7-Eleven, Inc. v. 24/7 Express Mini Mart Inc. et al

Filing 9

CONSENT JUDGMENT: SO ORDERED that Within forty-five (45) days from the date this Consent Judgment is entered by the Court, Defts shall file with the Court, and serve upon counsel for 7-Eleven, Inc. a sworn writing or other Declaration setting forth i n detail the manner and form in which the Defts have complied with the terms of this Consent Judgment, including color photographs depicting such compliance. Except as otherwise explicitly provided herein, the respective parties shall bear their own costs, including attorney's fees. The Clerk of the Court is respectfully directed to close this case. Ordered by Judge Sandra J. Feuerstein on 3/31/2014. (Florio, Lisa)

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UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NEW YORK
CENTRAL ISLIP DMSION

FILE (;I
IN CLERK'S OFFICE

U S OISTRIP COU!ilT E D N Y

7·ELEVEN, INC ..
a Texas corporation,

)

)
)

)
)

Plaintiff,

v.

MAA~ ZQ14 *
* LONG ISLAND OFFICE

)

)

2417 EXPRESS MINI MART INC., a
New York Corporation: DIPENKUMAR
PATEL, an individual: and ANISHA
PA1'EL. an individual,

) Civil No. 2:14·cv·OlG10·S,JF·WDW
)
)
)
)

---------=D~e~fu~n~d~a~nt~s~·-----------)
CONSENT JUDGMENT ·
This matter having been p1·esented to the Court by and with the consent of
plaintiff, 7·Eleven. Inc. ("7·Eleven"), and defendants, 24/7 Express Mini Mat·t Inc.,
Dipenkumar Patel and Anisha Patel (collectively, "Defendants"), the Court having
been fully advisQd ofthe premises, it is hereby ORDERED, ADJUDGED. and
DECREED as follows:
1.

1'his Court has jurisdiction over the parties hereto and over the subject

matter hereof.
2.

Since long priot• to the filing of this civil action, 7· Eleven has been

engaged in the business, inter alia, of offering convenience store services and
products to the general public at various locations throughout the United States,
including within this judicial district.

4818·0478·696Q,

,

3.

Since at least as early as 1946, long prior to the filing of this civil

action, 7·Eleven bas provided its aforesaid convenience store services under the
t1·ade name and trademark 7·ELEVEN ("7·ELEVEN Name and Mark").
4.

There are currently over 5,000 convenience stores througho\lt the

United States, including within the State of New York, being operated by 7·Eleven
or its franchisees under the aforesaid 7-ELEVEN Name and Mark.
5.

Since long prior to the filing of this civil action, 7·Eleven's 7·ELEVEN

Mark has been displayed on, inter alia, signage for its convenience stores. A
primary signage display of the 7· ELEVEN Mark is a multicolored red, green and
orange logo, featuring a primarily red Arabic numeral "7," all displayed against a
white rectangular background ("7·ELEVEN Logo"), as depicted below:

6.

Since long prior to the filing of this civil action, 7·Eleven has offered its

aforesaid convenience store services under a distinctive store stripeij mark consisting
of orange, green, and red stripes against a white field ("7·Eleven Stripes Mark"). A
very common display of the 7·Eleven StJ·ipes Mark is on store front fascia flanking
the 7·ELEVEN Logo, as depicted below:

2

7.

Since long prior to the filing of this civil action, 7·Eleven and its

franchisees annually have sold nationally billions of dollars of products and services
under each of its aforesaid 7· ELEVEN Name, Muk, and Logo and the 7· Eleven
Stripes Mark and have annually spent millions of dollars to advertise and promote
its convenience store services and related goods and servir,es nationally under the
aforesaid trade identities.
8.

Since long prior to the filing ofthis civil action, 7· Eleven has used in

muny of its convenience stores a distinctive window trade dress comprised of its
?·ELEVEN Logo flanked by horizontal stripes in white relief against clear glaRs
("7·Eleven Window Trade Dress"), as depicted below:

9.

Since long prior to the filing of this civil action, 7·Eleven has used in

many of its convenience stores a distinctive interior stripes trade dress consisting of
a green and red

~tl·ipes

pattern running horizontally on intedor store walls

("?·Eleven Interior Trade Dress"), as depicted below:

3

10.

Since long prior to the filing of this civil action, ?·Eleven has owned an

invaluable goodwill which is symbolir.ed by each of the aforesaid ?·ELEVEN Name,
Murk, and Logo, the ?·Eleven Stripes Mark, the ?·Eleven Window Trade Dress and
the 7·Eleven Interior Trade Dress, the uses of which substantially increase the
v~!ue

of 7·Eleveo's and its franchisees' 7·ELEVEN stores and the salability of the

goods and services sold through them.

ll.

