govinfo:USCOURTS-njd-1_12-cv-02999-7

UNITED STATES DISTRICT COURT 
DISTRICT OF NEW JERSEY 
  
 
NEWBORN BROS. CO., INC., 
 
   Plaintiff, 
 
v. 
 
ALBION ENGINEERING COMPANY, 
 
             Defendant. 
 
 
 
 
 
1:12-cv-02999-NLH-AMD 
 
OPINION  
 
 
 
 
 
APPEARANCES: 
JOHN-PAUL MADDEN 
TIMOTHY R. BIEG 
MADDEN & MADDEN 
108 KINGS HIGHWAY EAST, SUITE 200 
P.O. BOX 210 
HADDONFIELD, N.J. 08033 
 
Attorneys Plaintiff Newborn Bros. Co., Inc. 
 
JEFFREY M. SCOTT  
ARCHER & GREINER, PC  
ONE CENTENNIAL SQUARE - P.O. BOX 3000  
HADDONFIELD, N.J. 08033 
 
KERRI E. CHEWNING 
ARCHER & GREINER 
1025 LAUREL OAK ROAD 
VOORHEES, N.J. 08043 
 
 Attorneys for Defendant Albion Engineering Company. 
 
HILLMAN, District Judge 
 
The Court received evidence relevant to Plaintiff Newborn 
Bros. Co., Inc.’s (“Newborn”) request for disgorgement of 
Defendant Albion Engineering Company’s (“Albion”) profits during 
a bench trial which took place over the course of four days 
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between December 13, 2023 and December 19, 2023.1  This opinion 
represents the Court’s findings of fact and conclusions of law 
pursuant to Federal Rule of Civil Procedure 52. 
I. Background 
The Court presumes the parties’ familiarity with the facts 
of this protracted litigation and recites only those facts 
relevant to the issue of disgorgement and injunctive relief. 
Newborn filed suit on May 18, 2012 alleging violations of the 
Lanham Act, 15 U.S.C. § 1125(a), and unfair competition premised 
on allegedly false statements, misrepresentations, and omissions 
of the geographic origin of Albion products.  (ECF 1 at ¶¶ 120-
58).  On December 20, 2016, the Court denied the parties’ cross-
motions for summary judgment, (ECF 187; ECF 188), and the case 
proceeded to trial during the spring and summer of 2017.  The 
case was thereafter stayed, (ECF 328), and administratively 
terminated, (ECF 329), while the parties pursued resolution 
through mediation.  The case was reopened on July 6, 2018, (ECF 
333), and the parties made post-trial submissions. 
 
1 The Court additionally held evidentiary hearings on November 
29, 2023; November 30, 2023; and December 6, 2023 to supplement 
the record on the issue of a potential permanent injunction.  
(ECF 429; ECF 430; ECF 433).  The Court also heard oral argument 
for Newborn’s motion in limine to exclude Albion’s substitute 
expert, Brett A. Margolin, Ph.D., on December 11, 2023.  (ECF 
434).  The Court denied Newborn’s motion in a subsequent opinion 
and order.  (ECF 444; ECF 445).  
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In its August 22, 2020 opinion, the Court found a number of 
Albion statements actionable under the Lanham Act – including 
affirmative statements that “All Albion products are Made In 
America” and “All our dispensing products and accessories are 
designed and manufactured in the USA, from our location in 
Philadelphia, Pennsylvania,” (ECF 363 at 65), and held that 
signed certificates of origin, website and catalog statements, 
products stamped “ALBION ENG. CO. PHILA. PA. U.S.A.,” product 
markings indicating seventy-five or eighty years of American 
manufacture, and similar representations were all false or 
misleading, (id. at 73-82).  The Court further determined that 
Newborn met its burden in demonstrating that customers were 
deceived by these misrepresentations and that they were material 
to purchasing decisions.  (Id. at 82-97).  Finally, after 
balancing the appropriate factors, the Court held that permanent 
injunctive relief and disgorgement of Albion’s profits were both 
warranted.  (Id. at 102-08). 
The Court’s opinion and order directed the parties to make 
proposals concerning Albion’s asserted affirmative defenses.  
(Id. at 108; ECF 364).  In a February 26, 2021 order, the Court 
advised that unclean hands was the only affirmative defense for 
which the record was incomplete and ordered the parties to meet 
and confer and propose trial dates to elicit related testimony.  
(ECF 371).  The Court subsequently denied Albion’s request to 
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reopen the record for evidence concerning its affirmative 
defense of failure to state a claim and denied its laches, 
waiver, estoppel, statute-of-limitations, failure-to-state-a-
claim, and lack-of-standing defenses.  (ECF 372; ECF 373).   
A bench trial was held on Albion’s unclean-hands defense 
from July 19, 2021 to July 21, 2021, (ECF 380; ECF 381; ECF 
382), and following post-trial submissions, the Court allowed 
supplemental letters indicating the last date on which Newborn 
engaged in conduct similar to Albion’s unlawful conduct, (ECF 
407).  The Court later held that Albion adequately supported its 
unclean-hands defense and set February 7, 2007 – the date of a 
declaration supporting Newborn’s trademark renewal application – 
as the date prior to which relief from the Court’s earlier 
opinions would not be granted, (ECF 410 at 10-13; ECF 411). 
Evidentiary hearings were held on November 29, 2023; 
November 30, 2023; and December 6, 2023 concerning Newborn’s 
request for a permanent injunction.  (ECF 429; ECF 430; ECF 
433).  The Court held a bench trial on disgorgement on December 
13, 2023; December 14, 2023; December 15, 2023; and December 19, 
2023.  (ECF 438; ECF 440; ECF 441; ECF 447).  The parties, at 
the Court’s request, have submitted for its consideration 
proposed findings of fact and conclusions of law.  (ECF 454; ECF 
455; ECF 455-1).  Albion has also applied to reopen the record 
concerning its unclean-hands defense in light of the belated 
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disclosure by Newborn of a photo of a product bearing the 
“Newborn USA” logo taken in May 2019, (ECF 432), and moved to 
strike the rebuttal testimony of Newborn’s expert, Joseph 
Lesovitz, (ECF 452).  Those arguments are addressed below. 
II. Discussion 
A. Jurisdiction 
The court exercises original jurisdiction over this matter 
pursuant to the Lanham Act.  See 15 U.S.C. § 1121(a); see also 
28 U.S.C. 1331.  It exercises supplemental jurisdiction over 
Newborn’s common-law claim.  See 28 U.S.C. § 1367(a). 
B. Bench Trials 
In an action tried without a jury, a court must state its 
findings of fact and conclusions of law, which “may appear in an 
opinion or a memorandum of decision filed by the court.”  Fed. 
R. Civ. P. 52(a)(1).  Despite the separateness contemplated by 
Rule 52, see id., the Third Circuit has permitted findings of 
fact and conclusion of law to be stated together, see Pierre v. 
Hess Oil Virgin Islands Corp., 624 F.2d 445, 450 (3d Cir. 1980) 
(“It was not required under Rule 52 of the Federal Rules of 
Civil Procedure that the findings and conclusions be stated 
separately.”); see also Ciolino v. Ameriquest Transp. Servs., 
Inc., 751 F. Supp. 2d 776, 778 (D.N.J. Nov. 22, 2010) (citing 
Pierre and issuing an opinion constituting its findings of fact 
and conclusion of law).   
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C. Lanham Act2 
Both injunctive and monetary relief are available under the 
Lanham Act, see 15 U.S.C. §§ 1116(a), 1117(a), with injunctive 
relief representing “the ‘usual and standard remedy,’” MB 
Imports, Inc. v. T&M Imports, LLC, No. 10-3445, 2016 WL 8674609, 
at *5 (D.N.J. Dec. 23, 2016) (quoting Bracco Diagnostics, Inc., 
627 F. Supp. 2d at 479).  The causation standard for monetary 
damages is higher than that for injunctive relief.  Id.  
District courts exercise significant discretion in awarding 
injunctive and monetary relief.  See Ferring Pharms., Inc. v. 
Watson Pharms., Inc., 765 F.3d 205, 210 (3d Cir. 2014) (noting 
 
