YETI COOLERS, LLC

v.

THE INDIVIDUALS, BUSINESS ENTITIES AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A

S.D. Fla. | 2025-02-26

No. 24-CV-24499

2025 FFL 4649 District Court, S.D. Florida (2025)

AI-generated. These summaries, headnotes, and key points are machine-generated and may contain errors or omissions. Always verify against the full opinion text below. Not legal advice.

Synopsis

YETI Coolers LLC obtained a default final judgment against multiple defendants operating counterfeit e-commerce stores selling goods bearing YETI's registered trademarks. The court granted YETI's motion for default judgment, awarding permanent injunctive relief and statutory damages of $1,000,000 per defendant.

Holding

The court granted YETI's motion for default final judgment. Upon default, defendants admitted all well-pleaded factual allegations establishing liability under federal trademark counterfeiting and infringement law, false designation of origin, and common law trademark infringement. The court awarded permanent injunctive relief prohibiting defendants from selling counterfeit goods, canceling or transferring e-commerce store names to YETI, and delisting stores from search engines. The court also awarded statutory damages of $1,000,000 per defendant.

Headnotes

[1] A defendant's default admits the plaintiff's well-pleaded allegations of fact, and the defendant is barred from contesting those facts on appeal.

[2] In trademark infringement cases, injunctive relief is the remedy of choice because there is no adequate remedy at law for the injury caused by a defendant's continuing in…

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Key Quotes

“A defendant, by his default, admits the plaintiff's well-pleaded allegations of fact, is concluded on those facts by the judgment, and is barred from contesting on appeal the facts thus established.”
Establishes that defendants' default admits all factual allegations of YETI's Amended Complaint, including trademark infringement and counterfeiting

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Facts & Procedural History

YETI owns 47 registered trademarks covering portable coolers, drinkware, apparel, and outdoor furniture. The defendants operated Internet-based e-comm…

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Topics

Florida Common Law Trademark Infringement Lanham Act § 32 Florida Common Law Unfair Competition Trademark Counterfeiting

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Opinion of the Court

THIS CAUSE comes before the Court upon Plaintiff&#x²⁷;s Motion for Entry of Default Final Judgment ("Motion”), [ECF No. 37]. Plaintiff YETI Coolers, LLC (“Plaintiff” or “YETI”) seeks entry of a default final judgment against Defendants,¹ the Individuals, Business Entities, and Unincorporated Associations identified on Schedule “A” (“Defendants”) that operate Internet based e-commerce stores that infringe Plaintiff&#x²⁷;s trademarks and promote and sell counterfeit goods bearing and/or using Plaintiff&#x²⁷;s trademarks. See generally Mot. Plaintiff requests that the Court: (1) enjoin Defendants from producing or selling goods that infringe on its trademarks; (2) cancel, or at Plaintiff&#x²⁷;s election, transfer the Internet based e-commerce stores operating under Defendants&#x²⁷; seller names (“E-commerce Store Names”) at issue to Plaintiff; (3) assign all rights,

title, and interest to the E-commerce Store Names to Plaintiff; (4) permanently delist or deindex the E-commerce Store Names from internet search engines; and (5) award statutory damages. See generally id.

A Clerk&#x²⁷;s Default, [ECF No. 32], was entered against Defendants on February⁶, 2025, after Defendants failed to respond to the Amended Complaint, [ECF No. 29], despite having been served. See Proof of Service, [ECF No. 30]. The Court having considered the record and noting no opposition to the Motion, it is hereby

ORDERED AND ADJUDGED that Plaintiff&#x²⁷;s Motion, [ECF No. 37], is GRANTED for the reasons stated herein.

