Opinion
1:22-cv-01418-BAM
04-18-2023
THE AMERICAN AUTOMOBILE ASSOCIATION, INC., Plaintiff, v. AAA RADIATORS & MUFFLERS LLC d/b/a AAA RADIATORS & MUFFLERS, a/k/a AAA RADIATOR & MUFFLER, ANTHONY RODRIGUEZ, AAA RADIATORS & MUFFLERS, CARLOS RODRIGUEZ, RAMON RODRIGUEZ, AAA RADIATORS & MUFFLERS, AND CESAR RODRIGUEZ, Defendants.
BY CONSENT OF PLAINTIFF Yurij D. Melnyk (Bar No. 319325) COVINGTON & BURLING LLP Salesforce Tower Attorneys for Plaintiff THE AMERICAN AUTOMOBILE ASSOCIATION, INC. BY CONSENT OF DEFENDANT John C. Umscheid (Bar No. 249132) THE LAW OFFICE OF JOHN C. UMSCHEID Attorneys for Defendants AAA RADIATORS & MUFFLERS I, ANTHONY RODRIGUEZ, AAA RADIATORS & MUFFLERS II, CARLOS RODRIGUEZ, RAMON RODRIGUEZ, AAA RADIATORS & MUFFLERS III, AND CESAR RODRIGUEZ
BY CONSENT OF PLAINTIFF Yurij D. Melnyk (Bar No. 319325) COVINGTON & BURLING LLP Salesforce Tower Attorneys for Plaintiff THE AMERICAN AUTOMOBILE ASSOCIATION, INC.
BY CONSENT OF DEFENDANT John C. Umscheid (Bar No. 249132) THE LAW OFFICE OF JOHN C. UMSCHEID Attorneys for Defendants AAA RADIATORS & MUFFLERS I, ANTHONY RODRIGUEZ, AAA RADIATORS & MUFFLERS II, CARLOS RODRIGUEZ, RAMON RODRIGUEZ, AAA RADIATORS & MUFFLERS III, AND CESAR RODRIGUEZ
CONSENT ORDER OF JUDGMENT
BARBARA A. MCAULIFFE, UNITED STATES MAGISTRATE JUDGE
WHEREAS, Plaintiff The American Automobile Association, Inc. (“AAA”) has brought an action in this Court against Defendants AAA Radiators & Mufflers I, Anthony Rodriguez, AAA Radiators & Mufflers II, Carlos Rodriguez, Ramon Rodriguez, AAA Radiators & Mufflers III, and Cesar Rodriguez (collectively, the “Parties”) alleging violations of the Federal Trademark Act (the “Lanham Act”), 15 U.S.C. §§ 1114, 1125(a), 1125(c), 1125(d), and of California state law;
WHEREAS, the Court has jurisdiction over this civil action under 15 U.S.C.§§ 1121 and 1125, and under 28 U.S.C. §§ 1331, 1332, 1337, and 1338;
WHEREAS, AAA and Defendants have entered into a Settlement Agreement, filed under seal at Doc. 30, to resolve any and all controversies and disputes between them existing as of this date;
WHEREAS, AAA agrees to dismiss without prejudice its claims against Defendants;
WHEREAS, AAA agreed to allow Defendants until February 21, 2023 to cease all use and refrain from any future use of trademarks owned by AAA; in addition, subject to Defendants' continued adherence to the Settlement Agreement, AAA agrees not to pursue claims for damages arising out of such use occurring before such date;
WHEREAS, Defendants admit any future unauthorized use of AAA's trademarks would violate the Lanham Act and California state law;
WHEREAS, Defendants waive all defenses and counterclaims which it might otherwise raise at a trial on the merits of AAA's demand for a permanent injunction and/or damages;
NOW THEREFORE, Defendants consent and agree that this Court enter a judgment permanently enjoining them from any future unauthorized use of AAA's trademarks, or of marks confusingly similar to any of them.
The Court does, hereby, upon consent of the Parties, declare that a permanent injunction issue herein as follows:
IT IS ORDERED, ADJUDGED, AND DECREED:
1. That Defendants, their agents, attorneys, representatives, employees, and all persons in active concert or participation with them who receive notice hereof, are hereby permanently enjoined beginning from February 21, 2023 as follows:
a. Defendants are enjoined from using without authorization of AAA any of the AAA Marks, logos, and trade names, including, but not limited to, the designation “AAA” or any other name, logo, or mark that includes the designation “AAA” or is confusingly or deceptively similar to any of the AAA Marks, logos, and trade names, either alone or in conjunction with other words or symbols, in relation to automotive-related goods or services; and
b. Defendants are enjoined from using without authorization of AAA combination letter “A's” in any form or manner that would tend to identify or associate Defendants or their business or services with AAA, including, without limitation, in the marketing, promotion, advertising, identification, sale or distribution of automotive-related goods or services.
2. That each and every claim for damages, penalties, costs, and attorneys' fees by AAA against Defendants, other than the permanent injunction granted herein, is hereby dismissed without prejudice pursuant to the representations made by Defendants in the Settlement Agreement, and subject to fulfillment of all obligations set forth in the Settlement Agreement, except for such damages, penalties, costs, and/or attorneys' fees which might result from any violation of this Consent Order of Judgment; and
3. That this case shall be closed, except that this Court shall retain jurisdiction until February 21, 2025 for the purpose of enforcing the Settlement Agreement and this Consent Order of Judgment.
4. Plaintiff shall immediately serve a copy of this order on Defendants, and shall file a certificate of service within two days of this order's issuance.
The Consent Decree as noted above is APPROVED.
IT IS SO ORDERED.