Lion-Aire Corp. v. Lion Air Installation Inc.

MEMORANDUM & ORDER   Plaintiff Lion-Aire Corp. (“Plaintiff”) initiated this action against defendants Lion Air Installation, Inc., Howard McCartharan (“McCartharan”), and Chris Lambot (“Lambot”) (collectively, “Defendants”), alleging trademark infringement and false designation under the Lanham Act, deceptive acts and practices and trademark dilution and injury to business reputation under the New York General Business Law, and trademark infringement and unfair competition under New York common law. (See Compl., D.E. 1.) Currently pending before the Court are (1) Defendants’ motion to vacate the Clerk’s Certificate of Default issued on October 22, 2019 (Default, D.E. 17; Defs. Mot., D.E. 19; Defs. Br., D.E. 19-6; Defs. Reply, D.E. 27-10); and (2) Plaintiff’s opposition and cross-motion to enforce a settlement agreement and for an Order striking Defendants’ Answer and Counterclaims as untimely (Pl. Mot., D.E. 20; Pl. Br., D.E. 23; Pl. Reply, D.E. 28). For the following reasons, Defendants’ motion is GRANTED and Plaintiff’s Motion is DENIED. BACKGROUND AND PROCEDURAL HISTORY¹ Plaintiff initiated this trademark infringement action on June 17, 2019 alleging that Defendants’ use of a trademark and logo for HVAC contracting services is “confusingly similar” to Plaintiff’s trademark and logo for HVAC contracting services. (See generally Compl.) Shortly thereafter, Defendants’ counsel contacted Plaintiff’s Counsel to discuss settlement. (Grunsfeld Decl., D.E. 19-1, 1; Prutzman Decl., D.E. 21, 9.) On July 12, 2019, Magistrate Judge Arlene R. Lindsay extended the time for Defendants to respond to the Complaint to August 30, 2019. (See July 12, 2019 Elec. Order). The parties engaged in negotiations through July 2019. (Grunsfeld Decl.

1-3.) On July 31, 2019, Defendants’ counsel stated that his “client has decided it is willing to stop using Lion and the Lion logo/image altogether” and that “[o]nce we have an agreement in place, my client will take immediate steps to shift his business to a new name.” (July 31, 2019 Email, Prutzman Decl., Ex. 5, D.E. 21-5.) Defendants’ counsel asked Plaintiff’s Counsel to draft an agreement. (July 31, 2019 Email.) The parties exchanged drafts of a settlement agreement and continued negotiations through August 2019. (Grunsfeld Decl. 4; Prutzman Decl.