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99ó Only Stores v. 99 Mart

IN THE UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA EASTERN DIVISION


May 1, 2009

99Ó ONLY STORES, A CALIFORNIA CORPORATION, PLAINTIFF,
v.
99 MART, A CALIFORNIA COMPANY, VARINDERJIT KAUR, AN INDIVIDUAL, RAMANDEEP KAUR, AN INDIVIDUAL, SARVJIT SANDHU, AN INDIVIDUAL, 99 CENT MART, A CALIFORNIA COMPANY, RAJWANT CHAHAL, AN INDIVIDUAL, AND DOES 1-20, INCLUSIVE DEFENDANTS.

The opinion of the court was delivered by: Honorable Stephen G. Larson

FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION

Plaintiff 99ó ONLY STORES ("Plaintiff" or "99ó") filed the complaint in this action charging 99 CENT MART, a California company, RAJWANT CHAHAL, an Individual, and DOES 1-20, INCLUSIVE (collectively referred to as "Defendants") with false designation of origin, federal trademark infringement, trademark dilution, unfair competition, and related causes of action. The parties have agreed to a settlement of the matters in issue before them and to the entry of this Consent Judgment and Permanent Injunction, it is hereby ORDERED, ADJUDGED and DECREED that:

1. This Court has jurisdiction over the parties and over the causes of action asserted in this action. Venue is proper in this judicial district.

2. The following federal trademarks owned by 99ó Only Stores are valid and enforceable (hereinafter "99ó Only Stores marks"):

Registration No. 1,395,427 for the mark "ONLY 99ó ONLY"

Registration No. 1,455,937 for the mark "99ó ONLY STORES"

Registration No. 1,712,553 for the mark "DRIVER CARRIES 99ó ONLY"

Registration No. 1,724,475 for the mark "OPEN 9 DAYS A WEEK 9 AM -- 9 PM"

Registration No. 1,730,121 for the mark "ONLY 99ó ONLY"

Registration No. 1,741,928 for the mark "99ó ONLY STORES & Design"

Registration No. 1,747,549 for the mark "99ó ONLY"

Registration No. 1,947,809 for the mark "99ó ONLY STORES"

Registration No. 1,959,640 for the mark "99ó"

Registration No. 2,401,900 for the mark "99ó ONLY STORES & Design"

Registration No. 2,761,939 for the mark "99 THANKS"

Registration No. 3,132,449 for the mark "HIGHWAY 99"

Registration No. 3,132,450 for the mark "HIGHWAY 99 & Design"

Registration No. 3,144,871 for the mark "HIGHWAY 99 YOUR ROAD TO GREAT SAVINGS."

3. The following Federal registrations owned by 99ó Only Stores ("99ó") have become incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065, and are conclusive evidence of 99ó's exclusive right to use these marks: Reg. Nos. 1,455,937; 1,712,553; 1,730,121; 1,741,928; 1,747,549; 1,947,809; 1,959,640; and 2,401,900.

4. 99ó has developed a protectable family of 99ó Marks that it uses extensively throughout its business and which emphasizes the common "99" element of its family of 99ó Marks in slogans, promotions, and advertising.

5. 99ó has a valid, protectable interest in its distinctive trade dress, trade name and common-law service marks.

6. Defendants have operated and continue to operate the retail business at the premises located at 21510 Bear Valley Road, Suite L1-2, Apple Valley, California 92308-7233, and have operated said business under the name "99 CENT MART" Defendants' store name, logo, signage, and trade dress are confusingly similar to that of 99ó and constitute a false designation of origin, infringe and dilute 99ó's family of 99ó Marks, trade name, federal service mark registrations, common law marks, and trade dress as set forth in Paragraph 2 above. Defendants activities also infringe and dilute 99ó's marks registered in the State of California in violation of California Business & Professional Code §§ 14245 and 14247. By their infringing acts, Defendants further unfairly compete with 99ó in violation of 15 U.S.C. §1125(a), California Business and Professional Code §17000 et seq., and the common law.