2 The Court acknowledged in its 2020 opinion that the parties did 
not distinguish Newborn’s Lanham Act and unfair competition 
claims in their briefing.  (ECF 363 at 58 n.11).  Having 
concluded that Newborn was successful in its Lanham Act claim, 
the Court similarly found as to its unfair competition claim 
because the legal analysis for both was the same.  (Id.).  The 
Court reiterates that conclusion here.  See Cambridge Pavers, 
Inc. v. EP Henry Corp., 407 F. Supp. 3d 503, 509-10 (D.N.J. 
Sept. 10, 2019) (“[U]nfair competition claims under New Jersey 
statutory and common law generally parallel those under § 43(a) 
of the Lanham Act.” (alteration in original) (quoting Bracco 
Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384, 
454 (D.N.J. June 5, 2009))); CSC Holdings, LLC v. Optimum 
Networks, Inc., 731 F. Supp. 2d 400, 411 (D.N.J. Aug. 17, 
2010)(“This state unfair competition provision is equivalent to 
the federal unfair competition provision contained in Section 
43(a) of the Lanham Act, and a claim for unfair competition 
under New Jersey common law is substantially similar to these 
statutory claims.  Accordingly, a finding of liability under 
Section 43(a) of the Lanham Act leads to a finding of liability 
under the New Jersey unfair competition law.” (citations 
omitted)). 
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that decisions to grant or deny motions for preliminary 
injunctions are reviewed for abuse of discretion); World Ent. 
Inc. v. Brown, 487 F. App’x 758, 762 (3d Cir. 2012) (finding 
that the district court did not abuse its discretion in 
disgorging profits). 
The Lanham Act empowers courts to grant injunctions 
“
according to the principles of equity and upon such terms as 
the court may deem reasonable” to prevent violations under 15 
U.S.C. § 1125.  See 15 U.S.C. § 1116(a).  To warrant a permanent 
injunction, a plaintiff must demonstrate: 
(1) that it has suffered an irreparable injury; (2) 
that remedies available at law, such as monetary 
damages, are inadequate to compensate for that injury; 
(3) that, considering the balance of hardships between 
the plaintiff and defendant, a remedy in equity is 
warranted; and (4) that the public interest would not 
be disserved by a permanent injunction. 
 
E.A. Sween Co., Inc. v. Deli Exp. of Tenafly, LLC, 19 
F. Supp. 3d 560, 576-77 (D.N.J. May 13, 2014) (quoting 
eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391 
(2006)) (granting injunctive relief as part of default 
judgment in a Lanham-Act action). 
 
The Lanham Act also provides for the recovery of “(1) 
defendant’s profits, (2) any damages sustained by the plaintiff, 
and (3) the costs of the action.”  15 U.S.C. § 1117(a).  Courts 
deciding whether disgorgement of a defendant’s profits is 
appropriate consider: 1) whether the defendant intended to 
confuse or deceive, 2) whether sales have been diverted, 3) the 
adequacy of other remedies, 4) whether the plaintiff 
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unreasonably delayed assertion of their rights, 5) the public 
interest in rendering misconduct unprofitable, and 6) “whether 
it is a case of palming off.”  Kars 4 Kids Inc. v. America Can!, 
8 F.4th 209, 223 (3d Cir. 2021) (quoting Banjo Buddies, Inc. v. 
Renosky, 399 F.3d 168, 175 (3d Cir. 2005)).  Disgorgement is not 
automatic and is to be “denied where an injunction satisfies the 
equities of a case.”  Id. (quoting A & H Sportswear, Inc. v. 
Victoria’s Secret Stores, Inc., 166 F.3d 197, 209 (3d Cir. 
1999)). 
It is the plaintiff’s burden when assessing a defendant’s 
profits to prove the defendant’s sales while it is the 
defendant’s burden to prove costs and deductions.  See 15 U.S.C. 
§ 1117(a).  Therefore, for a disgorgement calculation, “the 
plaintiff first need only estimate the ‘defendant’s sales,’ then 
the burden shifts to the defendant to deduct costs and show what 
portion of those sales are not attributable to the infringing 
conduct.”  See Juul Labs, Inc. v. 4X PODS, 509 F. Supp. 3d 52, 
71-72 (D.N.J. Dec. 22, 2020) (citing 15 U.S.C. § 1117(a) and 
Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 
203, 206–07 (1942)). 
III. Analysis 
A. Disgorgement 
The Court makes the following findings of fact on the issue 
of disgorgement. 
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• Newborn and Albion are direct competitors in the caulking 
gun market.  Newborn and Albion have both been members of 
organizations including Sphere 1, a trade organization and 
buying group, and Sealant Engineering and Allied Lines 
(“SEAL”) group, a trade organization and the largest 
distributor of industrial sealants.  (2017 Trial Tr., Lee 
at 249:24 to 250:17, 251:17 to 252:2).  Newborn and Albion 
were the only two caulking gun manufacturers in the SEAL 
group.  (Id. at 250:16-17).   
• While Albion President Mark Schneider identified Cox as 
“more of [Albion’s] competitor than Newborn by far,” (2023 
Trial Tr., Schneider at 388:12-15), Cox did not participate 
in groups such as SEAL, Sphere 1, or others, (id. at 
387:13-14; 2017 Trial Tr., Lee at 259:1-9). 
• In a March 2011 letter to distributors, Schneider offered 
to trade Newborn products purchased by recipients for 
Albion products – in some cases offering greater than a 
one-for-one product match.  (2017 Trial Tr., Lee at 330:4 
to 331:9).  Such evidence indicates to the Court that 
Albion and Newborn directly competed with one another and 
Albion acknowledged that fact through its conduct. 
• Newborn President Albert Lee credibly testified that the 
nature and competition of the modern caulking gun market is 
such that many industrial distributors carry just one 
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vendor.  (2023 Trial Tr., Lee at 51:7-21).  Lee further 
testified that material manufacturers (“OEMs”) generally 
have not split private label sales and use one 
manufacturer.  (Id. at 82:7-16).  Newborn began private-
labeling guns and Albion followed suit, with guns sometimes 
co-branded as Albion or Newborn products and sold next to 
non-private-label guns at distributors.  (Id. at 82:17 to 
83:22).   
• Albion saw value and a strategic advantage in the 
marketplace by presenting itself as an American 
manufacturer.  In March 2009, Robert E. Reynolds, Albion’s 
director of marketing, recorded in Albion’s contract 
management system a conversation he had during an industry 
trade meeting with David Crawford, an end-user and owner of 
a Philadelphia-based caulking company.  (2017 Trial Tr., 
Reynolds at 1583:5 to 1584:15).  Crawford had received a 
dozen free Newborn caulking guns to which Reynolds remarked 
that they were made in China, Crawford responded “[t]hat’s 
how we got into this economic mess,” and Reynolds noted in 
the contract management system that “Made in U.S.A. could 
become even more important during this economy.”  (Id. at 
1584:19 to 1585:22).  In 2011, while seeking membership 
into Sphere 1, Albion sought to distinguish itself from 
importers such as Newborn – which was already a member – by 
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touting its status as an American manufacturer.  (Id. at 
1802:12 to 1803:10). 
• Testimony elicited at trial also demonstrated that a former 
Newborn customer
, Lowry’s, opted to give more business to 
Albion – to Newborn’s detriment – upon a representation by 
Schneider that Newborn’s products were made in China and 
Taiwan while Albion manufactured products in the United 
States.  (2017 Trial Tr., Glass at 905:13-24).  Lowry’s, 
which had been a Newborn customer for several years, 
eventually ceased buying from Newborn in 2015 or 2016.  
(Id. at 905:25 to 907:1).  Lee testified that OEMs did not 
purchase Newborn products due to their foreign manufacture.  
(2023 Trial Tr., Lee at 61:23 to 62:11). 
• In April 2007
 , Albion labeled caulking guns made for Hilti, 
an OEM, “Made in USA,” despite the fact that the guns had 
imported barrels and handle assemblies.  (2017 Trial. Tr., 
Reynolds at 1775:12 to 1779:19).  Similarly, in September 
2008, caulking guns erroneously labeled “Made in U.S.A.” 
were provided to a customer, Minnesota Mining & 
Manufacturing Company, despite foreign components.  (Id. at 
1783:21 to 1785:18). 
• Anthony Carroll, former purchasing agent for a Denver-based 
specialty contractor – Western Waterproofing, testified 
that “Made in U.S.A.” was an “underlying guideline” for his 
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purchasing and that he believed Albion products to be 
American made.  (2017 Trial Tr., Carroll at 1448:12 to 
1449:12, 1450:9 to 1451:1) 
• A June 2012 notice from United States Customs and Border 
Protection – which followed the evaluation of five shipping 
containers – directed that future imported shipments “must 
be marked with country of origin on stickers on each piece 
which are not easily removed, showing the country of origin 
in close proximity (next to, above or below) the line 
saying USA Manufacturer and Designer on product” and that 
the “Made in Taiwan” hangtags were “not in close proximity 
to line stating USA Manufacturer and Designer,” to which 
Albion responded by placing “Made in Taiwan” stickers on 
handles.  (2017 Trial Tr., Schneider at 2592:19 to 2594:5, 
2595:11 to 2600:22). 
• A December 2012 change notice by Albion sought to confirm 
the deletion of certain labels on B-line guns and stated 
that “existing number 500-427 and 500-428 point of purchase 
labels used on the B12, B12Q, B26 and B26Q tools is illegal 
in regards to all country of origin regulations.”  (2017 
Trial Tr., Becker at 988:25 to 989:3, 989:17-22, 990:17-
23).  White, self-adhesive “Made in Taiwan” labels were 
added to the handles of B-line tools in 2012 and later 
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replaced by stamped recoil plates.  (Id. at 992:15 to 
994:15; 2017 Trial Tr., Schneider at 2602:4-14). 
• Albion B-line guns feature a metal stamp on the recoil 
plate indicating Taiwanese origin in addition to a hangtag.  
(2017 Trial Tr., Schneider at 2602:4-14, 3790:25 to 
3791:17).  Private-label B-line guns are similarly marked.  
(2023 Evid. H’rg Tr., Schneider at 382:20 to 383:20).   
• Lee testified that – in his experience – B-Line guns would 
feature hangtags indicating Taiwanese manufacture.  (2023 
Evid. H’rg Tr., Lee at 275:25 to 276:9, 282:11 to 283:3; 
284:7-14).  Further, Tyler Hippen, Newborn’s national sales 
and marketing manager, acknowledged that if a gun featured 
a “Made in Taiwan” hangtag, its purchaser would be aware of 
its Taiwanese manufacture and assume that a subsequently 
purchased gun would also be made in Taiwan.  (2023 Evid. 
H’rg Tr., Hippen at 59:21 to 60:22). 
• At the liability phase of trial, Lee testified that 
Newborn’s sales increased following Albion’s change in 
country-of-origin markings, with a fifty-percent increase 
from 2011 to 2016.  (2017 Trial Tr., Lee at 375:6 to 
376:10).  This assertion is supported by summary income 
data provided in Newborn’s expert’s report.  (ECF 446-1 at 
274-75). 
Newborn advances in its proposed findings of fact and 
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conclusions of law that Albion diverted Newborn sales based on 
representations that its products were manufactured in the 
United States and Newborn’s were not.  (ECF 454 Facts at ¶¶ 57-
61, 66).  Newborn has met its burden in showing Albion sales of 
$31,811,390 while Albion has failed to meet its burden of 
establishing costs and other deductions, entitling Newborn to a 
disgorgement amount of $15,566,513 as calculated by Lesovitz.  
(Id. Law at ¶¶ 39-40).   
Albion responds that Newborn has failed to show – as 
required by the Court – that it was harmed by any of Albion’s 
actions and adds that Newborn has ignored factors beyond country 
of origin that would lead a customer to purchase Albion 
products.  (ECF 455-1 at ¶¶ 72-92).
3  Albion further points to 
 
