Case Details

CourtSouthern District of New York
Docket number1:06-cv-03871
Date case filed2006-05-19
Date case closed2007-06-18
Date of latest filing
Assigned toJudge Laura Taylor Swain
Case cause15:1125 Trademark Infringement (Lanham Act)
Nature of suit840 Trademark
Jury demandPlaintiff
Demand
JurisdictionFederal Question

Case Parties

Party: The Stephan Co.
Party type: Plaintiff
Attorney name: Edward P. Kelly
Attorney Contact:
Tiajoloff & Kelly
405 Lexington Avenue
New York, NY 10174
212 490 3285
Fax: 212 490-3295
Email: [email protected]
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Party: Elizabeth Arden, Inc.
Party type: Defendant
Attorney name: Jessika Joora Moon
Attorney Contact:
Sedgwick LLP (NY)
225 Liberty Street, 28th Floor
New York, NY 10281
(212)-422-0202
Fax: (212)-422-0925
Email: [email protected]
LEAD ATTORNEY ATTORNEY TO BE NOTICED

Attorney name: Joshua P. Paul
Attorney Contact:
Sedgwick LLP (NY)
225 Liberty Street, 28th Floor
New York, NY 10281
(212) 422-0202
Fax: (212) 422-0925
Email: [email protected]
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Party: FD Management, Inc.
Party type: Defendant
Attorney name: Jessika Joora Moon
Attorney Contact:
(See above for address)
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Party: FD Management, Inc.
Party type: Counter Claimant
Attorney name: Jessika Joora Moon
Attorney Contact:
(See above for address)
LEAD ATTORNEY ATTORNEY TO BE NOTICED

Attorney name: Joshua P. Paul
Attorney Contact:
(See above for address)
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Party: Elizabeth Arden, Inc.
Party type: Counter Claimant
Attorney name: Jessika Joora Moon
Attorney Contact:
(See above for address)
LEAD ATTORNEY ATTORNEY TO BE NOTICED
Party: The Stephan Co.
Party type: Counter Defendant

Case Docket

Docket
Item
Date FiledDocument
Available
Short
Description
Long Description
12006-05-19 COMPLAINT against Elizabeth Arden, Inc.. (Filing Fee $ 350.00, Receipt Number 579917)Document filed by The Stephan Co.(kco, ) Additional attachment(s) added on 5/25/2006 (mbe, ). (Entered: 05/22/2006)
22006-05-19 RULE 7.1 DISCLOSURE STATEMENT. Document filed by The Stephan Co.(kco, ) Additional attachment(s) added on 5/25/2006 (mbe, ). (Entered: 05/22/2006)
32006-05-25 INITIAL CONFERENCE ORDER: Initial Conference set for 9/12/2006 at 04:30 PM before Judge Laura Taylor Swain in Courtroom 17C, US Courthouse, 500 Pearl Street, New York, New York 10007. (Signed by Judge Laura Taylor Swain on 5/25/2006) (lb, ) (Entered: 05/25/2006)
42006-06-06 FIRST MOTION for Preliminary Injunction. Document filed by The Stephan Co.. Return Date set for 6/16/2006 09:00 AM. (Kelly, Edward) (Entered: 06/06/2006)
52006-06-06 FILING ERROR - WRONG DOCUMENT TYPE SELECTED FROM MENU - FIRST MOTION for Preliminary Injunction (DECLARATION IN SUPPORT OF MOTION). Document filed by The Stephan Co. (Attachments: # 1 Exhibit trademark specimens and letters)(Kelly, Edward) Modified on 6/9/2006 (kg). (Entered: 06/06/2006)
62006-06-06 FILING ERROR - WRONG DOCUMENT TYPE SELECTED FROM MENU - FIRST MOTION for Preliminary Injunction (DECLARATION IN SUPPORT OF MOTION). Document filed by The Stephan Co.. (Kelly, Edward) Modified on 6/9/2006 (kg). (Entered: 06/06/2006)
72006-06-06 FILING ERROR - WRONG DOCUMENT TYPE SELECTED FROM MENU - FIRST MOTION for Preliminary Injunction (Memorandum of Law in Support of Motion). Document filed by The Stephan Co.. (Kelly, Edward) Modified on 6/9/2006 (kg). (Entered: 06/06/2006)
