Opinion
2:21-cv-07158-MWF-AGR
12-06-2021
BTL INDUSTRIES, INC., Plaintiff, v. DEVINE FRAME NATURAL SPA LLC, dba Devine Drip Beauty Bar, Defendant.
Victor M. Felix Brian J. Kennedy PROCOPIO, CORY, HARGREAVES & SAVITCH LLP J.C. Rozendaal, Pro Hac Vice Monica Riva Talley, Pro Hac Vice Chandrika Vira, Pro Hac Vice STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. Attorneys for Plaintiff BTL Industries, Inc. Donald K. Wilson, ZHONG LUN LAW FIRM Attorney for Defendant Devine Frame Natural Spa, LLC dba Devine Drip Beauty Bar
Victor M. Felix Brian J. Kennedy PROCOPIO, CORY, HARGREAVES & SAVITCH LLP J.C. Rozendaal, Pro Hac Vice Monica Riva Talley, Pro Hac Vice Chandrika Vira, Pro Hac Vice STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. Attorneys for Plaintiff BTL Industries, Inc.
Donald K. Wilson, ZHONG LUN LAW FIRM Attorney for Defendant Devine Frame Natural Spa, LLC dba Devine Drip Beauty Bar
CONSENT JUDGMENT AND PERMANENT INJUNCTION
MICHAEL W. FITZGERALD UNITED STATES DISTRICT JUDGE
This Court, having considered the request of plaintiff BTL Industries, Inc. (“BTL”) and defendant Devine Frame Natural Spa LLC dba Devine Drip Beauty Bar (“Devine Beauty”) (collectively, the “Parties”) to enter the following relief, and such relief appearing reasonable under the circumstances, The Court finds as follows:
1. On September 7, 2021, BTL filed Case No. 2:21-cv-07158-MWF-AGR in the United States District Court for the Central District of California;
2. BTL brought this action seeking injunctive relief and monetary damages against Devine Beauty for trademark infringement, unfair competition, false designation of origin, and false advertising under the Lanham Act (15 U.S.C. §§ 1114, 1125(a)); unlawful, unfair, and/or fraudulent business practices under the California Business and Professions Code (Cal. Bus. & Prof. Code. §§ 17200, et seq.); and common law unfair competition;
3. The Parties have agreed to terms and conditions representing a negotiated resolution of the above-captioned matter. Devine Beauty now stipulates and consents to this Consent Judgment and Permanent Injunction, to its prompt entry by the Court, and to each and every provision, order, and decree herein;
4. This Court has jurisdiction over the subject matter of this case and jurisdiction over Defendant;
5. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b);
6. BTL uses, owns, and exclusively licenses registered and unregistered trademarks and trade dress for its brand of aesthetic equipment and treatments, including the following valid and subsisting federally registered trademarks (collectively, the “BTL Trademarks”):
Reg. No.
Mark
Reg. Date
First Use in Commerce or Priority Date
Goods / Services
4, 750, 101
«ss>
June 9, 2015
Jan. 24, 2014
Class 10: Medical apparatus and instruments for the treatment of cellulite; medical apparatus and instruments for body toning and body shaping; medical apparatus and instruments for the removal of fat, circumference reduction, tightening of skin, reduction of wrinkles, reduction of scars, reduction of stretch marks, rejuvenation of skin, and treatment of pigmentation spots; above medical apparatuses with exception for the treatment of the nasopharynxs including inhalers and nasal irrigators; massage apparatus; medical
apparatus and instruments for aesthetic skin treatment procedures; medical apparatus generating electromagnetic, magnetic, electrical, mechanical or thermal energy for use in skin treatment procedures; medical apparatus particularly apparatus for pain management, elimination of muscle spasms; gynaecological and urological apparatus and instruments, namely, for genital rejuvenation, treatment sexual dysfunction, gynecological treatment and pelvic floor treatment
5, 572, 801
EMSCULPT
Oct. 2, 2018
Sept. 29, 2017
Class 10: Medical apparatus and instruments for the treatment of cellulite; medical apparatus and instruments for body toning and body shaping; medical apparatus and instruments for the removal of fat, circumference reduction, tightening of skin, reduction of wrinkles, reduction of scars, reduction of stretch marks, rejuvenation of skin, and treatment of pigmentation spots; above medical apparatuses with exception for the treatment of the nasopharynxs including inhalers and nasal irrigators; massage apparatus; medical apparatus and instruments for aesthetic skin treatment procedures; medical apparatus generating electromagnetic,
magnetic, electrical, mechanical or thermal energy for use in skin treatment procedures; medical apparatus particularly apparatus for pain management, elimination of muscle spasms; gynaecological and urological apparatus and instruments, namely, for genital rejuvenation, treatment sexual dysfunction, gynecological treatment and pelvic floor treatment
5, 915, 636
EM
Nov. 19, 2019
Jan. 8, 2019
Class 10: Physical therapy devices for treating muscle spasms and pain management; medical apparatus and instruments, in particular apparatus and instruments for the treatment of cellulite, apparatus and instruments for body toning and body shaping, and apparatus and instruments for the removal of fat, circumference reduction; medical devices for use in treating gynecological disorders, pelvic area disorders, bladder disorders and incontinence. Class 44: Health assessment services; medical services, namely, providing treatment for patients with gynecological disorders, pelvic area disorders, bladder disorders and incontinence; gynecological services; urology medical care services; rental of medical apparatus
and equipment; cosmetic and plastic surgery; beauty salon services; liposuction and surgical body shaping services; medical services, namely, removal of body cellulite; physical therapy services.
