Rosenshine v. A. Meshi Cosmetics Indus. Ltd.

MEMORANDUM AND ORDER Oren Rosenshine and Amir Rosenshine (“Plaintiffs”), proceeding pro se, bring the instant action against Defendants A. Meshi Cosmetics Industries Ltd. (“Meshi”), A to Z Import Inc. (“A to Z”), and Eyal Noach, asserting claims pursuant to the Lanham Act and New York state laws. (Amended Complaint (“Am. Compl.”), ECF No. 32.) Meshi moves pursuant to Rule 56.1 of the Federal Rules of Civil Procedure for summary judgment to dismiss Plaintiffs’ amended complaint in its entirety. STATEMENT OF UNDISPUTED FACTS¹ This dispute arises from Plaintiffs’ purported trademark rights to “Star Gel” hair care product. Meshi is an Israeli cosmetics company. (Pls.’ Resp. to Def. A. Meshi Cosmetics Industries LTD’s Statement of Undisputed Material Facts (“Pls.’ 56.1 Resp.”)

1-2, ECF No. 94.) Global Manufacturing Import Export Inc. (“GMIE”) was a company specializing in importing foreign cosmetics into the United States for sales to distributors and retail customers. (Id. 6.) Meshi and GMIE entered an agreement on October 4, 2004 (the “Agreement”), pursuant to which Meshi agreed to manufacture 2,000 units of a jojoba hair gel for GMIE at the price of $2.45 per unit, for a total payment of $4,900. (Am. Compl., Exs. 2-3 9.)² The Agreement also affixed a label with the “Star Gel” mark and stated: “The name of the gel will be Star Gel according to the logo that was recently sent and hereby attached. Buyer has exclusivity on this name without time limit.” (Id. 7.) From 2004 to 2012, Meshi supplied approximately $10,000 worth of Star Gel to GMIE annually. (Pls.’ 56.1 Resp 10.) Neither Plaintiffs nor their predecessors in interest ordered any Star Gel from Meshi after 2012. (Id. 11.) In fact, Meshi did not sell any Star Gel after 2012 until it was approached by A to Z in fall 2016. (Id. 27.)³ Following negotiations, Meshi sold 3,600 Star Gel units to A to Z in November 2016 for $10,800. (Id. 34; Decl. of Allison Khaskelis (“Khaskelis Decl.”) Ex. 9, ECF No. 92-11.) In doing so, Plaintiffs claim that Meshi supplied A to Z with “counterfeit” versions of Star Gel that “have been circulating on the market past the trademark registration date.” (Reply Def. A. Meshi Cosmetics Indstrs., LTD (“Def.’s 56.1 Resp.”)