American Licorice Company v. Juicy Vapor, LLC

Filing 10

STIPULATION AND ORDER re 7 Stipulated Permanent Injunction. The action is dismissed with prejudice. The clerk shall close the file. Signed by Magistrate Judge Howard R. Lloyd on 6/11/2014. (hrllc1, COURT STAFF) (Filed on 6/11/2014)

*E-Filed: June 11, 2014*
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E. PATRICK ELLISEN (SBN 142033)
[e-mail]
DANIEL T. MCCLOSKEY (SBN 191944)
[e-mail]
GREENBERG TRAURIG, LLP
1900 University Ave., 5th Floor
East Palo Alto, California 94303
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff,
AMERICAN LICORICE COMPANY

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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AMERICAN LICORICE COMPANY, a
Delaware Corporation,
Plaintiff,

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v.

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CASE NO. C 14-01085 HRL

STIPULATED PERMANENT
INJUNCTION AND [PROPOSED] ORDER

JUICY VAPOR, LLC, a New York limited
liability company,

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Defendant.

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CASE NO. C 14-01085 HRL

STIPULATED PERMANENT INJUNCTION AND [PROPOSED] ORDER

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Plaintiff AMERICAN LICORICE COMPANY (“American Licorice”) and Defendant JUICY

2 VAPOR, LLC, a New York limited liability company (“Juicy Vapor”), enter into this Stipulated
3 Permanent Injunction (“Injunction”) with respect to this action, and in accordance with and pursuant to
4 the terms of a Settlement Agreement (“Agreement”). The Parties, having stipulated to the entry of the
5 Injunction, and good cause appearing for the entry thereof, state and agree as follows:
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WHEREAS, American Licorice is the owner of federal and international trademark registrations,

7 including U.S. Trademark Registration No. 1175388 for the RED VINES mark, No. 1237538 for the
8 RED ROPES mark, and No. 1237539 for the SUPER ROPES mark, used in connection with the
9 manufacture and sale of candy products, true and correct copies of which registrations are attached
10 hereto as Exhibit A.
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WHEREAS, the federal registration rights, state law rights and common law rights of American
Licorice in the RED VINES, RED ROPES and SUPER ROPES trademarks are collectively referred to
herein as the “American Licorice Trademarks.”
WHEREAS, on March 7, 2014, American Licorice commenced the above-encaptioned action

16 against Juicy Vapor, LLC, alleging federal, state and common law claims for trademark infringement,
17 dilution, and unfair business practices, as set forth in the Complaint filed on that date (the “Action”).
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NOW THEREFORE, the Parties have further agreed to the following terms, and ask this Court

19 to enter this Injunction, and enter this order, providing as follows:
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1. Juicy Vapor and all those in privity with, concert or participation with Juicy Vapor, are
permanently enjoined from:
(i)

imitating, copying, duplicating or otherwise making any use of the American

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Licorice Trademarks or any mark confusingly similar to or likely to dilute the

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distinctiveness of the American Licorice Trademarks or is likely to falsely relate

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or connect Juicy Vapor with American Licorice;

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(ii)

manufacturing, producing, distributing, circulating, posting, selling or otherwise

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disposing of or disseminating any material (online or otherwise) which bears any

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copy or colorable imitation of the American Licorice Trademarks, including in
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STIPULATED INJUNCTION AND [PROPOSED] ORDER

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connection with driving web traffic to Juicy Vapor owned or controlled websites;

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(iii)

using any designation of origin or description which can or is likely to lead the

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trade or public, or individual members thereof, to mistakenly believe that any

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service advertised, promoted, offered or sold by Juicy Vapor is sponsored,

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endorsed, connected with, approved or authorized by American Licorice; and

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(iiv)

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assisting, aiding or abetting another person or business entity in engaging or
performing any of the activities enumerated in (i) through (iii) above.

2.

The Action, including all claims, counterclaims, and third party claims therein are hereby

9 dismissed with prejudice.
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3.

This Court retains jurisdiction over this matter and to the extent necessary to enforce this

Injunction and the Agreement and to determine any issues which may arise concerning them.

13 IT IS SO STIPULATED.
14 Dated: May 28, 2014

GREENBERG TRAURIG, LLP

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By: /s/

E. Patrick Ellisen
Daniel T. McCloskey

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Attorneys for Plaintiff,
AMERICAN LICORICE COMPANY

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Dated: May 28, 2014

BALLARD SPAHR, LLP

By: /s/
Anthony C. Kaye
Attorneys for Defendant,
JUICY VAPOR, LLC

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3

STIPULATED INJUNCTION AND [PROPOSED] ORDER

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ATTESTATION
I, E. Patrick Ellisen, am the ECF user whose ID and password are being used to file this

3 document. I hereby attest that Anthony C. Kaye has concurred in this filing.
4 Dated: May 28, 2014

GREENBERG TRAURIG, LLP

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By: /s/

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E. Patrick Ellisen

Attorneys for Plaintiff,
AMERICAN LICORICE COMPANY

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10 PURSUANT TO STIPULATION, IT IS SO ORDERED.
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12 Dated:
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June 11, 2014
HON. HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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STIPULATED INJUNCTION AND [PROPOSED] ORDER