Progressive Marketing, Inc. v. Sproparts, LLC

          FINAL JUDGMENT AND PERMANENT INJUNCTION

          Honorable John A. Mendez United States District Court Judge

         WHEREAS, Plaintiff and Counter-Defendants Progressive Marketing, Inc. (“Progressive”), Defendant Sproparts LLC (“Sproparts”), Defendant La Marzocco USA, LLC (“La Marzocco”), Defendant and Counterclaimant Nuova Ricambi s.r.l. (“NRSRL”) and Counterclaimant and Counter-Defendant Marcello Zanesi (“Zanesi”) (collectively, the “Parties”) having stipulated and agreed that this [Proposed] Final Judgment and Permanent Injunction may be signed by a judge of the United States District Court for the Eastern District of California; and

         WHEREAS, the Court, having considered the pleading and the Stipulation for Entry of Final Judgment and Permanent Injunction executed by the Parties and filed with the Court, and with good cause appearing.

         IT IS HEREBY ORDERED, ADJUDGED AND DECREED, that:

         1. The Court has subject matter and personal jurisdiction over this action and the Parties.

         2. Venue is proper before this District.

         3. Judgment is entered on the Complaint brought by Progressive in favor of NRSRL, Sproparts and La Marzocco on all causes of action brought against them.

         4. Judgment on those causes of action remaining at issue with respect to NRSRL's Counterclaims and against Progressive is as follows:

a. Judgment is entered in favor of NRSRL on its first cause of action for cancellation of federal trademark registration No. 3, 873, 210 obtained by Progressive for the mark “Nuova Ricambi USA” and that mark is now deemed cancelled;

b. Judgment is entered in favor of NRSRL, on its third cause of action for violation of Section 43(a) of the Lanham Act, and

c. Judgment is entered in favor of NRSRL on its seventh cause of action for copyright infringement.

         5. Progressive is now subject to the following Permanent Injunction:

a. Progressive, it officers, directors, agents, parents, subsidiaries, affiliates, successors, assigns and each of them, are permanently enjoined from the use of the term “Nuova Ricambi” and “NR” or any confusingly similar derivative thereof, including, without limitation, “Nuova Ricambi USA” or “NRUSA” in any form, in connection with the promotion of goods and/or services or as a tradename, service mark or logo in any such manner that is likely to cause consumer confusion, in a manner disparaging to NRSRL, or in a manner that would otherwise unfairly compete with NRSRL's trade or business. Progressive shall have a safe harbor until January 31, 2020, to cease its use of the “Nuova Ricambi USA” and “NR” as marks and tradenames, service marks or logos, except as necessary to use the language to point or direct customers or vendors to Progressive's new site with its new business name, which shall continue to June 30, 2020. Additionally, Progressive shall have until June 30, 2020, to cease use of any internet domain or other social media address that includes “Nuova Ricambi” or any confusingly similar derivation. Promptly, and in compliance with the injunction, Progressive shall cooperate with NRSRL to cancel its Registered Mark and to notify the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“TTAB”) of its withdrawal of its opposition to NRSRL's registration of the mark “NR”, Serial No. 79166354. On or before June 30, 2020, Progressive shall also cooperate with NRSRL to transfer the “nuovaricambi.com” domain name to NRSRL's control, and shall terminate the use of any other similar domains it holds as well as any other social media address making use of “Nuova Ricambi, ” or any derivation thereof.

         6. Except as provided above, the Parties shall have the right to use their respective catalogs, and images contained therein, as they exist as of the date of this Judgment regardless of the source of the images and to ...