Kidsart, Inc. v. Kidzart Texas, LLC

Filing 19

CONSENT JUDGMENT by Judge Percy Anderson: Upon Stipulation 18 , it is hereby ORDERED, ADJUDGED, AND DECREED that: Plaintiff KidsArt, Inc. ("KidsArt") and each of its officers, agents, servants, employees, and all others acting on KidsArt&# 039;s behalf or in concert or privity with KidsArt, shall have the exclusive right to use and register the name and mark KIDSART within and for the KidsArt Trade Area. Defendant KidzArt Texas, LLC ("KidzArt") and each of its officers, agent s, servants, employees, and all others acting on KidzArt's behalf or in concert or privity with KidzArt shall have the exclusive right to use and register the name and mark KIDZART within and for the KidzArt Trade Area. KidsArt shall have one ye ar to change the name and mark under which any existing studios or programs operate outside the KidsArt Trade Area, etc. KidzArt shall have one year to change the name and mark under which any existing studios or programs operate outside the KidzArt Trade Area, etc. The Patent and Trademark Office is hereby directed to: (a) Grant to KidzArt a concurrent use registration for the mark KIDZART for "educational services, namely, conducting classes in the field of art and distributing materials in connection therewith" for a registration limited to the area comprising the United States, its territories or possessions, except for the counties of San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange, Riversid e, San Diego, and Imperial in the state of California; (b) Grant to KidsArt a concurrent use registration for the mark KIDSART for "educational services in the nature of Art Schools and conducting classes and workshops in the field of Art" a registration limited to the area comprising the counties of San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego, and Imperial in the state of California; and, (c) Cancel Supplemental Registration No. 2491627. Upon issuance of the aforesaid registrations, and except as otherwise provided herein, all claims filed by the parties to this proceeding shall be dismissed with prejudice and each party shall bear its own costs and attorneys' fees it has incurred in connection with this matter without recourse to any other party. The action is hereby placed on Inactive Status pending the issuance of the above-referenced registrations. KidsArt shall file a request for dismissal within 30 days after the issuance of the registrations. (gk)

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ARENT FOX LLP
A T T O R N E Y S A T LAW LO S A N G E L E S

ROBERT C. O'BRIEN, State Bar No. 154372 DAVID G. BAYLES, State Bar No. 208112 [e-mail] ARENT FOX LLP 555 West Fifth Street, 48th Floor Los Angeles, CA 90013 Telephone: [phone] Facsímile: 213 629-7401 MICHAEL A. GROW, Admitted Pro Hac Vice ARENT FOX LLP 1050 Connecticut Avenue, NW Washington, DC 20036-5339 Telephone: [phone] Facsimile: 202 857-6395 Attorneys for Plaintiff KIDSART, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION KIDSART, INC. a California Corporation, Plaintiff, v. KIDZART TEXAS, LLC, a Nevada Corporation, Defendant. Case No. CV08-6185 PA (SSx) CONSENT JUDGMENT NOTE: CHANGES MADE BY THE COURT

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ARENT FOX LLP
A T T O R N E Y S A T LAW LO S A N G E L E S

The parties, having (i) entered into a settlement agreement resolving this dispute and (ii) jointly moved for entry of this Consent Judgment terminating this proceeding, and for good cause shown, it is hereby ORDERED, ADJUDGED, AND DECREED that: 1. This Court has jurisdiction over the subject matter of this action under § 39 of the Trademark Act, 15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331, 1332, 1338 and 1367. 2. Plaintiff KidsArt, Inc. ("KidsArt") is a corporation organized and existing under the laws of California with a place of business in La Crescenta, California and with a trade area that includes the following 10 counties in Southern California: San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego and Imperial (the "KidsArt Trade Area"). 3. Defendant KidzArt Texas, LLC ("KidzArt") is a corporation organized and existing under the laws of the State of Nevada with a place of business in New Braunfels, Texas 78130 and with a trade area that includes all of the United States except for the 10 counties in Southern California: San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego and Imperial. (the KidzArt Trade Area). 4. Pursuant to 15 U.S.C. § 1119, this Court hereby declares that KidsArt is the owner of all right, title, and interest in and to the trademark or service mark KIDSART in connection with its goods and services including educational services in the nature of art schools and conducting classes and workshops in the field of art; and the KIDSART mark is valid and has acquired secondary meaning through many years of substantially exclusive and continuous use in the KidsArt Trade Area. /// ///
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ARENT FOX LLP
A T T O R N E Y S A T LAW LO S A N G E L E S

5.

