Tropical Nut & Fruit Co. v. Forward Foods, LLC et al

Filing 41

STIPULATED ORDER OF DISMISSAL AND ORDER VACATING PRELIMINARY INJUNCTION. Signed by Chief Judge Frank D. Whitney on 9/13/2013. (eef)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
CIVIL ACTION NO. 3:13-CV-131

TROPICAL NUT & FRUIT CO.,
Plaintiff,
v.
FORWARD FOODS LLC and
RECHARGE FOODS LLC,
Defendants.

STIPULATED ORDER OF DISMISSAL AND
ORDER VACATING PRELIMINARY INJUNCTION
Plaintiff Tropical Nut & Fruit Co. (“Tropical”) and Defendants Forward Foods LLC and
Recharge Foods LLC (“Defendants”), wishing to avoid the expense, uncertainty, inconvenience,
and other burdens of litigating the above-entitled action, have entered into an agreement settling
their dispute and hereby stipulate to the entry of this Stipulated Order of Dismissal and Order
Vacating Preliminary Injunction, the former pursuant to Fed. R. Civ. P. 41(a)(2).
Tropical and Defendants stipulate as follows:
1.
action.

The Court has jurisdiction over the parties and the subject matter at issue in this

2.

Tropical filed a complaint against Defendants for trademark infringement.

Defendants filed an answer contesting the allegations made by Tropical. Defendants filed certain
counterclaims against Tropical. Tropical filed an answer contesting the counterclaims.
3.

Tropical moved this Court for a preliminary injunction, which Defendants

opposed. After full briefing, an evidentiary hearing was held on May 29, 2013. On June 10,
2013, this Court issued an Order granting Tropical’s motion for preliminary injunctive relief, but
only to a limited extent (the “Preliminary Injunction Order”).
4.

The Preliminary Injunction Order is hereby vacated and, in its place, the Court

enters this Order which has been stipulated to by the parties.
NOW, THEREFORE, IT IS HEREBY ORDERED THAT:
1.

Either or both Defendants may (but neither Defendant is required to) use and

otherwise commercially exploit all or any packaging for or in connection with Recharge Foods’
“RECHARGE DYNAMIC NUTRITION” bars that was in existence on the day the Preliminary
Injunction Order was issued (including reorders for such packaging if necessary) until and
including 11:59 P.M. Pacific time on June 10, 2014 (the “One Year Date”). Commencing on the
date immediately following the One Year Date, and for so long as the Defendants commercially
exploit products using “RECHARGE DYNAMIC” or “RECHARGE DYNAMIC
NUTRITION,” Defendants shall only use either or both phrases such that all words are used in
the same font, the same size lettering, the same bold face or lack of bold face, and the same use
of italics or lack of italics so that the word “Recharge” is not highlighted or emphasized in any
manner; provided, however, that either or both Defendants may use “RECHARGE DYNAMIC”
or “RECHARGE DYNAMIC NUTRITION” (or both) in stacked (vertical) or in linear
(horizontal) form. For so long as Tropical uses “RECHARGE” as a trademark for bars or snack

mixes, or both, under no circumstances shall the Defendants or any one of them use the word
“RECHARGE” (in any form or style) as a trademark or name of any product manufactured, sold,
marketed, or distributed by Defendants or either of them.
2.

With respect to electronic media, e.g., on either of Defendants’ website(s),

including Facebook site(s), for so long as one or both Defendants commercially exploit products
using “RECHARGE DYNAMIC” or “RECHARGE DYNAMIC NUTRITION,” such party shall
only use either or both phrases such that all words are used in the same font, the same size
lettering, the same bold face or lack of bold face, and the same use of italics or lack of italics so
that the word “Recharge” is not highlighted or emphasized in any manner; provided, however,
that either or both Defendants may use “RECHARGE DYNAMIC” or “RECHARGE
DYNAMIC NUTRITION” (or both) in stacked (vertical) or in linear (horizontal) form.
Notwithstanding anything to the contrary herein, one or both Defendants may hereafter display
or post on social media sites either or both of the photographs displayed below.

3.

Defendants, or either of them, may use either “RECHARGE DYNAMIC” or

“RECHARGE DYNAMIC NUTRITION” (or both) so long as Paragraphs 1 and 2 of the
ordering clause above are complied with; provided, however, that nothing in this Order will
restrict one or both Defendants from using any trademark or service mark that does not include
the word “RECHARGE.” Nothing in this Order will restrict one or both Defendants from
changing the packaging or labeling of (or associated with) all or any products so long as
Paragraphs 1 and 2 of the ordering clause above are complied with.
4.

Defendants shall cause a one-time monetary payment of thirty-five thousand

dollars ($35,000.00) to be paid to Tropical within five (5) business days of the date of this Order.
Tropical shall not be entitled to any royalty or any other payment except as provided herein.
5.