82006-06-06 FILING ERROR - ELECTRONIC FILING FOR NON-ECF DOCUMENT - FIRST MOTION for Preliminary Injunction (Proposed Order). Document filed by The Stephan Co. (Kelly, Edward) Modified on 6/9/2006 (kg). (Entered: 06/06/2006)
92006-06-07 NOTICE OF APPEARANCE by Joshua P. Paul on behalf of Elizabeth Arden, Inc. (Paul, Joshua) (Entered: 06/07/2006)
102006-06-07 RULE 7.1 DISCLOSURE STATEMENT. Document filed by Elizabeth Arden, Inc..(Paul, Joshua) (Entered: 06/07/2006)
112006-06-05 AMENDED COMPLAINT amending 1 Complaint against FD Management, Inc., Elizabeth Arden, Inc. Document filed by The Stephan Co. Related document: 1 Complaint filed by The Stephan Co.(db, ) Additional attachment(s) added on 6/9/2006 (db, ). (Entered: 06/08/2006)
122006-06-11 DECLARATION of Edward Kelly in Support re: 5 FIRST MOTION for Preliminary Injunction.. Document filed by The Stephan Co.. (Attachments: # 1 Exhibit specimen and letters)(Kelly, Edward) (Entered: 06/11/2006)
132006-06-11 DECLARATION of Frank Ferola,Sr. in Support re: 6 FIRST MOTION for Preliminary Injunction.. Document filed by The Stephan Co.. (Kelly, Edward) (Entered: 06/11/2006)
142006-06-11 FIRST MEMORANDUM OF LAW in Support re: 7 FIRST MOTION for Preliminary Injunction memorandun.. Document filed by The Stephan Co.. (Kelly, Edward) (Entered: 06/11/2006)
152006-06-14 CERTIFICATE OF SERVICE of Memo Endorsement dated June 13, 2006 served on Edward Kelly, attorney for Plaintiff on June 14, 2006. Document filed by FD Management, Inc., Elizabeth Arden, Inc.. (Attachments: # 1)(Paul, Joshua) (Entered: 06/14/2006)
162006-06-13 ENDORSED LETTER addressed to Judge Swain from 6/13/06 dated 6/8/06: for the reasons stated on the record of the 6/13/06 proceeding in this matter, the application to strike the motion is denied. (Signed by Judge Laura Taylor Swain on 6/13/06) (cd, ) (Entered: 06/14/2006)
172006-06-21 STIPULATED PROTECTIVE ORDER; regarding the procedures that will govern the handling of confidential material. (Signed by Judge Laura Taylor Swain on 6/20/06) (pl, ) (Entered: 06/21/2006)
182006-06-27 ANSWER to Amended Complaint., COUNTERCLAIM against The Stephan Co.. Document filed by FD Management, Inc., Elizabeth Arden, Inc.. Related document: 11 Amended Complaint filed by The Stephan Co.,.(Paul, Joshua) (Entered: 06/27/2006)
202006-07-14 FIRST REPLY re: 18 Answer to Amended Complaint, Counterclaim counterclaim. Document filed by The Stephan Co.. (Kelly, Edward) (Entered: 07/14/2006)
232006-07-19 ENDORSED LETTER addressed to Judge Laura T. Swain from Edward P. Kelly dated 7/18/06 re: Counsel writes to request for permission to bring equipment to the courthouse and permission to allow Alliance Court Reporting to assist us. So Ordered. (Signed by Judge Laura Taylor Swain on 7/18/06) "Copies Faxed by Chambers"(jco, ) (Entered: 07/19/2006)
242006-07-19 ENDORSED LETTER addressed to Judge Laura Taylor Swain from Josha Paul dated 7/18/2006 re: to request for primission to bring various equipment into the courthouse in connection with the evidentiary hearing that is to start on Thursday, July 20, at 9:30 a.m. ENDORSEMENT: The District Executive and the U.S. Marshal are respectfully requested to comply with this request to facilitate the hearing in this matter on July 20,2006. The equipment and personnel will arrive at 8:00 a.m. and the equipment is to be set up in Courtroom 17C. So Ordered. (Signed by Judge Laura Taylor Swain on 7/18/2006) (jmi, ) (Entered: 07/20/2006)
252006-08-03 TRANSCRIPT of proceedings held on 7/20/06 @9:30a.m. before Judge Laura Taylor Swain. (mo, ) (Entered: 08/03/2006)
262006-08-04 Exhibit List - Stipulation Identifying Exhibits Received in Evidence at July 20, 2006 Hearing. Document filed by Elizabeth Arden, Inc..(Paul, Joshua) (Entered: 08/04/2006)