3 Albion also seeks to re-open the record for its unclean-hands 
defense.  (ECF 455-1 at ¶¶ 1-7).  During the evidentiary 
hearing, Plaintiff presented a photograph in the form of a PDF 
file of a distributor’s display of caulking guns and 
accessories.  (2023 Evid. Hr’g Tr., Hippen at 44:4-15).  Counsel 
for Albion, appropriately so, requested the photograph in its 
native format.  (Id. at 14:23 to 15:11; ECF 432 at 16-17).  The 
original photograph showed a legacy Newborn accessory bearing 
the Newborn logo incorporating an outline of the United States, 
(2023 Evid. Hr’g Tr., Lee at 394:1-12, 418:13-19), the logo the 
Court relied upon in setting the outside date for disgorgement.  
Albion now argues that in light of this evidence the Court 
should reopen the unclean-hands record and consider the use of 
the Newborn logo as of the date of the photograph, May 7, 2019.  
(ECF 432 at 9).  While the Court is disturbed by the late 
production of this document and acknowledges that in some sense 
it is akin to the same conduct of Albion that Newborn complains 
of, the Court concludes that is insufficient to warrant a change 
in the Court’s bar date.  First, the image shows an accessory, 
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the cost disparity between Albion and Newborn products – with 
many Albion caulking guns priced forty percent higher or more – 
as evidence that Albion and Newborn products do not compete in 
the marketplace and cites survey data and testimony that 
consumers’ American-made preference cannot account for purchases 
made despite such cost disparities.  (Id. at ¶¶ 104-124).  
Newborn has failed show that any purchasers of B-line guns were 
confused by their country of origin and Albion adds that such 
guns have always been marked and the labels boasting Albion’s 
seventy-five and eighty years of American manufacture were true 
when made.  (Id. at ¶¶ 136-59). 
As a court within this Circuit has thoughtfully described, 
potential disgorgement of a defendant’s profits proceeds in two 
stages.  See Keurig, Inc. v. Sturm Foods, Inc., No. 10–841, 2013 
WL 633574, at *1 (D. Del. Feb. 19, 2013) (citing Banjo Buddies, 
399 F.3d at 176).  In Stage 1, the plaintiff must demonstrate 
that an accounting is appropriate and courts, in turn, balance 
the Banjo Buddies factors.  Id.  If an accounting is deemed 
 
