Ulthera, Inc. v. Naoko Marquez

Filing 27

CONSENT JUDGMENT by Judge Philip S. Gutierrez in favor of Ulthera, Inc. against Naoko Marquez. (MD JS-6. Case Terminated) (bm)

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1 2 3 4 5 6 7 8 9 10 11 12 13 John B. Sganga, Jr. (SBN 116,211) john.sganga@knobbe.com Matthew S. Bellinger (SBN 222,228) matt.bellinger@knobbe.com Justin J. Gillett (SBN 298,150) justin.gillett@knobbe.com KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Main Street Fourteenth Floor Irvine, CA 92614 Phone: (949) 760-0404 Facsimile: (949) 760-9502 E-FILED 12/5/17 JS-6 Attorneys for Plaintiff ULTHERA, INC. Songfong Tommy Wang (SBN 272,409) twang@thewangiplaw.com Leontyne Fan (SBN 285,042) lfan@thewangiplaw.com WANG IP LAW GROUP, P.C. 18645 E. Gale Ave., Suite 205 City of Industry, CA 91748 Attorneys for Defendant NAOKO MARQUEZ 14 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE CENTRAL DISTRICT OF CALIFORNIA 17 18 19 20 21 22 23 24 25 26 27 28 ) Case No. 2:16-CV-07518-PSG-SS ) ) ) CONSENT JUDGMENT ) Plaintiff, ) ) Honorable Philip S. Gutierrez v. ) ) NAOKO MARQUEZ, an individual, ) a/k/a Quena Marquez and d/b/a Vortex ) ) Advanced Esthetics & Spa, Bijouxx ) Organic Spa and Ultherapy Room, ) ) ) Defendants. ) ULTHERA, INC., a Delaware corporation, 1 Plaintiff Ulthera, Inc. (“Plaintiff”) and Defendant Naoko Marquez a/k/a 2 Quena Marquez and d/b/a Vortex Advanced Esthetics & Spa, Bijouxx Organic 3 Spa and Ultherapy Room (collectively, “Defendant”), in settlement of this 4 matter, consent and agree to the terms and conditions of this Final Consent 5 Judgment and Permanent Injunction. 6 IT IS HEREBY ORDERED, ADJUDGED, AND DECREED AS 7 FOLLOWS: 8 1. This Court has original subject matter jurisdiction over Plaintiff’s 9 claims that relate to trademark infringement, trademark counterfeiting, and false 10 designation of origin pursuant to 15 U.S.C. §§ 1116 and 1121(a). The Court 11 also has original subject matter jurisdiction over those claims pursuant to 28 12 U.S.C. §§ 1331 and 1338(a) and (b), as these claims arise under the laws of the 13 United States. 14 remaining claims which arise under state statutory and common law pursuant to 15 28 U.S.C. § 1367(a). 16 17 18 19 20 2. This Court has supplemental jurisdiction over Plaintiff’s Venue is proper in this Judicial District pursuant to 28 U.S.C. § 1391(b) and (c). 3. Plaintiff Ulthera, Inc. is a Delaware corporation having its principal place of business in Mesa, Arizona. 4. Defendant Naoko Marquez is also known as Quena Marquez and is 21 an individual residing in this Judicial District. Defendant Naoko Marquez is 22 doing business or has done business under or through the fictitious business 23 names Vortex Spa or Vortex Advanced Esthetics & Spa, Bijouxx Organic Spa, 24 and Ultherapy Room. 25 5. Plaintiff is the owner of the following U.S. Trademark 26 Registrations for the ULTHERA® and ULTHERAPY® marks (“the Ulthera 27 Marks”): U.S. Trademark Reg. Nos. 3,747,151 (ULTHERA®), 4,237,131 28 (ULTHERA®), and 3,890,441 (ULTHERAPY®). -1- Only Plaintiff’s authentic 1 ULTHERA® System is used to perform the ULTHERAPY® ultrasound 2 procedure. 3 6. Without permission or consent from Plaintiff, Defendant has used 4 the Ulthera Marks in connection with advertising, selling, and performing 5 ultrasound procedures. While Defendant advertised, sold, and performed 6 procedures using the Ulthera Marks, the services advertised and provided by 7 Defendant were not, in fact, authentic ULTHERAPY® procedures. Defendant 8 used a non-genuine machine, marked with counterfeit copies of the ULTHERA® 9 mark, to perform those services. To resolve this lawsuit, the Defendant has 10 agreed and consented to the entry of this Consent Judgment with regard to all 11 claims and causes of action set forth in the Complaint (ECF Doc. No. 1). 