Principal Financial Services Inc v. Principal Tax Group Inc

Filing 16

CONSENT JUDGMENT by Judge Christina A. Snyder: IT IS HEREBY ORDERED that Defendant PRINCIPAL TAX GROUP, INC., as well as any of its owners, officers, agents, servants, employees, successors and assigns and all other persons in active concert or parti cipation with it, is hereby immediately and permanently enjoined and restrained re using any PRINCIPAL and/or PRINCIPLE formative trademark, trade name and/or domain name, etc. Defendant is further ordered to file with this Court and serve upon counsel for Plaintiff on or before 7/30/2013 a report in writing, under oath, outlining in detail all steps taken in an effort to comply with this FINAL JUDGMENT AND PERMANENT INJUNCTION BY CONSENT. See document for details. (gk)

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Ian A. Stewart (State Bar No. 250689)
[e-mail]
Diana M. Estrada (State Bar No. 212702)
[e-mail]
WILSON, ELSER, MOSKOWITZ,
EDELMAN & DICKER LLP
555 South Flower Street, Suite 2900
Los Angeles, California 90071-2407
Telephone:[phone]
Facsimile: [phone]
Attorneys for Plaintiff,
PRINCIPAL FINANCIAL SERVICES, INC.

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IN THE UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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PRINCIPAL FINANCIAL
SERVICES, INC.,
an Iowa Corporation,

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Plaintiff,

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v.

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PRINCIPAL TAX GROUP, INC.,
a Delaware Corporation,

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Defendant.

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Case No.:

CV13-2384-CAS(PJWx)

The Honorable Christina A. Snyder

[PROPOSED] CONSENT
JUDGMENT

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This action having been commenced by Plaintiff, PRINCIPAL FINANCIAL

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SERVICES, INC. (hereinafter “Plaintiff”) against Defendant, PRINCIPAL TAX

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GROUP, INC. (“Defendant”), and the parties having agreed to settle this matter

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and to terminate this action by a Final Judgment and Permanent Injunction by

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Consent, and the Court being duly advised, the Court finds as follows:

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[PROPOSED] CONSENT JUDGMENT
1842245.1

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FINDINGS OF FACT AND CONCLUSIONS OF LAW
1.

This is an action for trademark infringement, unfair competition and

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trademark dilution under the laws of the United States, Title 15, United States

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Code, and under the laws of the State of California. This Court has jurisdiction

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over the subject matter of the Complaint in this action based on 28 U.S.C. §§ 1332,

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1367 and 1338 and 15 U.S.C. § 1121. This Court has personal jurisdiction over the

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Defendant. Venue is proper within this judicial district.

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2.

Plaintiff is a corporation duly organized and existing under the laws of

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the State of Iowa with its principal place of business at 711 High Street, Des

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Moines, Iowa 50392, and Plaintiff is the owner of the famous family of

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PRINCIPAL and PRINCIPAL formative trademarks (“PRINCIPAL Family of

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Marks”). Plaintiff, through its various member companies and licensees, uses the

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PRINCIPAL Family of Marks throughout the world in connection with a variety of

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services including, but not limited to, tax consultation, financial, banking,

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insurance, investment, investment management, investment advisory, estate

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planning, underwriting, lending, mutual funds, real estate, retirement, employee

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benefits, global asset management, and healthcare related services.

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3.

Defendant is an entity organized and existing under the laws of the

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State of Delaware, located at 12304 Santa Monica Blvd., Ste. 350, Los Angeles,

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California 90025, and offering tax-related services in interstate commerce under

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the trade name and service mark PRINCIPAL TAX GROUP, INC. (hereinafter the

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“PRINCIPAL TAX GROUP Mark”). Defendant is conducting business within the

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State of California and in interstate commerce.

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4.

Defendant acknowledges that Plaintiff, via its affiliates, licensees or

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predecessors-in-interest, has used one or more of the marks making up its famous

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PRINCIPAL Family of Marks since at least as early as 1960 in connection with

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financial analysis and consulting, management of securities and securities

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brokerage services.
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[PROPOSED] CONSENT JUDGMENT
1842245.1

5.

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Defendant acknowledges that Plaintiff and/or its affiliates, licensees,

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or predecessors-in-interest have used one or more of the marks making up the

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PRINCIPAL Family of Marks since at least as early as 1985 in interstate

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commerce in connection with, inter alia, tax related services.
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Defendant acknowledges that Plaintiff is the owner of all common law

rights in the PRINCIPAL Family of Marks.
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Any unauthorized advertising, promotion, distribution or sale of tax

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consultation, financial, banking, insurance, investment, investment management,

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investment advisory, estate planning, underwriting, lending, mutual funds, real

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estate, retirement, employee benefits, global asset management, and/or healthcare

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related services by Defendant utilizing a trademark or trade name incorporating

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PRINCIPAL and/or PRINCIPLE is likely to confuse, mislead or deceive the public

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into believing that such goods or services originate from or are sponsored or

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authorized by Plaintiff and constitutes trademark infringement, unfair competition

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and trademark dilution in violation of Federal law and the laws of the State of

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California.
8.