and the Court has excluded accessories from the disgorgement 
calculation despite evidence in the record during the liability 
stage that Albion failed to properly mark accessories of foreign 
origin.  (ECF 410 at 13 n.6).  Second, unlike the pervasive 
nature of Albion’s legacy products, displays and literature 
still present in the marketplace, this is single isolated 
incident of a single product.  The Court concludes that it is of 
de minimus evidentiary value and immaterial to the Court’s 
present and past rulings. 
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appropriate, the matter proceeds on to Stage 2 in which a court 
must estimate profits to be disgorged and it is there that the 
plaintiff must prove the defendant’s sales and the defendant 
must prove “how much, if any, of its profits were not derived 
from its unlawful conduct.”  Id. at *1-2; see also 15 U.S.C. § 
1117(a) (“In assessing profits the plaintiff shall be required 
to prove defendant’s sales only; defendant must prove all 
elements of cost or deduction claimed.”); Am. Eagle Outfitters, 
Inc. v. Walmart, Inc., No. 2:20-CV-00412, 2023 WL 1778786, at *4 
(W.D. Pa. Feb. 6, 2023) (noting, in a Daubert opinion, that 
district courts continue to rely upon the Supreme Court’s pre-
Lanham Act decision in Mishawaka Rubber & Woolen Manufacturing 
Co. in permitting defendants to present evidence that profits 
are unattributable to unlawful conduct). 
The Court, in its 2020 opinion, considered the Banjo 
Buddies factors and concluded that Newborn demonstrated that 
disgorgement was appropriate.  (ECF 363 at 104-08).  That places 
this matter squarely in Stage 2.  It is therefore Newborn’s 
burden to prove Albion’s sales and Albion’s burden to prove 
costs and other deductions from that amount.  See 15 U.S.C. § 
1117(a).  The Court, as it advised during the August 21, 2023 
status conference, expected to premise any disgorgement or 
denial thereof on findings – to be demonstrated by the parties – 
that products did or did not compete and customers’ decisions to 
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purchase one product over another were or were not influenced by 
country of origin.  (2023 Status Hr’g Tr. at 17:7-17). 
Lesovitz calculated Albion’s total revenue from relevant 
products to be $31,811,390 from the start of the disgorgement 
period – February 8, 2007 – through 2015, representing 
approximately fifty-one percent of Albion’s total revenue 
through 2013.  (ECF 446-1 at 4, 23-25; 2023 Trial Tr., Lesovitz 
at 143:1-20).  Lesovitz further determined that Albion’s profits 
attributable to products at issue total $15,566,513.  (ECF 446-1 
at 29-30).  The Court concludes that Newborn has met its burden.  
See Avco Corp. v. Turn and Bank Holdings, LLC, 659 F. Supp. 3d 
483, 503 (M.D. Pa. Mar. 2, 2023) (“Unlike lost profits, for 
disgorgement of profits, the plaintiff’s burden is merely to 
demonstrate ‘the infringer’s sales before the burden of proof 
shifts to the defendant to show costs and deductions.’” (quoting 
Covertech Fabricating, Inc. v. TVM Bldg. Prod., Inc., 855 F.3d 
163, 177 (3d Cir. 2017))). 
Albion challenges Lesovitz’s report and testimony for 
failing to differentiate between competing and non-competing 
products, analyze why a customer may purchase a particular 
caulking gun over another, or pinpoint actual confusion 
regarding the origin on B-line products.  (ECF 455-1 at ¶¶ 126, 
129-38).  The Court presumes that these arguments derive, at 
least in part, from the Court’s comments during the August 21, 
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2023 status conference that it would be inequitable to disgorge 
profits if the products at issue did not compete or the decision 
to purchase one product over another was unrelated to country of 
origin.  (ECF 455 at ¶¶ 188-94 (advocating for the Court to 
disregard Lesovitz’s report because it assumed competition 
between products and did not analyze other reasons for 
purchasing one product over another)).  Such an argument 
misreads the Court’s instructions. 
While the Court did and does find that it would be 
inequitable and contrary to its responsibility under the Lanham 
Act to disgorge profits unrelated to Albion’s offending conduct, 
it rejects any interpretation that places the burden of proof of 
the sales attributable to specific representations or consumer 
confusion affirmatively on Newborn.  See Keurig, Inc., 2013 WL 
633574, at *2 (“The court declines to place a burden of proof on 
plaintiff in the second stage to show defendant’s sales 
attributable to the unlawful conduct.”); Sabinsa Corp. v. 
Creative Compounds, LLC, No. 04–4239, 2011 WL 3236096, at *7 
(D.N.J. July 27, 2011) (“A presumption of diversion of sales 
arises after a Plaintiff prevails on its infringement claim, and 
as long as the Plaintiff can show that monies were obtained by 
Defendant from sales of the infringing product, the burden is on 
the Defendant to overcome this presumption.”).  Rather, such 
burden is to be placed on Albion.  See Avco Corp., 659 F. Supp. 
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3d at 495 (“When seeking to disgorge profits, ‘the plaintiff 
shall be required to prove defendant’s sales only; defendant 
must prove all elements of cost or deduction claimed.’  Such 
deductions include ‘profits demonstrably not attributable to the 
unlawful use of’ the plaintiff’s trademark.” (citation omitted) 
(quoting 15 U.S.C. § 1117(a) and then Members 1st Fed. Credit 
Union v. Metro Bank, No. 1:09–cv–1171, 2011 WL 208743, at *5 
(M.D. Pa. Jan. 21, 2011))); Lontex Corp. v. Nike, Inc., No. 18-
5623, 2021 WL 1145904, at *10 (E.D. Pa. Mar. 25, 2021) (“Once 
Lontex proves Nike’s sales, the burden shifts to Nike to 
demonstrate the ‘costs or deductions’ which reduce the amount of 
its total sales to its profits.  Nike, through presentation of 
its own evidence and experts, may seek to introduce facts and 
make arguments regarding how a damages award should be 
calculated.”); Members 1st Fed. Credit Union, 2011 WL 208743, at 
*5 (concluding that the First Circuit’s holding “that ‘once the 
plaintiff has shown direct competition and infringement, the 
statute places the burden on the infringer to show the limits of 
the direct competition’” was consistent with the Lanham Act’s 
plain language and Supreme Court and Third Circuit caselaw 
(quoting Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 
56, 63 (1st Cir. 2008))). 
The Court agrees with Judge Cavanaugh’s observation in 
Sabinsa Corp.
 that “it appears difficult for a defendant, 
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innocent or not, to defend himself in a claim for disgorgement 
of profits.”  2011 WL 3236096, at *8.  The Court further finds 
that the applicable burden shifting allows for, and in some 
instances encourages, parties to argue past one another to the 
collective detriment of themselves and the Court.  A plaintiff’s 
minimal obligation to prove sales and a defendant’s heavier 
burden to deduct costs, demonstrate a lack of competition or 
confusion, and make other showings to subtract from the sales 
figure do not naturally result in apples-to-apples comparisons.  
Though a plaintiff need not present evidence of competition or 
confusion, it may also be in its interest to go above and beyond 
to present such evidence to anticipatorily rebut the defendant’s 
proofs.  This, in the Court’s recent experience, may be 
especially so when the predicate for potential disgorgement is 
country-of-origin markings and representations that may be 
applicable or inapplicable across an array of products as 
opposed to the more typical infringement of an identifiable 
mark.  
So is the case here.  Now in Stage 2, Newborn has presented 
evidence of sales and Albion has focused its rebuttal not on 
costs associated with those sales – which itself would be 
difficult to decipher as the parties differ on underlying sales 
figures – but rather the lack of competition among products and 
consumer confusion.  Albion also points to durability, quality, 
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goodwill, and other alternative factors that may explain 
customers’ purchase decisions.  There are no apples-to-apples 
comparisons for the Court to make here, but rather oranges and 
bananas and pears.  In this cornucopia of data sets and 
competing contentions, the Court concludes that Albion has met 
most, but not all, of its heavy burden. 
The Court first notes that the opinions of Lesovitz and 
Margolin start at different points.  While Lesovitz’s report 
begins with total revenue of $31,811,390, (ECF 446-1 at 4), 
Margolin’s report references sales up to $21.7 million and 
exhibit F(a) tallies net sales totaling a maximum of $16,571,646 
for all Albion imported caulking guns deemed by Newborn to be 
competitive, (426-1 at 28, 45).  This discrepancy is 
attributable in part but not in whole to Margolin’s assumption 
that the disgorgement period concluded on December 31, 2012 due 
to Albion’s corrective actions, (id. at 5), while Lesovitz 
calculated revenues through 2015, (ECF 446-1 at 23).4   
 
4 Following trial, Albion sought to strike Lesovitz’s rebuttal 
testimony.  (ECF 452).  Lesovitz’s rebuttal testimony focused on 
the materiality of discrepancies in data sets from an accounting 
perspective.  (2023 Trial Tr., Lesovitz at 417:6-20, 419:1 to 
420:2).  Though these discrepancies may help explain, in part, 
the differences in the parties’ starting figures, the Court has 
not considered the materiality of data discrepancies in its 
analysis, believes that the disgorgement sum below is equitable 
in light of the parties’ multiple competing contentions – 
including competing starting figures, and would be inclined – in 
exercising its discretion under 15 U.S.C. § 1117(a) – to adjust 
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The Court finds some logic in Margolin’s delineation.  
While, as will be explained below, the Court concludes that 
market confusion persists – largely in the form of legacy 
products – testimony at trial indicated that by the end of 2012, 
Albion took corrective measures with respect to the labeling of 
its products, (2017 Trial Tr., Becker at 988:25 to 989:3, 
989:17-22, 990:17-23, 992:15 to 994:15), and Newborn’s sales 
shot up in 2012 following the filing of the instant lawsuit and 
related notice to customers, (2017 Trial Tr., Lee at 372:3-16). 
From these uneven beginnings, Margolin’s analysis proceeds 
along a “process of exclusion,” (2023 Trial Tr., Margolin at 
200:23-24), whereby alleged lack of competition and consumer 
confusion whittle profits subject to disgorgement down to 
anywhere from $0 to $2.15 million with several intermediate 
levels in between, (ECF 426-1 at 28-31).  With respect to lack 
of confusion, Margolin posits that repeat purchasers of Albion 
B-line caulking guns – defined as customers who purchased a B-
line gun during two or more separate years – were made aware of 
the guns’ Taiwanese origin by way of a stamp, sticker, or 
hangtag and thus any subsequent purchase was made for reasons 
 
