Telebrands Corp. v. ABC Import Int'l., Inc.

Filing 21

CONSENT JUDGMENT in favor of Telebrands Corp. against ABC Import Int'l., Inc.. Ordered by Chief Judge Carol Bagley Amon on 8/18/2011. (Marziliano, August)

Jason C. Spiro
Carolyn B. Rendell
Stone & Magnanini LLP
150 John F Kennedy Parkway, 4th Floor
Short Hills, NJ 07078
Tel: [phone]
Fax: [phone]
Attorneys for PlaintiffTelebrands Corp.

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

x
TELEBRANDS CORP.,
Plaintiff,

Civil Action No. CVU-3512

v.
CONSENT ORDER
ABC IMPORT INT'L., INC.,
Defendant,

___________________________x
WHEREAS PlaintiffTelebrands Corp. ("Telebrands") was granted a temporary
restraining order, order to show cause for a preliminary injunction, order for expedited discovery
and order restraining the transfer of assets in the above-captioned matter by Order dated July 27,
2011; and
WHEREAS Defendant ABC Import Int'1. Inc. ("ABC Import") has agreed not to oppose
the granting of a preliminary injunction and other relief provided by the Court pursuant to the
July 27,2011 Order, but rather to stipulate to an injunction without admission of liability;
IT IS HEREBY STIPUATED AND AGREED, by and between the undersigned counsel
for the parties to this action, as follows:
ABC Import and any of its officers, agents, servants, employees and any person in active

concert or participation with them are hereby enjoined from:
1. Importing, distributing, selling, advertising, promoting or offering for sale any
counterfeit EZ COMBS, JUPITER JACK or PED EGG products, including
Defendant's "Magic Hair Set" product) ("the Counterfeit Products");
2. Importing, distributing, selling, advertising, promoting or offering for sale any
product under or in connection with U.S. Trademark Registration No. 3630774 for
the trademark EZ COMBS (the "EZ COMBS Trademark"), Federal Trademark
Registration No. 3804523 for the trademark JUPITER JACK (the "JUPITER JACK
Trademark"), and Federal Trademark Registrations Nos. 3522124, 3450241 and
3633750, for the PED EGG trademarks (the "PED EGG Trademarks"), or any other
confusingly similar marks, unless the product emanates from or is authorized by
Telebrands;
3. Importing, distributing, selling, advertising, promoting or offering for sale any
products that incorporate, copy or colorably imitate the EZ COMBS Trade Dress,
(Compl. ~ 15, Ex. 2), the JUPITER JACK Trade Dress (Compl. ~ 15, Compl. Ex. 5),
or the PED EGG Trade Dresses (Iyer Supp. Cert. ~ 5, Ex. C), unless the product
emanates from, or is authorized by, Telebrands;
4. Importing, distributing, selling, advertising, promoting or offering for sale
counterfeits of any Telebrands products, including but not limited to the BARE
LIFTS, BARK OFF, BOTTLE TOP, CRAZY CRITTERS, HEEL TASTIC, PASTA
BOAT, PED! PAWS, PERFECT FIT BUTTON, SHOES UNDER, WINDSHIELD
WONDER, ORGREENIC,PET RIDER, ALUMA WALLET, COMFY CONTROL
HARNESS, ROBO STIR, ONE SECOND NEEDLE, SUPREME 90, EZ COMBS,

JUPITER JACK and PED EGG products. (Iyer Supp. Cert. 1 3).
5. Importing, distributing, selling, advertising, promoting or offering for sale any
product bearing trademarks for any ofTelebrands' products (a) listed in Paragraph 4
above, (b) displayed on Telebrands' website (www.telebrands.com). or (c) which
Telebrands may periodically identifY to Defendant or its counsel (collectively the
''Telebrands Products"), or any confusingly similar marks, unless the product
emanates from, or is authorized by, Telebrands;
6. Importing, distributing, selling, advertising, promoting or offering for sale any
products that incorporate, copy or colorably imitate the product packaging of the
Telebrands Products unless the product emanates from or is authorized by
Telebrands;
7. Otherwise knowingly infringing on any of Telebrands' intellectual property rights, or
otherwise competing unfairly with Telebrands;
8. Making any false or misleading statements regarding Telebrands or the Telebrands
Products, or the relationship between Telebrands and Defendant;
9. Committing any other acts designed to cause consumers to believe that Defendant's
products are Telebrands Products;
10. Moving, destroying or otherwise disposing of any products, packaging, labels, boxes,
documents or other items bearing or relating to the counterfeit reproduction, copy or
colorable imitation of the product marks or packaging of the Telebrands Products.
11. Removing, destroying or otherwise disposing of computer files or disks, business
records, invoices, emails or any other documents relating to the manufacture,
acquisition, purchase, distribution or sale of goods bearing the Telebrands

Trademarks or Trade Dresses or any counterfeit, reproduction, copy or colorable
imitation thereof.
Further, ABC Import and any of its officers, agents, servants, employees and any person
in active concert or participation with them will, on an expedited basis
12. Deliver to counsel for Telebrands any merchandise in their possession or control
bearing any alleged counterfeits ofTelebrands Trademarks or Telebrands Trade
Dresses.
13. Cancel any existing orders for any merchandise bearing any alleged counterfeits of
Telebrands Trademarks or Telebrands Trade Dresses.
14. Provide counsel with all documentation and information in its possession, custody or
control, including all invoices, receipts and other records, relating to the manufacture,
purchase, importation, distribution, offer for sale and sale of ABC Import's "As Seen
On TV Products," including, but not limited to all records relating to the alleged
Counterfeit Products.
15. Provide counsel with the name of the source(s) of the alleged Counterfeit Products,
and all customer information related to the sale of the alleged Counterfeit Products.
16. Provide counsel with an accounting of all ABC Import purchases and sales of
products bearing alleged counterfeits ofTelebrands Trademarks or Telebrands Trade
Dresses.
17. Refrain from directly or indirectly transferring, liquidating, encumbering, pledging,
assigning, or otherwise disposing of, secreting, or dissipating any assets owned,
controlled by, in the actual or constructive possession of, or otherwise held for the
benefit of Defendant, with the exception of funds necessary to meet payment

•

obligations related to legitimate and reasonable operating expenses incurred in the
ordinary course of business, as those payments become due, specifically (a) facilities
rental and utilities (b) payroll obligations, such payments specifically not to include
intercompany payments or payments to related entities, and (c) legal fees, such
payments to be subject to the provision to counsel for Telebrands of a table or other
listing of expenses documenting those payments.

STONE & MAGNANINI LLP

COWAN LIEBOWITZ & LATMAN PC

By:

By:

U!/s!.../_ _ _ _ _ __
David S. Stone, Esq.
150 JFK Parkway
Short Hills, NJ 07078
973-218-1111
Attorneys for Plaintiff
Telebrands, Corp.

~~~/______~_______

Arlana S. Cohen, Esq.
1133 Avenue of the Americas
New York, NY 10036
212-790-9237
Attorneys for Defendant
ABC Import Int'l, Inc.

SO ORDERED

S/Carol Bagley Amon

H~n. Car~l (jaglflijArflm
Chief U.S. District Judge
Dated: