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Stone Mart Corp. v. Contractor's Stone Mart LLC

United States District Court, Ninth Circuit

January 27, 2014

STONE MART CORP., a California corporation, Plaintiff,
v.
CONTRACTOR'S STONE MART LLC, a California limited liability company, and LENIN GONZALEZ, an individual, Defendants.

MIRIAM C. BEEZY (CA Bar No. 134729), JEAN-PAUL CIARDULLO (CA Bar No. 284170), FOLEY & LARDNER LLP, Los Angeles, CA Attorneys for Plaintiff, Stone Mart Corp..

LAW OFFICES OF PAUL A. BECK, APC, Paul A. Beck (SBN 79760), Sherman Oaks, California, Attorney for Defendants, Lenin Gonzalez and Contractor's Stone Mart LLC.

CONSENT JUDGMENT

DALE S. FISCHER, District Judge.

This matter having been presented to the Court by and with the consent of plaintiff, Stone Mart Corp. ("Stone Mart"), and the defendants Contractor's Stone Mart LLC ("Contractor's Stone Mart") and Lenin Gonzalez, (collectively referred to herein as "Defendants"), the Court having been fully advised in the premises, in resolution of the entire action it is hereby ORDERED, ADJUDGED and DECREED:

1. This Court has jurisdiction over the parties hereto and over the subject matter hereof.

2. Since long prior to the acts of Defendants which are the subject of this Case 2:13-cv-08062-DSF-SS Document 19 Filed 01/27/14 Page 2 of 6 Page ID #:87 action, Stone Mart has been engaged in the business of, inter alia, offering retail store services featuring various stone and tile products offered to the general public as well as wholesale store services featuring various stone and tile products.

3. Since at least as early as 1996, long prior to the acts of Defendants which are the subject of this action, Stone Mart Corp. has provided its aforesaid retail and wholesale store services under the name and mark STONE MART.

4. Since at least as early as 1999, long prior to the acts of Defendants which are the subject of this action, Stone Mart has advertised and promoted its goods and store services in a number of ways, including through a website associated with the domain name STONEMART.com.

5. By virtue of aforesaid extensive use, advertising, and promotion, and long prior to the acts of the Defendants which are the subject of this action, Stone Mart's aforesaid STONE MART name and mark have acquired a strong secondary meaning signifying Stone Mart.

6. Stone Mart has registered its aforesaid STONE MART mark in the United States Patent and Trademark Office as follows:

REG. NO. DATE SERVICES 3, 451, 606 June 17, 2008 Wholesale distributorships featuring natural stone products, namely, marble, granite, limestone, quartz, travertine, slate, Jurassic fossil stone, amethyst, lapis lazuli, mother of pearl, wild agate and tiger's eye; Retail store services featuring natural stone products, namely, marble, granite, limestone, quartz, travertine, slate, Jurassic fossil stone, amethyst, lapis lazuli, mother of pearl, wild agate and tiger's eye

4, 249, 839 Nov. 27, 2012 Retail store services featuring natural stone products, gemstone and semiprecious stone products, engineered stone products, marble, granite, travertine, onyx, limestone, quartzite, quartz, amethyst, carnelian, petrified wood, agate, jasper, sodalite, tiger's eye, malachite, lapis lazuli, mother of pearl, tiles, natural stone tiles, glass tiles, mosaic tiles; Wholesale store services featuring natural stone products, gemstone and semiprecious stone products, engineered stone products, marble, granite, travertine, onyx, limestone, quartzite, quartz, amethyst, carnelian, petrified wood, agate, jasper, sodalite, tiger's eye, malachite, lapis lazuli, mother of pearl, tiles, natural stone tiles, glass tiles, mosaic tiles

7. The aforesaid registrations are valid, subsisting, and owned by Stone Mart.

8. Stone Mart now owns a most valuable goodwill which is symbolized by its aforesaid STONE MART name and mark, the use of which substantially increases the value of its retail and wholesale store services and the saleability of the goods and services offered under the STONE MART name and mark.

9. On November 1, 2010 - long subsequent to the aforesaid acquisition of secondary meaning of Stone Mart's STONE MART name and mark - defendant Lenin Gonzalez formed the California limited liability company Contractor's Stone Mart LLC.

10. Long subsequent to the aforesaid acquisition of secondary meaning of Stone Mart's STONE MART name and mark, Defendants commenced using the name and mark CONTRACTOR'S STONE MART for retail store services featuring various stone and tile products offered to the general public as well as wholesale store services featuring various stone and tile products.

11. Defendants Lenin Gonzalez and Contractor's Stone Mart LLC, and each of their members, partners, officers, agents, servants, employees, and Case 2:13-cv-08062-DSF-SS Document 19 Filed 01/27/14 Page 4 of 6 Page ID #:89 attorneys, and all those in active concert or participation with any of them, are hereby permanently enjoined from:

a. using the CONTRACTOR'S STONE MART name or mark;

b. using any name, mark, logo, or other trade identity that consists in whole or in part of both of the terms "stone" and "mart", with or without additional elements, for retail or wholesale services of stone or tile products, or related goods or services;

c. using any other name, mark, logo, trade dress, or other trade identity which is a reproduction, counterfeit copy, or colorable imitation of Stone Mart's STONE MART name or mark;

d. doing any other act or thing likely to confuse, mislead, or deceive others into believing that Defendants, or their services or products, emanate from Stone Mart Corp. or are connected with, sponsored by, or approved by, Stone Mart Corp.; and

e. doing any other act or thing to assist any party in any of the acts or things proscribed by paragraphs (a) through (d) above.

12. In accordance with 15 U.S.C. § 1118, Defendants Lenin Gonzalez and Contractor's Stone Mart LLC shall destroy all labels, signs, prints, packages, wrappers, receptacles, and advertisements in their possession bearing the name and mark CONTRACTOR'S STONE MART or any other name, mark, or logo comprising, in whole or in part, "STONE MART", or any other reproduction, counterfeit, copy, or colorable imitation of Stone Mart's STONE MART name and mark, with or without other elements, and all plates, models, matrices and other means of making same.

13. As part of compliance with Paragraphs 11 and 12 above, Defendants Lenin Gonzalez and Contractor's Stone Mart LLC must take all necessary steps to remove defendants' uses of the CONTRACTOR'S STONE MART name or mark from online advertising, including search engines, business directories (online or otherwise) and social media, including any of defendants' social media accounts or websites.

14. In accordance with Section 34(a) of the United States Trademark Act, 15 U.S.C. § 1116(a), Defendants Lenin Gonzalez and Contractor's Stone Mart LLC shall by January 15, 2014, by signed writing, sent to

inform Stone Mart of their complete compliance with the terms of this Consent Judgment and shall forward color photos and an affidavit evidencing compliance with this judgment, including but not limited to, any licenses and permits held by Defendants which use a name or mark proscribed by this Consent Judgment. It is acknowledged that, due to city permitting issues, it may take several weeks to remove large signage from the exterior of Defendants' building.

15. Defendants are jointly and severally responsible for, and expressly agree to pay, all costs and fees, including legal fees, that Stone Mart may incur in the future in order to enforce the terms of this Consent Judgment before the Court, including but not limited to costs and fees incurred or associated directly or indirectly with filing or otherwise bringing any claim, motion, cause of action, suit, order to show cause or contempt motion for the purposes of enforcing any term or provision of this Consent Judgment, provided that such claim, motion, cause of action, suit, order to show cause or contempt motion is successful.

SO ORDERED:


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