Hallmark Hardwoods, Inc. v. Omni Wood Product, LLC et al

Filing 315

STIPULATED PERMANENT INJUNCTION filed by Judge S. James Otero against defendants Caliber Floorings, Inc., Country Wide Hardwood Products, Inc., First Country, Inc., Hallmark Wood America Inc., Fei Li, New Harbors America Inc., Omni Wood Product, LLC, Mingjie Yu. (see document for specifics) (lc)

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CHAPIN FITZGERALD SULLIVAN & BOTTINI LLP
Edward D. Chapin, Esq. (SBN: 053287)
Kenneth M. Fitzgerald, Esq. (SBN: 142505)
Douglas J. Brown, Esq. (SBN: 248673)
550 West “C” Street, Suite 2000
San Diego, California 92101
Tel: [phone]
Fax: [phone]
Attorneys for Plaintiff/Counter-Defendant
HALLMARK HARDWOODS, INC., and
Counter-Defendants TONY PAN, ALICE PAN,
UNITED WOOD FLOOR CORPORATION, and
LONGUST DISTRIBUTING, INC.

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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Case No. 2:10-CV-05896-SJO-JCG

HALLMARK HARDWOODS, INC.
Plaintiff,

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STIPULATED PERMANENT
INJUNCTION BETWEEN PLAINTIFF
HALMARK HARDWOODS, INC., AND
DEFENDANTS OMNI WOOD
PRODUCT, LLC; FIRST COUNTRY
INC., a.k.a. FIRST COUNTRY LLC, a.k.a.
FIRST COUNTRY WOOD; NEW
HARBORS AMERICA, INC.; COUNTRY
WIDE HARDWOOD PRODUCTS, INC.;
CALIBER FLOORING, INC.;
HALLMARK WOOD AMERICA, INC.;
MINGJIE YU, a.k.a. MIKE YU; FEI LI

vs.
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OMNI WOOD PRODUCT, LLC; FIRST
COUNTRY INC., a.k.a. FIRST COUNTRY
LLC, a.k.a. FIRST COUNTRY WOOD; NEW
HARBORS AMERICA, INC.; COUNTRY
WIDE HARDWOOD PRODUCTS, INC.;
CALIBER FLOORING, INC.; HALLMARK
WOOD AMERICA, INC.; MINGJIE YU, a.k.a.
MIKE YU; FEI LI; OLD MASTER
PRODUCTS, INC.; SHAUL DINA;
SOUTHWEST HARDWOOD
DISTRIBUTORS, LLC; TIMOTHY
KENDZLIC; UNIVERSAL DYNAMICS, INC.
and CHUNGSTINE, INC. d/b/a EXPERT
HARDWOOD FLOORING,

JUDGE:

Defendants.

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Hon. S. James Otero

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OMNI WOOD PRODUCT, LLC,
et al.

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Counter-Claimants,
vs.
HALLMARK HARDWOODS, INC.,
et al.
Counter-Defendants,

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Plaintiff/Counter-Defendant HALLMARK HARDWOODS, INC., and Defendants

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OMNI WOOD PRODUCT, LLC; FIRST COUNTRY INC., a.k.a. FIRST COUNTRY LLC,

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a.k.a. FIRST COUNTRY WOOD; NEW HARBORS AMERICA, INC.; COUNTRY WIDE

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HARDWOOD PRODUCTS, INC.; CALIBER FLOORING, INC.; HALLMARK WOOD

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AMERICA, INC.; MINGJIE YU, a.k.a. MIKE YU and FEI LI (collectively, "Defendants"), by

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and through their respective undersigned counsel, hereby stipulate to the following Permanent

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Injunction:

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1. Defendants, their respective officers, directors, employees, agents, subsidiaries,

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distributors, dealers, and all persons in active concert or participation with any of them are

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hereby permanently enjoined and restrained:

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a. from using the stylized Hallmark Hardwoods® word mark, the "Hallmark

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Hardwoods H" word mark, or the "H" mark (Registration No. 3,289,376;

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Registration No. 3,289,349; and Registration No. 3,200,275) (collectively “the

