Filed: May 29, 2014
Latest Update: May 29, 2014
Summary: STIPULATED PERMANENT INJUNCTION BEVERLY REID O'CONNELL, District Judge. Plaintiffs Trendsettah USA, Inc., Trendsettah, Inc., and Akrum Alrahib (collectively "Plaintiffs") and defendants J A Tobacco Corp. and LLBJ Corporation (collectively "Defendants") stipulate as set forth below to the entry of this Permanent Injunction: FINDINGS 1. This Court has jurisdiction of the subject matter of this action and the parties hereto; 2. Plaintiffs filed a Complaint for Federal Trademark and Trade Dres
Summary: STIPULATED PERMANENT INJUNCTION BEVERLY REID O'CONNELL, District Judge. Plaintiffs Trendsettah USA, Inc., Trendsettah, Inc., and Akrum Alrahib (collectively "Plaintiffs") and defendants J A Tobacco Corp. and LLBJ Corporation (collectively "Defendants") stipulate as set forth below to the entry of this Permanent Injunction: FINDINGS 1. This Court has jurisdiction of the subject matter of this action and the parties hereto; 2. Plaintiffs filed a Complaint for Federal Trademark and Trade Dress..
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STIPULATED PERMANENT INJUNCTION
BEVERLY REID O'CONNELL, District Judge.
Plaintiffs Trendsettah USA, Inc., Trendsettah, Inc., and Akrum Alrahib (collectively "Plaintiffs") and defendants J A Tobacco Corp. and LLBJ Corporation (collectively "Defendants") stipulate as set forth below to the entry of this Permanent Injunction:
FINDINGS
1. This Court has jurisdiction of the subject matter of this action and the parties hereto;
2. Plaintiffs filed a Complaint for Federal Trademark and Trade Dress Infringement, Federal Unfair Competition, and California Unfair Competition (the "Complaint") on June 11, 2013 against Defendants;
3. Plaintiffs are the owners of the protectable SPLITARILLOS mark, which is registered with the United States Patent and Trademark Office for use on cigars (Registration No. 4002691) on July 26, 2011;
4. Plaintiffs have a protectable trade dress in their SPLITARILLOS products;
5. "SPLITARILLOS Trade Dress" refers to the trade dress of Plaintiffs' SPLITARILLOS products, and includes but is not limited to: use of a zipper design on the package; use of the phrase "fresh and new" in black lettering on a yellow ribbon on the package; use of "3 CIGARS FOR 99¢ + TAX" in black lettering on a yellow banner; use of a brightly colored package representing the flavor of the product with prominent use of the word SPLITARILLOS in white lettering; and use of a logo of an eagle with spread wings within a circle;
6. Plaintiffs have invested substantial resources in establishing, advertising, and maintaining a preeminent reputation throughout the United States and Southern California for their SPLITARILLOS products;
7. J A Tobacco Corp. filed an application with the United States Patent and Trademark Office for the Ziparillos mark for use with tobacco and related products (Serial No. 85795254) on December 5, 2012;
8. At the time suit was filed, Defendants were producing, distributing, and marketing Ziparillos products;
9. The parties have reached a settlement of their disputes which settlement includes a stipulation to the relief sought as set forth herein.
PERMANENT INJUNCTION
Defendants J A Tobacco Corp. and LLBJ Corporation (collectively "Defendants") and each of their respective officers, agents, employees, representatives, and all persons acting in concert with or participating with them, including all distributors and manufacturers, are hereby permanently restrained and enjoined from performing directly or indirectly any and all of the following acts worldwide:
a. Producing, manufacturing, distributing, selling, importing, marketing, promoting, or advertising any tobacco product that uses the name "Ziparillos" or any other names confusingly similar to Plaintiffs' SPLITARILLOS name and mark;
b. Producing, manufacturing, distributing, selling, importing, marketing, promoting, or advertising any tobacco product that uses Plaintiffs' SPLITARILLOS Trade Dress or that uses any trade dress or product design that is confusingly similar to Plaintiffs'SPLITARILLOS Trade Dress;
c. Advertising, manufacturing, selling, and distributing tobacco products that use any logo, trade name, or trademark confusingly similar to Plaintiffs' SPLITARILLOS name and mark that may be calculated to falsely represent or mislead the services or products to that of SPLITARILLOS or of others that are sponsored by, authorized by, or in any way associated with Plaintiffs;
d. Otherwise unfairly competing with Plaintiffs in the manufacture, sale, offering for sale, distribution, advertising, or promotion of the Ziparillos products;
e. Falsely representing themselves as being connected with Plaintiffs or sponsored by or associated with Plaintiffs or Plaintiffs' SPLITARILLOS products or engaging in any act or business practice that is likely to cause the trade, retailers, and/or members of the purchasing public to believe that Defendants, or any of their products, are associated with Plaintiffs;
f. Using any reproduction, copy, or colorable imitation of any of the SPLITARILLOS Trade Dress or the SPLITARILLOS name and mark in connection with the advertising, promotion, manufacture, sale, and/or distribution of tobacco products; and
g. Assisting, aiding, or abetting any person or business entity in engaging in or performing any of the activities referred to in subparagraphs (a) through (f) above.
For avoidance of doubt, Defendants are ordered to cease all shipments of Ziparillos in their current form.
IT IS SO ORDERED.
