Two Men and a Truck/International, Inc. v. Arcel

Filing 11

CONSENT JUDGMENT. Signed by Judge Donald W. Molloy on 12/1/2017. (Copy to Arcel.) (NOS)

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Johnathan W. Anderson CONRADI AND ERSON, PLLC 307 Spokane Avenue, Suite I02 Whitefish, Montana 59937 Phone: (406)863-9681 E-Mail: janderson l conradianderson.com J. David Mayberry (admitted pro hoc vice ) KILPATRICK TOWNS END & STOCKTON LLP 607 14th St NW, Suite 900 Washington, DC 20005-20 18 Phone:(202)508-5800 E-mail: d1rn:11h<:rry(a ki lpatric.:ktO\"- nseng.c.:om James W. Faris Jr. (admitted pro hac vice ) KILPATRICK TOWNS END & STOCKTON LLP I I 00 Peachtree Street, Suite 2800 At lanta, GA 30309-4530 Phone: (404) 815-6500 E-mail: jforis l kilpatricktownsend.com Allorneysfor Plaint{f/Tu o Men and a Truck/ International. Inc. IN TH E UNIT FD STATES DISTRICT COURT FOR TH E DISTRICT or MONT ANA TWO MEN ANDA T RUCK/INT ERNATIONAL, INC., Plaintiff, V. KEVIN ARC EL, individual~ly and d/b/a ''2 GUYS & A TRUCK," Defendant. ) ) ) ) ) ) ) ) ) Civ il Action No. 9: I 7-cv-00141-DWM FINAL .JUDGMENT AND PERMANENT IN.JUNCTION ON CONSENT Plaintiff Tv10 Men and a Truck/International, Inc. (" Plaintiff") and Defendant Kevin Arcel , individually and doing business as "2 Guys & a Truck" TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on Consent Exhibit A - Final Judgment and Permanent Injunction ("Defendant") have reached an agreement in settlement of this dispute between them and have consented to the entry of Final Judgment and Permanent Injunction on Consent ("Consent Judgment"), based on the following stipulated findings of fact and condusions of law, which the Court hereby adopts for purposes of entry of this Consent Judgment. FINDINGS OF FACT ANO CONCLUSIONS OF LAW I. Plaintiff is a Michigan corporation having a principal place of business at 3400 Belle Chase Way, Lansing, Michigan 48911. 2. Plaintiff, the largest franchised local moving company in the United States, is a nationwide franchisor engaged in li censing the use of its TWO MEN AND A TRUCK service mark and moving-services operating system. Presently, there are over three hundred and lifty (350) TWO MEN AND A TRUCK locations in forty-two (42) states within the Un ited States licensed by Plaintifl~ and there are over three thousand (3 ,000) moving trucks operating throughout the United States displaying the TWO MEN AND A TRUCK marks. 3. Each TWO MEN AND A TRUCK franchise is operated pursuant to a franchise agreement under which Plaintiff imposes certain obligations and retains certain rights to help ensure the protection of Plaintiff's service marks and the uni form quality of services provided by Plaintiff's franchisees in the TWO MEN AND A TRUCK franchise system. TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on cdnsent Exhibit A - Final Judgment and Permanent Injunction 4. Plaintiff has two franchised TWO MEN AND A TRUCK locations in the State of Montana. including a TWO MEN AND A TRUCK location serving Whitefish , Montana, and the surrounding area. 5. Plaintiff, itself or through its franchisees, has used the TWO MEN AND A TRUCK name and service mark, either standing alone or in combination with design elements, in connection with moving-related services since at least as early as 1988. Plaintiffs use of its TWO MEN AND A TRUCK name and service mark has been valid and continuous since the date of first use and has not been abandoned. 6. Pia inti ff is the owner of the following federal service mark regi strations for moving-related services: a. U.S. Trademark Reg. No. 1,953,964. issued by the United States Patent and Trademark Office (''USPTO") on February 6, 1996, for the mark TWO MEN AND A TRUCK & Design, depicted below, for "moving services; namely, the provision of trucks and labor for packing, loading, delivery, and unloading of goods and driving of trucks rented by the customers"; .....