a larger sum downward.  Therefore, to the extent that Albion 
contends that Lesovitz’s rebuttal testimony was improper as it 
did not rebut any new matter or new theories, the Court will 
deny the request as moot because the testimony did not bear on 
the Court’s decisions as articulated in this opinion.   
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unrelated to country of origin, (id. at 18-20; 2023 Trial Tr., 
Margolin at 234:25 to 235:10).  Excluding such customers, 
according to Margolin’s model, reduces applicable net sales to 
$1,430,710 for Albion-label products and $183,717 for private-
label products.  (ECF 426-1 at 45; 2023 Trial Tr., Margolin at 
236:3-12).5 
The Court is persuaded by this reasoning.  The Court did 
not seek to imply a “natural corollary,” (ECF 426-1 at 18), when 
it noted in its 2020 opinion that customers reviewing a catalog 
or website may not encounter press releases or blog posts 
stating that B-line guns were made in Taiwan – and even in that 
very paragraph concluded that “in looking at the entire context 
of Albion’s messages . . . these statements remain literally 
false or misleading,” (ECF 363 at 80).  Nonetheless, it is 
logical to the Court that a customer who purchased a B-line gun 
would have been placed on notice of its foreign manufacture 
between their initial purchase and a subsequent one made a year 
 
5 Margolin’s testimony, (2023 Trial Tr., Margolin at 234:25 to 
236:12), and Albion’s proposed statement of facts, (ECF 455 at ¶ 
177 (quoting DTX-350)), both refer to a starting figure of 
approximately $9.8 million for Albion-label products, which 
differs from the starting figure of $10,253,688 in Exhibit F(a) 
of the report placed on the docket for Newborn’s motion in 
limine and which the Court cites in this opinion, (ECF 426-1 at 
45).  Relevantly, both versions conclude that $1,430,710 in net 
sales remain after excluding repeat B-line purchases.  (Id.; ECF 
455 at ¶ 177).   
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or more later.  Hippen acknowledged the same during the Court’s 
evidentiary hearing.  (2023 Evid. H’rg Tr., Hippen at 59:21 to 
60:22).  Therefore, in the Court’s view, the subsequent 
purchases show a disregard for country of origin as a deciding 
factor. 
Margolin next seeks to exclude sales from Albion caulking 
guns that were deemed to not be economically competitive with 
Newborn products, which would further push relevant net sales 
down to $122,443 for Albion-label guns and $62,884 for private-
label guns.  (ECF 426-1 at 45).  These exclusions are premised 
on anecdotal trial testimony indicating that customers would be 
willing to pay up to fifteen percent more for American-made 
products, thus any purchases of Albion products priced above 
fifteen percent cannot be attributed to country-of-origin 
preference.  (Id. at 16-18; 2023 Trial Tr., Margolin at 249:21 
to 250:19).  Margolin’s exclusions were limited to Albion guns 
priced fifteen percent or more above Newborn products, Albion 
guns priced anywhere below Newborn guns remain.  (2023 Trial 
Tr., Margolin at 284:10-21). 
The Court is unpersuaded by Albion’s economic-
competitiveness argument, which relies heavily on trial 
testimony acknowledged – but not adopted – in the Court’s 2020 
opinion.  (ECF 363 at 39; 2023 Trial Tr., Margolin at 249:21 to 
250:4).  There is no dispute that country of origin is just one 
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of a variety of factors that may lead a customer to purchase one 
caulking gun over another, but it is also clear that Albion saw 
value in representing itself as an American manufacturer and 
sought to distinguish itself from competitors, particularly 
Newborn, on that basis. (2017 Trial Tr., Glass at 905:13-24; 
2017 Trial Tr., Reynolds at 1584:14 to 1585:2, 1802:12 to 
1803:14).  Finding for Albion on this issue would risk, at least 
in some instances, unjustly giving Albion the benefit of 
excluding relevant products based on markups. 
Having concluded that Albion has failed to meet its burden 
in excluding these sales, the Court exercises its discretion in 
fashioning an appropriate remedy.  See Zinn v. Seruga, No. 05–
3572, 2009 WL 3128353, at *33-34 (D.N.J. Sept. 28, 2009); see 
also CPC Props., Inc. v. Dominic, Inc., No. 12–4405, 2013 WL 
5567584, at *5 (E.D. Pa. Oct. 9, 2013) (“Courts have 
considerable discretion in fashioning an appropriate remedy 
under § 1117.”).  Here, while factors beyond country of origin 
are relevant in purchasing decisions, the Court finds no 
definitive evidence quantifying the value of American 
manufacture.  In that dearth, the Court declines to further 
subtract from relevant sales, concluding that such ambiguity 
most appropriately favors Newborn.  See Banjo Buddies, 399 F.3d 
at 178 (“Even if Banjo Buddies receives a windfall in this case 
– which, as discussed in the previous paragraph, is impossible 
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for this court to determine – it is preferable that Banjo 
Buddies rather than Renosky receive the benefits of Renosky’s 
infringement.” (citing Mishawaka Rubber & Woolen Mfg. Co., 316 
U.S. at 206–07)); Keurig, Inc., 2013 WL 633574, at *2 (“In 
placing the burden on the infringer to prove any proportion of 
its total profits which may not be attributed to wrongful 
conduct, § 35(a) errs on the side of giving a windfall to the 
aggrieved party, rather than to the wrongdoer.” (citing 
Mishawaka Rubber & Woolen Mfg. Co., 316 U.S. at 206)). 
The Court further declines to exclude private-label sales 
from the disgorgement figure.  Exclusion of private-label sales 
is based on the premise that “Albion’s private label sales, by 
definition, did not carry the Albion label and therefore could 
not benefit from the actionable statements.”  (ECF 426-1 at 20).  
The Court is unable to find that Albion’s private-label sales 
are divorced from the same or similar cultivation of a 
reputation as an American manufacturer as referenced above.  The 
Court further credits trial testimony from Lee that some 
private-label customers wish to market their products as 
American-made and private-label guns are sometimes co-branded 
with the original manufacturer.  (2023 Trial Tr., Lee at 82:7 to 
83:22).  In the face of uncertainty as to the influence of 
Albion’s cultivated reputation, co-branding, and a history of 
Albion mislabeling private-label guns, the Court concludes that 
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any potential windfall should favor Newborn.  See Banjo Buddies, 
399 F.3d at 178.  Therefore, the Court will combine Margolin’s 
figures for Albion-label and private-label sales for a total of 
$1,614,427. 
Finally, Margolin’s analysis calculates potential 
disgorgement at thirteen percent of identified net sales
, in 
this case $209,875.  (ECF 426-1 at 45).  This deduction again 
relies on the premise that a customer will pay no more than a 
fifteen-percent premium for American-made products and a 
fifteen-percent markup equates to a thirteen-percent profit 
margin.  (Id. at 25, 25 n.42; 2023 Trial Tr., Margolin at 242:23 
to 243:7).  The Court, as stated above, is unpersuaded by a 
bright-line, fifteen-percent cutoff.  Further, it concludes that 
it would be inequitable to permit Albion to keep eighty-seven 
percent of the remaining net sales.  See Banjo Buddies, 399 F.3d 
at 177-78 (rejecting the infringer’s argument that the plaintiff 
was entitled to only the percentage of profits it would have 
received under a contract, concluding that “[a]llowing Renosky 
to keep half the estimated profits of his infringing activities 
would not serve the Congressional purpose of making infringement 
unprofitable – Renosky would be unjustly enriched and other 
would-be infringers would be insufficiently deterred”). 
This leaves the Court at a total disgorgement figure of 
$1,614,427.  The Court will further grant injunctive relief 
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below.  Thought it recognizes that disgorgement is inappropriate 
when an injunction suffices, see Kars 4 Kids Inc., 8 F.4th at 
223, the Court finds that disgorgement is necessary here to 
balance the effects of Albion’s offending conduct, see Sabinsa 
Corp., 2011 WL 3236096, at *8 (disgorging profits despite 
finding that an injunction may have been sufficient upon a 
finding that a likelihood of confusion existed, a presumption of 
diversion of sales arose, and the infringer failed to overcome 
that presumption).  The sum of $1,614,427 is an appropriate 
approximation of the equities as well as the considerations to 
be balanced, including Albion’s failure to meet its burden as to 
costs, the differing starting sales figures, the undetermined 
value of American-made designations and reputations, and the 
varied branding of private-label guns.  Disgorgement sums are to 
serve as compensation as opposed to a penalty, 15 U.S.C. § 
1117(a), and the Court would be inclined to exercise its 
discretion in adjusting to a higher or lower recovery if met 
with a significantly greater or lesser figure, see Darius Int’l, 
Inc. v. Young, No. 05-6184, 2008 WL 1820945, at *53 (E.D. Pa. 
Apr. 23, 2008) (“The Court has wide discretion to fashion an 
equitable remedy and may increase or decrease the damages award 
as equity requires.”).   
The Court will similarly decline to enhance the sum.  
Newborn notes that recoveries may be enhanced pursuant to 15 
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U.S.C. § 1117 when recovery is inadequate or to deter further 
willful violations.  (ECF 454 Law at ¶¶ 28-31).  Deterrence, 
however, cannot serve as the basis for an enhancement.  See Kars 
4 Kids Inc., 8 F.4th at 224 n.22.  Further, as described above, 
the Court finds $1,614,427 to be an adequate remedy and that 
enhancement would risk constituting an impermissible penalty.  
See Avco Corp., 659 F. Supp. 3d at 507 (“[C]ourts must be 
careful in enhancing damages, ‘because granting an increase 
could easily transfigure an otherwise-acceptable compensatory 
award into an impermissible punitive measure.’” (quoting Kars 4 
Kids Inc., 8 F.4th at 224)).   
Finally, Newborn asserts that it is entitled to prejudgment 
interest.  (ECF 454 Law at ¶¶ 44-45).  Pursuant to the New 
Jersey Rules of Court, courts shall “include in the judgment 
simple interest . . . from the date of the institution of the 
action or from a date 6 months after the date the cause of 
action arises, whichever is later” for tort actions.  N.J. Ct. 
R. 4:42-11(b).  Interest calculations are made at “the average 
rate of return, to the nearest whole or one-half percent, for 
the corresponding preceding fiscal year terminating on June 30, 
of the State of New Jersey Cash Management Fund” with a two-
percent per-annum increase for judgments exceeding the monetary 
limit of the Special Civil Part of $20,000, see N.J. Ct. R. 
4:42-11(a)(ii)-(iii), (b); see also  N.J. Ct. R. 6:1-
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2(a)(1)(stating that matters cognizable in the Special Civil 
Part include civil actions “seeking legal relief when the amount 
in controversy does not exceed $20,000”).  Common-law unfair 
competition is a tort, see ADP, LLC v. Kusins, 215 A.3d 924, 951 
(N.J. Super. Ct. App. Div. 2019), and prejudgment interest is 
awarded as a matter of right in tort actions, DC Plastic Prods. 
Corp. v. Westchester Surplus Lines Ins. Co., No. 17-13092, 2022 
WL 17129205, at *2 (D.N.J. Nov. 22, 2022).  Disgorgement is an 
available remedy in New Jersey unfair competition claims.  See 
Avaya Inc., RP v. Telecom Labs, Inc., 838 F.3d 354, 387-88 (3d 
Cir. 2016). 
Despite reference to prejudgment interest in Lesovitz’s 
report, (ECF 446-1 at 30), and Newborn’s closing, (2023 Trial 
Tr. at 454:23 to 455:2), prejudgment interest is not referenced 
in Albion’s proposed findings of fact or conclusions of law.  
Margolin’s report expressly states a lack of basis to opine on 
the applied rate or compounding methodology.  (ECF 426-1 at 27-
28).  The Court will therefore include prejudgment interest 
totaling $533,577.00.
6 
 
