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7-ELEVEN, INC. v. 7 TO LATE

United States District Court, N.D. California


September 16, 2005.

7-Eleven, Inc., a Texas corporation, Plaintiff,
v.
7 to Late, Inc., a California corporation; and Sundeep Kumar d/b/a 7-TO-LATE, an individual, Defendants.

The opinion of the court was delivered by: EDWARD CHEN, Magistrate Judge

CONSENT JUDGMENT

This matter has been presented to the Court by and with the consent of plaintiff, 7-Eleven, Inc. ("7-Eleven"), and the defendants 7 to Late, Inc., a California corporation, and Sundeep Kumar, d/b/a 7-TO-LATE, an individual (collectively "Defendants"), the Court having been fully advised in the premises, it is hereby ORDERED, ADJUDGED and DECREED: 1. This Court has jurisdiction over the parties hereto and over the subject matter hereof.

2. Since long prior to the acts of the Defendants which are the subject of this 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.

  3. 7-Eleven has provided its aforesaid convenience store services under the name and mark 7-ELEVEN since at least as early as 1946.

  4. There are currently over 5,000 convenience stores throughout the United States, including the State of California, operated by 7-Eleven or its franchisees under 7-Eleven's aforesaid 7-ELEVEN name and mark.

  5. A primary display of 7-Eleven's 7-ELEVEN name and mark which is used by virtually all of the aforesaid convenience stores, including those in California, is a multicolored logo consisting of the following: an Arabic numeral "7" displayed primarily in the color red with a break between the horizontal and vertical elements and a curved vertical shank that is intersected by the term "ELEVEN," displayed in a contrasting color in block capital letters, all displayed against a white background ("7-ELEVEN Logo"), as depicted below:

  6. Since long prior to the acts of the Defendants which are the subject of this action, 7-Eleven and its franchisees annually have sold nationally billions of dollars of products and services under its aforesaid 7-ELEVEN name, mark, and logo, and annually have spent millions of dollars to advertise and promote those products and services.

  7. By virtue of the aforesaid extensive use, advertising and promotion, and long prior to the acts of the Defendants which are the subject of this action, 7-Eleven's aforesaid 7-ELEVEN name, mark, and logo, each have become famous and extremely well known among consumers, and have acquired a strong secondary meaning signifying 7-Eleven.

  8. 7-Eleven has registered its aforesaid 7-ELEVEN mark in the United States Patent and Trademark Office. Such registrations include the following:

REG NO. DATE GOODS OR SERVICES
  718,016 7/04/61 Retail Grocery Service 896,654 8/11/70 Retail Grocery Service 920,897 9/21/71 Retail Grocery Service 961,594 6/19/73 Various flavors of soft drinks 1,035,454 3/09/76 Sandwiches 1,288,594 8/07/84 Gasoline 1,402,425 7/22/86 Soft drinks for consumption on or off the premises 1,702,010 7/21/92 Coffee for consumption on or off the premises 2,152,472 4/21/98 Telephone calling card services 2,685,684 2/11/03 Retail store services featuring gasoline and retail store services featuring convenience store items 2,765,976 9/23/03 inter alia, clothing, namely caps, jackets, shirts, sweatshirts, t-shirts 2,834,419 4/20/04 Retail convenience store services

  Said registrations are valid, subsisting, and owned by 7-Eleven, and Reg. Nos. 718,016, 896,654, 920,897, 961,594, 1,035,454, 1,288,594, 1,402,425, 1,702,010, and 2,152,472 are now incontestable in accordance with 15 U.S.C. §§ 1065 and 1115(b).

  9. 7-Eleven now owns a most valuable goodwill which is symbolized by its 7-ELEVEN name, mark, and logo, and the use of each of these trade identities substantially increases the value of 7-Eleven's and its franchisees' 7-ELEVEN stores and the salability of the goods sold through them.

  10. Long subsequent to the aforesaid acquisition of fame and secondary meaning of 7-Eleven's 7-ELEVEN name, mark, and logo, Defendants commenced use of the name and mark 7 TO LATE, and displaying the said name and mark at each of the Defendants' Monterey Highway stores as a multicolored logo consisting of the following: an Arabic numeral "7" displayed in the color red with a curved vertical shank that is intersected by text displayed in a contrasting color in block capital letters, all displayed against a white background ("7 TO LATE Logo"), as depicted below:

  11. Defendants, 7 to Late, Inc. and Sundeep Kumar, and all others who are officers, partners, agents, servants, employees, and attorneys, and all in active concert or participation with them, be permanently enjoined from:

 

a. using the 7 TO LATE name, mark or logo for convenience stores or related products or services;
b. using any name, mark or logo, consisting in whole or in part, of the numerals "7" or "11," or the words "seven" or "eleven," for convenience stores or related products or services;
c. using any other name, mark or logo which is a reproduction, counterfeit, copy or colorable imitation of 7-Eleven's 7-ELEVEN name, mark or logo;
d. using any other name, mark, logo or trade dress displayed in any color combinations, with or without additional colors, which includes in combination two or more of the colors red, green, orange, and white; or any design element used in connection with any such name, mark, logo or trade dress which includes any numeral, design or other graphic element intersected by another numeral or word, design or other graphic element, for convenience store or related products or services;
e. doing any other act or thing likely to confuse, mislead or deceive others into believing that either defendants, their services, or products emanate from 7-Eleven or are connected with, sponsored by or approved by 7-Eleven; and,
f. doing any other act or thing likely to dilute the distinctiveness of 7-Eleven's trade identities including the 7-ELEVEN name, mark or logo.
  12. The Defendants are required, in accordance with 15 U.S.C. § 1118, to deliver up to 7-Eleven for destruction all labels, signs, prints, packages, wrappers, receptacles, advertisements and all plates, models, matrices and other means of making the same, as well as all related goods and things in defendant's possession, custody or control bearing the 7 TO LATE name, mark or logo, or any other simulation, or counterfeit of the 7-ELEVEN name, mark or logo, or any other reproduction, counterfeit, copy or colorable imitation of 7-Eleven's trade indicia.

  13. Within ninety (90) days from the date that this Consent Judgment is entered by the Court, Defendants shall each by signed writing, sent to Counsel for 7-Eleven, Inc., Wildman, Harrold, Allen & Dixon, 225 West Wacker Drive, Suite 3000, Chicago, Illinois 60606, inform 7-Eleven of their complete compliance with the terms of this Consent Judgment and shall forward an affidavit evidencing compliance with this judgment, including but not limited to, any licenses and permits held by defendant which use a name or mark proscribed by this Consent Judgment and shall forward color photographs showing that any store signs have been changed to comply with this Consent Judgment.

  14. Defendants are jointly and severally responsible for, and expressly agree to pay, all costs and fees, including legal fees, that 7-Eleven incurs in successfully enforcing the terms of this Consent Judgment before the Court, including but not limited to, costs incurred or associated directly or indirectly with filing or otherwise bringing any claim, motion, cause of action, suit, rule to show cause or contempt motion for purposes of enforcing any term or provision of this Consent Judgment. The Clerk of the Court is directed to close this matter.

  SO ORDERED.

20050916

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