The opinion of the court was delivered by: Jacqueline H. Nguyen United States District Judge
And related counterclaims.
Plaintiff, Santa Barbara Winery, Inc. (hereinafter "SBW") filed the above civil action against Defendants Treasury Wine Estates Americas Company, Foster's Wine Estates Sales Co. and Treasury Wine Estates Holdings, Inc. (hereinafter collectively referred to as "Treasury").
The Court, upon the consent and request of SBW and Treasury, hereby acknowledges that the parties have reached an agreement as to their dispute and have stipulated to the following facts and to entry of this Decree.
1. This Court has jurisdiction over the parties and the subject matter of this action pursuant to 15 U.S.C. §1121 and 28 U.S.C. §§1331 and 1338.
2. SBW owns the trademark SANTA BARBARA WINERY in connection with wines and related goods.
3. SBW has been using its SANTA BARBARA WINERY mark since in or about 1962, and has made use of its mark in interstate commerce throughout the United States continuously since in or about the 1960s.
4. In or about December 2009, Treasury began using a trademark, trade name and brand SANTA BARBARA WINE COMPANY in connection with wines.
5. Plaintiff SBW's complaint in this action has alleged claims for infringement of its common law mark, under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and related claims. Treasury has disputed SBW's claims.
6. SBW and Treasury have now entered a confidential written settlement agreement ("January 2011 Settlement Agreement") resolving the issues in this case, subject to the entry of this Consent Decree, and have filed a Stipulation with the Court requesting the entry of this Consent Decree.
Accordingly, pursuant to the Agreement between the parties, and their Stipulation for Consent Judgment filed concurrently herewith, it is hereby ordered, adjudged and decreed that:
1. SBW owns common law rights to the trademark SANTA BARBARA WINERY throughout the United States.
2. Treasury, its employees, officers, directors, servants, subsidiaries, parents and licensees, and all persons in active concert and participation with it, shall cease all use of the SANTA BARBARA WINE COMPANY mark, brand and name in any way, including on products, labels, advertising and promotional materials, including websites. In addition, Treasury shall not adopt, make use of or seek to register a trademark, brand or trade name in commerce in any way, including on products, labels, advertising and promotional materials, including websites, whose formative or component terms include the words "Santa Barbara" followed in any manner by "Wine," "Winery" or an approximation of those terms (including, for instance the foreign equivalents of "wine," "wines" and "winery" and terms closely synonymous to winery such as "cellars" and "vineyards"); nor shall Treasury adopt or use in commerce, or seek to register, a trademark, brand or trade name that is confusingly similar to SBW's SANTA BARBARA WINERY trademark. Treasury's trademark usage shall also keep a ...