6 The Court calculates prejudgment interest by multiplying the 
$1,614,427 disgorgement sum by the applicable interest rate plus 
two percent.  See Promotion in Motion, Inc. v. Beech-Nut 
Nutrition Corp., No. 09–1228, 2012 WL 5045135, at *4 n.3 (D.N.J. 
Oct. 17, 2012); Atl. City Assocs., LLC v. Carter & Burgess 
Consultants, Inc., No. 05–3227, 2010 WL 1371938, at *3 (D.N.J. 
Mar. 31, 2010); see also N.J. Ct. R. 4:42-11(a)(ii)-(iii)  
(stating that interest is to be calculated to the nearest whole 
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This places the final sum to be awarded to Newborn at 
$2,148,004.  Newborn has further expressed its intention to seek 
attorney’s fees.  (ECF 464 Law at ¶¶ 4, 46-47).  The Lanham Act 
provides that reasonable attorney’s fees may be awarded to a 
prevailing party “in exceptional cases,” 15 U.S.C. § 1117(a), 
which may be found “when (a) there is an unusual discrepancy in 
the merits of the positions taken by the parties or (b) the 
losing party has litigated the case in an ‘unreasonable 
manner,’” Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 315 
(3d Cir. 2014) (quoting Octane Fitness, LLC v. ICON Health & 
Fitness, Inc., 572 U.S. 545, 554 (2014)).  This standard is a 
high one where, as here, the parties have engaged in twelve 
years of contentious, hard-fought litigation and have each 
obtained favorable rulings.  See Kern v. Med. Protective Co., 
 