-.... "'" TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on Cohsent Exhibit A - Final Judgment and Permanent Injunction b. U.S. Trademark Reg. No. 2,020.083, issued by the USPTO on December 3, 1996, for the mark TWO MEN AND A TRUCK for "moving van services, namely providing movers and truck for local moves"; c. U.S. Trademark Reg. No. 2,2 17, I 07, issued by the US PTO on January 12, 1999, for the design mark depicted below, for ''moving services, namely, the provision of trucks and labor for packing, loading, delivery, and unloading of goods and driving of trucks rented by the customers": d. U.S. Trademark Reg. No. 3,996,8 14, issued by th e USPTO on October 18, 2005, for the mark TWO MEN AND A TRUCK for "moving services; namely, the prov ision of trucks and labor for packing. loading, delivery, and unloading of goods and driving of trucks rented by the customers"; e. U.S . Trademark Reg. No. 3,006,8 15, issued by the USPTO on October 18, 2005, for the mark TWO MEN AND A TRUCK & Design, depicted below, for "moving services; namely, the provision TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on Co sent Exhibit A - Final Judgment 'li and Permanent Injunction of trucks and labor for packing, loading, delivery, and unloading of goods and driving of trucks rented by the customers"; TWO MEN ANO A TRUCK f. U.S. Trademark Reg. No. 4,340,844, issued by the USPTO on May 28, 2013, for the mark TWO MEN AND A TRUCK for "moving services, namely, the provision of trucks and labor for packing, loading, delivery, and unloading of goods and driving of trucks rented by the customers"; g. U.S. Trademark Reg. No. 4.340,843, issued by the USPTO on May 28, 2013, for the mark TWO MEN AND A 'TRUCK & Design, depicted below, for "moving services; namely, the provision of trucks and labor for packing, loading, delivery, and unloading of goods and driving of trucks rented by the customers"; I 7. TWO MEN AND A T RUCK All of the foregoing trademark registrations have become incontestable pursuant to the pro isions of 15 U.S.C. ~ I 065 as the marks depicted TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on Cdnsent Exhibit A - Final Judgment and Permanent Injunction in those registrations have been in continuous use in commerce for more than five years and the required aftidavits of use and incontestability have been filed with the U.S. Patent and Trademark Of-lice. Plaintiff's marks referenced in Paragraph 6 above and their common law equivalents, are collectively referred to herein as the "TWO MEN AND A TRUCK Murk." 8. As a consequence of the inherent distinctiveness of the TWO MEN AND A TRUCK Mark and by virtue of the long and continuous use and extensive promotion of that mark, the consuming public and the trade have come to recognize. and do recognize, Plaintiff's TWO MEN AND/\ TRUCK Mark as being used by Plaintiff or by a single source, and to associate and identify said mark with Plaintiff or with a single source. Plaintiff derives substantial goodwill and value li·om this identification by the consuming public and the trade. 9. Defendant Kevin Arce! is a resident of the State of Montana. Defendant is the owner of, and does business as, "2 Guys & a Truck," an unregistered business entity offering moving serv ices in Whitefish, Montana and the urrouncling area. I0. Defendant is not. and never has been, a TWO MEN AND A TRUCK franchisee or otherwise affiliated with Plaintiff. 11. Without Plaintiff's authorization, and despite Plaintiffs objections, Defendant operates a competing moving services business in and around TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on C6nsent Exhibit A - Final Judgment and Permanent Injunction Whitefish, Montana using a confusingly similar imitation of the TWO MEN AND A TRUCK Mark; namely. ''2 Guys & a Truck." 12. In connection with Detendant' s competing moving services business. Defendant utilizes a logo, depicted below, that is a confusingly similar imitation of the design that Plaintiff has used since at least as early as 1991, both standing alone and in combination with its TWO MEN AND A TRUCK Mark. 13. The services Defendant offers are iden tical to and competitive with the services offered by Plaintiff and its Whitefish, Montana franchisee , and those services are adve11ised and promoted using the same means utilized by Plaintiff and its Whitefish franchisee, and they are targeted to the same customers and potential customers, inc luding th ose in and around the Whitefish, Montana area. 14. In connection with the advertising and promotion of his competing moving services business, Defendant has a Facebook page utilizing the confusingly similar name ''2 Guys & a Truck of Montana" as his social media handle, along TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on Cdnsent Exhibit A - Final Judgment and Permanent Injunction with Defendant's confusingly similar logo as his profile picture. 