12 NOW, THEREFORE, IT IS FURTHER ORDERED, ADJUDGED, AND 13 DECREED, AS FOLLOWED: 14 A. Final judgment is entered in favor of Plaintiff and against 15 Defendant on Plaintiff’s claims for: 1) trademark counterfeiting under 15 U.S.C. 16 § 1114, 2) trademark infringement under 15 U.S.C. § 1114, 3) false designation 17 of origin under 15 U.S.C. § 1125(a), 4) unfair competition under California 18 Business & Professions Code §§ 17200 et seq., and 5) unfair competition under 19 the common law of the State of California. 20 B. Defendant and all entities through which Defendant conducts 21 business, any officers, principals, agents, servants, employees, successors, 22 and/or assigns thereof, and all other persons in active concert or participation 23 with any of them who receive actual notice of this injunction by personal service 24 or otherwise, are permanently restrained and enjoined from: 25 i. using the Ulthera Marks without Plaintiff’s written permission, 26 with Defendant’s products or services, in advertising, promoting, 27 performing, selling, or offering to sell Defendant’s products or 28 services, and/or using confusingly similar variations of the Ulthera -2- 1 Marks in any manner that is likely to create the impression that 2 Defendant or Defendant’s products or services originate from 3 Plaintiff, are endorsed by Plaintiff, or are connected in any way 4 with Plaintiff; 5 ii. distributing, shipping, reproducing, displaying, advertising, 6 marketing, promoting, transferring, selling, and/or offering to sell 7 products or services bearing the Ulthera Marks without Plaintiff’s 8 written permission, and/or any confusingly similar marks; 9 iii. otherwise infringing the Ulthera Marks; 10 iv. falsely designating the origin of Defendant’s products or services as originating from Ulthera; 11 12 v. Ulthera Marks; and 13 14 vi. causing a likelihood of confusion or injury to Plaintiff’s business reputation. 15 16 unfairly competing with Plaintiff in any manner related to the C. Within five (5) business days after entry of this Final Consent 17 Judgment and Permanent Injunction, Defendant shall deliver to counsel for 18 Plaintiff all literature, advertising, goods (including, but not limited to, the 19 device shown in Paragraph 29 of Plaintiff’s Complaint), and other materials 20 displaying any of the Ulthera Marks. 21 D. Defendant shall serve on Plaintiff within fourteen (14) business 22 days after the date of this Order, a report, in writing, under oath, setting forth in 23 detail the manner and form in which it has complied with this injunction. 24 E. This Court shall retain jurisdiction over this matter for all purposes, 25 including for the purpose of enforcing the terms and provisions of this Final 26 Consent Judgment and Permanent Injunction. 27 28 F. The parties agree to submit to the personal jurisdiction of this Court and to venue in this Court in connection with this matter for all purposes, -3- 1 including for the purpose of enforcing the terms and provisions of this Final 2 Consent Judgment and Permanent Injunction. 3 G. This is a final judgment. Any other remaining claims and defenses, 4 to the extent not otherwise addressed above by this Consent Judgment, are 5 hereby dismissed. 6 H. Each party shall bear their own costs and attorneys’ fees. 7 8 IT IS SO ORDERED. 9 10 11 Dated: 12/5/17 Hon. Philip S. Gutierrez United States District Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4- 1 APPROVED AS TO FORM: 2 3 KNOBBE, MARTENS, OLSON & BEAR, LLP 4 5 6 7 8 9 Dated: November 28, 2017 By: /s/ Matthew S. Bellinger John B. Sganga, Jr. Matthew S. Bellinger Justin J. Gillett Attorneys for Plaintiff ULTHERA, INC. 10 11 12 13 14 15 Dated: November 28, 2017 By: /s/ SongFong Tommy Wang (with permission) SongFong Tommy Wang Leontyne Fan Attorneys for Defendant, NAOKO MARQUEZ 16 17 18 19 20 21 22 23 24 25 26 27 28 -5-

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