UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA
April 22, 2009
CUSTOM COMFORT MATTRESS COMPANY, INC., A CALIFORNIA CORPORATION, PLAINTIFF,
TRUDELL BROS. MATTRESS CO. INC., A CALIFORNIA CORPORATION; MARK TRUDELL, AN INDIVIDUAL; AND MAURICE TRUDELL, AN INDIVIDUAL, DEFENDANTS.
The opinion of the court was delivered by: The Honorable Christina A. Snyder United States District Court Judge
STIPULATION AND CONSENT ORDER GRANTING PERMANENT INJUNCTION AND DISMISSAL AGAINST DEFENDANTS TRUDELL BROS. MATTRESS CO., INC. AND MARK TRUDELL
This Stipulation and Consent Order for Permanent Injunction is made between Plaintiff Custom Comfort Mattress Company, Inc. ("Custom Comfort" or "Plaintiff") and Defendants Trudell Bros. Mattress Co. Inc. and Mark Trudell ("Defendants") (collectively, "the Parties"), by and through their counsel with reference to the following:
WHEREAS, Custom Comfort owns a trademark for the TRUDELL MATTRESS mark on mattresses, as evidenced in U.S. Trademark Registration No. 2,950,476, and the goodwill associated therewith ("TRUDELL mark");
WHEREAS, on March 27, 2009, Custom Comfort filed a complaint against Defendants entitled Custom Comfort Mattress Company, Inc. v. Trudell Bros. Mattress Co. Inc. et al., in the United States District Court for the Central District of California, Case No. CV09-2137 CAS (PJWx) ("the Action"), in which Custom Comfort alleged trademark infringement of Custom Comfort's Trudell mark in violation of the Lanham Act, false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), false advertising under Section 43(a) of the Lanham Act and California Business and Professions Code § 17500, common law trademark infringement, and unfair competition in violation of California Business and Professions Code § 17200 concerning certain mattresses designed, manufactured, distributed, marketed, advertised, sold, or offered for sale by Defendants;
WHEREAS, the Parties each now desire to resolve, compromise and settle the Action; and
WHEREAS, the Parties agree that a consent injunction relating to the manufacture, distribution, marketing, advertisement, offering for sale or sale by Defendants of mattresses under the TRUDELL mark or any other mark that is confusingly similar to Custom Comfort's TRUDELL mark is a necessary and material component of the settlement agreement;
NOW, THEREFORE, Custom Comfort and Defendants, without making any admissions regarding the allegations of this Action, by and through their counsel of record, hereby agree and stipulate that this Consent Injunction shall be entered as a permanent injunction in this Action as follows:
1. Defendants and all of their officers, directors, employees, agents, servants, successors and assigns, and all persons in present or future active concert or participation with any of them are hereby permanently enjoined from future infringement of U.S. Trademark Registration No. 2,950,476 and the TRUDELL mark and from the continued use of the TRUDELL mark, or any other Custom Comfort mark, in connection with the manufacturing, distribution, marketing, advertising, offering for sale or sale of any mattress and associated furniture.
2. Defendants and all of their officers, directors, employees, agents, servants, successors and assigns, and all persons in present or future active concert or participation with any of them are hereby permanently enjoined from falsely advertising, whether explicitly or implicitly, that any or all Defendants sell mattresses that purport to incorporate, including but not limited to, "button-tufting," "cotton batting and upholstery," and "since 1974."
For purposes of this Order and Injunction, the term "advertising" shall encompass oral and written statements made in the context of commercial advertisement or promotion of Defendants' mattresses and associated furniture, for the purpose of influencing even a single potential customer to buy, or recommend the purchase of, Defendants' products.
3. Defendants and all of their officers, directors, employees, agents, servants, successors, and assigns, and all persons in present or future active concert or participation with any of them are hereby permanently enjoined from using, directly or indirectly, Plaintiffs' trademarks, trade dress, or graphic designs on any of Defendants' storefronts or websites. This Order does not prohibit Defendants from maintaining a website, so long as any website maintained by Defendants does not infringe on Plaintiffs' marks in any fashion.
4. Defendants have certified that all specimens of any mattresses in its possession, custody and/or control that bear the TRUDELL mark, if any, or are in packaging depicting the TRUDELL mark, if any, shall be destroyed by May 15, 2009, and within ten business days thereafter supply Custom Comfort with an affidavit confirming that Defendants are not in possession, care, custody, or control of said items.
5. Defendants have certified that all references to and images of mattresses bearing the TRUDELL mark, if any, have been removed from any and all Internet websites maintained by Defendants or on Defendants' behalf.
6. Defendants and all of their officers, directors, agents, servants, employees, successors and assigns, and all persons in present or future active concert or participation with any of them are hereby permanently enjoined from: (a) representing that the Defendants are authorized to use Custom Comfort's TRUDELL mark, or that Defendants' products are licensed products; and (b) engaging in any other conduct that causes, or is likely to cause, confusion, mistake, deception, or misunderstanding as to the source, affiliation, connection or association of the Defendants' business and their products with Custom Comfort or their TRUDELL mark.
7. Plaintiff acknowledges that individual Defendants may use their given names to identify themselves as respective business owner, officer, salesperson, or employee on any business card, letterhead, email, or other marketing literature used to sell mattresses so long as such use comports with the aforementioned provisions of this permanent injunction.
8. Upon execution of this Stipulation by Parties' counsel, Plaintiff's counsel will file the Stipulation and upon entry of this Order, Plaintiff will immediately file a dismissal of all claims against Defendants with prejudice, each party to bear its own costs. Notwithstanding the foregoing, the Parties stipulate and agree that the Court shall retain jurisdiction over this Action to entertain such further proceedings and to enter such further orders as may be necessary or appropriate to implement and/or enforce the provisions of this Consent Injunction.
STIPULATED AND AGREED.
Dated: April 21, 2009 ORRICK, HERRINGTON & SUTCLIFFE LLP André De La Cruz Attorneys for Plaintiff CUSTOM COMFORT MATTRESS COMPANY, INC.
Dated: April 20, 2009 SPRAY GOULD & BOWERS LLP W. Glenn Johnson Attorneys for Defendants TRUDELL BROS. MATTRESS CO. INC. and MARK TRUDELL
IT IS SO ORDERED.
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