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 DEFENDANT MAURICE TRUDELL
This Stipulation and Consent Order for Permanent Injunction is made between Defendant Maurice Trudell ("Defendant") and Plaintiff Custom Comfort Mattress Company, Inc ("Custom Comfort") (collectively, "the Parties"), by and through their counsel with reference to:
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 Defendant;
WHEREAS, the Parties each now desire to resolve, compromise and settle the Action;
WHEREAS, the Parties agree that a consent injunction relating to the manufacture, distribution, marketing, advertisement, offering for sale or sale by Defendant of mattresses under any 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 Defendant, 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. Defendant and all of his 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 or associated furniture.
2. Defendant and all of his 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 Defendant sells mattresses that falsely incorporate the use of misleading phrases, including but not limited to, "factory direct," "manufactures its own," "button-tufting," "cotton batting," "Est. 1974," "Mfg. 1974," 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 Defendant's mattresses and associated furniture, for the purpose of influencing even a single potential customer to buy, or recommend the purchase of, Defendant's products.
3. Defendant and all of his 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 Defendant's advertisements, storefronts, or websites, including, www.mattressbytrudell.com and all metadata associated therewith. This Order does not prohibit Defendant from maintaining a website, so long as any website, and underlying metadata, maintained by Defendant does not infringe on Plaintiff's marks in any fashion.
4. Defendant has certified that all specimens of any mattresses in his possession, custody and/or control that bear the TRUDELL mark, if any, or are on packaging depicting the TRUDELL mark, if any, shall be destroyed by August 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. Defendant has 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 Defendant or on Defendant's behalf.
6. Defendant and his 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 Defendant is authorized to use Custom Comfort's TRUDELL mark, or that Defendant's products are licensed products; and (b) engaging in any other conduct that leads the consumer to believe that Defendant's business and his products are, directly or ...