15. Defendant also promotes his competing moving services business by regularly posting advertisements on Craigslist.com with the following headline: ''2 Guys & A Truck - Longest & Best on Craigslist - Your Best Move! (Entire Flathead Valley)." 16. Defendant also promotes his competing ''2 Guys & A Truck" moving services business through online telephone directories. 17. Defendant also promotes his competing moving services business by distributing business cards featuring his confusingly similar "2 Guys & a Truck" name and confusingly similar logo. 18. Defendant's unauthorized use of a confusingly similar imitation of the TWO MEN AND A TRUCK Mark has caused consumers to mistakenly believe that Defendant and/or hi s moving services business are affiliated or associated with or are licensed or endo r·sed by Plaintiff. 19. Defendant's use of a confl1singly similar imitation of t:1e TWO Ml::N AND A 'I RUCK Mark in connection with Defendant's moving services business has caused multiple instances of actual confusion, in the form of misdirected telephone calls, as to the source, sponsorship, or affi li ation or Defendant's business and services with Plaintiff. 20. -------=' On August 29, 20 17, Plaintiff commenced the above-captioned action TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on Cdhsent Exhibit A - Final Judgment and Permanent Injunction (the ''Civil Action'' ) by filing a Complaint against Defendant. The omplaint alleged claims for trademark infringement, unfair competition, ialse designation of origin. and false or mi sleading representations of fact arising under Sections 32 and 43 of the Federal Trademark Act of 1946 (the "Lanham Act"), 15 U.S.C. ~§ 1114. 1125, and unfair competition and trademark infringement arising under the common law of the State of Montana 21. This Court has subject matter jurisdiction under Section 39 of the Lanham Act, 15 U.S.C. ~ 1121, and under 28 U.S.C. §§ 1331 and 1338. This Court has jurisdiction over Plaintiff's related common law claims under 28 U.S.C. ~§ 1338 and 1367. 22. Thi s Court has personal jurisdiction over Defendant because Defendant resides in the State of Montana, does business in this State. has engaged in acts or om issions within this State causing injury, and has otherwise established contacts with this State making the exercise of personal jurisdiction proper. ')"' --'· Venue is proper in this District under 28 U.S.C. S 1391 (b)( I) and (2) because Defendant resides in this District, and a substantial part of the events or omissions giving rise to the action occurred in this District. PERMANENT IN.JUNCTION ORDER Based on the parties' stipulation and agreement hereto, it is hereby ORDERED. AD.JUDGED, and DECREED as follows: TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on c8nsent Exhibit A - Final Judgment and Permanent Injunction I. Not later than ten (I 0) calendar days after th e entry or this Consent Judgment, Defendant shall permanently remove and delete all advertisementsincluding advertisements on social media, Craigslist, or on search engines- that include the term "2 Guys & a Truck,'" or simil ar im itations thereof: and shall deliver up for destruction al l labels, signs, packages, receptacles, business cards, invoices, promotional materials or the like in th e possession, custody, or control of Defendant th at infringe Plain tiffs TWO MEN AND A TRUCK Mark , including without limi tati on th e designation "2 Guys & a Truck" and De fendant's associated logo, and simi lar imitations thereof. Defendant and all affi li ated or related entities, agents, orticers, emp loyees, representatives, successors, assigns, attorneys, and all other persons acting for, with, by, through, or und er authority from Delcndant, or in concert or participation with De fendant, pursuant to the powers granted to thi s Court by 15 U.S.C. ~ I I 16 and rekvant state statutes, are hereby PERMANENTLY EN.JO IN ED AND RESTRA INED from: