Opinion
No. C 03-01145 WHA.
May 26, 2004
PERMANENT INJUNCTION AND ORDER
Plaintiff CHIMNEY SAFETY INSTITUTE OF AMERICA filed a Complaint for federal trademark infringement, among other causes of action, on December 24, 2003 in this court. Proof of service of the summons and complaint was filed showing service on defendants on February 5, 2004. Thereafter defendants having made no appearance, plaintiff moved for entry of default. A default was entered by this court on March 5, 2004. Thereafter, plaintiff moved for a judgment by default, and an order for a permanent injunction. A hearing on plaintiff's application for default judgment was held on May 20, 2004 before the Honorable William Alsup. James F. Holtz, Esq. appeared for plaintiff, and there was no appearance for defendants.
GOOD CAUSE APPEARING THEREFORE, IT IS HEREBY ORDERED:
1. JEFF ONESON and CHIMNEY KING and its officers, agents, employees, representatives and all persons acting in concert or participating with them and any business entity performing chimney cleaning as "CHIMNEY KING" or in which either CHIMNEY KING or JEFF ONESON has an ownership interest or control (collectively referred to hereinafter as "Defendants") shall be enjoined and restrained from engaging in, committing, performing, directly or indirectly, by any means whatsoever, any of the following acts:
(a) Using the trademarks or servicemarks "Certified Chimney Sweep," "Chimney Safety Institute of America," "Certified Chimney Sweep" or "Certified Chimney Sweep Chimney Safety Institute of America" design or logo in any state of the United States of America or any territory under the jurisdiction of the United States of America, in connection with advertising or marketing their products or services.
(b) Using the marks "Certified Chimney Sweep," "Chimney Safety Institute of America," "Certified Chimney Sweep" or "Certified Chimney Sweep Chimney Safety Institute of America" design or logo, or advertising that any agent, employee or representative of Defendants is a "certified chimney sweep."
2. Defendants, and each of them, shall further be required to do the following to implement compliance with this injunction:
(a) Defendants shall discontinue the use and remove the marks "Certified Chimney Sweep," "Chimney Safety Institute of America," "Certified Chimney Sweep" trademark symbol and "Certified Chimney Sweep Chimney Safety Institute of America," plus the trademark design or logo, under the control and/or utilized by Defendants, and each of them from:
(i) Any and all motor vehicles, product labels, signs, business cards, place cards, banners, or product literature;
(ii) Any and all advertising materials, including but not limited to yellow page or other telephone book advertisements;
(iii) Any and all promotional materials, including brochures, proposals to customers, price lists, and/or invoices from this date forward; and
(iv) Any and all electronic data information, web pages, and internet advertising from this date forward.
(b) From the date of this order forward, Defendants shall discontinue the use of any and all reference to the trademarks of Certified Chimney Sweep, Chimney Safety Institute of America (CSIA), "Certified Chimney Sweep," trademark symbol or "Certified Chimney Sweep Chimney Safety Institute of America" logo, or representing that they employ "certified" chimney sweeps, in connection with the advertising, marketing, or sale of any services provided by Defendants, their agents, servants, and employees.
(c) The fact that Defendants, or any of them, may employ a duly certified chimney sweep shall not affect the operation of this injunction.
3. Defendants and each of them, shall comply with, and complete the removal, and/or undertake all necessary steps for the removal of the trademarks or servicemarks "Certified Chimney Sweep, Chimney Safety Institute of America," "Certified Chimney Sweep," trademark symbol or "Certified Chimney Sweep Chimney Safety Institute of America" design or logo as specified above NO LATER THAN JUNE 15, 2004.
4. This Court shall retain jurisdiction of this case for the purpose of simple enforcement of this Permanent Injunction.
5. Any proceeding before this court to enforce the terms of this Permanent Injunction, shall be resolved by means of a noticed motion without the necessity of filing a new and separate action. The parties to such proceedings will be permitted to submit evidence and memorandum of points and authorities according to the ordinary briefing requirements for a noticed motion as set forth by Federal Rules of Civil Procedure and this court's local rules then in effect. The court may in its discretion allow live testimony or other evidence in addition to any documentary evidence or declarations submitted as part of the noticed motion briefings. The court shall determine whether Defendants or any of them, has violated the terms of this Permanent Injunction pursuant to this definition. A "violation" shall be defined as the failure to comply with paragraphs 1, 2, or 3 above. For the purpose of this paragraph, a "violation" shall not mean each discreet, separate and distinct utterance or act in violation of the injunction, but rather a single violation shall encompass all utterances or acts related to an event, project, transaction, or occurrence, and is not to be determined solely by reference to the number of persons or individual publications involved in the event, project, transaction, or occurrence.
6. Notwithstanding the foregoing, after two (2) years from the date of this order, Chimney King's future owners and employees will be eligible to apply for certification from the Chimney Safety Institute of America. In the event that they are then certified, Chimney King and its owners and employees may use the CSIA or "Certified Chimney Sweep" trademarks or logos, however only in a manner compliant with the CSIA guidelines, in the advertising, marketing or sale of any services provided. However, notwithstanding the foregoing, JEFF ONESON will not be eligible to apply for certification for a period of five (5) years from the date of this order, and is ineligible to use the trademarks and services marks in any business in which he has an ownership interest unless he is CSIA certified.