99 Cents Only Stores v. El Super 99 et al

Filing 34

FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION by Judge Margaret M. Morrow. ( MD JS-6. Case Terminated ) (bp)

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Boris Zelkind (State Bar No. 214,014)
[e-mail]
KNOBBE, MARTENS, OLSON & BEAR, LLP
12790 El Camino Real, Suite 100
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]

JS-6

Steven J. Nataupsky (SBN 155,913)
[e-mail]
Ali S. Razai (SBN 246,922)
[e-mail]
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
99¢ ONLY STORES
Thomas M. O’Leary (SBN 126146)
[e-mail]
Brian C. Vanderhoof (SBN 248511)
[e-mail]
ROPERS, MAJESKI, KOHN & BENTLEY PC
515 South Flower Street Suite 1100
Los Angeles, CA 90071
Telephone: [phone];
Facsimile: [phone]
Attorneys Defendants EL SUPER 99
d/b/a 99¢ PLUS STORES and AVIEL LEVI
IN THE UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION
99¢ ONLY STORES, a California
corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
EL SUPER 99 d/b/a 99¢ PLUS STORES )
a California company, AVIEL LEVI, an )
individual, and DOES 1-10,
)
INCLUSIVE,
)
)
Defendants.
)
)

Civil Action No.
CV12-02256 MMM(JEMx)
[PROPOSED] FINAL CONSENT
JUDGMENT AND PERMANENT
INJUNCTION

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Plaintiff 99¢ ONLY STORES filed the First Amended Complaint

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(“FAC”) in this action charging EL SUPER 99 D/B/A 99¢ PLUS STORES,

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AVIEL LEVI, and DOES 1-10, INCLUSIVE (collectively, “Defendants”) with

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false designation of origin, federal trademark infringement, trademark dilution,

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unfair competition, and related causes of action. The parties have agreed to a

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settlement of the matters in issue before them and that the Court shall enter the

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following Final Consent Judgment and Permanent Injunction. IT IS HEREBY

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STIPULATED, ADJUDGED, and DECREED as follows:
1.

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This Court has subject matter jurisdiction over this action as well as

personal jurisdiction over the parties.

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2.

Venue is proper in this judicial district.

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3.

Defendants acknowledge that Plaintiff owns the following valid

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and enforceable federal trademarks (hereinafter “99¢ Only Stores marks”):

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Registration No. 1,395,427 for the mark “ONLY 99¢ ONLY”;

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Registration No. 1,455,937 for the mark “99¢ ONLY STORES”;

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Registration No. 1,712,553 for the mark “DRIVER CARRIES 99¢ ONLY”;

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Registration No. 1,724,475 for the mark “OPEN 9 DAYS A WEEK 9 AM –

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9 PM”;

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Registration No. 1,730,121 for the mark “ONLY 99¢ ONLY”;

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Registration No. 1,741,928 for the mark “99¢ ONLY STORES & Design”;

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Registration No. 1,747,549 for the mark “99¢ ONLY”;

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Registration No. 1,947,809 for the mark “99¢ ONLY STORES”;

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Registration No. 1,959,640 for the mark “99¢”;

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Registration No. 2,401,900 for the mark “99¢ ONLY STORES & Design”;

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Registration No. 2,761,939 for the mark “99 THANKS”;

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Registration No. 3,132,449 for the mark “HIGHWAY 99”;

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Registration No. 3,132,450 for the mark “HIGHWAY 99 & Design”; and

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Registration No. 3,144,871 for the mark “HIGHWAY 99 YOUR ROAD TO

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GREAT SAVINGS.”

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4.

The following Federal registrations owned by 99¢ Only Stores

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(“99¢”) have become incontestable pursuant to Section 15 of the Lanham Act,

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15 U.S.C. § 1065, and are conclusive evidence of 99¢’s exclusive right to use

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these marks: Reg. Nos. 1,455,937; 1,712,553; 1,730,121; 1,741,928; 1,747,549;

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1,947,809; 1,959,640; and 2,401,900.

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5.

99¢ has developed a protectable family of 99¢ Marks that it uses

extensively throughout its business and which emphasizes the common “99”
element of its family of 99¢ Marks in slogans, promotions, and advertising.
6.

99¢ is the owner of unique, distinctive, and enforceable trade dress,

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including the overall visual impression created by 99¢’s customary combination

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of purple, red, pink and/or blue color schemes, the customary colors of the

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“99¢” and “99¢ ONLY STORES” marks, the pink awnings, and the purple,

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blue, and green horizontal stripes.

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7.

Defendants, including REPUBLIC EQUITIES, INC., d/b/a EL

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SUPER 99, have operated and continue to operate the retail business at the

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premises located at 2625 South Western Avenue, Los Angeles, California,

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90018, and operated said business under the name “99¢ Plus Stores” from

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approximately the beginning of February, 2012 through approximately March

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17, 2012.

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8.

