Sauer Brands, Inc. v. Duke Sandwich Productions, Inc. et al

Filing 241

CONSENT JUDGMENT and PERMANENT INJUNCTION, granting 240 Joint Motion. The Clerk is directed to terminate all pending motions ( 162 , 166 , 167 , 168 , 169 , 170 , 171 , 172 , 173 , 174 , 175 , 176 , 177 , 178 , 180 , 182 , 186 , 190 , 191 , 195 , 196 ) and deadlines in this case, including trial, and to CLOSE THE CASE. Signed by District Judge Frank D. Whitney on 6/4/2021. (tmg)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
DOCKET NO. 3:19-cv-00508-FDW-DSC
SAUER BRANDS, INC.,
a/k/a Duke’s,
Plaintiff,

)
)
)
)
vs.
)
)
DUKE SANDWICH PRODUCTIONS, )
INC., DFP SANDWICH SHOPS, LLC, and )
DUKE BRANDS,
)
)
Defendants.
)

CONSENT JUDGMENT
and
PERMANENT INJUNCTION

THIS MATTER is before the Court on the parties’ Joint Motion for Consent Judgment and
Permanent Injunction (Doc. No. 240). For the reasons stated in the joint motion, it is GRANTED.
This action, having come on for consideration of the Complaint of Plaintiff, Sauer Brands,
Inc. (“Duke’s”), is one for willful trademark infringement of Duke’s DUKE’S trademarks, unfair
competition, and false designation of origin in violation of the Lanham Act, the North Carolina
Unfair and Deceptive Trade Practices Act, and common law against Duke Sandwich Productions,
Inc. (“DSP”) and DFP Sandwich Shops, LLC (“DFP Sandwich”) (collectively, “Defendants”).
Plaintiff and Defendants having waived the entry of findings of fact and conclusions of law
pursuant to Rule 52 of the Federal Ru1es of Civil Procedure, and without trial, argument, or
adjudication of any issue of fact or law, having consented to and stipulated to the entry of this
Consent Judgment and Permanent Injunction under the terms provided herein:
IT IS HEREBY ORDERED, ADJUDGED AND DECREED:

1.

This Court has original jurisdiction over the subject matter of this action under the

laws of the United States pursuant to 15 U.S.C. § 1121(a), as well as 28 U.S.C. § 1331 (Federal

Question Jurisdiction); 28 U.S.C. § 1337(a) (Commerce Regulations); and 28 U.S.C. § 1338(b)
(Trademark and Unfair Competition). This Court has jurisdiction of all pendant state law claims
pursuant to 28 U.S.C. § 1367(a) (Supplemental Jurisdiction) because all such claims are based
upon the same or substantially the same conduct by Defendants.
2.

Duke’s is the owner of the following trademarks, among others:
Mark

Reg. No.

Goods and Services

0,734,661
1,650,276

Tartar sauce, , sandwich relish, and barbecue sauce

1,650,253
DUKE’S
DUKE’S

Blue cheese dressing

Mayonnaise and salad dressings

3,600,687
4,005,468

Barbecue and dipping sauces
Mayonnaise, tartar sauce, sandwich relish, and
salad dressing
Mayonnaise

6,193,515

3.

As result of its long use and promotion of these trademarks, Duke’s has

established these trademarks as famous and having secondary meaning among actual and target
purchasers as well as among members of the public.
4.

Defendants acknowledge the existence and validity in the United States of the

trademark rights described in Paragraph 2 above, and the ownership thereof by Duke’s.
5.

Duke’s is also the owner of common law trademark rights in connection with its

packaging and labeling as shown in Exhibit A attached hereto.

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6.

Defendants acknowledge the existence and validity in the United States of the

common law trademark and trade dress rights described in Paragraph 5 above, and the ownership
thereof by Duke’s.
7.

Defendants acknowledge that they have used DUKE-formative trademarks as

pictured in the attached Exhibit B.
8.

Judgment is entered for Duke’s on all of its claims.

9.

Defendants, their agents, servants, employees, principals, attorneys, and all others

in active concert or participation with any of them, are permanently enjoined and restrained
from:
a) Using, registering, or attempting to register any DUKE-formative trademark or trade
name, including DUKE or DUKE’S, alone or in conjunction with other elements, or
any designation that is confusingly similar thereto, in connection with (i) food or
beverage products, (ii) food or beverage manufacturing, distribution, or marketing
(including but not limited to private labeling and co-packing services), or (iii)
restaurant services (except as provided herein);
b) from using or registering in any manner DUKE or DUKE’S, alone or in conjunction
with other elements, or any other marks, words, or names that are confusingly similar
to the Plaintiff’s DUKE’S Marks on packaging, labels, signs, literature, display cards,
Internet websites, in domains, on social media, in hashtags, or on or with other
packaging, advertising, or promotional materials, or other materials;
c) using the scripted font shown in Exhibit B or any scripted font that is confusingly
similar to the DUKE’S scripted font as shown in U.S. Registration Nos. 0,734,661,
1,650,276, or 1,650,253, in connection with (i) food or beverage products, (ii) food or

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beverage manufacturing, distribution, or marketing (including but not limited to
private labeling and co-packing services), or (iii) restaurant services;
d) using any labeling, packaging, or trade dress featuring a yellow, red, and black color
scheme, black medallion, and red banner, or that is confusingly similar to the
DUKE’S packaging as depicted in Exhibit A hereto;
e) from making any statements on promotional materials or advertising for its goods or
services that are false or misleading as to source or origin or affiliation with,
sponsorship by, or connection to Duke’s, including but not limited to references to the
parties’ limited shared origin, Eugenia Duke’s recipes, and DUKE’S mayonnaise; and
f) doing any other act or thing likely to confuse, mislead, or deceive others into
believing that Defendants or its products contain DUKE’S mayonnaise, or emanate
from, or are affiliated or connected with, or sponsored or approved by, Duke’s.
10.

