Opinion
Brent H. Blakely, Cindy Chan, BLAKELY LAW GROUP, Manhattan Beach, California, Attorneys for Plaintiffs E-Hose Technologies LLC and PhD Marketing, Inc.
ORDER RE PERMANENT INJUNCTION AND VOLUNTARY DISMISSAL OF DEFENDANTS PRIMECO WHOLESALE, INC. and NOR KHALIL HADDAD
MANUEL REAL, District Judge.
WHEREAS, Plaintiffs PhD Marketing, Inc. and E-Hose Technologies LLC, (collectively "Plaintiffs") having filed a Complaint in this action charging Defendants PrimeCo Wholesale Inc. and Nor Khalil Haddad (collectively "Defendants") with Trademark Infringement, False Designations of Origin, and Unfair Competition under federal, state, and common law arising from Defendants' manufacture, production, distribution, promotion, advertisement, offering for sale, and/or sale of electronic hookahs bearing counterfeit reproductions of the E-Hose Marks shown below;
Trademark U.S. Reg./Serial Class(es)/Goods No. E-HOSE 4, 463, 945 Chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes E-HOSE 4, 456, 664 Cigarette tubes; Electric cigarettes; Electronic cigarette refill cartridges sold empty; Electronic cigars; Electronic hookahs; Hookah parts, namely, tube and hose; Hookah tobacco; Hookahs; Smokeless cigarette vaporizer pipe; Smoker's articles, namely, hookah charcoal. 4, 005, 820 Electric cigarettes; Electric cigars; Electric smoking pipes. 85/831231 Electric cigarettes; Electronic cigarettes; Electronic cigars; Electronic hookahs
WHEREAS, the parties herein having simultaneously entered into a Settlement Agreement and Mutual Release; and
WHEREAS, the parties hereto desiring to fully settle all of the claims in this action among the parties to this Final Judgment; and
WHEREAS, Defendants have agreed to consent to the below terms of a permanent injunction without any admission of wrongdoing, IT IS HEREBY ORDERED that:
1. Defendants and their agents, servants, employees and all persons in active concert and participation with it who receive actual notice of this Consent Judgment are hereby permanently restrained and enjoined from:
(a) Manufacturing, importing, advertising, marketing, promoting, supplying, distributing, offering for sale, or selling infringing products that bear the E-Hose Marks, or any other marks identical and/or confusingly similar thereto;
(b) Delivering, holding for sale, returning, transferring or otherwise moving, storing or disposing in any manner products that bear the E-Hose Marks except as otherwise provided in the parties' confidential written Settlement Agreement;
(c) Engaging in any other activity constituting unfair competition with Plaintiffs, or acts and practices that deceive consumers, the public, and/or trade with respect to the use of designations and designs of Plaintiffs;
(d) Engaging in other activity that will dilute the distinctiveness of the E-Hose Marks;
(e) Committing any other act which falsely represents or which has the effect of falsely representing that the goods and services of Defendant are licensed by, authorized by, offered by, produced by, or in any other way associated with Plaintiffs;
(f) Knowingly assisting, aiding or attempting to assist or aid any other person or entity in performing any of the prohibited activities referred to in Paragraphs 2(a) to 2(e) above.
WHEREAS, Plaintiffs and Defendants have further agreed as follows, IT IS HEREBY FURTHER ORDERED that:
2. This Court has jurisdiction over the parties to this Final Consent Judgment and has jurisdiction over the subject matter hereof pursuant to 15 U.S.C. § 1121.
3. Plaintiffs and Defendants shall bear their own costs and attorneys' fees associated with this action.
4. This action is hereby dismissed with prejudice as to Defendants PrimeCo Wholesale Inc. and Nor Khalil Haddad only. Such dismissal shall not have preclusive effect on any other Defendants or those who are not specifically released in the parties' written settlement agreement, all claims against whom Plaintiffs expressly reserve.
5. The jurisdiction of this Court is retained for the purpose of making any further orders necessary or proper for the construction or modification of this Consent Judgment, the enforcement thereof and the punishment of any violations thereof. Except as otherwise provided herein, this action is fully resolved with prejudice as to Defendants PrimeCo Wholesale Inc. and Nor Khalil Haddad only.