Eden Foods Inc v. Eden's Ethnos LLC

Filing 16

Consent Order and Permanent Injunction. Signed by Judge Anthony J. Battaglia on 1/29/2018. (acc)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA

10
11

EDEN FOODS, INC.
Plaintiff.

12
13
14
15

vs.

Case No. 3:17-CV-2275-ALB-NLS
CONSENT JUDGMENT AND
PERMANENT INJUNCTION

EDEN’S ETHNOS LLC
Defendant,

(Doc. No. 15)

16
17
18

On November 7, 2017, Plaintiff Eden Foods, Inc. (“Eden”) filed its Complaint

19

against Defendant Eden’s Ethnos LLC (“Eden’s Ethnos”). The Complaint asserts that

20

Eden’s Ethnos has engaged in infringing use of Eden’s superior and exclusive rights

21

to use Eden’s EDEN formative marks through Eden’s Ethnos’s adoption and/or use

22

of an “EDEN’S ETHNOS” designation and that such acts constitute trademark

23

infringement, unfair competition, and dilution by tarnishment under federal law.

24

Eden and Eden’s Ethnos have agreed to the entry of this final judgment and

25

permanent injunction (“Consent Judgment and Permanent Injunction”) upon the

26

following stipulated facts. Each party has waived the right to appeal from this

27

Consent Judgment and Permanent Injunction. Should judicial enforcement of any of

28

1

the terms of this Consent Judgment and Permanent Injunction become necessary in

2

the future, the prevailing party will be entitled to its attorneys’ fees and costs.
STIPULATED FACTS AND CONCLUSIONS

3
4
5

1.

This Court has subject matter jurisdiction over this lawsuit and personal

jurisdiction over Eden’s Ethnos. Venue is proper in this Court.

6

2.

Eden is a leading producer of natural and organic food and beverage

7

products sold under a variety of trademarks consisting in whole or part of the brand

8

name EDEN.

9

3.

Eden adopted and commenced use of the EDEN name as a trademark in

10

the 1960s and has used the EDEN name as a trademark continuously and without

11

interruption since at least as early as November 1969 and continuing to the present

12

day.

13

4.

Eden’s EDEN brand products are sold throughout the United States

14

through virtually all types of merchandising outlets, including, without limitation,

15

national and regional supermarket chains, local grocery stores, food cooperatives,

16

health food stores, convenience stores, and department stores. Eden’s products also

17

are available through mail order outlets and via the Internet at Eden’s website found

18

at <edenfoods.com> as well as leading on-line retailers.

19

5.

Over the years, Eden has developed and adopted many EDEN formative

20

marks, including, EDEN, EDEN ORGANIC, EDEN FOODS, EDENEWS and

21

EDENBALANCE (collectively the “EDEN Marks”).

22
23
24
25
26
27
28

6.

Eden is the owner of all right, title and interest in the following federal

registrations, which presently are valid and subsisting in law:
Reg. No. 2,360,206 – EDEN for food supplements,
namely, orally ingested enzymes beneficial to human intestinal bacteria,
registered on the Principal Register June 20, 2000.
(a)

(b)
Reg. No. 2,326,024 – EDENBALANCE for a food
supplement, namely, an orally ingested enzyme beneficial to human intestinal
bacteria, registered on the Principal Register March 7, 2000.
-2-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18