BACKGROUND²

A. Factual Background

Plaintiff is the owner of the following trademarks, which are valid and registered on the Principal Register of the United States Patent and Trademark Office (collectively, the “YETI Marks"):

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- YETI | 3,203,869 | January 30, | IC 021 – Portable coolers. | | 2007 | TUNDRA | 4,083,930 | January 10, | IC 021 – Portable coolers. | | 2012 | ROADIE | 4,083,932 | January 10, | IC 021 – Portable coolers. | | 2012 |

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- YETI TANK | 4,818,317 | September²², | IC 021 – Portable coolers. | | 2015 | YETI RAMBLER COLSTER | 4,871,725 | December¹⁵, | IC 021 – Stainless steel drink holders. | | 2015 | COLSTER | 4,883,074 | January⁵, 2016 | IC 021 – Stainless steel drink holders. YETI | 4,948,371 | October³⁰, | IC 025 – Clothing, namely t-shirts, | | 2007 | jerseys, shorts, hats, caps, sweatshirts, | | | socks, jackets.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- RAMBLER | 5,233,441 | June²⁷, 2017 | IC 021 – Beverageware; cups; drinking | | | glasses; tumblers for use as drinking | | | vessels; jugs; mugs; temperature- | | | retaining drinking vessels; storage | | | containers for household or domestic | | | use, namely, vacuum container for hot | | | or cold food and drink; beer growlers; | | | insulated food and drink containers; | | | stainless steel tumblers for use as | | | drinking vessels; stainless steel drinking | | | glasses; stainless steel beverageware; | | | drinking straws.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- LIONDO | 5,619,235 | November²⁷, | IC 020 – Furniture; outdoor furniture; | | 2018 | camping furniture; furniture for | | | camping; furniture for outdoors; metal | | | furniture; patio furniture; lawn furniture; | | | seating furniture; furniture parts; chairs; | | | lounge chairs; metal chairs; lawn chairs; | | | portable chairs; folding chairs; fishing | | | chairs not affixed to fishing boats; beach | | | chairs; seats; gear bags, and storage | | | pouches, all specifically adapted for | | | chairs.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- SIDEKICK DRY | 5,746,245 | May⁷, 2019 | IC 018 – All-purpose carrying bags for | | | attaching to portable coolers; fabric | | | pouches sold empty that may be used to | | | hold wallets, keys, bottle openers, | | | fishing tools and accessories, hunting | | | tools and accessories, utensils, and | | | flashlights for attaching to portable | | | coolers; pouches and bags sold empty | | | for attaching to bags, namely, hunting | | | bags, angler&#x²⁷;s game bags, tote bags, | | | daypacks, all-purpose carrying bags, | | | duffle bags, and travel bags; pouches | | | and bags sold empty for attachment to | | | backpacks; submersible pouches and | | | bags sold empty for attaching to bags, | | | namely, hunting bags, angler&#x²⁷;s game | | | bags, tote bags, daypacks, all-purpose | | | carrying bags, duffle bags, and travel | | | bags; waterproof pouches and bags sold | | | empty for attaching to bags, namely, | | | hunting bags, angler&#x²⁷;s game bags, tote | | | bags, daypacks, all- purpose carrying | | | bags, duffle bags, and travel bags. | | | IC 021 – Pouches and bags specially | | | adapted for attachment to non-electric | | | portable coolers.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- LOWLANDS | 5,846,710 | August²⁷, 2019 | IC 024 – Blanket throws; travelling | | | blankets; pet blankets; lap blankets; bed | | | blankets; blankets for outdoor use. CAMINO | 5,869,398 | September²⁴, | IC 018 – Tote bags; carryalls; carry-all | | | 2019 | bag; weekend bags; day bags, namely, | | | athletic bags; bags, namely, kit bags. YETI | 5,885,556 | October¹⁵, | IC 016 – Lunch bags. | | | 2019 | TUNDRA HAUL | 5,886,316 | October¹⁵, | IC 021 – Non-electric coolers. | | | 2019 | DAYTRIP | 5,893,053 | October²², | IC 021 – Insulated lunch boxes; lunch | | | 2019 | boxes; lunch bags not of paper; | | | insulated lunch bags not of paper; non- | | | electric portable coolers. RAMBLER | 6,119,024 | August⁴, 2020 | IC 020 – Plastic lids for drinkware; | | | plastic lids for drinkware with handle; | | | plastic lids that double as a cup; | | | insulated plastic lids that double as a | | | cup; insulated plastic lids.