Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Official citation and/or docket number and footnotes (if any) for this case available with purchase.

Learn more about what you receive with purchase of this case.

Mag Instrument, Inc. v. Innovation Specialties, Inc.

United States District Court, Ninth Circuit

October 11, 2013

MAG INSTRUMENT, INC., a California corporation, Plaintiff,
v.
INNOVATION SPECIALTIES, INC., a California corporation, Defendant.

Anna E. Raimer, Attorneys for Plaintiff, MAG INSTRUMENT, INC.

Thomas Rozsa, Attorneys for Defendant, INNOVATION SPECIALTIES, INC.

CONSENT JUDGMENT AND PERMANENT INJUNCTION

CONSUELO B. MARSHALL, District Judge.

WHEREAS, plaintiff Mag Instrument, Inc. ("Mag Instrument") and defendant Innovation Specialties, Inc. ("Innovation Specialties") have agreed in a separate agreement to settlement of the matters in issue between them and to the entry of this Consent Judgment and Permanent Injunction, it is hereby ORDERED, ADJUDGED, AND DECREED THAT:

1. This is an action for: (1) federal trademark infringement under 15 U.S.C. § 1114(1); (2) false designation of origin, unfair competition, and trademark infringement under 15 U.S.C. § 1125(a); (3) federal trademark dilution under 15 U.S.C. § 1125(c); (4) California trademark infringement under Cal. Bus. & Prof. Code § 14245; (5) California statutory unfair competition under Cal. Bus. & Prof. Code § 17200, et seq.; (6) California trademark dilution under Cal. Bus. & Prof. Code § 14247; (7) common law trademark infringement; and (8) common law unfair competition.

2. This Court has jurisdiction over all of the parties in this action and over the subject matter in issue based on 28 U.S.C. §§ 1331, 1338(a) and (b), and 1367(a), as well as 15 U.S.C. § 1121(a). This Court has continuing jurisdiction to enforce the terms and provisions of this Consent Judgment and Permanent Injunction. Venue is also proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c).

3. Mag Instrument is a California corporation, having its principal place of business at 2001 South Hellman Avenue, Ontario, California 91761.

4. Innovation Specialties is a California corporation, having its principal place of business at 11869 Teale Street, Culver City, California 90230.

5. Innovation Specialties has marketed, distributed, advertised, promoted, offered for sale, and/or sold commercially in interstate commerce certain lighting products under the designation "Mini Mag" (the "Innovation Products"). The Innovation Products were neither manufactured nor authorized by plaintiff Mag Instrument.

6. For many years, and prior to the acts of Innovation Specialties discussed herein, Mag Instrument has continuously manufactured, advertised, assembled, marketed, sold, and distributed, in interstate commerce, a line of flashlights, including, but not limited to, a line of flashlights under the distinctive trademarks MAG-LITE®, MINI MAGLITE®, MAG INSTRUMENT®, MAG®, MAGLITE®, MAGLITE® and design, MAG CHARGER®, MAG-NUM STAR®, MAG-LED®, MAGLED®, and MAG-TAC® ("Mag Instrument's Trademarks").

7. Plaintiff Mag Instrument has obtained, and is the owner of, federal registrations for Mag Instrument's Trademarks, including United States Trademark Registration No. 1, 154, 816 for "MAG-LITE, " United States Trademark Registration No. 1, 245, 187 for "MAG-NUM STAR, " United States Trademark Registration No. 1, 389, 804 for "MINI MAGLITE, " United States Trademark Registration No. 1, 611, 960 for "MINI MAGLITE AAA, " United States Trademark Registration No. 1, 715, 086 for "MAG INSTRUMENT, " United States Trademark Registration No. 1, 975, 632 for "MAG, " United States Trademark Registration No. 2, 485, 515 for "MAGLITE, " United States Trademark Registration No. 2, 622, 179 for the stylized "MAGLITE, " United States Trademark Registration No. 2, 999, 097 for "MAG CHARGER, " United States Trademark Registration No. 3, 104, 551 for "MAG-LED, " United States Trademark Registration No. 3, 265, 427 for "MAG-LED, " United States Trademark Registration No. 3, 280, 356 for "MAGLED, " United States Trademark Registration No. 3, 382, 287 for "MAGLED, " and United States Trademark Registration No. 4, 179, 888 for "MAG-TAC." Mag Instrument's Trademarks are valid and enforceable throughout the United States, and the registrations for these trademarks remain in full force and effect.

8. Mag Instrument's Trademarks have acquired secondary meaning in that they have come to be associated by the trade and consuming public exclusively with Mag Instrument and, as a result, have come to signify Mag Instrument as the source of flashlights bearing the same or similar characteristics.