(c)
Reg. No. 4,431,041 – EDEN for tooth powder; dietary food
supplements and nutritional supplement concentrates; sushi mats; processed
vegetables; chili; processed mushrooms; raisins; tofu; vegetable based food
beverages; prepared entrees consisting primarily of beans with rice and other
side dishes; Umeboshi plum paste; grain based food beverages; natural food
sweeteners; arrowroot for use as a food thickener; rice; Ponzu sauce; prepared
entrees consisting primarily of rice with beans and other side dishes; edible
spices; concentrates for making non-alcoholic beverages; and cooking wine,
registered on the Principal Register November 12, 2013.
(d)
Reg. No. 1,440,754 -- EDENSOY for soybean based food
beverages, registered on the Principal Register May 26, 1987.
(e)
Reg. No. 1,918,958 – EDENBLEND for soybean and rice
based food beverages, registered on the Principal Register September 12,
1995.
(f)
Reg. No. 2,272,652 – EDEN ORGANIC & Design for
vegetable oils; processed vegetables; soybean based food beverages; soybean
based misos; nut and fruit butters; processed nuts; processed edible seeds;
processed mixture consisting of any combination of fruits, nuts and seeds;
vegetable chips; and dried fruits; tea; sugar; rice; pasta and noodles; flour;
breakfast cereals; honey; syrup for table use; candy; salt; mustard; vinegar;
sauces, namely, pizza and spaghetti sauces, soy sauce; processed grains; rice
and grain based food beverages; herbal food beverages; seasonings, namely,
processed sesame seeds, garlic pastes, furikake, pickled beefsteak leaf powder,
bonito flakes, pickled ginger, tekka, wasabi powder; crackers; brown rice

19
20
21
22
23
24
25
26
27
28

chips; granola; unprocessed vegetables, unprocessed grains, unprocessed nuts
and unprocessed edible seeds; fruit juices; beverage concentrates for use in
making non alcoholic soft drinks, registered on the Principal Register August
24, 1999.
(g)
Reg. No. 1,452,337-- EDEN for pickled plums; processed
and unprocessed dried fruits; processed nuts; processed seeds; vegetable oils;
namely, corn oil, olive oil, safflower oil, sesame oil; snack foods consisting of
processed nuts, processed seeds and dried fruits; processed grains, namely,
-3-

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

corn meal, soy flour, chickpea flour, barley flour, wheat flour, buckwheat
flour, millet flour, rice flour, rye flour; pasta, namely, wheat noodles, wheat
and egg noodles, wheat and soy noodles, wheat and spinach noodles, wheat
and buckwheat noodles; soy sauce; barley malt syrup for table use; vinegar;
mustard; tomato based spaghetti sauce; sea salt for table use; beverage
consisting of tea and herbs; unprocessed beans, namely, aduki, black turtle
beans, kidney beans, great northern beans, green lentils, mung beans, navy
beans, pinto beans, soy beans; unprocessed peas, namely, chickpeas, split peas;
unprocessed nuts; unprocessed edible seeds; unprocessed grains, namely
barley, rice, wheat, buckwheat and millet; unprocessed corn and unpopped
popcorn; unprocessed sea vegetables, namely sea weed, registered on the
Principal Register August 11, 1987.
(h)
Reg. No. 1,862,634 -- EDEN for vegetable oils, crushed
tomatoes, sauerkraut, and processed canned beans; pasta; pizza sauce; teas;
crackers; chips; misos; and condiments; namely, mustard, sea salt, processed
sesame seeds, garlic pastes, furikake, pickled beefsteak leaf powder, bonito
flakes, pickled ginger, tekka, wasabi powder, tamari, and shoyu; unprocessed
grains; namely, barley, wheat and quinoa, registered on the Principal Register
November 15, 1994.

14
15

(i)
Reg. No. 2,229,053 – EDEN for fruit butter, fruit sauce and
fruit juices, registered on the Principal Register March 2, 1999.

16
17
18
19
20
21
22
23
24
25
26
27

(j)
Reg. No. 2,475,031 – EDEN BIFA 15 for food
supplements, namely, orally ingested enzymes beneficial to human intestinal
bacteria, registered on the Principal Register August 7, 2001.
(k)
Reg. No. 2,503,977 – EDEN for dietary food supplements,
namely, edible kombu root seaweed, garlic balls and ume plum concentrate,
registered on the Principal Register November 6, 2001.
(l)
Reg. No. 4,264,570 – EDEN for retail and on-line store
featuring food and beverage products, registered on the Principal Register
December 25, 2012.
(m) Reg. No. 2,905,671 – EDENEWS for newsletters in the
field of food and food related topics, nutrition, health and diet, farming and
agricultural and environmental issues, registered on the Principal Register
November 30, 2004.