Defendants, including REPUBLIC EQUITIES, INC., d/b/a EL

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SUPER 99, have misappropriated Plaintiff’s trademarks and trade dress in

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conjunction with Defendants’ operation of its El Super 99 store location at 2625

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South Western Avenue, Los Angeles, California 90018 (the “Infringing Store”)

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from approximately the beginning of February, 2012 through approximately

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March 17, 2012. Defendants’ operation during said period of the Infringing

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Store also diluted 99¢’s marks registered in the State of California in violation
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of California Business & Professional Code §§ 14245 and 14247. Defendants

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misappropriation of Plaintiff’s trademarks and trade dress during said period

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also constituted a violation of 15 U.S.C. §1125(a), California Business and

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Professional Code §17200 et seq., and common law unfair competition.

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Defendants, including REPUBLIC EQUITIES, INC., d/b/a EL

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SUPER 99, and their officers, agents, servants, employees, and all those persons

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in active concert or participation with them who receive actual notice of the

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injunction, are immediately enjoined and restrained from:

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A. Using, copying, simulating, or in any other way infringing 99¢’s

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family of federally registered, state registered, and common law

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service marks, trade names, and trade dress, including, but not

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limited to, Federal Registration Nos. 1,959,640; 2,401,900;

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1,947,809; 1,747,549; 1,741,928; 1,730,121; 1,712,553; 1,455,937;

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1,395,427; 2,761,939; 3,132,449; 3,132,450; and 3,144,871; and

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California State Registration Nos. 23,078; 23,958; 40,745; and

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42,970;

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B. Displaying any signage or other business identifiers containing

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prominently featured characters “99”, “99¢”, “$.99”, or “$0.99” or

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any characters confusingly similar thereto, including, but not

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limited to, display on building signs, directional signs, monument

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signs, banners, advertising media, menus, business cards,

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brochures;

and

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C. Displaying interior signs or advertising using “99,” “99¢,” “$.99,”

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or “99 cents” unless associated with a product being sold for that

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price;

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D. Using “99”, “99¢”, “$.99”, or “$0.99”, or any mark confusingly

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similar thereto, as the name or part of the name of Defendants’

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business or corporation;
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E. Using 99¢’s unique and distinctive trade dress, including the

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overall visual impression created by the combination and

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arrangement of the elements of 99¢’s customary purple, red, pink

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and/or blue color schemes, the customary colors of the “99¢” and

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“99¢ ONLY STORES” marks, the pink awnings, and the purple,

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blue, and green horizontal stripes;

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F. Using storefront awnings having color hues that are confusingly

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similar to 99¢’s customary purple, pink, blue, and/or red color hues

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as the background color of the awnings and signage on its
storefront; and

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G. Using oval signs containing confusingly similar signage to 99¢’s

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federally registered and common law trademarks that are on or

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visible from the exterior of Defendants’ building.

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10.

The terms in Paragraph 9 shall remain in force in perpetuity.

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11.

Nothing in the Judgment and Permanent Injunction shall be

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construed as limiting or restricting Defendants from using the mark 98¢ Plus or

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from otherwise using the characters and numerals “98”, “98¢”, “$.98”, or

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“$0.98” as long as otherwise non-infringing, in accordance with paragraph 9

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above.
12.

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The parties affirmatively waive any and all rights to appeal this

Final Consent Judgment and Permanent Injunction.
13.

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THIS COURT SHALL RETAIN JURISDICTION of this action to

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the extent necessary to ensure full compliance with all obligations imposed by

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the Permanent Injunction Order, including the enforcement this Stipulated

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Permanent Injunction by way of contempt or otherwise. The obligations of the

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parties, as set forth in the Stipulated Permanent Injunction SHALL BE

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ENFORCED, if necessary, exclusively by this Court.

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This is a final judgment. Subject to this Court's limited retention of

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jurisdiction as set forth above, all claims filed in this action SHALL BE

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DISMISSED from this action WITH PREJUDICE.

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15.

Having addressed each of the claims in this action, this case

SHALL BE CLOSED.
After this Consent Judgment has been entered by the Court, 99¢ shall file
with the Court a proof of service thereof within ten (10) days thereafter.
IT IS SO STIPULATED AND AGREED:

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KNOBBE, MARTENS, OLSON & BEAR, LLP

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Dated: September 28, 2012

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By: /s/Boris Zelkind
Steven J. Nataupsky
Boris Zelkind
Ali S. Razai
Attorneys for Plaintiff 99¢ ONLY STORES

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ROPERS, MAJESKI, KOHN & BENTLEY PC

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Dated: September 28, 2012

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By: /s/Brian C. Vanderhoof (with permission)
Brian C. Vanderhoof
Attorney for Defendants EL SUPER 99 d/b/a 99¢
PLUS STORES and AVIEL LEVI

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IT IS SO ORDERED AND DECREED, AND FINAL JUDGMENT IS

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HEREBY ENTERED.

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Dated: September 28, 2012
13777743/081012

Honorable Margaret M. Morrow
UNITED STATES DISTRICT COURT JUDGE

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