7. Defendants, their parents, subsidiaries, affiliates, officers, agents, servants, employees, attorneys, and those persons in active concert or participation with them who receive actual notice of this Judgment are hereby enjoined and restrained from:

A. Using, coping, simulating, or in any other way infringing 99ó's family of federally registered, state registered, and common law service marks, trade names, and trade dress, including, but not limited to, Federal Registration Nos. 1,959,640; 2,401,900; 1,947,809; 1,747,549; 1,741,928; 1,730,121; 1,712,553; 1,455,937; 1,395,427; 2,761,939; 3,132,449; 3,132,450; and 3,144,871; and California State Registration Nos. 23,078; 23,958; 40,745; and 42,970;

B. Displaying any signage or other business identifiers, including, but not limited to, building signs, directional signs, monument signs, computer templates, banners, advertising media, menus, business cards, and brochures containing prominently featured characters "99", "99ó", "$.99", or "$0.99" or any characters confusingly similar thereto;

C. Using "99", "99ó", "$.99", or "$0.99", or any mark confusingly similar thereto, as the name or part of the name of Defendants' business or corporation, nor display any references to "99", "99ó", "$.99", or "$0.99", or any mark confusingly similar thereto, in or in connection with DEFENDANTS' business or corporate name;

D. Using the numeral "99" as a feature of any business or corporate name;

E. Using the numeral "99" as a feature of any business identifiers, including, but not limited to, building signs, directional signs, monument signs, computer templates, banners, advertising media, menus, business cards, and brochures;

F. Using any of the marks from 99ó's family of federally registered and common law service marks, 99ó's trade names, and 99ó's trade dress or anything confusingly similar in the operation of Defendants' business including on the signage, storefront façade, interior décor, shopping carts, bags, baskets, merchandise stickers, cash register receipts, employee aprons, shirts, and name tags, vehicles, letterhead, purchase orders, company brochures and business cards, website, and advertising, and in connection with any other business identifiers, such as building signs, directional signs, monument signs, computer templates, banners, advertising media, and menus;

G. Using purple, pink and/or blue color hues for the mark and name of Defendants' business wherever that business mark and/or name is used by Defendants, including use of the business mark and/or name on the items and places described in ¶7.F;

H. Referring to "99ó store(s)" or "99ó Store(s)" as if they were generic terms applicable to a category of deep discount or other retail stores; and

I. Using, coping, simulating, or otherwise mimicking 99ó's trade dress.

8. The terms in paragraph 7 shall remain in force in perpetuity.

9. This Court retains jurisdiction over this matter for the purpose of making any further orders necessary or proper for the construction of this Judgment, the enforcement thereof, and the punishment of any violations thereof.

After this Consent Judgment has been entered by the Court, 99ó shall promptly serve notice of it on Defendants, and 99ó shall file with the Court a proof of service thereof within ten (10) days thereafter

Respectfully submitted,

KNOBBE, MARTENS, OLSON & BEAR, LLP

Dated: May 1, 2009

By: Boris O. Zelkind Marc T. Morley Jeremy R. Pierce Alan K. Kessler Attorneys for Plaintiff 99ó ONLY STORES

By: 99 CENT MART Defendant 99 MART Defendant

RAJWANT CHAHAL Defendant

VARINDERJIT KAUR Defendant

RAMANDEEP KAUR Defendant

Honorable Stephen G. Larson United States District Court Judge

IT IS SO ORDERED.

CERTIFICATE OF SERVICE

I am a citizen of the United States of America and I am employed in Irvine, California. I am over the age of 18 and not a party to the within action. My business address is 2040 Main Street, 14th Floor, Irvine, California 92614.

On May 1, 2009, I served the within FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION on the parties or their counsel shown below, by placing it in a sealed envelope addressed as follows:

VIA *****:

I declare that I am employed in the office of a member of the bar of this Court at whose direction the service was made.

Executed on May 1, 2009, at Irvine, California.

20090501

© 1992-2009 VersusLaw Inc.



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