Opinion
Civil Action 1.18-cv-11108-GBD
07-06-2021
OREGON BREWING COMPANY, Plaintiff, v. ROGUE APPAREL GROUP, INC., Defendant.
BRENT BLAKELY (WITH PERMISSION) BRENT BLAKELY BLAKELY LAW GROUP ATTORNEYS FOR ROGUE APPAREL GROUP, INC. LOUIS DISANTO (PRO HAC VICE FILED) ATTORNEYS FOR COULTER VENTURES, LLC D/B/A ROGUE FITNESS
BRENT BLAKELY (WITH PERMISSION) BRENT BLAKELY BLAKELY LAW GROUP ATTORNEYS FOR ROGUE APPAREL GROUP, INC.
LOUIS DISANTO (PRO HAC VICE FILED) ATTORNEYS FOR COULTER VENTURES, LLC D/B/A ROGUE FITNESS
CONSENT JUDGMENT AND PERMANENT INJUNCTION
Plaintiff, Oregon Brewing Company (“OBC”), filed the Complaint in this matter against Defendant, Rogue Apparel Group, Inc. (“RAG”), on November 28, 2018, asserting claims for (i) trademark infringement under the Lanham Act, 15 U.S.C. § 1114, (ii) false designation of origin/unfair competition under the Lanham Act, 15 U.S.C. § 1125, (iii) trademark infringement, unfair competition, and false designation of origin under New York law, and (iv) trademark cancellation. OBC duly served its Complaint on RAG. On November 5, 2020, the Court entered an Order to substitute Coulter Ventures, LLC, d/b/a Rogue Fitness (“Rogue”), as plaintiff following Rogue's acquisition by assignment from OBC of all right, title, and interest in the asserted trademark, U.S. Trademark Registration Number 3, 365, 653. RAG now stipulates and consents to the Court's entry of this Consent Judgment and Permanent Injunction.
NOW THEREFORE, upon consent of the parties, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED:
1. The Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1338(a) & (b), and 1367(a).
2. The Court has personal jurisdiction over RAG and venue is proper in this judicial district.
3. Plaintiff Rogue owns all right, title, and interest in and to valid and enforceable, federal and common law, trademark rights in the mark ROGUE for apparel, including but not limited to, U.S. Trademark Registration Number 3, 365, 653. Rogue's federal and common law trademark rights in the mark ROGUE are collectively hereafter referred to as the “Rogue Mark.”
4. Plaintiff's Rogue Mark is distinctive and widely recognized throughout the United States as a result of extensive sales, publicity, and exposure in the United States and around the world since the 1980s. Plaintiff's Rogue Mark is a well-known and powerful source identifier associated with Rogue.
5. RAG's use of the mark ROGUE in connection with the manufacturing, distributing, advertising, promotion, and/or sale of apparel alone and in combination with other word(s), design(s) and designation(s): (a) is likely to cause confusion, mistake, and deception as to the affiliation, connection, or association of RAG with Rogue, and as to the source, origin, sponsorship, or approval of RAG's products by Rogue, (b) infringes Rogue's rights in the Rogue Mark, and (c) constitutes trademark infringement, false designations of origin and unfair competition in violation of the Lanham Act and New York law.
6. RAG, and its directors, officers, agents, servants, employees, attorneys, corporate parents, subsidiaries, affiliates, successors, and assigns, and all persons and entities in active concert or participation with it, are permanently enjoined and prohibited from directly, indirectly, or without authorization:
a. Using the Rogue Mark and all colorable imitations thereof in connection with the
sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use would be likely to cause confusion, or to cause mistake, or to deceive;
b. Diluting the distinctiveness of the Rogue Mark;
c. Using any other false designation of origin or false description or representation or any other act likely to cause confusion, or to cause mistake, or to deceive as to (i) any affiliation, connection, or association of RAG or RAG's products with Rogue or Rogue's products, or as to (ii) the origin, sponsorship, or approval of RAG's products with or by Rogue; and
d. Selling, offering to sell, distributing, or advertising ROGUE-branded products or services.
7. RAG shall immediately destroy any and all ROGUE-branded apparel that it has in transit, shall permanently delete any and all online advertisements or promotions, including social media bearing the mark ROGUE, shall destroy all packaging and/or marketing materials depicting ROGUE-branded apparel that it has on hand, shall cancel all pending orders for ROGUE-branded apparel or materials depicting ROGUE-branded apparel, and shall not re-order and/or import ROGUE-branded apparel or materials using or depicting the mark ROGUE.
8. RAG shall surrender for cancellation in the United States Patent and Trademark Office all of its United States trademark registrations containing the word ROGUE, namely Registration Nos. 3346559, 3945523, 2790074, 2815985, 3114812, 3260143, and 5612768, and shall withdraw its United States trademark application containing the word ROGUE, namely, Application No. 77706222.
9. Each party shall bear its own costs and attorney fees.
10. This Court shall retain jurisdiction over the parties for the purpose of enforcing the terms of this Consent Judgment and Permanent Injunction.
11. Judgment is hereby entered in favor of Rogue on all counts of the Complaint.
12. This Order represents a final adjudication of all claims, counterclaims, and defenses that were, or could have been, brought by OBC and/or Rogue on the one hand and RAG on the other hand, in this case. This Order is intended to be final and shall bind Rogue and RAG, and their affiliates and successors on all issues that were or could have been litigated in this proceeding and that no appeal shall be taken herefrom.
SO ORDERED: