Goose") (collectively "Plaintiffs") filed their Complaint in the above-captioned action against

Transcription

1 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 1 of 12 PageID: 102 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 1 of 12 PagelD: 90 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY WAWA, INC. and WILD GOOSE HOLDING CO., INC. Plaintiffs, Civil Action No. 2:17-cv KSH-CLW V. DAWA FOOD, INC., Defendant. CONSENT JUDGEMENT AND PERMANENT INJUNCTION WHEREAS Plaintiffs Wawa, Inc. ("Wawa") and Wild Goose Holding Co., Inc. ("Wild Goose") (collectively "Plaintiffs") filed their Complaint in the above-captioned action against Defendant Dawa Food, Inc. ("Defendant"), a New Jersey corporation having a place of business at 15 Lafayette Avenue, Paterson, NJ 07501, seeking injunctive and other relief for claims of trademark infringement, false designation of origin, trademark dilution and unfair competition arising under the Lanham Act, as amended, 15 U.S.C et seq., and the statutory and common laws of the State of New Jersey. WHEREAS Plaintiffs and Defendant have agreed upon a basis for settling this action, including the entry of this Consent Judgment and Permanent Injunction with respect to Defendant. AND WHEREAS Defendant agrees to be bound by the provisions of this Consent Judgment and Permanent Injunction pending its approval by this Court. NOW, THEREFORE, it is hereby ORDERED, ADJUDGED, AND DECREED: 1. This Court has subject matter jurisdiction over this Action and the allegations in the Complaint pursuant to 15 U.S.C. 1121, 28 U.S.C. 1331, 1332(a) and (b), 1338(a) and (b), and 1367(a). 1

2 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 2 of 12 PageID: 103 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 2 of 12 PagelD: This Court has personal jurisdiction over Defendant. 3. Venue properly hes with this Court pursuant to 28 U.S.C Since at least as early as 1964, Wawa has used the name and mark WAWA in connection with convenience store and restaurant services and in the advertising, marketing and sale of the same in interstate commerce. 5. Wawa has been and is one of the leading food and convenience store retailers in this United States. Wawa is well known among the general public and in the convenience and food store industry. 6. Wawa's goods and services sold under the name and mark WAWA, which are recognized in New Jersey and the United States to be of the highest quality, are offered for sale and sold in interstate commerce. 7. From 1964 to the present, Wawa has engaged in substantially exclusive use of the name and mark WAWA. 8. Since 1964, Wawa's advertising and sales of goods and services under the name and mark WAWA have been and are significant. Wawa has invested a substantial amount of time, effort and money in promoting the WAWA mark and trade name and in ensuring the high quality of goods and services provided under the WAWA name. 9. In addition to Wawa's own advertising efforts, the WAWA mark has received significant unsolicited media coverage throughout the United States and this State, reaching tens, if not hundreds, of millions of consumers annually. 10. As a result of such substantial advertising, sales and media coverage under the mark WAWA and the maintenance of premium quality standards relating thereto, and the substantially exclusive use of said mark, the mark WAWA has become widely, favorably and

3 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 3 of 12 PageID: 104 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 3 of 12 PagelD: 92 uniquely recognized by the general consuming public of New Jersey and die United States, as a distinctive indication of the origin of the goods and services of Wawa. The mark WAWA has become unique and is identified by the general public solely with Wawa and its goods and services. The mark WAWA has become and is an extremely valuable symbol of Wawa, its reputation and goodwill. 11. As a result of the foregoing efforts and investment, the mark WAWA has become famous and distinctive in the United States and this State, as defined under Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), N.J.S.A. 56: and at common law. 12. Wild Goose owns the following federal trademark and service mark registrations, among others, comprising the mark WAWA: Mark Registration Number Date of Registration Gdods/Seivices! u WAWA April 28, 1970 dairy products-namely, milk, fortified skim milk, heavy cream, light cream, chocolate milk, non alcoholic egg nog, ice cream, fresh eggs and butter; bakery productsnamely, bread and rolls. WAWA October 9,1984 dairy products-namely, light cream, heavy cream, egg nog, half & half, milk, chocolate milk and eggs. iced tea and ice cream. carbonated and noncarbonated non-alcoholic beverages-namely, soft drinks, orange juice, and fhiit juice drinks containing water. retail food store services. WAWA and design December 11,1984 retail food store services WAWA and design March 30,1993 retail convenience store WAWA FRESHLY BREWED COFFEE and design services June 24,1997 coffee

4 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 4 of 12 PageID: 105 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 4 of 12 PagelD: 93 Mark Re&istratioii Number Date of Redstradon Goods/Services WAWA GASOLINE February 15,2000 gasoline WAWA April 18,2000 motor vehicle service station services WAWA November 19,2002 retail convenience services WAWA March 2,2004 fast food restaurant services WAWA February 13,2007 credit card services THE WAWA GOBBLER March 24,2009 hot turkey sandwiches WAWA COFFEETOPIA November 3,2009 retail store services featuring coffee WAWA December 8,2009 water WAWA COFFEETOPIA December 8,2009 coffee WAWACCINO August 31,2010 cappuccino WAWA BREAKFAST February 8,2011 sandwiches HOAGIES WAWA UNIVERSITY April 24,2012 educational services, namely, providing live seminars in the field of business education and self-improvement WAWA May 15,2012 backpacks; duffle bags. cups and mugs; portable beverage coolers. baby blankets; beach towels; blanket throws, baseball caps and hats; children's and infants* cloth bibs; hooded sweatshirts; infant and toddler one piece clothing; scarves; sweatpants; sweatshirts; t-shirts. WAWA December 3,2013 coffee; coffee based beverages; coffee pods; ground coffee beans WAWA January 28,2014 credit card services for vehicle fleet owners WAWA online retail store services January 28,2014 featuring gift cards, coffee, clothing, hats, bags and novelty items WAWA REWARDS July 21,2015 providing incentive award programs through the distribution of store coupons for the purpose of promoting and rewarding loyalty WAWA Sept. 8,2015 credit union services WAWA Sept. 15,2015 computer application software for mobile phones and portable computing devices.

5 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 5 of 12 PageID: 106 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 5 of 12 PagelD: 94 Mark Registration Number Date of Registration Goods/Services namely, software for providing store information, gas pricing and nutritional information and enabling customers to access and manage their incentive rewards program proiile and determine nearby stores WAWA March 15,2016 Prepared and prepackaged entrees and snacks, namely, vegetable-based snack foods, fruit-based snack foods, food package combinations consisting primarily of cheese, meat, poultry, processed vegetables and processed fiiiit, vegetable-based spreads, and salads except macaroni, rice and pasta salad. Class 29 and Prepared and prepackaged entrees and snacks, namely, sandwiches, wrap sandwiches, and salads in the nature of macaroni, rice and pasta salad. Class THE WAWA FOUNDATION March 15,2016 Charitable foundation services, namely, providing funding, fundraising activities, monetary donations and financial assistance for programs and services of others All of the above-listed registrations are owned by Wild Goose. Wild Goose and Wawa have entered into license agreements under which Wild Goose has granted Wawa an exclusive license to use various marks owned by Wild Goose including the mark WAWA. By virtue of such licenses, Wild Goose and Wawa are related companies within the meaning of Section 5 of the Lanham Act, 15 U.S.C Consequently, all use of the mark WAWA by Wawa inures to the benefit of Wild Goose as a matter of law.

6 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 6 of 12 PageID: 107 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 6 of 12 PageiD: All of the above-listed registrations are valid, subsisting and in full force and effect, and serve as prima facie evidence of the validity the marks shown therein and Wild Goose's ownership thereof, and are constructive notice of ownership of the mark WAWA by Wild Goose, all as provided by Sections 7(b) and 22 of the Lanham Act, 15 U.S.C. 1057(b) and As Registration Nos. 890,189, 1,299,708, 1,309,445, 1,761,847, 2,073,081, 2,319,303, 2,343,033, 2,651,841, 2,819,429, 3,209,740, 3,596,672, 3,706,518, 3,722,383 and 3,209,740 have each achieved incontestable status under Section 15 of the Lanham Act, 15 U.S.C. 1065, said registrations are conclusive evidence of Plaintiffs' exclusive right to use the mark WAWA in commerce. 15. Long after the mark WAWA had become distinctive and famous within this State and in the United States, Defendant adopted and used the names and marks DAWA, DAW A FOOD and/or DAWA FOOD MART (collectively "DAWA") in this judicial district and in interstate commerce, in connection with convenience store and restaurant services. 16. Defendant's name and mark DAWA is virtually identical to Plaintiffs' name and mark WAWA. 17. Plaintiffs' mark WAWA and Defendant's mark DAWA engender strikingly similar appearances, sounds, meanings and overall commercial impressions, such that confusion as to the source of the goods and services offered under the respective marks is likely to result. 18. The parties' respective services are identical in kind and they move in sumlar channels of trade. 19. Defendant's convenience store and restaurant services, which are offered and rendered within Wawa's trade area, are likely to be rendered to, marketed to, purchased, used or otherwise received by Wawa's consumers and potential consumers of WAWA retail food.

7 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 7 of 12 PageID: 108 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 7 of 12 PagelD: 96 convenience store and restaurant services. Wawa's consumers, upon encountering, purchasing, using or otherwise receiving Defendant's DAWA services, are likely to be confused and deceived and are likely to falsely believe that Defendant's services are sponsored, licensed and/or otherwise approved by, or is in some way connected or affiliated with Plaintiffs. 20. Defendant's use of DAWA is likely to lessen and has lessened the capacity of the mark WAWA to uniquely identify and distinguish the goods and services of Plaintiffs and has blurred and tarnished the unique association which has heretofore existed between the mark WAWA and the goods and services provided by Plaintiffs. 21. Defendant's use of DAWA constitutes trademark infringement, false designation of origin, trademark dilution and unfair competition under the Lanham Act, as amended, 15 U.S.C et seq.. and the statutory and common laws of the State of New Jersey. 22. Wawa is likely to suffer irreparable harm if Defendant does not cease its use of DAWA in coimection with convenience store and restaurant services. Defendant's use of DAWA as a name and mark in coimection with identical services, over which Wawa has no control, irreparably harms Wawa by precluding it from exercising full control over its hardeeimed business reputation and goodwill. Wawa's inability to control Defendant's use of DAWA, which, due to their striking simileuity, consumers are likely to associate with Wawa, creates the potential for damage to Wawa's reputation. It would be difficult to ascertain the amount of compensation which could afford Wawa adequate relief for such acts and injury. 23. Defendant, its officers, agents, servants, employees, and assigns, and all others in privity or acting in concert therewith, shall be and are PERMANENTLY ENJOINED and restrained from:

8 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 8 of 12 PageID: 109 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 8 of 12 PagelD: 97 a. Using the mark DAWA alone or in combination with other words, phrases, symbols or designs, as a trademark, trade name, corporate name, domain name component or otherwise, to market, advertise or identify Defendant's services; b. Using the mark WAWA and/or any other confusingly similar designation, alone or in combination with other words, phrases, symbols or designs, as a trademark, trade name, domain name component or otherwise, to market, advertise or identify Defendant's services; c. Otherwise infringing the mark WAWA. d. Causing the likelihood of dilution of the distinctive quality of the mark WAWA, and e. Engaging in assignments or transfers, formation of new entities or associations or utilization of any other device for the piupose of circumventing or otherwise avoiding the prohibitions set forth in sub-paragraphs (a) through (d) above. 24. Defendant shall notify in writing and direct to all packaging suppliers or printers, advertising agencies, publishers of directories or lists, social media and/or other businesses that are involved in advertising or otherwise reproducing the mark DAWA for Defendant, to delete and discontinue all reference to DAWA from their advertising, materials, databases and directories. 25. Notwithstanding any other provisions of this Consent Judgment and Permanent Injunction, Defendant will be permitted up to and including ninety (90) days from the entry of this Consent Judgment and Permanent Injimction (the "Transition Period") to change the name and mark(s) of its business from DAWA to some other name and mark consistent with the proscriptions, terms and conditions of this Consent Judgment and Permanent Injimction. 8