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- RAMBLER | 6,119,025 | August⁴, 2020 | IC 021 – Drinking cups sold with lids | | | therefor; drinkware lids, namely, cup | | | lids; drinkware lid, namely, cup lid with handle; | | | drinkware straw lids, namely, cup lids | | | with integrated straws; drinkware straw | | | lids, namely, cup lids with holes for | | | straws; wine glasses; cups, bottles, and | | | mugs sold with lids that double as a cup, | | | sold empty; cup lids that double as a | | | cup; insulated lids that double as a cup; | | | insulated cups, bottles, and mugs sold | | | with insulated lids that double as a cup, | | | sold empty; insulated cup lids; insulated | | | lids for plates and dishes; drinking cups | | | for babies and children; drinking straws | | | for babies and children; drinking cups | | | for babies and children and parts and | | | fittings therefor, namely, cups for babies | | | and children sold as a unit with valves | | | and lids.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- YETI | 6,181,763 | October²⁰, | IC 018 – Bags with bottle holders, in the | | | 2020 | nature of day packs, backpacks, hiking | | | bags, duffle bags, all-purpose carrying | | | bags, tote bags, carry-all bags, travel | | | bags, sports bags, and rucksacks with bottle holders. | | | IC 021 – Sleeve holder for bottles, | | | namely, bottle carriers for domestic use; | | | neoprene bottle holders, namely, bottle | | | carriers for domestic use; sleeve holder | | | for bottles; slings specially adapted for | | | holding bottles; bag specially adapted | | | for holding bottles; stainless steel | | | non-electric portable coolers. FLIP | 6,200,636 | November¹⁷, | IC 021 – Portable coolers. | | | 2020 | YETI | 6,211,351 | December¹, | IC 020 – Plastic portable packing | | | 2020 | containers. | | | IC 021 – Buckets; plastic buckets; | | | industrial buckets; utility buckets; | | | fishing buckets; ranger buckets; | | | household containers for food and | | | beverages; containers for household or | | | kitchen use; plastic portable household | | | cargo containers; drinking straws; | | | portable non-electric water coolers; | | | water dispensers; insulated water | | | dispensers; portable beverage dispenser; | | | handles specially adapted for | | | beverageware.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- YETI | 6,211,352 | December¹, | IC 020 – Plastic portable packing | | | 2020 | containers. | | | IC 021 – Buckets; plastic buckets; | | | industrial buckets; utility buckets; | | | fishing buckets; ranger buckets; | | | household containers for food and | | | beverages; containers for household or | | | kitchen use; plastic portable household | | | cargo containers; drinking straws; | | | portable non-electric water coolers; | | | water dispensers; insulated water | | | dispensers; portable beverage dispenser; | | | handles specially adapted for | | | beverageware.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- TRAILHEAD | 6,235,558 | December²⁹, | IC 020 – Dog beds; beds for household | | | 2020 | pets; portable beds for pets; camping | | | equipment, namely, folding chairs and | | | tables; furniture; outdoor furniture; | | | camping furniture; furniture for camping; | | | furniture for outdoors; metal furniture; | | | patio furniture; lawn furniture; seating | | | furniture; furniture parts; chairs; metal | | | chairs; chairs, namely, lawn chairs, | | | portable chairs, folding chairs, fishing | | | chairs not affixed to fishing boats; beach | | | chairs; seats; furniture parts, namely, | | | chair legs, arm rests, joints, feet, fabric | | | holders, and chair fabric sold as an | | | integral component of finished | | | furniture; seating accessories, namely, | | | carrying bags specially adapted for | | | chairs and chair parts.

