Unilever Supply Chain, Inc. v. Koolpets Products, Inc. et al

Filing 14

STIPULATED FINAL JUDGMENT AND PERMANENT INJUNCTION in favor of Plaintiff against Defendants. (Signed by Judge J. Paul Oetken on 11/21/2011) (Attachments: # 1 Notice of right to Appeal)(jnm)

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Gregory P. Gulia

Mitchell A. Frank

Vanessa C. Hew

DUANE MORRIS LLP

1540 Broadway

New York, NY 10036-4086

Telephone: [phone]

Facsimile: [phone]

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USDCSDNY
DOCUMENT
ELECTRONICALLY FILED

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DATE ~LEJI

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Attorneys for Plaintiff

UNILEVER SUPPLY CHAIN, INC.

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK

UNILEVER SUPPLY CHAIN, INC. ,
Plaintiff,

Case No. 11 CV 3241 (JPO)
STIPULATED FINAL JUDGMENT AND
PERMANENT INJUNCTION

v.

KOOLPETS PRODUCTS, INC. alkJa
PRODUITS KOOLPETS, INC.,
FRANCOIS MAROIS and DANY K.
KOURI,
Defendants.
WHEREAS, PlaintiffUnilever Supply Chain) Inc. ("Plaintiff") commenced the abovecaptioned action on May 12, 2011 by the filing of a Sununons and Complaint against Defendants
Koolpets Products, Inc. alkJa Produits Koolpets. Inc. ("Kootpets"), Francois Marois ("Marois")
and Dany K. Kouri ("Kouri") (sometimes collectively referred to herein as "Defendants"),
alleging claims of federal trademark infringement, unfair competition and dilution and related
claims under New York statutes and the common law relating to Defendants' unauthorized use
or intended use of the term BONESICLE as a trademark and otherwise; and
WHEREAS, Plaintiff was merged into Conopco, Inc., a related company, effective as of
September 30, 2011; and

WHEREAS. the parties to this action have agreed to resolve it by the entry of this
Stipulated Final Judgment and Permanent InJunction.
NOW. THEREFORE. IT IS HEREBY ORDERED. ADmDOED AND DECREED AS
FOLLOWS:
FINDINGS OF FACT
1.

At the time this action was 9~~menc~d. Plaintiffwas a Delaware corporation,
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with a place of business at 1 John Street, Clinton, C'onnecticut 06413. Effective as of September
30,2011, Plaintiff was merged into its related compa'ny, Conopco, Inc., which is now Plaintiffs

successor-in-interest with respect to the claims set forth in this action.
2.

Defendant Koo1pets is a Canadian company with a place of business at 1100

Rene-Levesque Boulevard West, Montreal. Quebec H3B 5C9 Canada.
3.

Defendant Marois is an individual residing at 8930 Croissant de Louve, #4,

Brossard, Quebec J4Y OB2 Canada.
4.

Defendant Kouri is an individual residing at 38 de Sorel Rue, Blaineville, Quebec

J7B 2A2' Canada.
5.

This Court has jurisdiction over this action under Section 39 of the Lanham Act,

15 U.S.C. § 1121, Sections 1:332(a), 1338(a), 1338(b) and 1367(a) of the Judicial Code, 28
U.S.C. §§ 1332(a), 1338(a), 1338(b) and 1367(a), and under principles of supplementary
jurisdiction.
6.

Defendants consent to this Court's personal jurisdiction over them for this action

and permanent injunction. and to venue in this district.
7.

Plaintiff is the owner of all right, title and interest in and to a family of trademarks

incorporating the suffix "SICLE" ("SICLE Family of Marks"), including the famous trademarks

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POPSICLE®, CREAMSICLE® and FUDGSICLE®, for frozen confections, all of which are valid,
subsisting and enforceable.
8.

Plaintiff's SICLE Family ofMarks are covered by numerous federal trademark

registrations and pending applications, including, but not limited to: POPSICLE (Reg. No.
2,421,400), POPSICLE THE ORIGINAL BRAND & Design (Reg. No. 1,840,718),
CREAMSICLE (Reg. No.1, 839,541), C~AMSICLE THE ORIGINAL BRAND & Design
(Reg. No. 1,840,719), FUDGSICLE (Reg~No. 434,594), FUDGSICLE THE ORIGINAL
BRAND & Design (Reg. No. 1,840,717), CHOCSICLE (Reg. No. 3,178,063), YOSICLE (Ser.
No. 851136228), SUPERSICLE (Serial No. 85/261745) and SICLE (Serial No. 85/299618).
9.

