Orange Leaf Holdings LLC v. Zhou

Filing 10

CONSENT ORDER re: 3 MOTION for Temporary Restraining Order. Signed by Chief Judge Robert J. Conrad, Jr on 7/15/2011. (tmg)

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
3:11-cv-328-RJC-DSC
ORANGE LEAF HOLDINGS LLC,
an Oklahoma Limited Liability Company,
Plaintiff,
vs.
JING ZHOU,
an individual,
Defendant.

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CONSENT ORDER

This matter is before the Court on Plaintiff Orange Leaf Holding LLC’s (“Orange Leaf”)
Motion for a Temporary Restraining Order. (Doc. No. 3). After the filing of Orange Leaf’s
Complaint and Motion, the parties conferred and have agreed to the issuance of this consent Order
granting the relief below. With the consent of the parties, this Court finds and directs as follows:
1.

Orange Leaf brought this action under the Lanham Act, 15 U.S.C. §§ 1114

and 1125(a), and other applicable state law. Orange Leaf is an Oklahoma Limited
Liability Company, each of whose members are citizens of Oklahoma or Colorado, and
Defendant is an individual residing in the state of North Carolina.
2.

This Court has subject matter jurisdiction of this action pursuant to 28 U.S.C.

§1331(a), 1338(a) & (b), 1367, and 15 U.S.C. §1121. As Orange Leaf and Defendant are
citizens of different states, and as the matter in controversy exceeds the sum or value of
seventy-five thousand dollars ($75,000.00), exclusive of interest and costs, this Court also
has jurisdiction pursuant to 28 U.S. C. § 1332. Supplemental jurisdiction is also proper for
the state claims pursuant to 28 U.S.C. § 1367(a) because the claims set forth are so related
that they form part of the same case or controversy.

3.

This Court has personal jurisdiction over the Defendant, and venue is proper

in this Court pursuant to 28 U.S.C. §1391(b), as Defendant is doing business in this District,
a substantial part of the events or omissions giving rise to the claim occurred here, the
Defendant has advertised and continues to advertise in this District, and the restaurant
Defendant is attempting to open is located in this District.
4.

Orange Leaf is the owner of valid trademarks, including ORANGE LEAF®

and a stylized letter “O” (collectively, the “Marks”), which it uses to identify authorized
sellers and distributors in its frozen yogurt network. Orange Leaf has invested considerably
in the protection of its Marks, as shown by its substantial advertising and its registration of
trademarks on the Federal Register, including Reg. Nos. 3,814,302 and 3,814,304. Stores
operating under the Orange Leaf Marks also utilize a distinctive trade dress involving color
schemes, layouts, designs, and interior and exterior motifs that consumers associate with the
Orange Leaf brand. Photographs of the Marks and trade dress are shown in the Complaint,
the Motion, and the papers attached thereto.
5.

Defendant JING ZHOU has been operating as a licensee of a single Orange

Leaf location in Pineville, North Carolina. Orange Leaf has never granted permission to
Defendant to use the Orange Leaf Marks, trade dress, or proprietary information at any
locations other than the one in Pineville. However, the Defendant appears to be preparing to
open a new location in Northlake Mall in Charlotte, North Carolina under the name “Orange
Tree.”
6.

Orange Leaf believes that Defendant’s new restaurant plans to use the Marks

and similar variations of them and Orange Leaf’s distinctive trade dress in a manner that will
cause confusion in the marketplace and infringe on Orange Leaf’s rights.

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7.

Orange Leaf asserts that it has prior rights to the Marks and trade dress

and is entitled to protection under the Lanham Act and common law against unauthorized
copying and use of confusingly similar marks and trade dress. Based on these factual
allegations and those set forth more completely in the Complaint, the Motion, and the papers
attached thereto, Orange Leaf asserts that Defendant has committed trademark and trade
dress infringement and unfair competition, all in violation of the Lanham Act, 15 U.S.C. §§
1114 and 1125(a), and that he has further engaged in unfair and deceptive trade practices in
violation of N.C. Gen. Stat. § 75-1.1. Orange Leaf filed a motion seeking a temporary
restraining order, to be followed by preliminary injunction.
8.

The Court originally set this matter down for a hearing on Tuesday, July 12,

2011. Prior to the hearing, however, the parties conferred and have agreed to consent to the
entry of this Order.
9.

The parties consent to entry of this Order without the need for Orange Leaf

to post security, and the Court further determines that no such security is required under the
circumstances of this case. Defendant also consents to an extension of the period of this
Order beyond the time period set forth in Rule 65(b)(2) of the Federal Rules of Civil
Procedure, and the Court finds that good cause exists for such an extension so that the
parties may discuss any appropriate disposition of the case. This Order shall therefore
remain in effect until further order of the Court.
IT IS THEREFORE ORDERED that:
A.

Defendant, his agents, employees, and all other persons, firms, or corporations acting

or claiming to act on their behalf, or in concert with them, be restrained, enjoined and prohibited
from opening or conducting the proposed business at Northlake Mall in Charlotte, North Carolina

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using the name “Orange Tree,” Orange Leaf’s stylized “O”, any other Orange Leaf Marks or trade
dress, and any confusingly similar variations thereof.
B.

Defendant, his agents, employees, and all other persons, firms, or corporations acting

or claiming to act on their behalf, or in concert with them, be restrained, enjoined and prohibited
from opening or conducting any other proposed business using any Orange Leaf Marks or trade
dress and any confusingly similar variations thereof, including the name “Orange Tree,” Orange
Leaf’s stylized “O”, and Orange Leaf’s distinctive trade dress, apart from his sole authorized
location in Pineville, North Carolina; and
C.

Defendant be ordered to preserve all potentially relevant information and be

prohibited from any such further conduct that constitutes unfair competition or unfair and deceptive
trade practices.

Signed: July 15, 2011

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WE CONSENT:

/s/ James M. Dedman

/s/ David W. Gilpin

Christopher M. Kelly

Gilpin Law Offices, PLLC

James M. Dedman

Attorneys at Law

GALLIVAN, WHITE & BOYD, P.A.

301 S. McDowell Street, Suite 1204

5960 Fairview Road, Suite 400 (28120)

Charlotte, NC 28204

P.O. Box 12250

Telephone: [phone]

Charlotte, NC 28220

Facsimile: [phone]

704-552-1712

E-Mail: [e-mail]

P.O. Box 10589

Attorneys for Defendant Jing Zhou

Greenville, SC 29603
[phone]
[phone] FAX
[e-mail]
[e-mail]

OF COUNSEL:

Thomas E. Vanderbloemen
Adam C. Bach
GALLIVAN, WHITE & BOYD, P.A.

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P.O. Box 10589
Greenville, SC 29603
[phone]
[phone] FAX
[e-mail]
[e-mail]

Attorneys for Plaintiff,
Orange Leaf Holdings LLC

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