6, 069, 279
EMSCULPT
Jun. 2, 2020
Sept. 29, 2017
Class 44: medical services; gynecology services; medical equipment rental; cosmetic and plastic surgery; beauty salons; liposuction services; removal of body cellulite
6, 206, 098
EM
Nov. 24, 2020
Jul. 30, 2018
Class 10: Physical therapy devices for treating muscle spasms and pain management; medical apparatus and instruments, in particular apparatus and instruments for the treatment of cellulite, apparatus and instruments for body toning and body shaping, and apparatus and instruments for the removal of fat, circumference reduction; medical devices for use in treating gynecological disorders, pelvic area disorders, bladder disorders and incontinence. Class 44: Health assessment services; medical services, namely, providing treatment for patients with gynecological disorders, pelvic area disorders, bladder disorders and incontinence; gynecological services; urology medical care services; rental of medical apparatus and equipment; cosmetic and plastic surgery; beauty salon services; liposuction and surgical body shaping services; medical services, namely, removal of body cellulite; physical therapy services.
7. The BTL Trademarks have been used exclusively and continuously by BTL and have never been abandoned. The above U.S. registrations for BTL's Trademarks are valid and subsisting in full force and effect.
8. The registrations for the BTL Trademarks constitute prima facie evidence of their validity and of BTL's exclusive right to use the trademarks pursuant to 15 U.S.C. § 1057(b).
9. BTL has not licensed or authorized Devine Beauty to use any of the BTL Trademarks.
10. Devine Beauty hereby waives any and all right to an appeal from this Consent Judgment and Permanent Injunction.
11. This Consent Judgment and Permanent Injunction constitutes a final judgment on the merits of BTL's claims for purposes of res judicata, collateral estoppel, issue preclusion, and claim preclusion.
Therefore, JUDGMENT IS HEREBY ENTERED, upon consent of the Parties hereto, in favor of BTL Industries, Inc. as follows:
1. Pursuant to Fed.R.Civ.P. 65, IT IS HEREBY ORDERED that Devine Beauty, together with all of Devine Beauty's officers, agents, servants, employees, representatives, and assigns, and all other persons, firms, or companies in active concert or participation with Devine Beauty are permanently enjoined and restrained from directly or indirectly:
(a) using the BTL Trademarks (and confusingly similar versions thereof), in any manner in connection with the promotion, marketing, advertising, offering for sale, or sale of any service that is not a BTL service offered by a genuine BTL device, or is not authorized by BTL to be offered in connection with BTL's trademarks;
(b) committing any acts calculated to cause consumers to believe that Devine Beauty's services are those sold under the authorization, control or supervision of BTL, or are sponsored by, approved by, or otherwise connected with BTL;
(c) further infringing BTL's trademarks, and damaging BTL's goodwill.
2. IT IS FURTHER HEREBY ORDERED that within 30 days of the Effective Date, Devine Beauty shall surrender to BTL's counsel, or designed representative the machine(s) described in the settlement agreement. The machine(s) shall not be altered in any way prior to delivery.
3. IT IS FURTHER HEREBY ORDERED that Devine Beauty shall pay BTL the total damages agreed upon by the Parties, which amount is subject to a confidentiality clause.
4. IT IS FURTHER HEREBY ORDERED that this Consent Judgment and Permanent Injunction shall be binding upon and shall inure to the benefit of the parties and their respective successors, assigns, and acquiring companies.
5. IT IS FURTHER HEREBY ORDERED that the Court retains jurisdiction of this matter for the purposes of enforcing the terms of this Consent Judgment and Permanent Injunction.
6. IT IS FURTHER HEREBY ORDERED that the permanent injunction shall remain in full force and effect unless and until modified by order of this court.
7. IT IS FURTHER HEREBY ORDERED that all claims and demands in the above-captioned matter are hereby dismissed without prejudice and without costs, disbursements or attorneys' fees to any party. This is a final order and judgment.
IT IS ORDERED
AGREED TO IN FORM AND SUBSTANCE: