United States District Court, E.D. California
PROGRESSIVE MARKETING, INC. Plaintiff,
v.
SPROPARTS LLC, NUOVA RICAMBI S.R.L. and LA MARZOCCO USA, LLC Defendants. AND RELATED CROSS-ACTION.
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 ...