By virtue of the aforesaid extensive use, advertising, and promotion,

and Aince long prior to the ftling of this civil action, each of 7· Eleven's

~1loresaid

7·ELEVEN Name, Mark, and Logo, the 7·Eleven Stripes Mark, the ?·Eleven
Window Trade Dress and the 7·Eleven Interior Trade Dress has acquired a strong
secondary meaning signifying ?·Eleven.
12.

7·Eleven bus registered its aforesaid 7·E!even Stripes Mark in the

United States Patent and Trademark Office. Such registrations include, inter alia,
th~

following:

Flanking
7· Elevcm Stripes
Mark

2,135,385

02/10/1998

Retail convenience store
service a

7·E!even Stripes
Mark

2,295,753

ll/30/19f)9

.Retail gasoline station
services

The aforeHaid registrations are valid, subsisting, owned by ?·Eleven, and are now
incontestable in accordance with Sections 15 and 33 of the United States
Trademark Act, 15 U.S.C. §§ 1065, 1115(b), and, therefore, conclusive evidence of
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the validity of those registered marks and of their registration, of7·Eleven's
ownership of those marks, and of 7· Eleven's exclusive right to \lSe those marks on or
in connection with the identified goods and services,
13.

7·Eleven has registered its aforesaid 7·ELEVEN Mark in the United

States Patent and Trademark Office. Such registrations include, but are not
limited to, the following:

?·ELEVEN &
Design

718,016

07/04/1961

Retail grocery service

?·ELEVEN

896,654

08/11/1970

Retail grocery store service

7·ELEVEN &
Design

920,897

09/21/1971

Retail grocery store services

?·ELEVEN &
Doijign

961,594

06/19/1973

Various flavors ofsoft drinks

7·ELEVEN&
Design

1,035,454

03/09/1976

Sandwiches

?·ELEVEN &
Design

1,288,594

08/07/1984

Gasoline

?·ELEVEN &
DeHign

1,402,425

07122/1986

Soft drinks for consumption on or off
the premises

7·ELEVEN

1,702,010

07/21/1992

Coffee for consumption on or off the
premises

?·ELEVEN

2,152,472

04/21/1998

Telephone calling card services

5

7·ELEVEN &
Design

2,642,740

10/29/2002

Coffee, and semi-frozen flavored
cofl'ee·based beverages, for
consumption on or off the premises;
Soft drinks and semi"frozen soft
drinks for consumption on or off the
premises

7·ELEVEN

2,685,684

02/1112003

Retail store services featuring
gasoline and retail store services
featuring convenience sto1•e items

7·1ULEVEN &
Do sign

2,751,552

08/19/2003

Clothing, namely caps

?·ELEVEN

2,765,976

09/23/2003

Pens and stationery· type portfolios;
Clothing, namely caps, jackets,
shirts

7·ELEVEN &
Design

2,834,419

04/20/2004

Retail c:onvenience store services

7·ELEVEN

2,914,788

12/28/2004

Gasoline

?·ELEVEN

3,338,512

11120/2007

Gift card services and debit card
services

06/23/2009

Retail convenience store services
featu1•ing the sale of food and
beverage products fo1· consumption
on or off the premises

09/08/2009

Retail convenience store services
£on turing food and beverage
products for consumption on or off
the premises

09/08/2009

Retail convenience store services
featuring food and beverage
products for consumption on or off
the premises

?·ELEVEN &
Thin Stripes
Design
7·EUVEN&
Tri·Stripes
Design (Color)
7·ELEVEN &
Tri ·Stripes
Design

3,644,842

3,679,337

3,679,341

6

The aforesaid registrations are valid, subsisting, owned by 7·Eleven, and Re(r. Nos.
718,D16; 896,654: 920,897: 961.594; 1,035,454: 1,288,594; 1,402,425; 1,702,010;
2,152,472: 2,642,740: 2,685,684: 2,834,419; 2,914,788: and 3,338,512 are now
incontostabl~

in accordance with Sections 15 and 33 of the United States

Trademark Act, 15 U.S.C, §§ 1065, 1115(b), and, therefore, conclusive evidence of
the validity of those registered

q~arks

and of their registration, of 7·Eleven's

ownership of those marks, and of7·Eleven's exclusive right to use those marks on or
in connection with the identified goode and services.
14.

Defendants, individually or collectively, are using the name and mark

2417 EXPRESS fo1· convenience store services, including a multicolored red, green
and ot·ange logo, featuring a primarily red Arabic numeral "7," all displayed against
a white rect;mgular background ("2417 EXPRESS Logo"), as depicted below:

15.

Defendants offer their convenience store services under a store stripes

mark consist\ng of orange. green, and red stripes against a white field ("Defendants'
Stripes Mark"), including a display flanking the 24/7 EXPRESS Logo on their store
front fascia, as depicted below:

7

16.