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Hallmark Hardwoods trademarks”) or any other mark confusingly similar to these

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Hallmark Hardwoods trademarks, whether used along or in combination with any

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word or words, in any manner that suggests in any way that Defendants' products

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come from or are somehow sponsored by, affiliated with or endorsed by Hallmark

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Hardwoods, or are manufactured in the same factory or factories or by the same

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people as, the products of Hallmark Hardwoods;

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b. from using the names Hallmark or Hallmark Hardwoods as a source-identifier for
any of their product lines, or from stating or suggesting that they have the ability
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to procure, distribute, or sell any Hallmark Hardwoods products.

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c. from stating or suggesting that Hallmark Hardwood products can be obtained

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from any source other than Hallmark Hardwoods, Inc. or its authorized dealers.

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2. .Defendants will cease any use of the following product line names on any brochure,

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sample, display rack, website or any other marketing or advertising materials, and on any

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products: Heirloom, Silverado.

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3. Six (6) months after the entry of this order, Defendants shall destroy or surrender, at their

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expense, any and all inventory, marketing materials, product literature, labels, display racks,

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warranty sheets, maintenance guides, or any other promotional, sales, advertising or customer

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service materials that bear the Hallmark Hardwoods trademarks in its possession, or they shall

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repackage or relabel all such items to remove any of the Hallmark Hardwoods trademarks.

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4. Within thirty (30) days of the parties’ execution of this stipulated injunction, Defendants

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shall remove from Internet web sites they own, operate, or control any Hallmark Hardwoods

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trademark, and also shall transfer to Hallmark Hardwoods, at defendants’ expense, the domain

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name www.hallmarkwoodfloor.com.

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5. Defendants shall replace the name of Hallmark Wood America, Inc., and the name of any

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active business registration that contains the word “Hallmark,” including any fictitious business

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names, with a non-infringing name.

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DATED:

March 16, 2012
By:
Hallmark Hardwoods, Inc.

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DATED:

March 16, 2012
By:
Omni Wood Product, LLC

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DATED:

March 16, 2012
By:
Mingjie Yu aka Mike Yu

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DATED:

March 16, 2012

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By:
Fei Li

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DATED:

March 16, 2012
By:

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First Country, Inc. aka First Country, LLC aka
First Country Wood

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DATED:

March 16, 2012
By:
New Harbors America, Inc.

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DATED:

March 16, 2012

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By:
Country Wide Hardwood Products, Inc.

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DATED:

March 16, 2012

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By:
Caliber Flooring, Inc.

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DATED:

March 16, 2012
By:

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Hallmark Wood America, Inc.
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.

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APPROVED AS TO FORM:

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DATED: March 16, 2012

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CHAPIN FITZGERALD SULLIVAN & BOTTINI LLP
By:
Kenneth M. Fitzgerald, Esq.
Douglas J. Brown, Esq.

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Attorneys for Plaintiff/Counter-Defendant
HALLMARK HARDWOODS, INC., and
Counter-Defendants TONY PAN, ALICE PAN,
UNITED WOOD FLOOR CORPORATION and
LONGUST DISTRIBUTING, INC.

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DATED:

March 16, 2012

FOX ROTHSCHILD, LLP
By:
Jeffrey S. Kravitz, Esq.
Thomas T. Chan, Esq.
Steven S. Hanagami, Esq.
Samuel Alberstadt, Esq.

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Attorneys for Defendants OMNI WOOD
PRODUCT, LLC; FIRST COUNTRY INC.,
a.k.a. FIRST COUNTRY LLC, a.k.a. FIRST
COUNTRY WOOD; NEW HARBORS
AMERICA, INC.; COUNTRY WIDE
HARDWOOD PRODUCTS, INC.; CALIBER
FLOORING, INC.; HALLMARK WOOD
AMERICA, INC.; MINGJIE YU, a.k.a. MIKE
YU; FEI LI

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ORDER

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IT IS SO ORDERED.

Thus, the Stipulated Injunction is GRANTED as stated above.

March 16, 2012.

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Dated:
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United States District Judge

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