or half percent of the average rate of return of the preceding 
State of New Jersey Cash Management Fund plus two percentage 
points for judgments exceeding the monetary limit of the Special 
Civil Part); Post-Judgment and Pre-Judgment Interest Rates, N.J. 
Courts, https://www.njcourts.gov/sites/default/files/courts/ 
civil/postprejudgmentrates.pdf (last visited on Feb. 28, 2024) 
(setting rates).  Rounding to the nearest half percent, interest 
totals amount to $25,032.44 (2.5 percent interest) for the 227 
days in 2012 following the filing of the complaint; $40,360.68 
per year (2.5 percent interest) for 2013, 2014, 2015, 2016, 
2017, 2018, 2022, and 2023; $56,504.95 per year (3.5 percent 
interest) for 2019 and 2021; and $72,649.22 (4.5 percent 
interest) for 2020.  The Court declines to add additional 
interest for 2024 as the parties submitted final briefing on 
January 2, 2024 and did not contribute to any delay in rendering 
this decision.  Applicable prejudgment interest thus totals 
$533,577.00. 
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Inc., No. 13-02286, 2019 WL 2265330, at *2-4 (D.N.J. May 28, 
2019) (concluding that factual arguments were made in good faith 
and that, while discovery featured numerous related opinions and 
orders, neither party “resorted to wasteful procedural or 
dilatory tactics that would make th[e] matter exceptional”);  
Engage Healthcare Commc’ns, LLC v. Intellisphere, LLC, No. 12-
787, 2019 WL 1397387, *4-5, 7 (D.N.J. Mar. 28, 2019) (finding 
that the parties’ protracted, contentious family-business 
dispute did not meet the exceptional standard).  
The Court will therefore direct Newborn to make an 
application on the docket for attorney’s fees within thirty days 
of the issuance of this opinion and accompanying order and 
provide Albion thirty days to file an opposition.  The Court 
will withhold entry of judgment until it renders a decision on 
the forthcoming application for attorney’s fees. 
B. Injunctive Relief 
The Court makes the following findings of fact relevant to 
Newborn’s request for injunctive relief. 
• In 2012, Albion’s counsel presented United States Customs 
and Border Protection with multiple manufacturing scenarios 
to determine under which scenarios products need not be 
marked “Made in Taiwan,” to which Customs approved one 
presented scenario.  (PTX-123; 2023 Evid. Hr’g Tr., 
Schneider at 442:20 to 444:4).  In that approved scenario, 
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Scenario A, “[t]he handle, trigger, barrel, and barrel lock 
ring are imported and assembled with the other U.S. 
components.”  (PTX-123 at 2; 2023 Evid. Hr’g Tr., Schneider 
at 444:11-23). 
• Scenario A was distinguished from Scenario B, which was not 
approved and included using imported square rods with 
threaded ends as well as an imported hinge pin and T-pull.  
(PTX-123 at 2, 5-6; 2023 Evid. Hr’g Tr., Schneider at 
449:10-18).  Schneider further distinguished the process in 
Scenario B, in which rod is threaded in Taiwan, and a 
process in which bar stock is threaded and completed in the 
United States.  (2023 Evid. Hr’g Tr., Schneider at 448:19 
to 449:1).  Schneider testified that he did not consider 
rods to be imported when they are cut to length and 
threaded in the United States.  (Id. at 453:1-15). 
• On June 25, 2019, Newborn received a ruling from United 
States Customs and Border Protection on a proposed scenario 
in which steel rods imported from Taiwan were “cut to 
lengths ranging between 18 and 24 inches, threaded at both 
ends, stamped to make a small concave indent, and treated 
with black oxide for corrosion resistance.”  (PTX-2073).  
Customs concluded that such a process “does not constitute 
a substantial transformation” and “the country of origin is 
Taiwan for marking purposes.”  (Id. at 3).  Lee testified 
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that Newborn sought this and other rulings for 
clarification following the liability phase of trial.  
(2023 Evid. Hr’g Tr., Lee at 203:2 to 204:18). 
• Newborn ceased placing markings on B-line guns representing 
Albion’s eighty-year history of American manufacture 
following the filing of the instant lawsuit in 2012.  (2017 
Trial Tr., Schneider at 2549:22 to 2550:17; 2023 Evid. Hr’g 
Tr., Schneider at 328:21-25).   
• A December 2012 change notice stated that “[t]he existing 
number 500-427 and 500-428 point of purchase labels used on 
the B12, B12Q, B26 and B26Q tools is illegal in regards to 
all country of origin regulations,” a “Made in Taiwan” 
label was added to handles, and that label was later 
replaced by a stamp on the recoil plate.  (2017 Trial Tr., 
Becker at 988:8 to 994:15; 2017 Trial Tr., Schneider, 
2602:4-15). The change notice also instructed the deletion 
of point-of-purchasing labeling for several B-line guns.  
(2017 Trial Tr., Becker at 1252:12-19). 
• Albion guns stamped or otherwise marked to indicate 
American manufacture are presently displayed across the 
country.  These include a B-line gun labeled with “75 Year 
History - USA Manufacturer & Designer,” another caulking 
gun stamped “ALBION ENG. CO., PHILA., PA U.S.A.,” and a 
bulk gun with a “Made in USA” label on display in Anaheim, 
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California in August 2023, (PTX-2055A; PTX-2055B; PTX-
2055C); a gun stamped “ALBION ENG. CO., PHILA., PA, U.S.A.” 
on display in Portland, Oregon in August 2023, (PTX-2071); 
a cutaway of a gun stamped with “ALBION ENG. CO., PHILA., 
PA, U.S.A.” on display in Oklahoma City, Oklahoma in August 
2023, (PTX-2099); a caulking gun with a “Made in USA” label 
on display in Orlando, Florida in September 2023, (PTX-
2051); and a cutaway of a gun stamped with “ALBION ENG. 
CO., PHILA, PA, U.S.A.” on display in Memphis, Tennessee in 
September 2023, (PTX-2053). 
• One of Albion’s distributors, Schroeder Log Homes, 
continued to advertise a B-line gun as American made until 
October 2023.  (PTX-2063; 2023 Evid. Hr’g Tr., Schneider at 
320:25 to 321:24).  Further, an Albion catalogue from 
approximately 2009 accessible on the website of distributor 
Best Materials showed Albion guns featuring markings 
stating “75 Year History – USA Manufacturer & Designer” and 
otherwise referred to Albion as “a third generation 
American manufacturer.”  (PTX-2068; PTX-2068A; 2023 Evid. 
Hr’g Tr., Lee at 251:11 to 253:3; 2023 Evid. Hr’g Tr., 
Schneider at 413:18 to 415:2). 
• As of December 6, 2023, an imagine of a B-line gun bearing 
a “80-year history U.S. manufacturer” label was displayed 
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on the mobile version of Albion’s website.  (2023 Evid. 
Hr’g Tr., Schneider at 456:9 to 457:22).   
In its proposed findings of fact and conclusion of law, 
Albion argues that permanent injunctive relief is unnecessary 
due to its efforts to rectify any previously improper labeling 
and phase-out inaccurate or misleading marketing materials with 
blanket references to American manufacture.  (ECF 455-1 at ¶¶ 
33-41).  The Court’s 2020 opinion concluding that injunctive 
relief is appropriate was based on evidence available as of 
September 2017 as opposed to current practices, according to 
Albion, and Newborn’s current request for injunctive relief 
based on Albion’s current practices is unwarranted.  (Id. at ¶¶ 
42-51).  Newborn argues in response that evidence presented 
during evidentiary hearings in November and December 2023 showed 
that inaccurate or obsolete materials continue to appear on 
displays and point-of-sale locations and proposes several 
corrective injunctive measures.  (ECF 454 Law at ¶¶ 32-38). 
“Under the Lanham Act, an injunction is a ‘usual and 
standard remedy
’ and ‘the common historical practice has been 
that a prevailing plaintiff in a case of . . . false advertising 
will ordinarily receive injunctive relief of some kind.’”  
Bracco Diagnostics, Inc., 627 F. Supp. 2d at 479 (omission in 
original) (quoting 5 J. Thomas McCarthy, Trademarks & Unfair 
Competition § 30:1 (4th ed. 2006)).  As stated above, a 
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plaintiff seeking a permanent injunction must demonstrate that 
they have suffered an irreparable injury, remedies at law are 
inadequate, an equitable remedy is warranted after balancing the 
parties’ respective hardships, and the public interest will not 
be disserved by the permanent injunction.  E.A. Sween Co., Inc., 
19 F. Supp. 3d at 576.   
Though, in the Court’s research, the substantial majority 
of relevant authorities have involved injunctions enjoining 
infringement of a plaintiff
’s mark, injunctions related to 
country of origin have been issued within this Circuit.  See 
Freddy S.p.A. v. Kalai, No. 20-628, 2022 WL 1411690, at *3 (D. 
Del. Apr. 28, 2022), report and recommendation adopted, 2022 WL 
2915765 (D. Del. July 25, 2022) (recommending that the district 
court grant the plaintiff’s motion for entry of default judgment 
and issue a permanent injunction enjoining the defendants from 
“falsely claiming that products sold on the Defaulting 
Defendants’ website were ‘made in the USA’”); see also 15 U.S.C. 
§ 1116(a) (“The several courts vested with jurisdiction of civil 
actions arising under this chapter shall have power to grant 
injunctions . . . to prevent a violation under subsection (a), 
(c), or (d) of section 1125 of this title.”). 
The Court, in its August 2020 opinion, held that Newborn 
established its entitlement to injunctive relief.  (ECF 363 at 
102).  In so holding, the Court considered the relevant facts 
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and concluded that Newborn would be irreparably harmed without 
an injunction as Albion’s American-made claims placed Newborn at 
a competitive disadvantage, granting an injunction would not 
cause greater harm to Albion, and that updated and accurate 
country-of-origin information served the public interest.  (Id. 
at 103-04).  Albion now argues that that was then and this is 
now.  However, in revisiting the relevant factors and hearing 
the most recent evidence, the Court finds Albion’s efforts to 
use time as a means of preventing injunctive relief to be 
unavailing. 
First, the Court concluded in its August 2020 opinion that 
Albion was liable for violating the Lanham Act.  (
Id. at 108); 
see also Howard v. Laws, No. 13–0957, 2014 WL 3925536, at *8 
(D.N.J. Aug. 12, 2014) (concluding that the plaintiff 
demonstrated irreparable injury based on violations of the 
Lanham Act).  Specifically, the Court concluded that Albion’s 
repeated claims that its products were made in America were 
“closely related to competitive superiority in the dispensing 
gun market” and some customers refused to consider purchasing 
from Newborn even though neither Newborn nor Albion manufactured 
all of their products in the United States.  (ECF 363 at 103).  
Injury was not presumed in the Court’s earlier opinion, (id.), 
and is not presumed now.  In so finding, the Court has weighed 
Albion’s position that it has proactively sought to correct and 
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phase-out representations of American manufacturer, does not 
make blanket statements about products’ origin, does not mark 
products “Made in USA” even when manufactured entirely in 
America, and has relied upon and complied with the 2012 Customs 
ruling.  (ECF 455-1 at ¶¶ at 35-42).   
Ultimately, however, the Court is unpersuaded that Albion’s 
2012 Customs ruling is “specific to its practices,” (id. at ¶ 
57), which only approved of a scenario in which “the handle, 
trigger, barrel, and barrel lock ring are imported and assembled 
with the other U.S. components,” (PTX-123 at 2, 5-6).  Schneider 
testified that he did not consider rods to be imported when they 
are cut to length and threaded domestically, distinguishing that 
process from the disapproved Scenario B in which a rod is 
threaded in Taiwan.  (2023 Evid. Hr’g Tr., Schneider at 448:19 
to 449:1, 453:1-15).   
Though the Court does not accept the June 2019 ruling 
obtained by Newborn as per se evidence that Albion’s practices 
do not comport with the approved Scenario A, it certainly points 
in that direction.  This leads, in turn, to a reasonable 
conclusion that Albion has intentionally foregone a subsequent, 
clarifying ruling, choosing instead to forego any country-of-
origin markings at all.  While Albion portrays that decision as 
conservative and benign, it must be juxtaposed with the other 
evidence in the record that Made-in-America misrepresentations 
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persist in the marketplace.  The record contains more than 
sufficient examples of recent displays featuring products marked 
in such a way as to indicate American manufacture, (PTX-2051; 
PTX-2053; PTX-2055A; PTX-2055B; PTX-2055C; PTX-2071; PTX-2099), 
continued representations of the American manufacture of Albion 
products on third-party websites, (PTX-2063; PTX-2068; PTX-
2068A), and an image of a B-line gun with a “80-year history 
U.S. manufacturer” label on the mobile version of Albion’s 
website, (2023 Evid. Hr’g Tr., Schneider at 456:9 to 457:22). 
The Court therefore finds that despite Albion’s corrective 
efforts, the harms caused by its violative conduct remain 
imminent to the extent that they are ongoing.  See Tri-Union 
Seafoods, LLC v. Ecuatorianita Imp. & Exp. Corp., No. 20-9537, 
2021 WL 1541054, at *9 (D.N.J. Apr. 20, 2021); see also Meenaxi 
Enter., Inc. v. Shakti Grp. USA LLC, No. 22-7383, 2023 WL 
7181433, at *11 (D.N.J. Nov. 1, 2023) (“[T]here is irreparable 
harm based on the potential for continued infringement.”). 
Second, the Court finds that Newborn has adequately 
demonstrated
, through the persistent presence of these 
representations, that the remedies available at law are 
inadequate.  “Monetary damages . . .  cannot . . . prevent 
future trademark infringement.”  Cosmetic Warriors Ltd. v. 
Nailush LLC, No. 17–1475, 2017 WL 5157390, at *8 (D.N.J. Nov. 6, 
2017).  Similarly, while the disgorgement sum seeks to account 
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for profits received to date, it cannot and will not protect 
against continuing violative conduct.  See CrossFit, Inc. v. 2XR 
Fit Sys., LLC, No. 2:13–1108, 2014 WL 972158, at *10 (D.N.J. 
Mar. 11, 2014); see also Monster Energy Co. v. Vital Pharms., 
Inc., No. EDCV 18-1882, 2023 WL 2918724, at *6 (C.D. Cal. Apr. 
12, 2023) (rejecting the defendants’ argument that advertising 
was not continuous due to new labeling and advertising and that 
the harm of legacy products would soon be phased out).  The 
inadequacy of compensation for past harm is all the more 
apparent, in the Court’s view, in light of the continuing 
misrepresentations and lack of clarity in the market despite 
Albion’s assertion that it has engaged in corrective efforts for 
more than a decade. 
Third, the Court finds that the balance of equities favors 
Newborn.  It concludes that
, without an injunction, inaccurate 
and misleading products, displays, and advertisements will 
persist within the market.  This conclusion is supported by the 
fact that such representation have continued, including on 
Albion’s own mobile website, despite this action being filed 
nearly twelve years ago and Albion’s purported immediate 
corrective actions.  See Rolls-Royce Motor Cars Ltd. v. Davis, 
No. 15-0417, 2016 WL 3913640, at *10 (D.N.J. Mar. 11, 2016) 
(noting that the defendant continued infringement after being 
notified of the plaintiffs’ marks); Howard, 2014 WL 3925536, at 
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*9 (same).   
The Court appreciates that the cost associated with 
compliance with an injunction will be compounded by the 
disgorgement sum awarded.  It concludes, however, that Albion 
cannot claim that it will be harmed by an injunction “since it 
brought any and all difficulties occasioned by the issuance of 
an injunction upon itself.”  See Coach, Inc. v. Bag Place, Co., 
No. 10-6226, 2012 WL 13028160, at *8 (D.N.J. May 7, 2012) 
(quoting Opticians Ass’n. of Am. v. Indep. Opticians of Am., 920 
F.2d 187, 197 (3d Cir. 1990)). 
Finally, the Court holds that the public interest would not 
be disserved by issuance of a permanent injuncti
on.  To the 
contrary, an injunction would benefit the public by eliminating 
continued confusion in the marketplace.  See Hayward Indus., 
Inc. v. Saltwater Pool Supplies, No. 20-6105, 2021 WL 1940711, 
at *15 (D.N.J. May 14, 2021); Tri-Union Seafoods, LLC, 2021 WL 
1541054, at *9. 
Therefore, the Court will grant the following injunctive 
relief: 
First, within ninety days of the date of this opinion and 
accompanying order, Albion shall mail a letter and a copy of the 
order to each distributor it has sold a caulking gun to within 
the past five years.  The letter shall state that it is acting 
pursuant to an order from this Court and request that any 
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samples, displays, or other materials referencing “Phila. PA.” 
or referring to Albion caulking guns being “Made in USA” be 
returned.  Albion must remove from the inventory of its 
distributors any B-line guns that bear markings describing 
Albion’s history as an American manufacturer.  Albion shall 
offer to replace any returned materials at its own cost. 
Second, to each distributor Albion mails the above-
referenced letter and order, Albion shall also provide notices – 
printed on durable cardboard or plastic and sized eight inches 
by ten inches or larger – to be displayed at each location at 
which Albion products are displayed and which shall state: 
 