272006-08-04 PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW. Document filed by Elizabeth Arden, Inc..(Paul, Joshua) (Entered: 08/04/2006)
282006-08-04 PROPOSED FINDINGS OF FACT AND CONCLUSIONS OF LAW. Document filed by The Stephan Co..(Kelly, Edward) (Entered: 08/04/2006)
292006-08-04 FIRST MOTION for Leave to File Supplement Record. Document filed by The Stephan Co.. (Attachments: # 1)(Kelly, Edward) (Entered: 08/04/2006)
302006-08-11 BRIEF re: 28 Proposed Findings of Fact, 29 FIRST MOTION for Leave to File Supplement Record. This docket entry both (i) responds to Plaintiff's Proposed Findings of Fact and Conclusions of Law and (ii) opposes Plaintiff's post-hearing motion to supplement the record. Document filed by Elizabeth Arden, Inc..(Paul, Joshua) (Entered: 08/11/2006)
312006-08-11 POST TRIAL MEMORANDUM. Document filed by The Stephan Co..(Kelly, Edward) (Entered: 08/11/2006)
322006-08-16 REPLY to Response to Motion re: 29 FIRST MOTION for Leave to File Supplement Record.. Document filed by The Stephan Co.. (Kelly, Edward) (Entered: 08/16/2006)
332006-08-28 ENDORSED LETTER addressed to Judge Laura T. Swain from Joshua Paul dated 8/24/06 re: Counsel writes to request that the pre-trial conference be deferred. The request is granted. The conference and related submission requirement are adjourned until further order of the court. So Ordered. (Signed by Judge Laura Taylor Swain on 8/25/06) (jco, ) (Entered: 08/28/2006)
342006-08-29 AFFIDAVIT OF SERVICE of Endorsed Memorandum regarding adjourning the Pre-Trial Conference scheduled for September 12, 2006 and preparing a Rule 26 (f) plan until sometime after a decision is rendered on the Plaintiffs morion for Preliminary Injunction. served on Edward P. Kelly, Esq. of the Law Offices of Taijoloff & Kelly on August 25, 2006. Service was made by Mail. Document filed by Elizabeth Arden, Inc.. (Greenspan, Scott) (Entered: 08/29/2006)
352006-09-07 ENDORSED LETTER addressed to Judge Laura T. Swain from Edward P. kelly dated 8/31/06 re: ENDORSEMENT: The parties shall appear for a conference on September 11, 2006 at 3:45 pm. defendant shall submit and serve a position statement (not to exceed 2 pages) by September 7, 2006. (Signed by Judge Laura Taylor Swain on 9/5/06) (js, ) (Entered: 09/07/2006)
362006-09-08 ENDORSED LETTER addressed to Judge Laura Taylor Swain from Joshua Paul dated 9/6/2006. ENDORSEMENT: Plaintiff shall serve and submit a reply statement (not to exceed 5 pages) by 9/12/2006. The conference scheduled for 9/11/2006 is adjourned sine die and plaintiff's application to compel production is taken on submission. So Ordered. (Signed by Judge Laura Taylor Swain on 9/7/2006) (lb, ) (Entered: 09/11/2006)
372006-09-14 AFFIDAVIT OF SERVICE of Memo Endorsement served on Joshua Paul on September 7, 2006. Document filed by The Stephan Co.. (Kelly, Edward) (Entered: 09/14/2006)
382006-10-31 ORDER; that plaintiff moves in this trademark infringement action for discovery of certain items withheld by Defendants under anassertion of attorney-client privilegeThe request for in camera review of thedocuments listed on Defendants' privilege log is denied.Plaintiffs request that the Court "preclude Defendants from relying on advice ofcounsel for the remainder of this litigation" is premature. No advice of counsel defense has thus farbeen raised, and the Court declines to render an advisory opinion in this regard. The request isdenied, without prejudice to Plaintiffs ability to renew it in the event Defendants seek to assert anadvice of counsel defense.Plaintiffs motion is therefore denied in its entirety. (Signed by Judge Laura Taylor Swain on 10/30/06) (pl, ) (Entered: 10/31/2006)
