BP p.l.c. et al v. BP Gas Energy, LLC

Filing 13

FINAL JUDGMENT in favor of BP America, Inc., BP p.l.c. against BP Gas Energy, LLC Closing Case. Motions terminated: 12 MOTION for Judgment : Motion for Entry of Final Judgment with Incorporated Memorandum of Law filed by BP p.l.c., BP America, Inc.. Signed by Judge Marcia G. Cooke on 7/31/2014. (tm) NOTICE: If there are sealed documents in this case, they may be unsealed after 1 year or as directed by Court Order, unless they have been designated to be permanently sealed. See Local Rule 5.4 and Administrative Order 2014-69.

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 13-Civ-24400-COOKE/TORRES
BP p.l.c., and BP AMERICA, INC.,
Plaintiffs,
v.
BP GAS ENERGY, LLC,
Defendant.
________________________________/
FINAL JUDGMENT
Plaintiffs, BP p.l.c. and BP America, Inc. ("BP"), and Defendant BP Gas Energy,
LLC ("BP Gas Energy"), hereby stipulate to entry of final judgment as follows:
Jurisdiction & venue:
1.

This Court has jurisdiction over the subject matter of this action pursuant to

15 U.S.C. § 1121 and 28 U.S.C. § 1338(a) and (b) because BP’s claims arise under the
Trademark Act of 1946, as amended, 15 U.S.C. §§ 1051 et seq. (the Lanham Act). This
Court has jurisdiction over the Florida statutory and common law claims in accordance
with the principles of supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).
2.

This Court has personal jurisdiction over BP Gas Energy because it resides in

this judicial district.
3.

Venue is proper in this district under 28 U.S.C. § 1391(a) because BP Gas

Energy resides in this judicial district and under 28 U.S.C. § 1391(b) because a substantial
part of the events or omissions giving rise to the claims alleged herein occurred in this
district.
Findings of fact:

4.

BP is engaged in the business of producing, developing and supplying oil and

gas, marketing gasoline, diesel fuel and other petroleum products, and related goods and
services in the energy, oil and gas industries in Florida and throughout the United States.
5.

BP has spent hundreds of millions of dollars promoting and advertising its

products sold under the BP name and mark, and has sold billions of dollars' worth of
products under the BP name and mark in the United States.
6.

BP owns several federal registrations for its BP mark in a variety of formats

and for a variety of goods and services, including the following federal registrations:
MARK
BP

REG.
NO.
893,036

BP

902,807

BP

928,078

BP

928,128
3,515,941

BP

4,128,850

7.

REG.
DATE
6/16/1970

GOODS/SERVICES

4/17/2012

Automobile service stations; refueling
and lubrications services for aircraft.

Operation of automobile service
stations, refueling and supplying
lubricating oils and greases to aircraft
and marine vessels.
11/17/1970 Credit financing services for automobile
service stations, marine and aviation
terminals, specifically, for extending
credit card services to others.
2/1/1972
Gas, other than fuel gas, derived from
petroleum, namely, liquefied petroleum
gas and hydraulic fluids, not being oils.
2/1/1972
Industrial oils, other than edible oils and
fats and essential oils, and fuels, all
being goods derived from petroleum.
7/29/2008 Fuel for motor vehicles, namely,
gasoline and diesel fuel; motor oils;
Providing automatic vehicle washing
services; automobile maintenance and
repair services and automobile service
station services; Café and snack bar
services; restaurant services and carryout restaurant services.

BP Gas Energy is engaged in the business of converting diesel vehicles to

natural gas power.

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8.

BP Gas Energy owns and maintains a website at <bpgasenergy.com> through

which BP Gas Energy advertised and sold its services under the name and mark BP GAS
ENERGY.
Conclusions of law:
9.

All of the registrations of BP noted above are valid and subsisting. Reg. Nos.

893,036; 902,807; and 928,128 are incontestable and constitute conclusive evidence of (a)
the validity of the marks and (b) of BP's ownership of and exclusive right to use the BP
marks subject to these registrations for the goods and services specified therein. 15 U.S.C.
§§ 1065, 1115(b).

The remaining registrations of plaintiff BP all constitute prima facie

evidence of the validity of the BP mark, as well as BP's ownership of and exclusive right to
use these marks for the listed goods and services. 15 U.S.C. § 1057(b).
10.

BP Gas Energy's use of the BP GAS ENERGY name and mark in connection

with goods and services related to those sold by BP under the BP name and mark is likely to
cause confusion, mistake or deception with BP or the goods and services sold under the BP
name and mark, and is likely to dilute the distinctive quality of the famous BP name and
mark.
11.

BP Gas Energy's use of the BP GAS ENERGY name and mark constitutes:
(a)

trademark infringement in violation of section 32 of the Lanham Act,

15 U.S.C. § 1114;
(b)

unfair competition in violation of Section 43(a) of the Lanham Act, 15

U.S.C. 1125(a);
(c)

dilution in violation of Section 43(c) of the Lanham Act, 15 U.S.C.

1125(c);
(d)
(e)

unfair competition in violation of Florida Statutes section 501.204; and

(f)

dilution in violation of Florida Statutes section 495.151;

unfair competition in violation of Florida common law.

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Relief granted:
12.

BP Gas Energy, its agents, servants, employees, successors and assigns, and

all others in active concert or participation with them, including, without limitation, PBA
Energy, LLC, are permanently enjoined and restrained from:
(a)

using the name and marks BP, BP Gas Energy, or any other trade

name, corporate name, domain name, or mark that incorporates "BP" or that
simulates or is otherwise likely to cause confusion with the BP name and
mark;
(b)

using any other mark or trade dress owned by BP or any other

colorable imitation of such marks, or any other mark in a manner that is
likely to confuse, mislead or deceive others into believing that BP Gas Energy
or its products emanate from, or are connected with, sponsored by or
approved by BP;
(c)

owning

and

operating

a

website

at

the

domain

name

<bpgasenergy.com>;
(d)

doing any other act or thing likely to confuse, mislead or deceive

others into believing that BP Gas Energy or the goods and services sold,
distributed, or emanating from properties under BP Gas Energy’s control are
connected with, sponsored by or approved by BP; and
(e)

assisting, aiding, or abetting any other person or entity in engaging in

any of the activities prohibited in paragraphs (a) through (d).
13.

Each party shall bear its own costs.

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14.

This Court shall retain jurisdiction over this action for purposes of construing

and ensuring compliance with this Final Judgment.
15.

DONE and ORDERED in chambers, Miami, Florida, this 31st day of July

2014.

Copies provided to:
Edwin G. Torres, U.S. Magistrate Judge
Counsel of record

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