United States District Court, D. South Dakota, Southern Division
JOURNEY GROUP COMPANIES d/b/a SIOUX FALLS CONSTRUCTION, a South Dakota Corporation, Plaintiff,
SIOUX FALLS CONSTRUCTION, LLC, a South Dakota Limited Liability Company, and LORENA DE JESUS, aka LORENA ZAMORA, aka LORENA FLEY, an individual, Defendants.
MEMORANDUM OPINION AND ORDER GRANTING MOTION FOR
Lawrence L. Piersol, United States District Judge
Journey Group Companies d/b/a Sioux Falls Construction
("Plaintiff) has filed a Motion for Attorney Fees. (Doc.
22.) The motion is supported by the Affidavit of Sander J.
Morehead and exhibits attached to the affidavit. (Doc. 23.)
Defendants Sioux Falls Construction, LLC ("SFC")
and Lorena De Jesus ("De Jesus") have not resisted
the motion. For the following reasons, the motion will be
has offered construction services in South Dakota and the
surrounding region for over a century, continuously using the
service mark "Sioux Falls Construction" ("the
Mark") in advertising and otherwise promoting its
construction services with great success and consumer
recognition. The Mark is registered with the United States
Patent & Trademark Office ("USPTO"), and with
the South Dakota Secretary of State on it Fictitious Name
De Jesus began promoting and advertising their construction
services using the Mark on a pirated domain and on Facebook,
and by displaying the Mark on business cards and on the sides
of SFCs commercial vehicles.
28, 2016, Plaintiffs lawyers sent by certified mail, return
receipt requested, and by e-mail, a letter to De Jesus and
SFC advising them that they were infringing upon Plaintiffs
registered service mark. De Jesus represented that SFC would
cease and desist using the Mark in conjunction with its
construction business. However, SFC and De Jesus continued to
conduct business in association with the Mark, confusing both
consumers and potential consumers. For instance, Plaintiff
was contacted by both potential consumers and Sioux Falls,
South Dakota, city officials who were confused as to whether
Plaintiff Sioux Falls Construction was responsible for SFC
commercial trucks with the Mark on the sides of the trucks.
Sioux Falls city officials have called Plaintiff and noted
that vehicles bearing the Mark were located at job sites
lacking a proper building permit.
repeated subsequent contacts between Plaintiffs lawyer and
SFC and De Jesus demanding that they cease and desist use of
the Mark, SFC and De Jesus nevertheless continued to conduct
business in association with the "Sioux Falls
being notified of Plaintiffs rights in the Mark, including
Plaintiffs Registrations regarding that Mark, SFC and De
Jesus fraudulently obtained a South Dakota state registration
for the mark "Sioux Falls Construction LLC" under
SDCL Ch. 37-6 on September 12, 2016, by misrepresenting to
the South Dakota Secretary of State's Office that it had
valid rights in the Mark.
initiated this trademark infringement action against SFC and
De Jesus on September 2, 2016. (Doc. 1, Complaint.) A Summons
was obtained from the Clerk of Courts the same day, and
Plaintiff began efforts to serve De Jesus both individually
and as the Registered Agent of SFC. Service of the Summons
and Complaint was accomplished onboth Defendants on October
18, 2016. (Docs. 6 and 7.) Defendants were required to serve
an answer within 21 days. FED.R.Crv.P. 12(a)(1)(A)(i). They
failed to do so. Defendants also failed to file an answer or
otherwise respond to the Amended Complaint that was filed on
November 30, 2016. Plaintiff moved for entry of default on
December 21, 2016. (Doc. 13.) Pursuant to Federal Rule of
Civil Procedure 55(a), the Clerk of Court entered default
against Defendants on the same day. (Doc. 16.)
January 12, 2017, Plaintiff moved for default judgment
pursuant to Rule 55(b) on its claims for: 1) violating
Plaintiffs rights under the Lanham Act including 15 U.S.C.
§§ 1114 and 1125; 2) a counterfeit trademark under
15 U.S.C. § 1116; and 3) cybersquatting in violation of
15 U.S.C. § 1125(d). Plaintiff also asserted that the
admitted facts established that SFC's state trademark
registration for "Sioux Falls Construction, LLC"
should be cancelled. This Court granted Plaintiffs motion for
default judgment on April 12, 2017, awarding damages and
injunctive relief. (Doc. 21.) Regarding Plaintiffs request
for attorney fees, the Court stated:
The Lanham Act authorizes "reasonable attorney fees to
the prevailing party" in "exceptional cases."
15 U.S.C. § 1117(a). "Courts have defined the
characteristics of exceptional cases with adjectives
suggesting egregious conduct by a party."
Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863,
877 (8th Cir. 1994). According to the Eighth Circuit, an
exceptional case within the meaning of the Lanham Act
"is one in which one party's behavior went beyond
the pale of acceptable conduct." Id. As noted
above, Defendants deliberately and knowingly counterfeited
Sioux Falls Construction's mark, marketed its own
services with this counterfeit mark, and intended to use
Sioux Falls Construction's well-known mark in an attempt
to profit from the goodwill of that well-established
construction company. Thus, this is an exceptional case
justifying an award of fees.
(Doc. 21 at 12.) Plaintiffs counsel was directed to file an
application for attorney fees with a supporting affidavit and
time records. (Id.)
April 21, 2017, Plaintiff moved for attorney fees on the
ground that the instant action is an exceptional case under
the Lanham Act. (Docs. 22, 24.) The motion is supported by an
affidavit of Plaintiffs lawyer with billing ...