Trademark | Registration | Registration | Class(es) / Good(s) ---|---|---|--- YETI | 6,931,251 | December²⁰, | IC 021 – Beverageware; cups; drinking | | | 2022 | glasses, namely, tumblers; jugs; | | | temperature retaining vessels; vacuum | | | container for hot or cold food and drink; | | | insulated food and drink containers; | | | cold packs used to keep food and drink | | | cold; refreezable ice substitutes in | | | packaged form, namely, cold packs used | | | to keep food or drink cold; insulating | | | sleeve holder for beverage cups; bottle | | | openers; cooler backpacks, namely, | | | portable coolers which can be worn as a | | | backpack; jockey boxes; ice buckets.

See Declaration of Jeni Zuercher (“Zuercher Decl.”), [ECF No. 8-1] ¶¶ 4–5. The YETI Marks are used in connection with the manufacture and distribution of high-quality goods in the categories identified above. See id.

Plaintiff&#x²⁷;s representative reviewed and visually inspected the detailed web page captures, reflecting various products bearing Plaintiff&#x²⁷;s trademarks offered for sale through the E-commerce Store Names and determined the products were non-genuine, unauthorized versions of Plaintiff&#x²⁷;s goods. See id. at ¶¶ 13–14. Based on its investigation, Plaintiff alleges Defendants have advertised, promoted, offered for sale, or sold goods bearing and/or using what Plaintiff has determined to be counterfeits, infringements, reproductions, or colorable imitations of the YETI Marks. See id.; see also Am. Compl. ¶¶ 7–14, 25. Defendants are not now, nor have they ever been, authorized or licensed to use, reproduce, or make counterfeits, reproductions, or colorable imitations of the YETI Marks. See Zuercher Decl. ¶¶ 10, 13–14.

B. Procedural Background

On November¹⁴, 2024, Plaintiff filed its Complaint, [ECF No. 1], and on December²³, 2024, filed its Amended Complaint, [ECF No. 29], against Defendants. On November¹⁸, 2024, Plaintiff filed its Ex Parte Motion for Order Authorizing Alternate Service of Process (“Motion for Alternate Service”), [ECF No. 9]. The Court entered an Order Granting the Motion for Alternate Service on November²¹, 2024, [ECF No. 11]. In accordance with the November²¹, 2024 Order, Plaintiff served each Defendant with a Summons and a copy of the Amended Complaint via electronic mail and website posting on December²³, 2024, and December²⁶, 2024. See Decl. of Stephen M. Gaffigan (“Gaffigan Decl.”), [ECF No. 37-3] ¶¶ 6; see also Proof of Service, [ECF No. 30].

Defendants failed to file an answer or other response, and the time allowed for Defendants to respond to the Amended Complaint has since expired. See Gaffigan Decl. ¶¶ 7–8. To Plaintiff&#x²⁷;s knowledge, Defendants are not infants or incompetent persons, and the Service Members Civil Relief Act does not apply. See id. at ¶ 9. On February⁶, 2025, the Clerk entered default against Defendants, [ECF No. 32], for failure to plead or otherwise defend pursuant to Rule 55(a) of the Federal Rules of Civil Procedure. Plaintiff now moves the Court for default final judgment against Defendants.

LEGAL STANDARD

A party may apply to the court for a default judgment when the defendant fails to timely respond to a pleading. FED. R. CIV. P. 55(b)(2). “A defendant, by his default, admits the plaintiff&#x²⁷;s well-pleaded allegations of fact, is concluded on those facts by the judgment, and is barred from contesting on appeal the facts thus established." Eagle Hosp. Physicians, LLC v. SRG Consulting, Inc., 561 F. 3d 1298, 1307 (11th Cir. 2009) (quoting Nishimatsu Const. Co. v. Houston Nat&#x²⁷;l Bank, 515 F. 2d 1200, 1206 (5th Cir. 1975)). However, conclusions of law are to be determined by the

court. See Mierzwicki v. CAB Asset Management LLC, No. 14-CV-61998, 2014 WL 12488533, at *1 (S.D. Fla. Dec.³⁰, 2014). Therefore, a court may only enter a default judgment if there is a "sufficient basis to state a claim.” Id. (citing Nishimatsu, 515 F. 2d at 1206).

Once a plaintiff has established a sufficient basis for liability, the Court must conduct an inquiry to determine the appropriate damages. PetMed Express, Inc. v. MedPets.Com, Inc., 336 F. Supp. 2d 1213, 1217 (S.D. Fla. 2004) (citations omitted). Although an evidentiary hearing is generally required, the Court need not conduct such a hearing “when . . . additional evidence would be truly unnecessary to a fully informed determination of damages." Safari Programs, Inc. v. CollectA Int&#x²⁷;l Ltd., 686 F. App’x 737, 746 (11th Cir. 2017) (quoting SEC v. Smyth, 420 F. 3d 1225, 1232 n.13 (11th Cir. 2005)). Therefore, where the record adequately supports the award of damages, an evidentiary hearing is not required. See Smyth, 420 F. 3d at 1232 n.13; PetMed Express, 336 F. Supp. 2d at 1217 (finding an evidentiary hearing unnecessary because plaintiff was seeking statutory damages under the Lanham Act); Luxottica Group S.p.A. v. Casa Los Martnez Corp., No. 14-CV-22859, 2014 WL 4948632, at *2 (S.D. Fla. Oct.², 2014) (same).