Plaintiffs registrations fot the SICLE-Family of Marks provide constructive

notice ofUnilever's claim of ownership and constitute prima facie evidence of Plaintiffs
ownership of such registrations and of Plaintiff's exclusive right to use such registered
trademarks i~ commerce on and in connection with the goods specified in such registrations.
10.

Plaintiff's registrations Nos. 2,421,400 for POPSICLE, 8,840,718 for POPSICLE

THE ORIGINAL BRAND & Design, 1,839,541 for CREAMSICLE, 1,840,719 for
"

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CREAMSICLE THE ORIGINAL BRAND & Design and 1.840,717 for FUDGSICLE THE
ORIGINAL BRAND & Design are incontestable pursuant to 15 U.S.C. § 1065 and constitute
conclusive evidence of Plaintiffs exclusive right to use the marks covered by such registrations
in commerce in connection with the goods specified in the registrations .

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11.

Defendants intended to use the mark BONESICLE as a trademark for pet food,

specifically. food for dogs (the "Infringing Mark").
12,

On February 24,2011, Defendant Koolpets fi1ed an intent-to-use application with

the United States Patent and Trademark Office (PTO) to register BONESICLE, under Ser. No.

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851250796 as a: trademark for "food products for animals, dietary and nutritional supplements for
animals, food supplements for medical use for animals, veterinary products and veterinary
pharmaceutical preparations",.in International Class 5 (the "AppUcation\').
13.

Defendants, or one of them, own the domain name www.bonesicle.com (the
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"Domain Name") and Defendants own and operate a website corresponding to the Domain
Name (the "Website").
14.

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Defendants owned and operated a BONESICLE page on the www.facebool}.com

website (the "Facebook Page").
15.

Plaintiff objected by way ofletter to the Application, the Domain Name, the

Website, the Facebook Page and Defendants' other use andlor planned use ofthe Infringing
Mark.
16.

Defendants failed to abandon the Application and discontinue their use of the

Infringing Mark prior to the filing ofthis action.
PE~ENTINJUNCTION

Defendants Koolpets, Marois and Kouri, and their representatives, associates, employees,
agents, licensees, attorneys, successors, assigns and/or all those in active concert or participation
with them and/or any person and/or entity controlled directly or indirectly by Defendants, are
permanently enjoined and restrained from, directly or indirectly:
a.

using and/or authorizing any third party to use in any manner, as a

trademark, service mark, domain name, business name, trade name and/or other symbol of
origin, and/or on or in connection with any social media website, including but not limited to
Facebook and/or Twitter, the term BONESICLE, any name andlor mark incorporating
BONESICLE and/or otherwise incorporating SIeLE, andlor any other counterfeit, copy,

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simulation, confusingly similar variation and/or colorable imitation of Plaintiffs SICLE Family
of Marks, collectively or individually, in any manner or form, on or in connection with any
business, products and/or services, andlor in the marketing. advertising and/or promotion of
same anywhere in the world. Notwithstanding the generality of the foregoing, Defendants, or any
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of them, may (i) retain ownership of the Domain Name provided that Defendants, indivi¢!ually or
collectively, do not use the Domain Name ip: connection ~ith any active website or otherwise
,and/or do not sell, assign, transfer, license or otherwise authorize and/or permit the use of the
Domain Name by any third party and (i9 continue, for a period of six (6) months from the date
of the entry of order of this Stipulated Final Judgment and Permanent Injunction, to use the email
address "@bonesicle.comn solely for the purpose of receiving and sending email, provided,
however, that Defendants shall use reasonable commercial efforts to transition to a different
email address as soon as reasonably practicable during such six' (6) month period, following
which Defendants shall no longer use the "@bonesicle.com" email address;
b.

imitating. copying or making any unauthorized use of Plaintiffs SICLE

Family of Marks, collectively or individually, andlor any copy, simulatiop, variation and/or
imitation thereof;
c.

making and/or displaying any statement andlor representation that is likely

to lead the public andlor trade to believe th~t I,)efendants. or any of them, and/or Defendants'
goods andlor services are in any manner associated and/or affiliated with and/or approved,
endorsed, licensed, sponsored, authorized andlor franchised by andlor are otherwise connected
with Plaintiff;
d.

making any false and/of misleading claims and/or statements concerning

Plaintiff andlor Plaintiff's products and/or brands;

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e.

using and/or authorizing any third party to use in connection with the

rendering, offering, advertising, and/orpromotion of any goods) products andlor services, any
false description, false representation, andidr.'Ialse d~ignation of origin, and/or any marks,
names, words, symbols, devices andlor trade dress which falsely associate or tend to falsely
associate such goods, products andlor services with Plaintiff;
f.