392006-12-06 FINDINGS OF FACT AND CONCLUSIONS OF LAW AFTER PRELIMINARY INJUNCTION HEARING: The Court grants plaintiff's motion to supplement the hearing record and denies plaintiff's motion for a preliminary injunction. An initial pretrial conference will be held on 1/11/2006 at 2:00 p.m. The parties are instructed to comply with the conference and submission requirements of Judge Swain's 5/25/2006, Initial Conference order in advance of the 1/11 conference. (Signed by Judge Laura Taylor Swain on 12/5/2006) Copies Mailed By Chambers.(lb, ) (Entered: 12/07/2006)
402007-01-04 JOINT PRELIMINARY PRETRIAL STATEMENT. Document filed by Elizabeth Arden, Inc..(Paul, Joshua) (Entered: 01/04/2007)
412007-01-04 NOTICE OF APPEAL from 39 Findings of Fact & Conclusions of Law. Document filed by The Stephan Co. Filing fee $ 455.00, receipt number E 601492. (nd, ) (Entered: 01/05/2007)
422007-01-11 ORDER REFERRING CASE TO MAGISTRATE JUDGE. Order that case be referred to the Clerk of Court for assignment to a Magistrate Judge for For general pretrial (includes scheduling, discovery, non-dispositive pretrial motions, and settlement). Referred to Magistrate Judge Frank Maas. (Signed by Judge Laura Taylor Swain on 1/11/07) (pl, ) (Entered: 01/11/2007)
432007-01-11 PRETRIAL SCHEDULING ORDER: Amended Pleadings due by 2/28/2007. Discovery due by 6/1/2007. Final Pretrial Conference set for 1/11/2008 11:00 AM before Judge Laura Taylor Swain. Additional Relief as set forth in this Order. (Signed by Judge Laura Taylor Swain on 1/11/07) (pl, ) (Entered: 01/11/2007)
442007-02-09 First Supplemental ROA Sent to USCA (Index). Notice that the Supplemental Index to the record on Appeal for 41 Notice of Appeal filed by The Stephan Co. USCA Case Number 07-0060-cv, 3 Copies of the index, Certified Supplemental Clerk Certificate and Certified Docket Sheet were transmitted to the U.S. Court of Appeals. (nd) Additional attachment(s) added on 3/20/2007 (Thomas, Dave). (Entered: 02/09/2007)
452007-02-15 FIRST MOTION to Compel withheld documents. Document filed by The Stephan Co..Motions referred to Frank Maas. (Attachments: # 1 Exhibit document requests and privilege log)(Kelly, Edward) (Entered: 02/15/2007)
462007-02-15 RESPONSE to Motion re: 45 FIRST MOTION to Compel withheld documents.. Document filed by FD Management, Inc.. (Kelly, Edward) (Entered: 02/15/2007)
472007-02-15 REPLY to Response to Motion re: 45 FIRST MOTION to Compel withheld documents.. Document filed by The Stephan Co.. (Kelly, Edward) (Entered: 02/15/2007)
482007-02-16 ENDORSED LETTER addressed to Judge Laura Taylor Swain from Edward P. Kelly dated 2/14/07 re: Request permission to docket certain submissions relating to plaintiff's motion for production of withheld documents previously not docketed with the district Court. These documents are as follows: Plaintiff's August 31, 2007 letter to the Court, Plaintiff's Motion and Notice of Motion, production of documents related to defendants good faith, if any withheld by defendants on the ground of attorney-client privilege based upon express or implied waiver and for in camera review of documents withheld by defendants on the ground of attorney client privilege, to preclude defendants from relying on documents relatingto advise of counsel, if any, withheld on the ground of attorney client privilege, defendants opposition letter dated September 6, 2006, defendants further opposition letter dated September 7, 2006, Plaintiffs further letter in sipport of motion dated September 12,, 2006. We request that the Court either grant us permission to file these submissions on the ECF system or allow the Clerk of the Court to docket these submissions. ENDORSEMENT: Permission to file the enumerated documents on ECF is GRANTED. (Signed by Judge Laura Taylor Swain on 2/14/07) (js) (Entered: 02/20/2007)