ANALYSIS

A. Claims

Plaintiff seeks a default judgment for the relief sought in the Amended Complaint, asserting the following claims against Defendants: (1) trademark counterfeiting and infringement under section³² of the Lanham Act, in violation of¹⁵ U.S.C. § 1114 (“Claim¹”); (2) false designation of origin under section 43(a) of the Lanham Act, in violation of¹⁵ U.S.C. § 1125(a) (“Claim²"); (3) unfair competition under Florida common law (“Claim³"); and (4) trademark infringement under Florida common law (“Claim⁴"). See Am. Compl. ¶¶ 41–66.

1. Counterfeiting and Infringement Section³² of the Lanham Act,¹⁵ U.S.C. § 1114, provides liability for trademark infringement if, without the consent of the registrant, a defendant uses “in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive.”¹⁵ U.S.C. § 1114(1)(a). To prevail on its trademark infringement claim, a plaintiff must demonstrate “(1) that it had prior rights to the mark at issue and (2) that the defendant had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F. 3d 1188, 1193 (11th Cir. 2001) (footnote and citations omitted).

2. False Designation of Origin The test for liability for false designation of origin under¹⁵ U.S.C. § 1125(a) is the same as for a trademark counterfeiting and infringement claim—i.e., whether the public is likely to be deceived or confused by the similarity of the marks at issue. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992) (Stevens, J., concurring in the judgment).

3. Common Law Unfair Competition Whether a defendant&#x²⁷;s use of a plaintiff&#x²⁷;s trademarks created a likelihood of confusion between the plaintiff&#x²⁷;s and the defendant&#x²⁷;s products is also the determining factor in the analysis of unfair competition under the common law of Florida. See Rolex Watch U.S.A., Inc. v. Forrester, No. 83-CV-8381, 1986 WL 15668, at *3–4 (S.D. Fla. Dec.⁹, 1986) (“[I]t is clear that the Court need not find ‘actual confusion[.]&#x²⁷; . . . The proper test is ‘likelihood of confusion[.]").

4. Common Law Trademark Infringement The analysis of liability for Florida common law trademark infringement is the same as the analysis of liability for trademark infringement under section 32(a) of the Lanham Act. See PetMed Express, Inc., 336 F. Supp. 2d at 1217–18.

B. Liability

The well-pleaded factual allegations of Plaintiff&#x²⁷;s Amended Complaint properly contain the elements for each of the above claims and are admitted by virtue of Defendants&#x²⁷; defaults. See Am. Compl. ¶¶ 7–14, 25–36, 42–43, 49–53, 57–58, 62–64. Moreover, the Amended Complaint&#x²⁷;s factual allegations have been substantiated by sworn declarations and other evidence and establish Defendants&#x²⁷; liability for each of the claims asserted. Accordingly, default judgment pursuant to Rule 55 of the Federal Rules of Civil Procedure is appropriately entered against Defendants.

C. Relief

Plaintiff requests an award of equitable relief and monetary damages against Defendants for trademark infringement in Claim 1. The Court analyzes Plaintiffs request for relief as to Claim¹ only, as the judgment for Claims², 3, and⁴—false designation of origin, common law unfair competition, and common law trademark infringement—is limited to entry of the requested equitable relief for Claim 1. See generally Mot.

1. Injunctive Relief

Pursuant to the Lanham Act, a district court is authorized to issue an injunction “according to the principles of equity and upon such terms as the court may deem reasonable,” to prevent violations of trademark law.¹⁵ U.S.C. § 1116(a). Indeed, “[i]njunctive relief is the remedy of choice for trademark and unfair competition cases, since there is no adequate remedy at law for the injury caused by a defendant&#x²⁷;s continuing infringement.” Burger King Corp. v. Agad, 911 F. Supp. 1499, 1509–10 (S.D. Fla. 1995) (alteration in original) (internal quotation marks omitted) (quoting Century²¹ Real Estate Corp. v. Sandlin, 846 F. 2d 1175, 1180 (9th Cir. 1988)). Injunctive relief is available even in the default judgment setting, see, e.g., PetMed Express, Inc., 336 F. Supp. 2d at 1222–23, because Defendants&#x²⁷; failure to respond or otherwise appear makes it difficult for a plaintiff to prevent further infringement absent an injunction. See Jackson v. Sturkie, 255 F. Supp.

