Opinion
Case No. CV 10-09683 DSF (SSx)
11-14-2011
HALLOWEEN TOWN, INC., Plaintiff, v. PIGNATELLO, LLC, dba HALLOWEEN TOWN and DOES 1-10, Defendants.
Yakub Hazzard, Bar No. 150242 David Martinez, Bar No. 193183 ROBINS, KAPLAN, MILLER & CIRESI L.L.P. Attorneys for Plaintiff Halloween Town, Inc.
Yakub Hazzard, Bar No. 150242
David Martinez, Bar No. 193183
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
Attorneys for Plaintiff
Halloween Town, Inc.
CONSENT JUDGMENT AND
PERMANENT INJUNCTION
Note Changes by Court
[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION
Plaintiff Halloween Town, Inc. ("Halloween Town") and Defendant Pignatello, LLC, dba Halloween Town ("Defendant") (Halloween Town and Defendant are from time to time referred to as "the Parties"), having agreed to a settlement of the claims between them asserted in this lawsuit, and having stipulated to entry of this Consent Judgment,
It is hereby ORDERED, ADJUDGED AND DECREED:
This Court has jurisdiction over Defendant and over the subject matter at issue in this action. Defendant consents to jurisdiction of this Court for the purpose of construing, executing and enforcing this Consent Judgment and Permanent Injunction, and this Court retains jurisdiction for this purpose.
Since at least as early as September of 2000, Halloween Town has owned and operated a retail store ("Halloween Town Store") in southern California under the name Halloween Town ("Halloween Town Trademark"). The Halloween Town Store has consistently featured a vast array of Halloween and horror-related merchandise and accessories. At all times, Halloween Town has used the Halloween Town Trademark in connection with its retail store goods and services.
Commencing in August of 2003, Halloween Town expanded its Halloween Town services to include an online retail store outlet located on the Internet at the domain name www.halloweentownstore.com ("Halloween Town Online Store"), which has been in continuous operation ever since. Since its inception, the Halloween Town Website has also prominently featured the Halloween Town Trademark used in connection with its retail store goods and services.
Defendant agrees not to contest the validity of The Halloween Town Trademark or Halloween Town's ownership rights therein, in any future proceedings between the parties, including any future action claiming trademark infringement.
Defendant Pignatello LLC dba Halloween Town is a Nevada Limited Liability Company with a principal place of business located at 10309 Wellside Hill Avenue, Las Vegas, Nevada 89145 and/or 2350 South Rainbow Boulevard, Suite 1, Las Vegas, Nevada 89146. Defendant engages in the retail sale of Halloween and horror related merchandise, costumes, accessories and novelties.
Defendant has distributed, offered for sale and sold at wholesale and/or retail various merchandise, apparel and services under the Halloween Town Trademark, including through Defendant's physical store located in Las Vegas, Nevada ("Defendant's Physical Store"), and through its online store located at www.shophalloweentown.com ("Defendant's Online Store").
Defendant and each of its members, officers, directors, agents, employees, subsidiaries, affiliates, partners, predecessors, successors and/or other related companies, and persons in active concert or participation with Defendant are permanently enjoined, as of September 22, 2011, from using the Halloween Town Trademark, or any other confusingly similar trade name or trademark, in connection with Defendant's Online Store or any other online store.
Defendant and each of its members, officers, directors, agents, employees, subsidiaries, affiliates, partners, predecessors, successors and/or other related companies, and persons in active concert or participation with Defendant are permanently enjoined, as of June 1, 2012, from using the Halloween Town Trademark, or any other confusingly similar trade name or trademark, in any fashion, including but not limited to, the manufacturing, importing, exporting, distributing, licensing, selling, marketing, advertising, promoting, or offering for sale any apparel, goods or services.
Upon adopting a new name that does not violate this Consent Judgment and Permanent Injunction, Defendant may use the disclaimer "Formerly Known as Halloween Town" through November 1, 2012 only. Defendant and each of its members, officers, directors, agents, employees, subsidiaries, affiliates, partners, predecessors, successors and/or other related companies, and persons in active concert or participation with are permanently enjoined from using any such disclaimer thereafter.
Defendant will, within 5 days of the execution of this Consent Judgment and Permanent Injunction by the Parties, provide a copy of this Consent Judgment and Permanent Injunction to each of its members, officers, directors, agents, employees, subsidiaries, affiliates, predecessors, successors and/or other related companies, and persons in active concert or participation with Defendant, and all such persons who receive actual notice of this Consent Judgment by personal service or otherwise, are permanently enjoined as set forth above.
Further, the Parties acknowledge and agree that it will be impracticable and/or extremely difficult to assess or determine the damages incurred by Halloween Town from breach of this Consent Judgment and Permanent Injunction. Therefore, Defendant agrees that it shall pay the sum of $5,000 for willful and material breach of this Consent Judgment and Permanent Injunction.
Plaintiff Halloween Town and Defendant agree that in any dispute arising or related to this Consent Judgment and Permanent Injunction or the enforcement thereof, the prevailing party shall be entitled to recover reasonable attorneys' fees and costs.
The provisions of this Consent Judgment and Permanent Injunction shall be deemed to extend to and inure to the benefit of the Parties' respective successors-in-interest, assigns, transferees, grantees, heirs, executors, administrators and representatives, and to extend to and obligate the Parties' respective successors-in-interest, assigns, transferees, grantees, heirs, executors, administrators and representatives.
The Parties represent that they are duly authorized to execute and enter into this Consent Judgment and Permanent Injunction.
We hereby consent to entry of this Consent Judgment and Permanent Injunction:
Pignatello, LLC, dba Halloween Town
By: Brian N. Pignatello
Its:
Pignatello, LLC, dba Halloween Town
By: Michelle Pignatello
Its:
Halloween Town, Inc.
By: Jacqueline Ahumada
Its: President
Approved at to form:
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
By: David Martinez
Attorneys for Plaintiff
HALLOWEEN TOWN, INC.
DONGELL LAWRENCE FINNEY LLP
By: Jason M. Booth
Attorneys for Defendant
PIGNATELLO, LLC, DBA HALLOWEEN
TOWN
IT IS SO ORDERED.
The Honorable Dale S. Fischer
United States District Judge