Opinion
E. PATRICK ELLISEN, DANIEL T. MCCLOSKEY, GREENBERG TRAURIG, LLP, East Palo Alto, California, Attorneys for Plaintiff, AMERICAN LICORICE COMPANY GREENBERG TRAURIG, LLP.
Anthony C. Kaye, Attorneys for Defendant, JUICY VAPOR, LLC.
STIPULATED PERMANENT INJUNCTION AND [PROPOSED] ORDER
HOWARD R. LLOYD, Magistrate Judge.
Plaintiff AMERICAN LICORICE COMPANY ("American Licorice") and Defendant JUICY VAPOR, LLC, a New York limited liability company ("Juicy Vapor"), enter into this Stipulated Permanent Injunction ("Injunction") with respect to this action, and in accordance with and pursuant to the terms of a Settlement Agreement ("Agreement"). The Parties, having stipulated to the entry of the Injunction, and good cause appearing for the entry thereof, state and agree as follows:
WHEREAS, American Licorice is the owner of federal and international trademark registrations, including U.S. Trademark Registration No. 1175388 for the RED VINES mark, No. 1237538 for the RED ROPES mark, and No. 1237539 for the SUPER ROPES mark, used in connection with the manufacture and sale of candy products, true and correct copies of which registrations are attached hereto as Exhibit A.
WHEREAS, the federal registration rights, state law rights and common law rights of American Licorice in the RED VINES, RED ROPES and SUPER ROPES trademarks are collectively referred to herein as the "American Licorice Trademarks."
WHEREAS, on March 7, 2014, American Licorice commenced the above-encaptioned action against Juicy Vapor, LLC, alleging federal, state and common law claims for trademark infringement, dilution, and unfair business practices, as set forth in the Complaint filed on that date (the "Action").
NOW THEREFORE, the Parties have further agreed to the following terms, and ask this Court to enter this Injunction, and enter this order, providing as follows:
1. Juicy Vapor and all those in privity with, concert or participation with Juicy Vapor, are permanently enjoined from:
(i) imitating, copying, duplicating or otherwise making any use of the American Licorice Trademarks or any mark confusingly similar to or likely to dilute the distinctiveness of the American Licorice Trademarks or is likely to falsely relate or connect Juicy Vapor with American Licorice;
(ii) manufacturing, producing, distributing, circulating, posting, selling or otherwise disposing of or disseminating any material (online or otherwise) which bears any copy or colorable imitation of the American Licorice Trademarks, including in connection with driving web traffic to Juicy Vapor owned or controlled websites;
(iii) using any designation of origin or description which can or is likely to lead the trade or public, or individual members thereof, to mistakenly believe that any service advertised, promoted, offered or sold by Juicy Vapor is sponsored, endorsed, connected with, approved or authorized by American Licorice; and
(iiv) assisting, aiding or abetting another person or business entity in engaging or performing any of the activities enumerated in (i) through (iii) above.
2. The Action, including all claims, counterclaims, and third party claims therein are hereby dismissed with prejudice.
3. This Court retains jurisdiction over this matter and to the extent necessary to enforce this Injunction and the Agreement and to determine any issues which may arise concerning them.
IT IS SO STIPULATED.