9. In addition to its federal trademark registrations, Mag Instrument also owns California State Registration No. 60569 for "MAG-LITE, " California State Registration No. 66754 for "MAG-NUM STAR, " California State Registration No. 78422 for "MINI MAGLITE, " and California State Registration No. 86000 for "MINI MAGLITE AAA, " which are valid and enforceable. (Hereinafter, "Mag Instrument's Trademarks" refers to Mag Instrument's California and federal registrations.)

10. Defendant Innovation Specialties has improperly used the designation "Mini Mag" in association with the Innovation Products, which is confusingly similar to Mag Instrument's Trademarks. Defendant's marketing, distribution, advertising, promotion, offer for sale, and/or sale of the Innovation Products is therefore likely to cause, and has caused, confusion, mistake, and deception among the consuming public that the Innovation Products are commissioned by, sponsored by, or affiliated with Mag Instrument.

11. Innovation Specialties' use of "Mini Mag" in connection with the Innovation Products constitutes trademark infringement of Mag Instrument's federally registered trademarks in violation of the Lanham Act, 15 U.S.C. § 1051, et seq., to the substantial and irreparable injury of the public and of plaintiff Mag Instrument's business reputation and goodwill.

12. By marketing, distributing, advertising, promoting, offering for sale, and/or selling the Innovation Products, Innovation Specialties has infringed on Mag Instrument's federal, state and common law trademark rights in Mag Instrument's Trademarks in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), and under California Business and Professions Code § 14245, as such acts are likely to deceive, and have deceived, customers and prospective customers into believing that the Innovation Products are from, sponsored by, or affiliated with Mag Instrument.

13. Mag Instrument's Trademarks are distinctive and famous marks.

14. Innovation Specialties began marketing, distributing, advertising, promoting, offering for sale, and/or selling the Innovation Products subsequent to Mag Instrument's Trademarks becoming distinctive and famous.

15. Innovation Specialties' commercial use in commerce of the "Mini Mag" mark, which is substantially similar to Mag Instrument's Trademarks, in connection with lighting products has caused the dilution of the distinctive quality of Mag Instrument's Trademarks in violation of 15 U.S.C. § 1125(c) and California Business and Professions Code § 14247.

16. Innovation Specialties' marketing, distributing, advertising, promoting, offering for sale, and/or sale of lighting products using the "Mini Mag" mark also constitutes false designation of origin, false advertising, statutory unfair competition in violation of California Business & Professions Code § 17200, et seq., common law trademark infringement, and common law unfair competition.

17. Pursuant to the terms of the parties' settlement agreement, Innovation Specialties, its owners, officers, directors, agents, servants, employees, attorneys, and all persons and/or entities acting for, with, by, through, and/or in concert and participation with them, or any of them, are hereby permanently enjoined from engaging in any of the following activities:

A. using Mag Instrument's Trademarks, and/or any other designation that is a colorable imitation of and/or is confusingly similar to Mag Instrument's Trademarks, as described in the complaint including "Mini Mag, " in connection with the manufacture, advertising, promotion, distribution, marketing, importation, offering for sale, and/or sale of lighting products neither originating from nor authorized by Mag Instrument;

B. using Mag Instrument's Trademarks, and/or any other designation that is a colorable imitation thereof, as described in the complaint in any manner likely to cause confusion, to cause mistake, or to deceive the consuming public;

C. representing in any manner, or by any method whatsoever, that Defendant is in any way affiliated with Mag Instrument, or that the goods, services, or other products provided by Defendant are sponsored, approved, authorized by, or originate from Mag Instrument, unless such products are Mag Instrument products, or otherwise taking any action likely to cause confusion, mistake, or deception as to the origin, approval, sponsorship, or certification of such goods or services;

D. committing any acts calculated or likely to cause consumers to believe that Innovation Specialties' products are Mag Instrument's products or are authorized by Mag Instrument, unless they are such;

E. infringing, diluting and/or tarnishing the distinctive quality of Mag Instrument's Trademarks; and

F. unfairly competing with Mag Instrument in any manner.

18. Service by mail upon Innovation Specialties, addressed to Eddie Blau, Innovation Specialties, Inc., 11869 Teale Street, Culver City, California 90230, of a copy of this Consent Judgment and Permanent Injunction entered by the Court is deemed sufficient notice under Federal Rule of Civil Procedure 65. It shall not be necessary for Innovation Specialties to sign any form of acknowledgement of service.

19. The parties shall bear their own attorneys' fees and costs.

IT IS SO ORDERED:


Buy This Entire Record For $7.95

Official citation and/or docket number and footnotes (if any) for this case available with purchase.

Learn more about what you receive with purchase of this case.