28
-4-

1

(n)
Reg. No. 2,977,773 – EDEN for processed popcorn for
popping, registered on the Principal Register July 26, 2005.

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21

(o)
Reg. No. 3,071,337 – EDEN FOODS for vegetable oils;
processed vegetables; soybean based food beverages; soybean based misos;
nut and fruit butters; processed nuts; processed edible seeds; processed mixture
consisting of any combination of fruits, nuts and seeds; vegetable chips and
dried fruits; tea; sugar; rice; pasta and noodles; flour; breakfast cereals; honey;
syrup for table use; candy; salt; mustard; vinegar; sauces, namely, pizza and
spaghetti sauces, soy sauce; processed grains; rice and grain based food
beverages; herbal food beverages; seasonings, namely, processed sesame
seeds, garlic pastes, furikake, pickled beefsteak leaf powder, bonito flakes,
pickled ginger, tekka, wasabi powder; crackers; brown rice chips; and granola;
unprocessed fruits, unprocessed vegetables, unprocessed grains, unprocessed
nuts and unprocessed edible seeds, registered on the Principal Register March
21, 2006.
(p)
Reg. No. 3,102,575 – EDEN for dried cherries, registered
on the Principal Register June 13, 2006.
(q)
Reg. No. 4,065,063 – EDEN for providing recipes and
information in the field of cooking and food preparation; providing
information in the field of health, nutrition, diet, beauty and organic farming
techniques, registered on the Principal Register December 6, 2011.
(r)
Reg. No. 4,171,490 – EDENEWS for downloadable
electronic newsletters in the field of food and food-related topics, nutrition,
health and diet, farming and agricultural and environmental issues, registered
on the Principal Register July 10, 2012.
(s)
Reg. No. 4,264,567 – EDEN STORE for retail and on-line
store featuring food and beverage products, registered on the Principal
Register December 25, 2012.

22
23
24
25
26
27
28

(t)
Reg. No. 4,272,393 – EDEN FOODS for processed beans;
processed fruits; processed tomatoes” and crackers; entrees and side dishes
consisting primarily of rice and beans, registered on the Principal Register
January 8, 2013.
(u)
Reg. No. 4,336,312 – EDEN RECIPES for downloadable
software in the nature of an application for obtaining news and information in
the field of food and food related topics, nutrition, health and diet and related
textual, audio and video content on mobile and stationary electronic devices,
registered on the Principal Register May 14, 2013.
-5-

1

7.

The EDEN Marks are valid, subsisting, unrevoked and uncancelled. Of

2

the 21 registrations listed above, at least 16 of them have become incontestable as

3

to all goods listed therein and are conclusive evidence of the validity of the

4

registered mark, Eden’s ownership thereof, and of Eden’s exclusive right to use the

5

mark in commerce on or in connection with the goods identified in the registration,

6

as provided by Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b).

7
8
9
10
11

8.

Eden spends millions of dollars every year promoting its EDEN brand

products and its EDEN Marks.
9.

As a result of Eden’s longstanding use of the EDEN Marks, Eden has

built up substantial good will in such marks.
10.

Based on Eden’s extensive, exclusive, and continuous use of the EDEN

12

Marks in connection with the goods and/or services of the respective registrations,

13

and the maintenance of premium quality standards relating thereto, the EDEN

14

Marks have come to be widely and favorably known among the consuming public

15

as designators of origin with respect to Eden’s goods and services.

16

11.

Eden is also the owner of a family of marks, the dominant component of

17

which is the term “EDEN.” The family of EDEN marks includes EDENSOY,

18

EDEN BLEND, EDEN ORGANICS, EDEN TRADITIONAL, EDEN BALANCE,

19

and EDEN SELECT.

