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)

1
2
3
4
5
6
7
8
9
10
11
12
13

John B. Sganga, Jr. (SBN 116,211)
[e-mail]
Matthew S. Bellinger (SBN 222,228)
[e-mail]
Justin J. Gillett (SBN 298,150)
[e-mail]
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
Phone: [phone]
Facsimile: [phone]

E-FILED 12/5/17
JS-6

Attorneys for Plaintiff
ULTHERA, INC.
Songfong Tommy Wang (SBN 272,409)
[e-mail]
Leontyne Fan (SBN 285,042)
[e-mail]
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-