December 10, 2013
KOSS CORPORATION, a Delaware Corporation, Plaintiff,
MAX SOUND CORPORATION, a Delaware Corporation, Defendant.
MANUEL L. REAL, District Judge.
WHEREAS Plaintiff Koss Corporation ("Koss"), a Delaware Corporation, owns U.S. Trademark Registration Nos. 1162539 and 2152806 (collectively, the "Koss Marks") for "HEARING IS BELIEVING, " which Koss Marks are valid and subsisting;
WHEREAS Defendant Max Sound Corporation ("Max Sound"), a Delaware Corporation, filed trademark applications with the United States Patent and Trademark Office on November 22, 2011 (Serial No. 85479121) and on February 10, 2012 (Serial No. 85540149), respectively, seeking to register the marks "HEARING IS BELIEVING" and "MAXD MUSIC HEARING IS BELIEVING" (the "Max Sound Trademark Applications") for "[s]oftware for improving sound quality of digital audio, namely, downloadable MP3 files and MP3 recordings, and other audio or video recordings, for mobile phones by controlling and manipulating digital audio information[;]"
WHEREAS Koss opposed the Max Sound Trademark Applications in proceedings before the Trademark Trial and Appeal Board;
WHEREAS the Trademark Trial and Appeals Board suspended the opposition proceedings concerning the Max Sound Trademark Applications pending final disposition of this action;
WHEREAS Max Sound has used the "HEARING IS BELIEVING" mark and the "MAXD MUSIC HEARING IS BELIEVING" mark in connection with advertising its goods and services;
WHEREAS on or about June 7, 2013, Koss filed this instant action against Max Sound, alleging (1) Federal Trademark Infringement (15 U.S.C. § 1114); (2) Federal Unfair Competition (15 U.S.C § 1125(a)); (3) Federal Trademark Dilution (15 U.S.C § 1125(d)); and (4) Common Law Trademark Infringement (the "Action");
WHEREAS Koss' claims are based, in part, on the Max Sound Trademark Applications and Max Sound's use of the "HEARING IS BELIEVING" and "MAXD MUSIC HEARING IS BELIEVING" marks;
WHEREAS this Court has jurisdiction over the Action pursuant to 15 U.S.C. § 1121;
WHEREAS the parties have executed a Settlement Agreement dated November 19, 2013 with respect to this Action; and
WHEREAS Koss and Max Sound, by their respective attorneys, have indicated their consent to the form and entry of this Consent Judgment, without trial and without further notice by way of the Stipulation for Entry of Consent Judgment filed concurrently herewith.
NOW, THEREFORE, IT IS ORDERED, ADJUDGED AND DECREED that effective November 19, 2013, Max Sound, and each of Max Sound's officers, agents, servants, employees, attorneys, successors and assigns, and all persons in active concert or participation with them, shall be permanently enjoined from:
(1) Using and/or displaying the "HEARING IS BELIEVING" mark or using any mark that wholly incorporates the text "HEARING IS BELIEVING" or is confusingly similar to or a colorable imitation of this trademark to market, advertise or identify products and services not produced and authorized by Koss; and
(2) Doing any act or thing calculated or likely to cause confusion in the minds of members of the public that the products or services offered, distributed, or sold by Max Sound are in any way endorsed, approved, or sponsored by Koss.