Court Largely Grants Prelim. Injunction Against CovCare in Counterfeit 3M Mask Suit

On Wednesday, Judge Diane Gujarati of the Eastern District of New York sided with 3M Company in a suit against CovCare Inc. and its corporate affiliate Wooter Apparel Inc. The court’s order bars the defendants from selling 3M-branded N95 masks, using 3M’s associated trademarks, and falsely representing themselves as 3M product distributors. The Brooklyn, New York, court’s decision comes after 3M sought and was granted a temporary restraining order last month.

Judge Gujarati explained that 3M is a leading manufacturer of N95 masks in the United States. Since the onset of the COVID-19 pandemic, demand for the masks and visibility of the brand have grown considerably, the opinion noted.

Defendant CovCare was reportedly set up in 2020 to supply personal protective equipment like masks to health care providers and government agencies. CovCare reportedly uses Wooter Apparel’s logistics and manufacturing expertise to aid its business.

In 2020, 3M allegedly received multiple reports of suspected counterfeit versions of its N95 masks, as well as accounts of price gouging by the defendants. At the end of last year, 3M sent a cease-and-desist letter to CovCare’s apparent CEO.

Months of communication ensued between the parties, culminating in the filing of 3M’s complaint on Mar. 26. On Apr. 19, U.S. Customs and Border Protection seized nearly 500 boxes of counterfeit 3M masks from the defendants’ New Jersey warehouse after flagging the shipment as suspicious.

Leading up to this week’s ruling, the parties extensively briefed the issues, submitted declarations, and participated in an Apr. 5 conference and an Apr. 21 argument. The court noted that though the litigants’ arguments centered on the defendants’ sale of 3M-branded masks, 3M alleged that they engaged in misconduct beyond selling counterfeit masks, too.

The court granted the mainstay of 3M’s motion, finding that it showed a clear likelihood of success on the merits of its trademark counterfeiting, trademark infringement, and unfair competition claims. The record demonstrated that the defendants were in possession of about 84,000 counterfeit 3M-branded masks, Judge Gujarati explained. Furthermore, the defendants put forward no evidence to prove that the counterfeits were genuine.   

The merits conclusion was sufficient to support a finding of irreparable harm, too, according to the court. In addition, the court held that the defendants “did not face significant hardship in the face of an injunction as compared to that posed to 3M absent an injunction.”

The public interest factor also came into play in the court’s decision. Judge Gujarati wrote that without an injunction, the public is at risk of being confused or deceived by 3M-branded products sold by the defendants. She further noted that the danger is exacerbated by the ongoing pandemic, “as consumers make frequent and sometimes rapid decisions in trying to protect themselves and others against a deadly virus.”

3M is represented by Vorys Sayer Seymour & Pease LLP and Gordon Rees Scully Mansukhani LLP. The defendants are represented by Garson, Segal, Steinmetz, Fladgate LLP.