a. using the designation "2 Guys & a Truck" or the associated logo. or any other confusingly simil ar imitation of Plaintiffs TWO MEN AND J\ TR l JCK Mark, in connection with Defendant' s business or services, including the advertising of those services- including advert ising on soc ial, search engines, and Craigsl ist, through online or TMIT v. Arcel Cons~nt ~otion to Ayprove a~d. Enter Final Judgment and Permanent Injunction on cbYisent Exh1b1t A - Final Judgment and Permanent Injunction print directories, or through the purchase of search engine keywords containing "two men ,'' "two guys," "and a truck," or imitations thereol- and from using any of the above-referenced marks or · designations within the phrase ''formerly known as ... "; and b. using any trademark , service mark, name, logo, or source designation of any kind that is a copy, reproduction, colorable imitation, or simulation of or confusingly similar to, or in any way similar to, the trademarks, service marks, or logos, of Plaintiff, or is likely to cause conrusion, mi stake, deception. or public misunderstanding that Defendant's business or services are the business or services of Plainti rf, or arc sponsored by or in any way related to Plainti IT. 3. Defendant agrees to work diligently and cooperate in good faith with Plaintiff and any or its designees to eliminate any published or electronic telephone or Internet listings, or any other published or Internet advertisements, that include the name, mark, or designation ·'2 Guys & a Truck," or similar imitations thereof, in connection with Defendant's business or services. By way of example and not limitation, Defendant shall promptly provide, upon the request of Plaintiff, a written statement consenting to the removal of any such electronic telephone or Internet listing, including those that may come to Plaintiff's attention after the entry of this Consent Judgment. TMIT v. Arcel Cons~nt ~otion to Approve and Enter Final Judgment and Permanent Injunction on cdr\sent Exhibit A - Final Judgment and Permanent Injunction 4. Plaintiff and Defendant acknowledge that they have knowingly and voluntarily entered into this Consent Judgment after reviewing the same with their counsel or having had ample opportunity to consult with counsel. Plaintiff and Defendant understand the undertakings, obligations, and terms of this Consent Judgment. 5. This Consent Judgment shall be binding upon and inure to the benefit of the parties hereto and their respective parents, subsidiaries, atliliates, predecessors, successors, assigns, licensees, manufacturers, and distributors, and their officers directors, shareholders, servants, employees, attorneys, and agents, or any committee or other arrangement of creditors organized with respect to the affairs of any pa1ty. 6. Except as to Defendant's obligations set forth in this Consent Judgment, each party's claims against the other that were raised or could have been raised in this Civil Action are hereby dismissed with prejudice. No appeals shaJI be taken from this Consent Judgment, and Defendant hereby waives aJI rights to appeal from this Consent Judgment. 7. -? /) 1i" ,. //"' This Court shall retain jurisdiction ov r this matter to enforce a violation of this Consent Judgment's terms. Jf y such violation occurs, the Court shall award: (a) without regard to proof of a ual damages, an amount the Court deems adequate to compensate Plaintiff ti r such breach; (b) injunctive relief TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on ddnsent Exhibit A~ Final Judgment t and Permanent Injunction ,1 enjoining any further breach of this Order, or such .1 Order as the Court deems appropriate; ( c) atto eys' fees, costs, and disbursements incurred by Plaintiff in connection with and such other relief as the Court d This the e violation, as determined by the Co ms just and proper. /V~y of December 201 1. CONSENTED AND AGREED TO: PLAINTIFF: Lf;!q-~ Two Men and a Truck/.lnternational, Inc. By: B<etn+ ~0-r+\ e Title: C,FO Date: 11j:z.c:ij2 o 17 DEFENDANT TMIT v. Arcel Consent Motion to Approve and Enter Final Judgment and Permanent Injunction on cb'nsent Exhibit A - Final Judgment and Permanent Injunction

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