Within five (5) business days of the date of this Order, Tropical shall voluntarily

dismiss TTAB Opposition No. 91210228 with prejudice by filing a Notice of Withdrawal with
Prejudice with the Trademark Trial and Appeal Board and shall provide evidence of same to
Defendants’ counsel.
6.

For so long as Tropical uses “RECHARGE” for bars or snack mixes, neither of

Defendants shall use nor seek to register “RECHARGE” by itself for bars or for snack mixes.

Tropical shall not oppose, seek to cancel, or otherwise hereafter object to Forward Foods’ or
Recharge Foods’ use, application, or registration of “RECHARGE DYNAMIC” or “RECHARGE
DYNAMIC NUTRITION” anywhere in the world (whether in standard character form or stylized
form or with a design), including Recharge Foods’ U.S. Trademark Application Ser. No. 85554814,
anywhere in the world. Neither of Defendants shall oppose, seek to cancel, or otherwise hereafter
object to Tropical’s use, application, or registration of the mark “RECHARGE” anywhere in the
world (whether in standard character form or stylized form or with a design), for use with bars or
snack mixes. Respecting future prosecution of Tropical’s “RECHARGE” trademark in any
jurisdiction, to the extent it is legally permissible, Tropical shall endeavor to prosecute future
applications in either Class 29 (or its equivalent) or Class 30 (or its equivalent); provided, however,
that Tropical will not be bound to restrict future applications only to Class 29 or Class 30 (or their
equivalents) where, in foreign counsel’s or counsels’ opinion(s), such restriction(s) are not legally
feasible. Respecting future prosecution of Forward Foods’ or Recharge Foods’ “RECHARGE
DYNAMIC” or “RECHARGE DYNAMIC NUTRITION” trademarks in any jurisdiction, to the
extent it is legally permissible, Forward Foods or Recharge Foods, as the case may be, shall
endeavor to prosecute future applications in Class 5 (or its equivalent); provided, however, that
Forward Foods or Recharge Foods will not be bound to restrict future applications to Class 5 where,
in foreign counsel’s or counsels’ opinion(s), such restriction(s) are not legally feasible. Should the
need arise, for so long as one or both Defendants commercially exploit products using
“RECHARGE DYNAMIC” or “RECHARGE DYNAMIC NUTRITION,” the parties shall
cooperate to take steps necessary to prevent the possibility of consumer confusion in the future. The
parties agree to execute such other agreements and documents, including, without limitation, letters
of consent, as may be necessary to achieve registration of the parties’ respective marks in any

country or jurisdiction, provided that such attempt to register is consistent with the provisions of this
Agreement. For so long as one or both Defendants commercially exploit products using
“RECHARGE DYNAMIC” or “RECHARGE DYNAMIC NUTRITION,” each party shall
provide any other party with a letter of consent if the trademark office in a particular country,
including, without limitation, the United States, cites the trademark of another party in this action
against registration. The party requesting consent shall pay the attorneys’ fees for the party giving
consent.
7.

The terms of this Order apply to, and shall bind, the parties and their respective

subsidiaries, parent corporations, predecessors, successors, officers, directors, employees,
shareholders, affiliates, and agents.
8.

Nothing in this Order precludes Tropical or Defendants from asserting any claims

or rights that arise solely after entry of this Order or that are based upon any breach of, or the
inaccuracy of, any representation or warranty made by Tropical or Defendants in the settlement
agreement reached by the parties.
9.

This Order of Dismissal is final and may not be appealed by any party.

10.

Tropical’s claims against Defendants, and Defendants’ counterclaims against

Tropical, are hereby dismissed with prejudice and without costs to any party, except the Court
shall retain jurisdiction to enforce this Stipulated Order of Dismissal and the settlement
agreement entered into by the parties.

STIPULATED TO this 12th day of September, 2013:

Respectfully submitted,

/s/ Mark P. Henriques
Mark P. Henriques
N.C. State Bar No. 18701
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
3500 One Wells Fargo Center
301 South College Street
Charlotte, NC 28202-6025
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]

-and-

/s/ Mark E. Avsec
Mark E. Avsec (admitted pro hac vice)
Susan Clady (admitted pro hac vice)
Julie Fenstermaker (admitted pro hac vice)
Benesch, Friedlander, Coplan & Aronoff LLP
200 Public Square, Suite 2300
Cleveland, OH 44114
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
E-mail: [e-mail]
E-mail: [e-mail]
Attorneys for Defendants
FORWARD FOODS LLC
and RECHARGE FOODS LLC

-and-

/s/ Alice Carmichael Richey
Alice Carmichael Richey
N.C. State Bar No.13677
Alice Carmichael Richey PLLC
2820 Selwyn Avenue, Suite 420
Charlotte, NC 28209
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
Attorney for Plaintiff
TROPICAL NUT & FRUIT CO.

IT IS SO ORDERED.

Signed: September 13, 2013