Two Men and a Truck/International Inc v. US Pro Media LLC et al

Filing 40

CONSENT ORDER AND JUDGMENT. Signed by Judge Susan Webber Wright on 8/21/2014. (ks)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF ARKANSAS
NORTHERN DIVISION

TWO MEN AND A TRUCK/
INTERNATIONAL, INC.,
Plaintiff,
Civil Action No.: 1:12-cv-00112-SWW

v.
US PRO MEDIA, LLC d/b/a MEN AND
TRUCK MOVERS, BIG MINDZ LLC
d/b/a MEN AND TRUCK MOVERS,
RANDALL BOX, individually and d/b/a
MEN AND TRUCK MOVERS, and JOHN
DOES 1 through 10, individually and d/b/a
MEN AND TRUCK MOVERS,

Hon. Susan Webber Wright
United States District Judge

Defendants.

US PRO MEDIA, LLC, BIG MINDZ LLC,
and RANDALL BOX,
Counterclaim-Plaintiffs,

v.
TWO MEN AND A TRUCK/
INTERNATIONAL, INC.,
Counterclaim-Defendant.

CONSENT ORDER AND JUDGMENT
It appearing to the Court, as evidenced by the signatures below, that the parties have

agreed to the entry of this Order respecting the Plaintiffs Motion to Hold Defendants US Pro
Media, LLC, Big Mindz, LLC, and Randall Box in Contempt, to Enforce Settlement Agreement
and for Sanctions (the "Motion"), the Court hereby finds as follows:

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1. Attached hereto as Exhibit A and incorporated in this Order by reference is the
Settlement Agreement dated July 30, 2013, by and between (a) Two Men And A
Truck/International, Inc. ("Two Men" or "Plaintiff'); and (b) US Pro Media, LLC,
Big Mindz LLC, and Randall Box, individually and d/b/a Men And Truck Movers
(collectively "Defendants"). By its incorporation herein, this Settlement Agreement
shall be enforceable as an Order of this Court.
2. Defendants US Pro Media, LLC, Big Mindz, LLC, and Randall Box used Plaintiffs
TWO MEN AND A TRUCK Mark, without Plaintiffs authorization, in their Internet
advertising on the Google search engine, as shown in Exhibit B to the Motion, in
violation of the Settlement Agreement and the Court's August 15, 2013 Order.
3. Defendants have ceased using the advertisement shown as Exhibit B to the Motion.
4. Defendants have used the domain name 2guysmovers.com and operated a website at
that domain, as shown in Exhibit C to the Motion.
5. This Court has jurisdiction to determine the Motion.
6. Plaintiff and Defendants have waived a hearing respecting the Motion and agreed to
the relief set forth in this Order.
7. Plaintiff and Defendants further waive a hearing with respect to any future violation
of this Court's Orders and agree the Court may determine any future motion for
contempt or for other relief under the Settlement Agreement, this Order, or the
Court's August 15, 2013 Order, on the basis of written submissions.
8. Plaintiff and Defendants understand the undertakings, obligations, and terms of this
Consent Order.

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It is therefore ORDERED, ADJUDGED, and DECREED:

1. The Court adopts and incorporates the Settlement Agreement attached as Exhibit A
hereto (the "Settlement Agreement") as if it were fully stated herein as an Order of
this Court. Defendants shall comply with the terms of the Settlement Agreement.
2. Defendants are permanently enjoined and restrained from using any term in any
website or advertising that is prohibited under the Settlement Agreement, the
August 15, 2013 Order, or this Order.
3. In addition to the requirements set forth in the Court' s August 15, 2013 Order and the
Settlement Agreement, with the exception of the use of the domain name
menandtruckmovers.com permitted under the August 15, 2013 Order, Defendants are
enjoined and restrained from all use, direct and indirect, of any combination or
variation of both "two" and "truck" or both "men" and "truck," whether alone or in
combination with other terms, as a name, domain name, mark, source or identifying
designation, keyword, title tag, or metatdata, in any manner whatsoever, in
connection with marketing, selling, or operating moving services or lead generation
for moving services. As used in this Order and in the Settlement Agreement,
"variation" includes homophones, slightly different spellings or misspellings, and
words that have a similar meaning or create a similar impression.
4. Defendants shall transfer the domain name 2guysmovers.com to Plaintiff within three
business days of the entry of this Order.
5. Any violation of the August 15, 2013 Order, the Settlement Agreement, or this Order
shall constitute contempt.