20

12.

Eden’s Ethnos is not authorized to use the EDEN Marks.

21

13.

Eden’s Ethnos has used “Eden” in connection with “Eden’s Ethnos” in

22

furtherance of the sale of products derived from the plant Mitragyna speciosa,

23

commonly known as kratom.

24
25
26
27
28

14.

Eden’s Ethnos has used the “EDEN’S ETHNOS” designation in a

manner that has created or is likely to create actual confusion in the marketplace.
15.

Eden’s Ethnos’s use of the “EDEN’S ETHNOS” designation infringes

upon Eden’s prior and exclusive rights in its EDEN marks.
16.

Eden’s Ethnos’s unauthorized activities constitute trademark
-6-

1

infringement under federal law.
ORDER

2
3

ACCORDINGLY, IT IS HEREBY ORDERED AND ADJUDGED by consent

4

of Eden and Eden’s Ethnos that Eden’s Ethnos and any persons or entities acting on

5

its behalf, including any parents, subsidiaries, affiliates, commonly-owned parties,

6

commonly-controlled parties, predecessors, and successors, together with its

7

principals, officers, directors, employees, agents, attorneys, servants, employees,

8

distributors, suppliers and all other persons in active concert or participation with

9

them who receive notice of this Consent Judgment and Permanent Injunction, shall,

10

as of March 31, 2018, be permanently enjoined and restrained from:

11

A.

Imitating, copying or making unauthorized use of the EDEN Marks in

12

any form, including without limitation, using any trademark, trade name,

13

establishment name or other identifier containing “EDEN”, “EDEN’S” or

14

“EDENS” or any uniform record locator (“URL”) containing the letters

15

“EDEN”, “EDEN’S” or “EDENS” (including, specifically cease using the

16

“EDEN’S ETHNOS” designation) or any other designation incorporating the

17

term EDEN for any purpose;

18

B.

19

with the promotion, advertisement, display, sale, offering for sale,

20

manufacture, printing, importation, production, circulation or distribution of

21

any product or service, in such fashion as to relate or connect such product in

22

any way to Eden, or to any product or service provided by or connected with

23

Eden; or

24

C.

25

Eden, or constituting an infringement of the Eden Marks or constituting any

26

damage to Eden’s name; marks, reputation or goodwill.

Using any copy or colorable imitation of the EDEN Marks in connection

Engaging in any other activity constituting unfair competition with

27
28

For the avoidance of doubt, Eden has no objection to Eden’s Ethnos continuing to
-7-

1

use trademarks, service marks, names or designations that use the term ETHNOS as

2

long as such trademarks, service marks, names or designations do not include the

3

term EDEN or any other words or logos confusingly similar to any of the EDEN

4

Marks.

5

IT IS FURTHER ORDERED AND ADJUDGED by consent of Eden and Eden’s

6

Ethnos that Eden’s Ethnos shall take all actions reasonably necessary to transfer the

7

domain name <edensethnos.com> to Eden no later than March 31, 2018.

8

IT IS FURTHER ORDERED AND ADJUDGED pursuant to Rule 54, Federal

9

Rules of Civil Procedure, that judgment is hereby entered in favor of Eden and

10

against Eden’s Ethnos.

11

IT IS FURTHER ORDERED AND ADJUDGED that this Court shall retain

12

jurisdiction for the purpose of making any further orders necessary or proper for the

13

construction or modification of this Consent Judgment and Permanent Injunction,

14

the enforcement thereof, or the punishment of any violations thereof.

15

IT IS FURTHER ORDERED AND ADJUDGED that the prevailing party in any

16

proceeding to enforce the terms of this Consent Judgment and Permanent Injunction

17

shall be entitled to an award of its attorneys’ fees and costs.

18
19

IT IS SO ORDERED

20

Dated: January 29, 2018

21
22
23
24
25
26
27
28
-8-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-9-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-10-