2d 1096, 1103 (N.D. Cal. 2003) (“[D]efendant&#x²⁷;s lack of participation in this litigation has given the court no assurance that defendant&#x²⁷;s infringing activity will cease. Therefore, plaintiff is entitled to permanent injunctive relief.").

Permanent injunctive relief is appropriate where a plaintiff demonstrates: (1) it has suffered irreparable injury; (2) there is no adequate remedy at law; (3) the balance of hardship favors an equitable remedy; and (4) an issuance of an injunction is in the public&#x²⁷;s interest. See eBay, Inc. v. MercExchange, LLC., 547 U.S. 388, 391 (2006). Plaintiff has carried its burden on each of the four factors.

Specifically, in trademark cases, “a sufficiently strong showing of likelihood of confusion [caused by trademark infringement] may by itself constitute a showing of . . . a substantial threat of irreparable harm.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int&#x²⁷;l Imp., Inc., 756 F. 2d 1525, 1530 (11th Cir. 1985) (alterations added) (footnote omitted); see also Levi Strauss & Co. v. Sunrise Int&#x²⁷;l Trading Inc., 51 F. 3d 982, 986 (11th Cir. 1995) (“There is no doubt that the continued sale of thousands of pairs of counterfeit jeans would damage [the plaintiff&#x²⁷;s] business reputation and decrease its legitimate sales."). Plaintiff&#x²⁷;s Amended Complaint and the submissions show that the goods produced and sold by Defendants are nearly identical to Plaintiff&#x²⁷;s genuine products, and consumers viewing Defendants&#x²⁷; counterfeit goods post-sale would actually confuse them for Plaintiff&#x²⁷;s genuine products. See, e.g., Am. Compl. ¶ 26 (“Defendants&#x²⁷; actions are likely to cause confusion of consumers at the time of initial interest, sale, and in the post-sale setting, who will believe all of Defendants&#x²⁷; goods offered for sale in or through Defendants&#x²⁷; e-commerce stores, are genuine goods originating from, associated with, and/or approved by YETI.”).

Plaintiff has no adequate remedy at law so long as Defendants continue to operate the Ecommerce Store Names because Plaintiff cannot control the quality of what appear to be its

products in the marketplace. An award of monetary damages alone will not cure the injury to Plaintiff&#x²⁷;s reputation and goodwill if Defendants&#x²⁷; infringing and counterfeiting continue. Moreover, Plaintiff faces hardship from loss of sales and its inability to control its reputation in the marketplace. By contrast, Defendants face no hardship if they are prohibited from the infringement of Plaintiff&#x²⁷;s trademarks. Finally, the public interest supports the issuance of a permanent injunction against Defendants to prevent consumers from being misled by Defendants&#x²⁷; products and potentially harmed by their inferior quality. See Chanel, Inc. v. besumart.com, 240 F. Supp. 3d 1283, 1291 (S.D. Fla. 2016) (“[A]n injunction to enjoin infringing behavior serves the public interest in protecting consumers from such behavior.”) (citation omitted); World Wrestling Entm&#x²⁷;t, Inc. v. Thomas, No. 12-CIV-21018, 2012 WL 12874190, at *8 (S.D. Fla. Apr.¹¹, 2012) (considering the potential for harm based on exposure to potentially hazardous counterfeit merchandise in analyzing public&#x²⁷;s interest in an injunction).

Broad equity powers allow the Court to fashion injunctive relief necessary to stop Defendants&#x²⁷; infringing activities. See, e.g., Swann v. Charlotte-Mecklenburg Bd. of Educ., 402 U.S.¹, 15 (1971) (“Once a right and a violation have been shown, the scope of a district court&#x²⁷;s equitable powers to remedy past wrongs is broad, for breadth and flexibility are inherent in equitable remedies. The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould [sic] each decree to the necessities of the particular case.” (citation and internal quotation marks omitted)); United States v. Bausch & Lomb Optical Co., 321 U.S. 707, 724 (1944) ("Equity has power to eradicate the evils of a condemned scheme by prohibition of the use of admittedly valid parts of an invalid whole." (citations omitted)).