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6. Any future motion for contempt or other relief under the August 15, 2013 Order, the
Settlement Agreement, or this Order may be decided on the basis of written
submissions, including but not limited to declarations, documentary evidence, and/or
deposition testimony, and shall not require a hearing.
7. In the event Defendants, Defendants' Affiliates, or any of them, violates the
August 15, 2013 Order, this Order, or the Settlement Agreement in the future, in
addition to any other sanctions the Court deems appropriate, within 30 days after the
entry of an Order respecting such violation, Defendants and/or Defendants' Affiliates
who participate in the violation shall pay Plaintiff $5,000 as partial reimbursement for
Plaintiffs attorneys' fees incurred in connection with this motion and shall further
pay Plaintiff its reasonable attorneys' fees and costs incurred in connection with
addressing such future violation.
8. This Consent Judgment shall be binding upon and inure to the benefit of the parties
hereto and their respective parents, subsidiaries, affiliates, predecessors, successors,
assigns, licensees, manufacturers and distributors and their officers, directors,
shareholders, servants, employees, attorneys, and agents, or any committee or other
arrangement of creditors organized with respect to the affairs of any party.
9. This Court shall retain jurisdiction over this matter to enforce this Order.
SO ORDERED this .:J/M day of August, 2014.

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API•ROVEI> FOR ENTRY:
BY PLAINTIFF:

BY ll>EFENOANTS:

KILPATRICK TOWNSEND & STOCKTON

US PRO MEDIA LLC Wa MEN AND
TRUCK MOVERS

LLP

/s/ Judith A. Powell
Jt~dithA. Powell (admilledpro hac vi<:e)
Jessica A. Pratt (admitted pro hac l'ice}
1100 Peachtree Street. Suite 2800

Atlanta OA 30309-4S30
Teleph~.'}ne: 404·815-6500
Facsimilc: 404-815-655 5
E-mail! [e-mail]
jnpratt@kilpatrick:towl.l end.com

and

Gordon S. Rather, Jr. (Arkansas Bar No.
68054)
WRIGHT~ LINDSEY & JENNINGS LLP
200 \Vest Capitol Avenue, Suite 2300
Li1tle Rock. Arkansas 72201-3699
Telephone: 501-37l~0808
facsimile: 501-376-9442
Email: GRathe:[e-mail]

BIG MINDZ L C dlbfa MEN AND TRUCK
MOVE-RS

Auorneysfor f>laim~(f
Two Men dnd A Truck/lnlernal'icmal. lnc.

RANDALL BOX~ individu.aJiy and dlb/a MEN
AND TRUCK MOVERS

Randall Box

EXHI BIT A
SETTLE.MENT AGREEMENT

THIS SETTLEMENT AGREEMENT ("Agreement") is entered into, effective as
of the date of the last dated signature shown below (the "Effective Date"), by and
between (l) Two Men And A Truck/lntemational, Inc., a corporation organized and
existing under the laws of the State of Michigan with its principal place of business in
Lansing, Michigan ("Two Men"); and (2) US Pro Media, LLC, a limited liability
company located at 3290 Timberland Drive, Batesville, Arkansas, 72501, Big Mindz
LLC, a tim ited liability company located at 131 Thunderbird Drive 102, Batesville,
Arkansas, 7250 I, and Randall Box, individually and d/b/a Men And Truck Movers, with
an address at 3290 Timberland Drive, Batesville, Arkansas, 7250 l (collectively
"Defendants").

WHEREAS, Two Men, itself or through its franchisees, has used the TWO MEN
AND A TRUCK® mark in connection with moving-related services continuously since
at least as early as 1988.
WHEREAS, Two Men owns registrations ofthe TWO MEN AND A TRUCK®
mark on the Principal Register of the United States Patent and Trademark Office
("USPTO"), U.S. Service Mark Registration Nos. I ,953,964; 2,020,083; 2,217,107;
3,006 ,814; and 3,006,815 .
WHEREAS, Two Men has filed a civil action in the United States District Court
for the District of Arkansas, Case No. 1:12-cv-00112-SWW (the "Lawsuit") alleging
trademark infringement, false advertising, and deceptive trade practices arising out of
Defendants' use of the Two Men and A Truck® mark and variations of it, and
Defendants' advertising and operation of a website at menandtruckmovers.com under the
name "Men and Truck Movers."
WHEREAS, Defendants have denied any wrongdoing and filed a Counterclaim
seeking a declaratory judgment in their favor and cancellation of the Two Men and a
Truck@ registrations; and
WHEREAS, the parties wish to avoid the expense of litigation and to settle their
disputes upon the terms and conditions set forth below.
NOW, THEREFORE, for and in consideration of the mutual covenants and
agreements contained in this Settlement Agreement, the receipt and sufficiency of which
are hereby acknowledged by the parties, the parties agree to the resolution, compromise,
and settlement of their disputes, claims, and controversies in accordance with the
following terms and conditions.

