Opinion
Civil Action 2:21-cv-08511-CBM(GJSx)
04-10-2022
FERRARA CANDY COMPANY, Plaintiff, v. YAUHENIYA LIS, d/b/a GASBUDS, and DOES 1-10, d/b/a/ GASBUDS Defendants
JUDGMENT AND PERMANENT INJUNCTION [13]
CONSUELO B. MARSHALL UNITED STATES DISTRICT JUDGE
The Court, pursuant to the Stipulation for Entry of Judgment and Permanent Injunction, between Plaintiff Ferrara Candy Co. (“Ferrara”) and the Defendant Yauheniya Lis d/b/a GasBuds (“Lis"), hereby ORDERS, ADJUDICATES, and DECREES that final judgment, including permanent injunction, shall be and hereby is entered in the above-referenced matter as follows:
JUDGMENT
IT IS HEREBY FOUND BY THE COURT, with the consent of the Plaintiff, Ferrara Candy Co. and the Defendant, Yauheniya Lis d/b/a GasBuds that:
a. This Court has jurisdiction over Ferrara and Lis, and over the subject matter of this action.
b. Ferrara is the exclusive owner of trademarks for its NERDS, TROLLI, and SWEETARTS candies, as reflected in part by its United States federal trademark registrations, including:
| MARK | REG. NO. | REG. DATE | RELEVANT GOODS |
| NERDS | 2, 209, 131 | December 8, 1998 | Candy in Class 30 |
| (Image Omitted) | 4, 400, 174 | September 10, 2013 | Candy in Class 30 |
| (Image Omitted) | 4, 400, 153 | September 10, 2013 | Candy in Class 30 |
| (Image Omitted) | 4, 414, 355 | October 8, 2013 | Candy in Class 30 |
| TROLLI | 1, 285, 440 | July 10, 1984 | Candy in Class 30 |
| TROLLI SQUIGGLES | 2, 146, 247 | March 24, 1998 | Candy in Class 30 |
| TROLLI OCTOPUS | 2, 140, 787 | March 3, 1998 | Candy in Class 30 |
| TROLLI CATERPILLARS | 2, 140, 788 | March 3, 1998 | Candy in Class 30 |
| TROLLI SODA POPPERS | 3, 976, 070 | June 7, 2011 | Candy in Class 30 |
| TROLLI MAKES YOUR DAY | 4, 027, 028 | September 13, 2011 | Candy in Class 30 |
| TROLLI EXTREME SOUR BRITES | 4, 709, 231 | March 24, 2015 | Candy in Class 30 |
| TROLLI SOUR BRITE | 4, 941, 337 | April 9, 2016 | Candy in Class 30 |
| TROLLI | 5, 004, 764 | July 19, 2016 | Candy in Class 30 |
| TROLLI | 5, 445, 125 | April 10, 2018 | Candy in Class 30 |
| TROLLI | 5, 618, 982 | November 27, 2018 | Candy in Class 30 |
| (Image Omitted) | 947, 983 | November 28, 1972 | Candy in Class 30 |
| (Image Omitted) | 1, 120, 654 | June 19, 1979 | Candy in Class 30 |
| (Image Omitted) | 1, 274, 474 | April 17, 1984 | Candy in Class 30 |
| (Image Omitted) | 2, 336, 949 | April 4, 2000 | Candy in Class 30 |
| (Image Omitted) | 5, 095, 989 | December 6, 2016 | Frozen confections in Class 30 |
| (Image Omitted) | 5, 162, 582 | March 14, 2017 | Candy in Class 30 |
c. Since the introduction of Ferrara's NERDS, TROLLI, and SWEETARTS candies, the brands have achieved enormous commercial success throughout the United States, including in California. As a result of this commercial success, the Ferrara Marks have become famous among the general consuming public of the United States, and represent extraordinarily valuable goodwill owned by Ferrara.
d. Ferrara has marketed its NERDS, TROLLI, and SWEETARTS candy products to parents as a fun and enjoyable treat for children of all ages. Therefore, Ferrara would never condone or authorize the use of the Ferrara Marks in connection with products that could be harmful to children. Moreover, Ferrara has never authorized the use of any of the Ferrara Marks, or any other marks it owns, in connection with products infused with Tetrahydrocannabinol ("THC-infused products"), for any cannabis products or for any related products.
e. Ferrara filed a Complaint on October 27, 2021, alleging, inter alia, claims for trademark infringement, trade dress infringement, and unfair competition under federal and California state law (the "Complaint") based on Defendant's unauthorized sale, promotion, and distribution of various THC-infused products bearing the Ferrara Marks (collectively, the “Infringing Products”) at the website gasbuds.com (“GasBuds”).
f. The manufacture, marketing, sale, distribution, and advertising of Infringing Products constitutes:
a. federal counterfeiting in violation of Section 32 of the Lanham Act;
b. trademark infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114 and California common law;
c. unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a);
d. trademark dilution in violation of Section 43(c) of the Lanham Act and California Business and Professions Code;
e. trade dress infringement in violation of Section 43(a) of the Lanham Act, 14. U.S.C. § 1125 and California common law; and f. unfair competition in violation of California Business and Professions Code (§§ 17200 et seq.); and
g. unfair competition in violation of California common law;
g. Ferrara and Lis have expressly waived any and all rights to appeal this Consent Judgment and Permanent Injunction.
h. The Complaint states a claim and this Court finds that injunctive relief is appropriate.
WHEREFORE, IT IS ORDERED, ADJUDGED AND DECREED that:
a. Lis, her officers, agents, corporate or entity affiliates related through common ownership or control, servants, employees, agents, attorneys, heirs, executors, administrators, successors and assigns, and all persons or entities acting in concert or participation with them or any of them, including without limitation the business operating as “Gasbuds” at gasbuds.com, are hereby permanently enjoined from:
1. the manufacture, marketing, sale, advertising, and distribution of “Medicated Nerds Rope, ” “Medicated Trolli Cherry Bombers” THC-infused “Trolli AppleOs, ” “Medicated Trolli Sour Crawlers, ” “WeedTarts, ” or any other unauthorized products bearing the NERDS, TROLLI or SWEETARTS trademark, or any mark similar to or dilutive of those trademarks, including without limitation “WeedTarts”; and
2. (ii) engaging in any other conduct that tends to falsely represent, or that is likely to confuse, mislead, or deceive consumers to believe, that Lis or her products or services are sponsored, approved, or licensed by Ferrara, or are in some way connected or affiliated with Ferrara.
b. Lis and all others holding by, through or under her, are hereby required, jointly and severally, to:
1. account for and pay over to Ferrara all profits derived from their acts of counterfeiting, trademark infringement, trade dress infringement, dilution and unfair competition in accordance with 15 U.S.C. § 1117(a) and California common law;
2. destroy any remaining “Medicated Nerds Rope, ” “Medicated Trolli Cherry Bombers” THC-infused “Trolli AppleOs, ” “Medicated Trolli Sour Crawlers, ” “WeedTarts, ”in their possession, including packaging, and any advertising, marketing, or promotional materials that include unauthorized uses of the NERDS, TROLLI, SWEETARTS and similar trademarks; and 3. send a notice to any existing customers or vendors that dealing in, selling, marketing or distributing THC-infused products bearing any of Ferrara's trademarks is unlawful.
c. This Court shall retain jurisdiction over this matter for the purpose of enforcing this Judgment.
d. Each party shall bear its own costs and attorneys' fees.
SO ORDERED.