Defendants have created an Internet-based counterfeiting scheme in which they are profiting from their deliberate misappropriation of Plaintiff&#x²⁷;s rights. Accordingly, the Court may

fashion injunctive relief to eliminate the means by which Defendants are conducting their unlawful activities. Appropriate remedies to achieve this end include canceling or transferring the Ecommerce Store Names, assigning all rights, title, and interest to the E-commerce Store Names to Plaintiff, and delisting or de-indexing the E-commerce Store Names from any Internet search engine, such that these means may no longer be used as instrumentalities to further the sale of counterfeit goods.

2. Statutory Damages

In a case involving the use of counterfeit marks in connection with the sale, offering for sale, or distribution of goods,¹⁵ U.S.C. § 1117(c) provides that a plaintiff may elect an award of statutory damages at any time before final judgment is rendered in the sum of not less than $1,000.00 nor more than $200,000.00 per counterfeit mark per type of good. See 15 U.S.C. § 1117(c)(1). In addition, if the Court finds Defendants&#x²⁷; counterfeiting actions were willful, it may impose damages above the maximum limit up to $2,000,000.00 per mark per type of good. See id. § 1117(c)(2).

The Court has wide discretion to determine the amount of statutory damages. See PetMed Express, Inc., 336 F. Supp. 2d at 1219 (citing Cable/Home Commc&#x²⁷;n Corp. v. Network Prods., Inc., 902 F. 2d 829, 852 (11th Cir. 1990)). An award of statutory damages is appropriate despite a plaintiff&#x²⁷;s inability to prove actual damages caused by a defendant&#x²⁷;s infringement. See Ford Motor Co., v. Cross, 441 F. Supp. 2d 837, 852 (E.D. Mich. 2006); Playboy Enters., Inc. v. Universal Tel- A-Talk, Inc., No. 96-CV-6961, 1998 WL 767440, at *8 (E.D. Pa. Nov.³, 1998) (awarding statutory damages where plaintiff failed to prove actual damages or profits). The option of a statutory damages remedy in trademark counterfeiting cases is sensible given evidence of a defendant&#x²⁷;s profits in such cases is frequently almost impossible to ascertain. See, e.g., S. Rep. No. 104-177, pt. V § 7, at 10 (1995) (discussing purposes of Lanham Act statutory damages); PetMed Express,

Inc., 336 F. Supp. 2d at 1220 (statutory damages are “[e]specially appropriate in default judgment cases due to infringer nondisclosure”) (citations omitted). This case is no exception.

Here, the allegations of the Amended Complaint and the evidence establish the Defendants intentionally copied one or more of the YETI Marks for the purpose of deriving the benefit of Plaintiff&#x²⁷;s world-famous reputation. Defendants have defaulted on Plaintiff&#x²⁷;s allegations of willfulness. See Am. Compl. ¶ 32; see also Arista Records, Inc. v. Beker Enters., Inc., 298 F. Supp. 2d 1310, 1313 (S.D. Fla. 2003) (finding a court may infer willfulness from the defendants&#x²⁷; default) (citations omitted); PetMed Express, Inc., 336 F. Supp. 2d at 1217 (stating that upon default, well-pleaded allegations are taken as true). As such, the Lanham Act permits the Court to award up to $2,000,000.00 per infringing mark on each type of good as statutory damages to ensure Defendants do not continue their intentional and willful counterfeiting activities.

