than the City of New York. In the absence of any reason as to why the court should award fees based on a higher out-of-district rate, or of any evidence to establish that a reasonable client would have selected out-of-district counsel, I look to the practices in this district to determine a reasonable hourly rate. See Melnick v. Press, 2009 WL 2824586, at *9 (E.D.N.Y. Aug. 28, 2009) (citations omitted).

A court seeking to determine the rate a reasonable client would be willing to pay should consider, among others, the twelve so-called Johnson factors. See Johnson v. Ga. Highway Express, Inc., 488 F.2d 714, 717-19 (5th Cir. 1974) (listing twelve factors to be considered by courts in determining the rate a reasonable client would be willing to pay).² Having considered all of the circumstances against that standard, I am persuaded that a reasonable, paying client would be willing to pay no more than an amount somewhat lower than the hourly rates Pita seeks for the work of Schurin. I believe that the rate requested for Kessel is reasonable.

2 Those factors include (1) the time and labor required; (2) the novelty and difficulty of the questions; (3) the level of skill required to perform the legal services properly; (4) the preclusion of employment by the attorney due to acceptance of the case; (5) the attorney's customary hourly rate; (6) whether the fee is fixed or contingent; (7) the time limitations imposed by the client or the circumstances; (8) the amount involved in the case and the results obtained; (9) the experience, reputation and ability of the attorney; (10) the "undesireability" of the case; (11) the nature and length of the professional relationship with the client; and (12) awards in similar cases. Id.

Pita has not provided any information about his attorneys' professional experience. A search of New York State's Attorney Directory indicates that at the time the fees were billed, partner Schurin had been practicing law for fifteen years, while associate Kessel had been practicing for one year. Fee awards in this district in recent years have approved hourly rates in the range of $200 to $400 for partners and $100 to $295 for associates. See, e.g., Luca v. Cty of Nassau, 698 F. Supp. 2d 296, 303-306 (E.D.N.Y. 2010); Melnick, 2009 WL 2824586, at *9 (reviewing cases); Gutman v. Klein, 2009 WL 3296072, at *3 (E.D.N.Y. Oct. 13, 2009); Lochren v. Cty of Suffolk, 2010 WL 1207418, at *3 (E.D.N.Y. Mar. 23, 2010); Coated Fabrics, 2008 WL 163598, at *7-8 (collecting cases); Ueno v. Napolitano, 2007 WL 1395517, at *9 (E.D.N.Y. May 11, 2007); Cho v. Koam Medical Servs. P.C., 524 F. Supp. 2d 202, 207 & n.4 (E.D.N.Y. 2007) (collecting cases). Considering these prevailing rates and all the circumstances of this case, I recommend that the court reimburse Pita for its attorney's fees at the following hourly rates: $300 for Schurin and $150 for Kessel.

b. Hours Expended

I next turn to the question of whether the hours expended by counsel were reasonable in an action of this nature. Based on my review of the monthly invoices, it appears that Pita seeks reimbursement for a total of 9.9 hours of work, including 9.5 hours worked by Schurin and .4 hours worked by Kessel. Schurin Dec. Ex. G.

A fee applicant bears the burden of demonstrating the hours expended and the nature of the work performed, preferably through contemporaneous time records that describe with specificity the nature of the work done, the hours expended, and the dates. New York State Ass'n for Retarded Children, Inc. v. Carey, 711 F.2d 1136, 1147-48 (2d Cir.1983). The absence of contemporaneous records precludes any fee award in all but the most extraordinary of circumstances. Scott v. City of New York, 626 F.3d 130, 133-34 (2d Cir. 2010). Inadequate documentation is grounds for reduction of a fee award. Hensley v. Eckerhart, 461 U.S. 424, 433 (1983); Levy v. Powell, 2005 WL 1719972, at *7 (E.D.N.Y. July 22, 2005). Pita has submitted Schurin's declaration, which contains the apparently contemporaneous billing records. Schurin Dec. Ex. G. Having reviewed this submission, I am satisfied that it sufficiently documents the time for which Pita's attorneys have billed and that the hours expended are within reasonable limits for this type of case. See, e.g., Protection One, 553 F. Supp. 2d at 208-10 (awarding fees for approximately 65 hours of work on default trademark infringement case).

Multiplying the hours worked by each attorney at the hourly rates I recommend yields the following results. Schurin should be compensated for 9.5 hours of work at an hourly rate of $300, for a total fee amount of $2,850.00. Kessel should be compensated for .4 hours of work at an hourly rate of $150, for a total fee amount of $60.00. I therefore respectfully recommend that the court award attorneys' fees in the total amount of $2,910.00.

4. Costs

Pita seeks reimbursement of $67.00 in process server costs that his counsel claims to have incurred on his behalf. Schurin Dec. ¶ 13 & Ex. G. The docket establishes that Pita's counsel served TCS and Campoverde with copies of the complaint, the clerk's entry for default, and the docket sheet. Accordingly, I respectfully recommend that the court award Pita litigation costs in the amount of $67.00.³

3 The docket conclusively demonstrates that Pita has also incurred, as a cost of this litigation, the $350 filing fee. Nevertheless, because Pita makes no mention of a request for the latter cost, he appears to have abandoned it and I recommend against such an award.

III. Recommendation

For the reasons set forth above, I respectfully recommend that the court enter judgment against both defendants jointly and severally in the amount of $2,977.00 (consisting of nothing in damages, $2,910.00 in attorneys' fees, and $67.00 in costs) and also issue a permanent injunction ordering both defendants to cease using Pita's registered "Tulcingo" mark.

IV. Objections

I direct the plaintiff to serve a copy of this Report and Recommendation on the defendants by certified mail, and to file proof of service no later than April 11, 2011. Any objections to this Report and Recommendation must be filed no later than April 25, 2011. Failure to file objections within this period designating the particular issues to be reviewed waives the right to appeal the district court's order. See 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 72(b)(2); Wagner & Wagner, LLP v. Atkinson, Haskins, Nellis, Brittingham, Gladd & Carwile, P.C., 596 F.3d 84, 92 (2d Cir. 2010).

SO ORDERED. Dated: Brooklyn, New York

April 7, 2011

/s/ James Orenstein

JAMES ORENSTEIN

U.S. Magistrate Judge