Cooley Secures $6.5 Million Win for Emerson Radio Corp. in Trademark Dispute
Los Angeles – April 25, 2022 – Cooley secured a definitive victory for Emerson Radio Corp., one of the largest volume consumer electronics distributors in the US that has had a recognized trademark in continuous use since 1912, in a lawsuit against air conditioning and heating products provider Emerson Quiet Kool and wholesaler Home Easy alleging infringement of its Emerson Quiet Kool trademark. Partners Bobby Ghajar and Michael Tu led the Cooley team advising Emerson Radio Corp., and were joined by co-counsel Mark Anania and Stacey Scrivani of Stevens & Lee.
On April 19, Judge Leonard Stark of the US Court of Appeals for the Federal Circuit, sitting by designation for the US District Court for the District of Delaware, granted judgment in favor of Cooley’s client, Emerson Radio Corp., issuing an order directing the US Patent and Trademark Office to cancel the defendants’ existing and proposed Emerson Quiet Kool trademarks; prohibiting the defendants from registering or applying to register the same mark or any other mark or name containing the word “Emerson” going forward; instructing the defendants to transfer ownership and rights of any domain name containing the word “Emerson” to Emerson Radio Corp.; and permanently enjoining the defendants and all of their related and affiliated companies (including American Ductless AC Corp. and EQK Partners), officers, employees and successors, from further marketing and selling, misleading and false advertising, assigning rights, or forming new entities to circumvent the order and any transfer or dissipation of inventory. Per the order, defendants are further required to deliver up for seizure or destruction at Emerson Radio Corp.’s election all products, promotional materials and other items on which Emerson’s trademark appears. The judgment also awards $6.5 million to Emerson Radio Corp. for the defendants’ wrongful actions.
The trademark infringement lawsuit originally was filed in the US District Court for the District of New Jersey in 2017 and was transferred to the US District Court for the District of Delaware in 2020. In Delaware, the trial, which was scheduled for January 2022 after several years of highly contested litigation, faced numerous delays, including the withdrawal of the defendants’ counsel on the eve of trial. The court entered a default against the defendants, and Cooley then filed a motion for default judgment and other relief.
Arguments were held regarding the contested default judgment motion in the case on April 12, and Judge Stark subsequently issued the order in favor of Cooley’s motion.
In his order, Judge Stark remarked that the “defendants’ inability to obtain suitable counsel … is part of a pattern of delay and lack of representation that has plagued this litigation.” He stated that the entry of default in the case was the result of the defendants’ culpable conduct, adding that their “continued refusals to abide by the court’s orders, unwillingness and untimeliness to participate in this action … demonstrate disregard for judicial process.”
The case is Emerson Radio Corp. v. Emerson Quiet Kool Co. Ltd. and Home Easy Ltd. (1:20-cv-01652) in the US District Court for the District of Delaware.
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