9 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 9 of 12 PageID: 110 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 9 of 12 PagelD: 98 Defendant shall exhaust during the Transition Period, or thereafter destroy, all labels, signage, prints, literature, packages, wrappers, receptacles, containers, advertising and all other promotional or printed materials displaying the name and mark DAWA. 26. Within thirty (30) days after the Transition Period, Defendants shall file with the Court and serve upon Plaintiffs' counsel, a report in writing and imder oath, setting forth in detail the manner in which Defendant has completely complied with the terms of this Consent Judgment and Permanent Injunction. 27. Defendant waives all rights of an appeal firom this Consent Judgment and Permanent Injunction and any right to challenge it in any way 28. Defendant waives all claims in this action against Plaintiffs with prejudice, whether they are asserted or not. 29. All claims asserted in this action by Plaintiffs for monetary recovery firom Defendant are hereby dismissed with prejudice. 30. Each party shall bear its own costs and attorneys' fees associated with this Action. 31. This Court shall retain jurisdiction to enforce the terms and conditions of this Consent Judgment and Permanent Injunction. If Defendant shall be alleged to have breached the terms of this Consent Judgment and Permanent Injunction, Plaintiffs shall have the right to reopen this matter upon motion. If this matter is so reopened. Plaintiffs may pursue any and all remedies it may have against Defendant in addition to the liquidated damages as set forth below, and shall be entitled to recover its attorneys' fees and costs for any further prosecution of this action. 32. The parties recognize and acknowledge that it would be impractical and/or very difficult to determine and fix the amoimt of damages that would be sustained as a result of a

10 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 10 of 12 PageID: 111 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 10 of 12 PagelD: 99 breach of this Consent Judgment and Permanent Injunction by Defendant. Accordingly, after making a reasonable endeavor to arrive at the amount that would be an approximation of the damages that would or might be sustained in the event of a breach, the parties agree to fix said amount of liquidated damages in the sum of $12, In the event that Defendant breaches this Consent Judgment and Permanent Injunction, which breach shall be determined on the basis of such proof as Plaintiffs shall present to the Court, the Defendant shall be obligated to pay to Plaintiffs liquidated damages in the amount set forth above. Upon entry of an Order of this Court that Defendant has committed such a breach. Plaintiffs shall be entitled to enforce the Courtis Order, including by Writ of Execution. 34. Each of the parties acknowledges and represents that it has fully considered the effect of this provision for liquidated damages. 35. This Consent Judgment and Permanent Injunction shall bind and inure to the benefit of all parties hereto, and all their assigns and successors in interest. 10

11 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 11 of 12 PageID: 112 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 11 of 12 Page!D: 100 The individuals executing this Consent Judgment and Permanent Injunction represent and confirm that they are duly authorized to do sd^and are authorized to bind each of the signatories to this Consent Judgment and Permanent Injunction. CONSENTED TO: WAWA, INC. and WILD GOOSE HOLDING CO., INC. 0AWA FOOD, INC. Salyatore Guerrif Caesar Rivise, 1635 Market Street^ Seven Penn Center- 12*'' Floor Philadelphia, PA Attorney for Plaintiffs Wawa, Inc. and Wild Goose Holding Co., Inc. Sang Taek Han, President, Defendant Dawa Food, Inc. Eup:$ie Sugdie MeyeKT Meyei^ I^thew Chung Meister Seelig & Fein LLP 125 Park Avenue, 7th Floor New York, NY Attorneys for Defendant Dawa Food, Inc. 11

12 Case 2:17-cv KSH-CLW Document 14 Filed 06/05/17 Page 12 of 12 PageID: 113 Case 2:17-cv KSH-CLW Document 13-1 Filed 05/11/17 Page 12 of 12 PagelD: 101 ORDER The Court has reviewed the Consent Judgment and Permanent Injunction presented to it on and finds that the Consent Judgment and Permanent Injunction so presented is proper in form and a suitable and proper disposition of this Action. Therefore, IT IS on this day of-may 2017, hereby ORDERED that the Clerk of the Court enter the Consent Judgment and Permanent Injunction in this matter pursuant to Rule 58 of the Federal Rules of Civil Procedure. 12