diluting the distinctive quality of Plaintiffs SICLE Family of Marks,

collectively or individually;
g.

subject to the provisions of Paragraph (a) hereof, registering andlor

applying to register as a trademark, service mark, domain name, Facebook page, Twitter handle,
other social media address or account name. trade name andlor other source identifier and/or
symbol of origin BONESICLE andlor any other name or mark incorporating SICLE, whether
alone or in combination with any other words andlor designs, and/or any mark, trade dress and/or
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name that infringes or is likely to be confused with Plaintiffs SICLE Family of Marks,
collectively or individually;
h.

engaging in any other activity constituting W1fair competition with

Plaintiff, or constituting infringement of Plaintiff's POPSICLE@, CREAMSICLE@,
FUDGSICLE® , CHOCSICLE@, SUPERSICLE, SICLE and/or YOSICLE trademarks andlor
logos, and/or of Plaintiffs rights therein; and
i.

aiding, assisting or abetting any other party in doing any act prohibited by

Subparagraphs a. through h.
. FURTHER RELIEF

a.

On or before November 22, 2011, Defendants or their attorney shall

provide Plaintiff's counsel with written confirmation that Defendants have, subject to the

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provisions of Paragraph (a) of the Permanent Injunotion herein> permanently ceased all use)
directly or indirectly, ofBONESICLE, andlor any other tenn incorporating "SICLE", in any
format in any media in connection with the manufacture, marketing, advertising, promotion,
distribution, importation, export andlor sale of any goods or services throughout the world;
'f'; :

b.

On or before November 22,2011, Defendants or their attorney shall

provide Plaintiffs counsel with written confirmation that Defendants have permanently disabled
and cancelled any registratio~ for the Website and the Facebook Page andlor any domain name
other than the Domain Name, any website other than the Website andlor any other social media
address or account name owned or controlled by Defendants, or any of them, which incorporates
"Bonesicle", "sicle" and/or any other term which includes "sicle";
c.

Within five (5) business days following the entry of order of this

Stipulated Final Judgment and Permanent Injunction, Defendant Koolpets shall (i) execute an
Express Abandonment (Withdrawal) of the Application with prejudice; (ii) file same
electronically with the United States Patent and Trademark Office ("PTO") and (iii) notify
Plaintiffs counsel of the filing of same;
d.

Within five (5) business days following the .entry of order of this

Stipulated Final Judgment and Permanent Injunction. Defendants or their attorney shall provide
Plaintiff's counsel with written confirmation that Defendants have withdrawn any and all actions
and/or proceedings commenced by or on behalf of Defendants anywhere in the world
challenging or seeking to cancel or expunge any trademark registrations for any of the SICLE
Family of Marks owned by Plaintiff or any of Plaintiffs affiliated companies, including, but not
limited to, Section 4S Proceeding No. 256037 in Canada, seeking expungement of Canadian

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Registration No. TMA120876 for the mar~,\~~CLE <?)Vlled by Plaintiff's affiliated company
UnUever Canada, Inc.;
e.

Defendants, or anY'ofthem, shall not seek or assist others to seek to revive

or re-file the Application following its aban~onment;
f.

Defendants, or any ~fthem, shall not challenge Plaintiff's rights in the

SICLE Family of Marks, collectively or i~dividuaI1y', or Plaintiff's use of the SICLE Family of
Marks, collectively or individually, for any pr'oductsand/or services anywhere in the world;
,
g.

Defendants shall not at any time make any statement, whether written or

oral, in or to any media or otherwise, including, without limitation, to any customef, client,
employee of Plaintiff or its direct or indirect parents, subsidiaries, affiliates and!or related
companies, which in any way denigrates,. disparages; tarnishes the image of, or otherwise
conveys negative information about or reflects negatively upon (i) Plaintiff andlor its direct or
indirect parents, subsidiaries, affiliates andlor related companies andlor each and all of their past
. andlor present officers, directors, employees andlor agents, (ii) the SICLE Family of Marks,
collectively or individually, (iii) the products in connection with which such marks are used,
(iv) any other trademarks, brands or products of Plaintiff or its affiliated companies, andlor
(v) ice cream and/or frozen confections generally.
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that each of the parties
shall bear its own costs and attorneys' fees; provided, however, that should any action by any of
the parties be necessary to enforce any of the terms or conditions of this StipUlated Final
Judgment and Permanent Injunction, the prevailing party shall be entitled to its reasonable
attorneys' fees and costs in addition to other relief, and the party against whom enforcement was

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