NOTICE REGARDING COUNTRY OF ORIGIN OF ALBION 
ENGINEERING CAULKING GUN PRODUCTS 
 
A judge of the United States District Court for the 
District of New Jersey has ruled that Albion 
Engineering Corp. has previously misrepresented that 
certain products were “Made in USA,” through product 
mismarking and statements in advertising, promotional 
materials, websites, and to customers.  Newborn 
Brothers Co. Inc. v. Albion Engineering Co., No. 12-
Civ-2999 (NLH). 
 
The Court has ordered Albion to comply with all 
applicable country-of-origin marking and disclosure 
requirements.  The Court has ordered Albion to provide 
to its distributors copies of this notice so that they 
may be displayed at all distributor sales locations. 
 
Third, within 120 days of the date of this opinion and 
accompanying order, Albion shall file on the docket a list of 
distributors the letters, orders, and notices were sent to; the 
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date they were sent; and the number of notices sent to each 
distributor. 
Finally, until such time that Albion seeks and receives 
confirmation from United States Customs and Border Protection as 
to the marking requirements of its specific manufacturing 
processes, the packaging of each Albion caulking gun with any 
foreign component shall list each component of the caulking gun 
and its country of origin.  
IV. Conclusion 
For the reasons stated above, the Court will grant a 
permanent injunction and disgorge Albion’s profits totaling 
$2,148,004.  Newborn shall apply for an award of attorney’s fees 
within thirty days of this opinion and accompanying order and 
Albion shall file an opposition within thirty days thereafter. 
An order consistent with this opinion will be entered. 
 
Date: February 29, 2024    s/ Noel L. Hillman      
At Camden, New Jersey   NOEL L. HILLMAN, U.S.D.J. 
 
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