The only available evidence demonstrates that each Defendant promoted, distributed, advertised, offered for sale, and/or sold at least one (1) type of good bearing at least one (1) mark which is a counterfeit of at least one of the YETI Marks protected by federal trademark registrations. See Am. Compl. ¶¶ 15, 25–33, 42–46; Zuercher Decl. ¶¶ 10–14; see also Declaration of Jeni Zuercher in Support of Plaintiff&#x²⁷;s Motion (“Zuercher Decl. in Support of Motion”), [ECF No. 37-1] ¶ 5; Ex. 1 to Zuercher Decl. in Support of Motion, [ECF No. 37-2]. Based on the above considerations, Plaintiff has asked the Court to award statutory damages in the amount of $1,000,000.00 per mark, per type of good. See Mot. at 13. As each Defendant used at least one counterfeit mark on one type of good, Plaintiff requests a statutory damage award in the amount of $1,000,000.00 against each Defendant. See id. The award should be sufficient to deter Defendants and others from continuing to counterfeit or otherwise infringe Plaintiff&#x²⁷;s trademarks, compensate Plaintiff, and punish Defendants, all stated goals of¹⁵ U.S.C. § 1117(c). The Court

finds that this award of statutory damages falls within the permissible range under¹⁵ U.S.C. § 1117(c) and is just. See Chanel, Inc. v. Individuals, Bus. Entities, & Unincorporated Ass’ns, No. 23-62201 (S.D. Fla. Feb.⁵, 2024), ECF No. 34 (awarding the plaintiff $1,000,000.00 against each of the defendants based on at least one mark counterfeited and one type of good); Richemont Int&#x²⁷;l Sa v. Cartierclone.Com, No. 23-60536 (S.D. Fla. April²⁶, 2023), ECF No. 29 (awarding plaintiff $1,000,000.00 against each defendant); Tiffany NJ LLC v. Individuals, No. 22-62299 (S.D. Fla. Feb.³, 2023), ECF No. 34 (awarding plaintiff $1,000,000.00 against each defendant); Specialized Bicycle Components v. Individuals, No. 21-61893 (S.D. Fla. Nov.¹², 2021), ECF No. 35 (awarding plaintiff $1,000,000.00 against each defendant).

CONCLUSION

For the foregoing reasons, Plaintiff is entitled to the entry of default final judgment. Accordingly, it is hereby

ORDERED AND ADJUDGED that Plaintiff&#x²⁷;s Motion, [ECF No. 37], is GRANTED. Default final judgment and a permanent injunction shall be entered by separate order.

DONE AND ORDERED in Miami, Florida, this 26th day of February, 2025.

RODOLFO A. RUIZ II UNITED STATES DISTRICT JUDGE

SCHEDULE “A”

DEFENDANTS BY E-COMMERCE STORE NAME, FINANCIAL ACCOUNT INFORMATION, AND E-MAIL ADDRESSES

[email protected] [email protected]

Footnotes

1 Plaintiff has not included Defendants, amlgtp.com (Defendant Number 15), iikos.com (Defendant Number 16), qustasuan.com (Defendant Number 32) and delilidas.shop (Defendant Number 39), in the Motion's request for relief as these Defendants have been voluntarily dismissed from this action. See [ECF No. 22]. Additionally, Defendant thegiftio.com (Defendant Number 66) has not been included in Plaintiff's request for relief as Plaintiff has been granted an extension of time to file a Motion for Default Final Judgment as to Defendant Number 66 until March 6, 2025. See [ECF No. 36]. Accordingly, this Order refers to the remaining Defendants identified on Schedule "A," attached to this Order, and does not apply to Defendants amlgtp.com (Defendant Number 15), iikos.com (Defendant Number 16), qustasuan.com (Defendant Number 32), delilidas.shop (Defendant Number 39), and thegiftio.com (Defendant Number 66).

2 The factual background is taken from Plaintiff's Amended Complaint, [ECF No. 29], the Motion for Entry of Default Final Judgment, [ECF No. 37], and supporting evidentiary submissions.

15 | N/A | | | |

16 | N/A | | | |

32 | N/A | | | |

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YETI COOLERS, LLC v. THE INDIVIDUALS, BUSINESS ENTITIES AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A

A. Factual Background

B. Procedural Background

LEGAL STANDARD

ANALYSIS

A. Claims

B. Liability

C. Relief

1. Injunctive Relief

2. Statutory Damages

CONCLUSION

RODOLFO A. RUIZ II UNITED STATES DISTRICT JUDGE

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Citator

Authorities Cited (14 total)

YETI COOLERS, LLC

v.

THE INDIVIDUALS, BUSINESS ENTITIES AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A