After service of notice of entry of judgment or issuance of an injunction pursuant

thereto, Defendants shall file with the Court and serve upon Duke’s counsel a written report
under oath setting forth details of the manner in which Defendants has complied with the Court’s
order pursuant to subparagraphs (a) through (f) in Paragraph 9 above. The time for compliance
with the requirements set forth in this Order shall be provided in a separate Settlement
Agreement executed by the Parties, and submitted to the Court under seal.
11.

Notwithstanding the foregoing, Defendant DFP Sandwich Shop, LLC is not

barred from continuing to operate one or more restaurants (including to-go and catering
services), including the one currently located at 1001 Poinsett Hwy, Greenville, SC 29609,
under the name DUKE SANDWICH COMPANY, and in connection with the logo depicted in

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Exhibit C hereto, provided the use of the aforementioned name and logo is limited to within a
twenty-five mile radius of Greenville, South Carolina.
12.

Defendants are further hereby directed to transfer all DUKE-formative domain

names owned by Defendants to Duke’s, with the exception of dukesandwich.com, which domain
Defendants may maintain for use in connection with the Greenville, South Carolina sandwich
restaurant, provided the website otherwise is in compliance with this Permanent Injunction.
13.

The United States Patent and Trademark Office is hereby directed to cancel

Defendant DFP Sandwich Shop LLC’s federal trademark registrations nos. 3,306,449;
4,531,158; 4,531,159; 4,531,160; 4,531,161; and 4,531,162.
14.

Defendants acknowledge that a breach of this Consent Judgment and Permanent

Injunction by Defendants would result in irreparable injury to Duke’s, and that in the event of a
breach, Duke’s would be entitled to immediate injunctive relief to enforce this Consent Judgment
and Permanent Injunction, damages, and to reimbursement of its reasonable attorneys’ fees and
costs arising from bringing an action against Defendants and enforcement of this Consent
Judgment and Permanent Injunction.
15.

Jurisdiction is retained by this Court for the purpose of enabling Duke’s to apply

to the court in the future for such further orders and directions as may be necessary or
appropriate for the enforcement of the terms of this Consent Judgment and Permanent Injunction,
as well as to enforce the terms of a separate Settlement Agreement entered into between Duke’s
and Defendants with respect to the subject matter of this action.
16.

There being no just reason for delay, the Joint Motion for Consent Judgment and

Permanent Injunction (Doc. No. 240) is GRANTED, and the Clerk of this Court is hereby

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directed, pursuant to Rule 54(b) of the Federal Rules of Civil Procedure, to enter this Consent
Judgment forthwith.
17.

The Clerk is RESPECTFULLY DIRECTED to terminate all pending motions and

deadlines in this case, including trial, and to CLOSE THE CASE.
IT IS SO ORDERED.

Signed: June 4, 2021

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The parties hereby consent to the entry of the foregoing Consent Judgment and
Permanent Injunction and waive any and all rights of appeal.
/s/ Robert A. Muckenfuss
Robert A. Muckenfuss (Bar No. 28218)
Alec C. Covington (Bar No. 45956)
Kelly A. Warlich (Bar No. 51053)
McGuireWoods LLP
201 North Tryon Street, Suite 3000
Charlotte, NC 28202
T: [phone]
F: [phone]
[e-mail]
[e-mail]
[e-mail]
Lucy Jewett Wheatley (pro hac vice)
Amanda L. DeFord (pro hac vice)
MCGUIREWOODS LLP
Gateway Plaza
800 East Canal Street
Richmond, Virginia 23219
Tel: [phone]
[e-mail]
[e-mail]

/s/ Jacob S. Wharton
Jacob S. Wharton (Bar No. 37421)
WOMBLE BOND DICKINSON (US) LLP
555 Fayetteville St., Suite 1100
Raleigh, NC 27601
Phone: [phone]
Email: [e-mail]
Press M. Millen, (Bar No. 16178)
John D. Wooten IV, (Bar No. 51074)
WOMBLE BOND DICKINSON (US) LLP
One West Fourth Street
Winston-Salem, NC 27101
Phone: [phone]
[e-mail]
[e-mail]

Russ Ferguson, NCSB No. 39671
Minnie Kim, NCSB No. 46178
WOMBLE BOND DICKINSON (US) LLP
301 South College Street, Suite 3500
Charlotte, NC 28203
Phone: [phone]
Attorneys for Plaintiff Sauer Brands, Inc. Email: [e-mail]
a/k/a Duke’s
[e-mail]
Attorneys for Defendants DFP Sandwich Shops,
LLC and Duke Brands
/s/Matthew J. Ladenheim
Matthew J. Ladenheim (Bar No. 29309)
TREGO, HINES, & LADENHEIM, PLLC
10224 Hickorywood Hill Ave, Suite 202
Huntersville, NC 28078
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Attorney for Defendant
Productions, Inc.
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Duke

Sandwich

Exhibit A to the Consent Judgment and
Permanent Injunction
Sauer Brands, Inc. v. Duke Sandwich Productions, Inc. et al, 3:19-cv-0508

8

Exhibit B to the Consent Judgment and
Permanent Injunction
Sauer Brands, Inc. v. Duke Sandwich Productions, Inc. et al, 3:19-cv-0508

9

Exhibit C to the Consent Judgment and
Permanent Injunction
Sauer Brands, Inc. v. Duke Sandwich Productions, Inc. et al, 3:19-cv-0508

10