Buffalo Transportation wins against Buffalo MD Transportation in a case involving trademark infringement & dilution
Date Published: Jun 21, 2021
Buffalo Transportation, Inc. (“Buffalo”) supplies medical transportation services throughout Western New York under the name of “BUFFALO TRANSPORTATION”. It's a registered transportation provider for the New York State Department of Health and Medical responsive Services, LLC, an agent of the New York State Department of health. Through Medical responsive Services, customers will request transportation services in reference to medical treatment, and bills are made directly to the customer’s Medicare. Frezer Bezu (“Defendant”) also provides transport services under the name of “Buffalo MD Transportation” which includes medical transportation services to customers in Western New York; Frezer Bezu is the person who runs the company. Buffalo MD Transportation uses similar word and design marks to Buffalo Transportation and provides identical services in reference to those marks. Similarities between the design square measure are possible to cause confusion. They cause confusion sometimes leading to damages and losses to Buffalo Transportation. Buffalo Transportation filed a complaint against Buffalo MD Transportation at United States District Court of Western District of New York (Buffalo Transportation Inc. v. Frezer Bezu D/B/A Buffalo MD Transportation, 16-CV-1032 (W.D.N.Y. Mar. 22, 2019)) alleging unfair competition, trademark infringement, trademark dilution, deceptive business practice and use of a name with an intent to deceive. The District court passed a judgment in favor of Buffalo Transportation and asked for a record of recommendation from the Magistrate Judge. Because of lack of objection from Buffalo MD Transportation the court gave its judgment in favor of Buffalo Transportation.
Buffalo Transportation applied with the United States Patent and Trademark Office to register the word mark “BUFFALO TRANSPORTATION '' and a corresponding style mark that is “Buffalo Transportation Marks”. Buffalo transportation has used the Buffalo Transportation Marks for over 13 years in its advertising in addition as on its vehicles, so the Buffalo Transportation Marks have returned to represent Buffalo Transportation’s prime quality and reasonable medical transportation services. In fact, the marks and services became so distinctive that customers requesting its services requested them by its word mark, “Buffalo Transportation.”
The defendant also provides medical transportation services to customers in Western New York, under the name “Buffalo MD Transportation.” Frezer Bezu is a person who runs this company and who filed a fictitious name certificate with the Erie County Clerk’s office on 27 January, 2016. The Buffalo MD Transportation uses similar word and design marks to Buffalo Transportation and provides identical services in reference to those marks. Similarities between the design square measure are possible to cause confusion. The Buffalo MD Transportation’s services are closely associated with Buffalo Transportation’s services. The Buffalo MD Transportation is also a registered transportation supplier for the New York State Department of Health and its agent, Medical responsive Services. Medical responsive Services sent the defendant’s vehicle once a client called to request Buffalo Transportation’s services. A client entered one of the defendant’s vehicles thinking it belonged to Buffalo Transportation and was taken to an incorrect location.
On 22nd December, 2016 Buffalo Transportation filed a complaint against Buffalo MD Transportation at United States District Court of Western District of New York alleging unfair competition, trademark infringement, trademark dilution, deceptive business practice and use of a name with an intent to deceive. Buffalo Transportation was able to show that the Buffalo Transportation Marks are “protectable trademark[s],” thereby developing a strong goodwill. And the marks have “come to represent high quality affordable transportation services” provided by the Buffalo Transportation. On 6th June, 2017 the court passed a default judgment in favor of Buffalo Transportation. On 22nd March, 2019 this court passed a motion for default judgment in favor of Buffalo Transportation and passed on to United States Magistrate Judge to issue a report and recommendation on lost profits, damages, attorney fees and costs. The court also ordered Buffalo MD Transportation to render an accounting of all kinds of profits derived from sales of any kind from any violation actions and ordered buffalo Transportation for the proof of lost profits, damages, attorney fees and costs.
For obtaining the default judgment, a party must show that the opposing party “has failed to plead or otherwise defend” the case. This must be shown by securing the clerk’s entry of default through an affidavit or otherwise. By the entry, it does not mean that the judgment is warranted automatically. The entry shows that the complaint’s factual allegation is true which means that it can make reasonable inferences in moving party’s favor.
On 14th January, 2020 Buffalo Transportation applied a motion for damages including attorney's fees which amounted to $321,041.04 (attorney’s fees $11,356.00). Buffalo MD Transportation did not respond to the motion of Buffalo Transportation and did not submit the accounts ordered by the court. On 19th February, 2020 United States Magistrate Judge provided a report and recommendation stating that Buffalo Transportation’s motion should be granted. Buffalo MD Transportation did not object to the report and recommendation and the time extended for any objection has since expired. The District court can reject, modify and accept the findings. The district court has conducted a new review for those findings of magistrate judge recommendations which were objected to by the other party. But it is not required by the district court to review the recommendation of the Magistrate Judge because no objections were raised. The district court reviewed the submissions done by Magistrate Judge and based on those reviews and lack of objections, the District Court granted Buffalo Transportation motion and awarded $321,041.04 in damages, $490.00 in costs and $11,046.00 in attorney’s fees.