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The parties have agreed to the entry of this Order as a part of a

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Settlement and each party has read this Order and agrees to be fully bound by its

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terms.

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IT IS HEREBY ORDERED:

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A.

Defendant PRINCIPAL TAX GROUP, INC., as well as any of its

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owners, officers, agents, servants, employees, successors and assigns and all other

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persons in active concert or participation with it, is hereby immediately and

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permanently enjoined and restrained from:
1.

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using

any

PRINCIPAL

and/or

PRINCIPLE

formative

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trademark, trade name and/or domain name in connection with

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any tax consultation, financial, banking, insurance, investment,

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investment management, investment advisory, estate planning,
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[PROPOSED] CONSENT JUDGMENT
1842245.1

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underwriting, lending, mutual funds, real estate, retirement,

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employee benefits, global asset management, and/or healthcare

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related services, including but not limited to any use on any

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signage, electronic materials, branding materials, domain

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names, web sites, social media and other printed or promotional

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materials relating to such services;
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making any false and/or misleading statements in the

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advertising, promotion and offering for sale of tax consultation,

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financial,

banking,

insurance,

management,

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underwriting, lending, mutual funds, real estate, retirement,

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employee benefits, global asset management, and/or healthcare

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related services that would be likely to confuse, mislead and/or

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deceive customers and/or potential customers into believing

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that such services originate from Plaintiff; and
3.

advisory,

estate

investment

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investment

investment,

planning,

assisting, aiding and/or abetting any other person and/or

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business entity in engaging in and/or performing any of the

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activities enjoined herein.

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B.

Defendant is further ordered to take the following steps by July 30,

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2013:

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1.

Cease using the trade name and service mark PRINCIPAL

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TAX GROUP, INC., and any PRINCIPAL and/or PRINCIPLE

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formative trademark, trade name, or domain name in

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connection with its business operations and tax-related services,

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including but not limited to use on signage, electronic materials,

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branding materials, domain names, web sites, social media and

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other printed or promotional materials relating to such services.
2.

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Notwithstanding the terms herein, submit and/or file all
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[PROPOSED] CONSENT JUDGMENT

1842245.1

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necessary documentation to effectuate a change of name,

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pursuant to Section 1 herein, with any and all licensing bodies

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and other such governmental and/or regulatory agencies. The

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new name(s) shall not incorporate, contain or resemble in any

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confusingly similar fashion any of the PRINCIPAL Family of

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Marks set forth in the Complaint and/or the terms PRINCIPAL

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or PRINCIPLE.

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D.

Principal Tax Group agrees and is hereby ordered to expressly

abandon trademark application Serial No. 85/569,108 upon execution of this
Agreement.
E.

Defendant is further ordered to provide written notice within thirty

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(30) days to all telephone directories, trade directories and any other business or

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promotional directories or journals Defendant has used or appeared in, informing

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such publication of its new name(s) and requesting that such publication change

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Defendant’s listing(s) in the next printing.

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F.

Defendant is further ordered to file with this Court and serve upon

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counsel for Plaintiff on or before July 30, 2013 a report in writing, under oath,

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outlining in detail all steps taken in an effort to comply with this FINAL

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JUDGMENT AND PERMANENT INJUNCTION BY CONSENT.

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IT IS FURTHER ORDERED:

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If there are any violations of this Judgment, Plaintiff may or seek full

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damages and profits, trebled as prescribed by Section 35(a) of the Lanham Act, 15

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U.S.C. § 1117(a), as well as its costs and attorneys’ fees and any such other and

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further relief to which it may be entitled. The jurisdiction of this Court is retained

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for the purpose of making any other orders necessary or proper to construe, enforce

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or implement the terms of this Judgment and to punish or award damages or

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violations thereof.

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[PROPOSED] CONSENT JUDGMENT
1842245.1

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The parties have consented to the entry of this Judgment without further
notice and hereby waive any right to appeal.
PRINCIPAL FINANCIAL SERVICES, INC.

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Date: July 3, 2013

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WILSON, ELSER, OSKOWITZ,
EDELMAN & DICKER LLP

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By: /s/Ian A. Stewart
Ian A. Stewart
Diana M. Estrada
Attorneys for Plaintiff,
PRINCIPAL FINANCIAL SERVICES, INC.

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IT IS SO ORDERED.

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Dated: July 8, 2013

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____________________________________
Christina A. Snyder
United States District Judge

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[PROPOSED] CONSENT JUDGMENT
1842245.1