The opinion of the court was delivered by: Hillman, District Judge
This matter comes before the Court on plaintiff's motion for default judgment and permanent injunction on plaintiff's trademark infringement, unfair competition, and dilution claims. For the reasons expressed below, plaintiff's motion will be granted in part and denied in part.
This suit was brought by Platypus Wear, Inc., d/b/a Bad Boy Brands against Bad Boy Club, Inc., BBC-SK8 Shop, LLC, and Edward Runner*fn1 for infringement of the trademarks "Bad Boy"*fn2 and "Bad Boy Club,"*fn3 which is a caricature of a boy flexing his arm.*fn4 Defendants use these marks at their retail business "Bad Boy Club Surf Skate-Snow," in its name and exterior sign, and on the World Wide Web in the form of advertising and listing. Plaintiff filed its complaint only after defendants failed to respond to two letters plaintiff sent them that informed defendants that plaintiff owns the "Bad Boy Club" marks and asked defendants to desist in using them. Defendants were served with the summons and complaint, but they have not answered the complaint or responded in any manner.*fn5 With no answer or response, plaintiff now requests the entry of default against defendants pursuant to Fed. R. Civ. P. 55(a). Plaintiff also requests default judgment on four counts of the complaint as well as an injunction permanently enjoining defendants from using the marks. Plaintiff alleges that: (1) plaintiff owns valid and enforceable trademark rights in the marks "Bad Boy" and "Bad Boy Club;" (2) defendants' use is unauthorized; (3) defendants' use will likely confuse the public with regard to the origin and sponsorship of the product; (4) defendants' use of the mark is deliberate and willful; and (5) the harm suffered is irreparable.
This Court has original jurisdiction over plaintiff's claims arising under federal law pursuant to 28 U.S.C. § 1331, and supplemental jurisdiction over plaintiff's state law claims pursuant to 28 U.S.C. § 1367.
The first step in obtaining a default judgment is the entry of default. "When a party against whom a judgment for affirmative relief is sought has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the clerk must enter the party's default." Fed. R. Civ. P. 55(a). Plaintiff has established that defendants failed to "plead or otherwise defend" by presenting a certification documenting its service on defendants. Defendants are therefore in default and it should be entered by the Clerk.*fn6
"Federal Rule of Civil Procedure 55(b)(2) authorizes courts to enter a default judgment against a properly served defendant who fails to a file a timely responsive pleading." Chanel v. Gordashevsky, 558 F. Supp. 2d 532, 535 (D.N.J. 2008) (citing Anchorage Assoc. v. Virgin Is. Bd. of Tax Rev., 922 F.2d 168, 177 n.9 (3d Cir. 1990)). A party seeking default judgment "is not entitled to a default judgment as of a right," however. Franklin v. Nat'l Maritime Union of America, 1991 S. Dist LEXIS 9819, at *3-4 (D.N.J. 1991) (quoting 10 Wright, Miller & Kane, Federal Practice and Procedure § 2685 (1983)), aff'd, 972 F.2d 1331 (3d Cir. 1992). The decision to enter a default judgment is "left primarily to the discretion of the district court." Hritz v. Woma Corp., 732 F.2d 1178, 1180 (3d Cir. 1984).
Although every "well-pled allegation" of the complaint, except those relating to damages, are deemed admitted, Comdyne I. Inc. v. Corbin, 908 F.2d 1142, 1149 (3d Cir. 1990), before entering a default judgment the Court must decide whether "the unchallenged facts constitute a legitimate cause of action, since a party in default does not admit mere conclusions of law," Chanel, 558 F. Supp. 2d at 535 (citing Directv, Inc. v. Asher, No. 03-1969, 2006 WL 680533, at *1 (D.N.J. Mar. 14, 2006)). If a review of the complaint demonstrates a valid cause of action, the Court must then determine whether plaintiff is entitled to default judgment.
1. Whether Plaintiff has Stated Viable Causes of Action
As noted above, plaintiff seeks a default judgment on the following federal claims: federal trademark infringement in violation of 15 U.S.C. § 1114 and federal unfair competition in violation of 15 U.S.C. § 1125(a). "Federal trademark infringement, 15 U.S.C. § 1114(1)(a), and a false designation of origin claim, 15 U.S.C. § 1125(a)(1)(A), are measured by identical standards pursuant to the Lanham Act."*fn7 Chanel, 558 F. Supp. 2d at 536 (citing A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000)). To establish either Lanham Act claim, the record must demonstrate that (1) plaintiff has a valid and legally protectable mark; (2) plaintiff owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion. Id. The first two requirements are satisfied when a federally registered mark becomes incontestable; meaning the owner has filed affidavits stating that the mark is registered, that it has been in continuous use for five consecutive years, and that there has been no adverse decision concerning the registrant's ownership or right to registration. Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994). Here, plaintiff has established the first two elements. Plaintiff has demonstrated that it has valuable and legally protectable marks, "Bad Boy" and "Bad Boy Club," and that it owned such marks. Morever, the marks were registered in 1987, 1997, and 2000, and have been used continuously for the required number of years.
Plaintiff has also established the third element. A likelihood of confusion exists "when the consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark." Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 292 (3d Cir. 1991) (citing Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978)). "Proof of actual confusion is not necessary; likelihood is all that need be shown." Opticians Ass'n of America v. Indep. Opticians of America, 920 F.2d 187, 195 (3d Cir. 1990). To determine if two similar marks are likely to cause confusion, ten factors have been considered, including:
(1)the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sale efforts are the same; (9) the relationship of the goods in the minds of the ...