Pursuant to 15 U.S.C. § 1119, this Court hereby declares that

KidzArt has used KIDZART as a trademark or service mark in connection with franchise services, namely, offering technical assistance in the establishment and/or operation of educational programs and after-school enrichment programs; and educational services, namely, conducting classes in the field of art and distributing materials in connection therewith; and the KIDZART mark is valid and has acquired secondary meaning through many years of substantially exclusive and continuous use in the KidzArt Trade Area. 6. KidsArt and each of its officers, agents, servants, employees, and all others acting on KidsArt's behalf or in concert or privity with KidsArt, shall have the exclusive right to use and register the name and mark KIDSART within and for the KidsArt Trade Area. 7. KidzArt and each of its officers, agents, servants, employees, and all others acting on KidzArt's behalf or in concert or privity with KidzArt shall have the exclusive right to use and register the name and mark KIDZART within and for the KidzArt Trade Area. 8. KidsArt shall have one year to change the name and mark under which any existing studios or programs operate outside the KidsArt Trade Area, provided, however, that KidsArt shall not be required to change any corporate names of any existing companies that contain the word "KidsArt" so long as any such name is not used as a trademark, service mark or trade name on any signs, advertisements or other materials disseminated to actual or potential customers in the KidzArt Trade Area. /// /// /// ///
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ARENT FOX LLP
A T T O R N E Y S A T LAW LO S A N G E L E S

9.

KidzArt shall have one year to change the name and mark under

which any existing studios or programs operate outside the KidzArt Trade Area, provided, however, that KidzArt shall not be required to change any corporate names of any existing companies that contain the word "KidzArt" so long as any such name is not used as a trademark, service mark or trade name on any signs, advertisements or other materials disseminated to actual or potential customers in the KidsArt Trade Area. 10. Pursuant to 15 U.S.C. 1119 and 1052(d) the court declares that no likelihood of confusion, mistake or deception is likely to occur if the parties use their respective marks in their respective trade areas and the Patent and Trademark Office is hereby directed to: (a) Grant to KidzArt a concurrent use registration for the mark KIDZART for "educational services, namely, conducting classes in the field of art and distributing materials in connection therewith" for a registration limited to the area comprising the United States, its territories or possessions, except for the counties of San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego, and Imperial in the state of California; (b) Grant to KidsArt a concurrent use registration for the mark KIDSART for "educational services in the nature of Art Schools and conducting classes and workshops in the field of Art" a registration limited to the area comprising the counties of San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego, and Imperial in the state of California; and, (c) 11. Cancel Supplemental Registration No. 2491627. Upon issuance of the aforesaid registrations, and except as

otherwise provided herein, all claims filed by the parties to this proceeding shall be dismissed with prejudice and each party shall bear its own costs and attorneys' fees it has incurred in connection with this matter without recourse to any other party. In the meantime, the Trial and Final Pretrial Conference dates currently set in the action are removed from the Court's calendar and all related deadlines are stayed.
LA/206044.1
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ARENT FOX LLP
A T T O R N E Y S A T LAW LO S A N G E L E S

The action is hereby placed on Inactive Status pending the issuance of the abovereferenced registrations. KidsArt shall file a request for dismissal within 30 days after the issuance of the registrations. 12. Consent Judgment. IT IS SO ORDERED. The Court hereby retains jurisdiction over this matter for purposes of enforcing the settlement agreement between the parties and this

November 17, 2009 Dated

__________________________________ UNITED STATES DISTRICT JUDGE

Respectfully submitted and consented to: KidsArt, Inc.: By:__________________ Sher Warren Its: Vice President KidzArt Texas, LLC: By:____________________ Sue Bartman Its: CEO

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