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l.
Two Men's Mark: Defendants acknowledge Two Men's exclusive rights
in the TWO MEN AND A TRUCK Mark and will not contest Two Men's use or
registration of the mark, alone or in combination with other words or designs.

2.

Defendants' Usc of Marks:

Except as expressly set forth in this Agreement, from and after the
Effective Date, Defendants shall cease and desist from all use, both direct and
indirect, of the phrase or mark "Two Men and a Truck" (the "Mark") or any
colorable imitation thereof including without limitation: i) variations of the Mark
that utilize a numerical "2" instead of the word "Two," such as "2 Men and a
Truck;" ii) variations of the Mark that utilize an ampersand instead of the word
·'and," such as "Two Men & a Truck;" iii) ';2 men with a truck"; iv) "2 men in a
truck;" v) two men and truck; vi) 2 men and truck; vii) two men truck; viii) 2 men
truck; ix) any combination or variation of the three words "two" (or "2"), "men,"
and "truck;" and x.) any combination or variation of both "two" (or "2") and
"men," whether alone or in combination with other terms, in any manner
whatsoever, in connection with marketing, selling, or operating moving services
or lead generation for moving services, including, without limitation, in any
domain names, business names, or any print and Internet advertising or
promotion, including keyword ads, HTML metadata that is visible to Internet
users (including in title tags), telephone directories, Internet directories, cmails,
and mass mailers, or in any business forms. Notwithstanding the foregoing,
Defendants may continue to use the domain name menandtruckmovers.com, and
Defendants may bid on terms that include the Mark or variations noted above to
trigger keyword advertising for websites that do not include in the website name
or domain name two of the following three terms: "two" (or homophones
thereof), "men," "truck". Without limiting the generality of the foregoing
prohibitions, Defendants shall by August I, 20 I 3:
a)
remove from their moving service lead generation website at
menandtruckmovers.com and all marketing materials all references to "two men
and a truck" and "two men and a truck type moving services";
b)
cease all bidding on "Two Men and A Truck" and the terms
described above in paragraph 2 i) through x) to trigger keyword advertising for
the menandtruckmovers.com website or for other websites that offer services
related to moving or lead generation for moving companies and that include in the
website name or domain name a combination or variation of at least two of the
following three terms: "two" (or homophones thereof), ''men," "truck."; and
c)
implement and maintain such procedures as are reasonably
necessary to ensure that ads for their lead generation site at
menandtruckmovers.com or for other websites that otter services related to
moving or lead generation for moving companies and that include in the website
name or domain name a combination or variation of at least two of the following

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three terms: "two," "men," "truck" are not displayed to consumers who conduct
online searches on search engine platforms for the Mark or the terms identified in
~ 2 i) through viii) above, including implementing negative match with respect to
those tenns with all Internet search engines from which they purchase keyword
advertising.
3.
Marketing Statements: From and after the Effective Date, Defendants
agree that they shall not imply or represent to consumers that their lead generation
business is a moving company, or owns or operates moving trucks. Without limiting the
generality of the foregoing, Defendants shall remove from their menandtruckmovers.com
website and any other marketing materials used to promote their lead generation business
all statements describing their lead generation business as "providing moving and
relocation services for your local or long distance move" or as a "network of movers."
Defendants may describe their lead generation business as "providing access to movers,"
"providing referrals to movers," "providing access to a network of movers," or the like.
4.
The Lawsuit: Within ten (10) days after the Effective Date, the parties
shall execute and file in the Lawsuit the Final Order and Judgment and Permanent
Injunction on Consent attached as Exhibit 1 hereto.
5.

Releases:

a)
Except for obligations undertaken by Defendants in this
Agreement, Two Men on behalf of itself and its agents, heirs, sureties, successors,
assigns, attorneys, and any other person, corporation, subsidiary, affiliate,
association, limited liability company, or partnership acting through or under Two
Men (collectively the "Two Men Releasers"), hereby release and forever
discharge Defendants and their agents, employees, sureties, predecessors,
successors, assigns, attorneys, and any other person, corporation, subsidiary,
affiliate, association, limited liability company, or partnership acting through or
under Defendants (collectively the "Defendants Releasees"), of and from any and
all manner of action, causes of action, debts, liabilities, claims, and demands of
every kind and nature whatsoever, known or unknown, accrued or unaccrued,
based on facts that occurred prior to the Effective Date. Except as otherwise
indicated above, this release is a full and final release of all claims, and shall
apply to all known, unknown, anticipated, and unanticipated injuries or damages
as ofthe Effective Date. Two Men shall bear its own attorneys' fees and costs.
b)
Except for obligations undertaken by Two Men in this Agreement,
Defendants on behalf of themselves and their agents, heirs, sureties, successors,
assigns, attomeys, and any other person, corporation, subsidiary, affiliate,
association, limited liability company, or partnership acting through or under
Defendants (collectively the "Defendants Releasers"), hereby release and forever
discharge Two Men and its agents, employees, sureties, predecessors, successors,
assigns, attorneys, and any other person, corporation, subsidiary, affiliate,
association, limited liability company, or partnership acting through or under Tvvo

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US 200!! 4081 R75 I 0

Men (collectively the ''Two Men Releasees"), of and from any and all manner of
action, causes of action, debts, liabilities, claims, and demands of every kind and
nature whatsoever, known or unknown, accrued or unaccrued, based on facts that
occurred prior to the Effective Date. Except as otherwise indicated above, this
release is a full and tina! release of all claims, and shall apply to all known,
unknown, anticipated, and unanticipated injuries or damages as of the Effective
Date. Defendants shall bear their own attorneys' fees and costs.
6.
Binding Effect: This Agreement shall be binding upon, and shall inure to
the benefit of, Two Men and its officers, affiliates, successors, and assigns. This
Agreement shall also be binding upon , and shall inure to the benefit of (i) Defendants; (ii)
employees, independent contractors, agents, or any other persons over which Defendants
exercise control, or wh ich are acting in concert with Defendants; and (iii) all
corporations, limited liability companies, partnerships, unincorporated associations, or
businesses for which Defendants act or will act as an officer, in which Defendants have
or will have an ownership interest, and/or over which Defendants exercise or will
exercise control.
7.

Representations:

a) Each Party acknowledges that he or it has knowingly and voluntarily
entered into this Agreement. Each Party represents that he or it has independently
reviewed this Agreement with his or its counsel or have ample opportunity to
consult with counsel and that he or it understands the undertakings, obligations,
and tenns contained in these documents; and
b) Each Party represents that the person whose signature appears below on its
behalf is fully authorized to bind that Party.
8.
Effectuation of Obligations: The Parties agree to execute, deliver, and/or
file any other documents reasonably necessary to fulfill the terms and obligations of this
Agreement.
9.
Notices: Every notice required or permitted by this Agreement shall be in
writing and shall be sent by overnight mai l with a nationally recogni zed overnight mail
courier, which shall be deemed given one business day after delivery to the courier.
lfto Two Men:

Randy Shacka, President
Two Men and A Truck/International, Inc.
3400 Belle Chase Way
Lansing, Michigan 48911

lfto Defendants:

Randall Box
3290 Timberland Drive
Batesville, Arkansas, 72501

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US2008 4081875 10

Either Party may at any time give the other Party written notice of any change to a
new address or a new contact, to wh ich all notices thereafter shal l be sent.

I0.
Remedies for Breach: If an action is commenced between the parties in
connection with the enforcement of any provision of this Agreement, in addition to any
other remedies to w hi ch a party may be entitled, the prevailing party will be entitled to
recover ti·om the other party its reasonable costs and expenses, including attorneys' fees.
11.
No Waiver: The failure of either Party to insist upon strict performance of
any term or to exercise any right shall not be construed as a waiver or a relinquishment
for the future of such term or right, which shall continue in full force and effect.
12.
Severability: If any provision ofthis Agreement is held to be invalid, void
or unenforceable, all other provisions of th is Agreement wi ll nevetiheless remain in full
force and effect.
13.
No Drafting Presumptions: The language in all parts of this Agreement
shall be in all cases construed as a whole according to its meaning and not strictly for or
against any party . In addition, the parties have cooperated in the drafting and preparation
of this Agreement and the.refore agree that any law, legal decision or rule of construction
of contracts resolving ambiguities against the drafting party shall be inapplicable to this
Agreement.

14.
Entire Agreement: This Agreement contains the entire agreement between
the Parties with respect to the subject matter hereot: and supersedes all prior negotiations
or agreements between the Parties. Tt shall be deemed a fu lly integrated agreement. No
modification, amendment, or waiver of any provision of this Agreement shall be effective
unless in writing, specifically identifying the Agreement and signed by all Parties hereto.
15.
Counterparts: This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but which together shall
constitute one and the same instrument.
IN WITNESS WIIEREOF, the Pa1ties have executed this Agreement as of the
date shown below.
TWO MEN AND A TRUCK/
INTERNATIONAL fNC .

~; ~-

Date :

1-'-l1-/l

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US2008 4081875 10

BIG MINDZ, LLC

By:
Its:
Date:

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US2008 4081875 10