492007-02-22 NOTICE OF APPEARANCE by Jessika Joora Moon on behalf of FD Management, Inc., Elizabeth Arden, Inc. (Moon, Jessika) (Entered: 02/22/2007)
502007-02-23 ORDER Admissions due by 3/7/2007. Discovery due by 4/27/2007. Telephone Conference set for 4/30/2007 11:00 AM before Magistrate Judge Frank Maas. (Signed by Judge Frank Maas on 2/23/07) (jco) (Entered: 02/26/2007)
512007-02-27 ENDORSED LETTER addressed to Judge Maas from Edward Kelly dated 2/26/07 re point No. 2 in the 2/23/07 order: If I was suffering under a misapprehension, counsel apparently labored under a similar misunderstanding since they agreed to these dates at the end of the failed settlement conference. This matter has been assigned to me for general pretrial purposes. I will extend fact discovery until 6/1, but reserve decsion on the deadline for expert discovery. The next conferrence will be held, as previoulsy scheduled, on 4/30/07. (Signed by Judge Frank Maas on 2/27/07) (cd) (Entered: 02/28/2007)
522007-03-07 FIRST MOTION to Amend/Correct amended complaint. Document filed by The Stephan Co..Motions referred to Frank Maas. (Attachments: # 1 Exhibit proposed second amended complaint# 2 Exhibit memo of law in support of motion)(Kelly, Edward) (Entered: 03/07/2007)
532007-04-09 ENDORSED LETTER addressed to Mag. Judge Maas from Edward P. Kelly dated 4/2/07 re: counsel contacting the Court with respect to a fundamental discovery dispute in the referenced case. Stephan requests that the Court set an order scheduling a firm date for Defendants to produce all documents or that the Court consider an extension of the deadline for discovery. The Court will hold a telephone conference on 4/10/07 at 4 p.m. Mr. Kelly should initiate the call. (Signed by Judge Frank Maas on 4/9/07) (djc) Additional attachment(s) added on 4/10/2007 (Clark, Dolores). (Entered: 04/10/2007)
542007-04-10 ORDER that the telephone conf set for 4/30/07 is cancelled; on or before 4/23/07, the defts shall produce the documents responsive to the plntf's document requests; plntf's motion to serve a second amended complaint is granted; defts shall file answer within 30 days of this order; deadline for fact discovery is extended to 7/1/07; deadline for expert witness discovery is extended to 11/1/07; telephone conf set for 7/9/07 at 10 am. Plntf's counsel shall initiate the call by dialing the main number for chambers, (212)805-6727. (Signed by Judge Frank Maas on 4/10/07) (cd) (Entered: 04/11/2007)
552007-06-18 STIPULATION AND ORDER OF DISMISSAL this action is hereby dismissed with prejudice. Each party will bear its own costs and attorneys' fees. The Court shall retain jurisdiction over the parties for the purpose of enforcing the Stipulation Protective Order entered on 6/21/06. So Ordered. (Signed by Judge Laura Taylor Swain on 6/15/07) (jco) (Entered: 06/19/2007)
562007-07-16 MANDATE of USCA WITHDRAWING APPEAL (Certified Copy) as to 41 Notice of Appeal filed by The Stephan Co. USCA Case Number 07-0060-cv....that the appeal is hereby WITHDRAWN pursuant to Rule 42(b) of the Federal Rules of Appellate Procedure. Catherine O'Hagan Wolfe, Clerk USCA. Certified: 7/10/2007. (nd) (Entered: 07/16/2007)