Defendants are using a window tt·ade dress comprised of its

2417 EXPRESS Logo flanbd by horizontal stl'ipes in white relief against clear glass
("Defendants' Window Trade Dress"), as depicted below:

17.

Defendants are using an interior stripes trade dress consisting of a

green and orange stripes pattern running horizontally on interior store walls
("Defendants' Intet·ior Trade Dress") as depicted below:

18.

Defendant, 2417 Express Mini Mart, Inc., and its directors and officers,

including defendants Dipenkumar P11tel >md Anisha Patel, and each of thGir
respect.ivo partners, agents, servants, and employees, and all those in active concert
or participation with any of them, who received actual notice of this Consent

Judgment, aro hereby permanently enjoined from:
a.

Using the Defendants' Stripes Mark, including as depicted in

Paragraph 15 above;
b.

Using the 2417 EXPRESS Name, Ma1·k, and Logo, including as

depicted in Paragraph 14 above;
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c.

Using the Defendants' Window Trade Dress, including as

depicted in Paragraph 16 above:
d.

Using the Defendants' Interior Trade Dress, including as

depicted in Paragraph 17 above;
e.

Using any other n.ame, mark, logo, or trade dress displayed in

any color combination, with or without additional colors, which includes in
combination two or more of the colors red, green, and orange for convenience
store or l'elated products or services:
f.

Using any Mme, mark, or logo consisting in whole ot· in part of

t-he numerals "7" or" 11" or the words "seven" or "oleven" for convenience
stores or t•alated products ot· services:
g.

Uaing any other name, mark, or logo which is n reproduction,

counterfeit, copy, or colorable imitation of7·Eleven's 7·Elevan Stripes Mark
(including as depicted in Paragraph 5 above), 7·E!even's 7·EJ,EVEN Nam~.
Mark, or Logo (including as depicted in Pt~ragraph 6 above), 7· Eleven's
Window Trade Dt·ess (including as depicted in Paragraph 8 above), or
?·Eleven's Interior Trade Dress (including as depicted in Paragraph 9 above)
for convenience stores or related products or services:
h.

Doing any ot,her act or thing likely to confuse, mislead, or

deceive others into believing thRt Defendants, their services,

Oi'

products

emanate from 7·Eleven or are connected with, sponsored by, or npproved by
?·Eleven;
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i.

Doing any other act or thing likely to dilute the distinctiveness

of7·Eleven's trade identities including the 7·Eieven Stdpes Mark, or the

7·ELEVEN Naq~e, Mark, or Logo: and
j.

Aiding or assisting

~tnY

person engaging in any of the acts

prohibited by sub·sections (a) through (i) above.
19.

Notwithstanding the provisions of Paragraphs 18(b) and l8CD of this

Consent Judgq~ent, Defendants may use the trade name "2417 Express" for
convenience store services, including the corporate name "24/7 Express Mini Mart,
Inc," as well as the signage display depicted below:

20.

Within forty·five (45) days from the date this Consent Judgment is

entered by the Court, Defendants shaJI file with the Court, and serve upon counsel
for ?·Eleven, Inc. a sworn writing or other Declaration setting forth in detail the
manner and form in which the Defendants have- complied with the terms of this
Consent Judgment, including color photoirophs depicting such compliance.
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21.

Except as otherwise explicitly provided herein, the respective parties

shall bear their own costs, including attorney's fees.
22.

'f'ftis Cgnrt re+ajpa juriedie$teft o1ex this cause to enfozce this 9ousent

Judgment.

Th.e C\eY IL o~ -\-he

e\o<,;e

--\itll~

Court

1'S

\"11Specifu II~

clirectcd tr>

co_~e

SO ORDERED:
Dated:

s/ Sandra J. Feuerstein

_____,3~/1--=3:..:..1wjlc_:"J_ __

United States District Judge
CONSENTED TO:
7·ELEVEN, INC,

24/7 EXPRESS MINI MART, INC.

By:~­

By:

Name: Jason A. Berta

Name:

A 9. PrteL
Al'\•)hg, ?c.k \

Title: Attorney·in·fact

Title:

?Crl• •~"' V

ANISHA PATEL, Individually

II

®

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. ..

APPROVED AS TO FORM, AND
SUBMITTED BY:
SADIS & GOLDBERG LLP

Mitchell Tarae, Esq.
[e-mail]
551 Fifth Avenue, 21st Floor
New York, NY 10176
Telephone: 212·974·3798
Fax: 212•1173•6668

Attorneys for Plshltiff', 7·Eleven, Inc.

Attorneys for Defendsnta, 2417 J!Jxpress
Mini Mart, Inc., Dipenkumar Pstel, and
Anisha Patel

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