Ayush Herbs, Inc. v. Distacart, Inc. et al, No. 3:2022cv03707 - Document 44 (N.D. Cal. 2023)
Court Description: FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION. Signed by Judge Charles R. Breyer on 8/22/2023. (ls, COURT STAFF) (Filed on 8/22/2023)
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Ayush Herbs, Inc. v. Distacart, Inc. et al 1 2 3 4 5 6 7 8 9 10 11 12 13 Doc. 44 AMIN TALATI WASSERMAN, LLP Matthew R. Orr, Bar No. 211097 515 South Flower Street, 18th Floor Los Angeles, California 90071 Tel: (213) 933-2330 Fax: (312) 884-7352 matt@amintalati.com George R. Spatz, Pro Hac Vice Manon Burns, Bar. No. 347139 gspatz@amintalati.com manon@amintalati.com 549 W. Randolph St., Ste. 400 Chicago, IL 60661 Tel: (312) 466-1033 Fax: (312) 884-7352 HM LAW GROUP LLP Devasena Reddy devasena@hahnmoodley.com Vani Moodley vani@hahnmoodley.com 5655 Silver Creek Valley Road #850 San Jose, CA 95138 Tel: 650-796-5427 Fax: 408-351-8808 Attorneys for Defendants Distacart, Inc. and Genie Exports Pvt. Ltd. Attorneys for Plaintiff, Ayush Herbs, Inc. 14 15 UNITED STATES DISTRICT COURT 16 NORTHERN DISTRICT OF CALIFORNIA 17 SAN FRANCISCO DIVISION 18 19 AYUSH HERBS, INC., 20 Plaintiff, 21 22 23 vs. DISTACART, INC. and GENIE 24 EXPORTS PVT. LTD., 25 26 27 Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No.: 3:22-cv-3707-CRB [PROPOSED] FINAL JUDGMENT BY CONSENTAND PERMANENT INJUNCTION CMC: Dec. 1, 2023 8:30 a.m. 28 -1[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION Dockets.Justia.com 1 On consent of Plaintiff Ayush Herbs, Inc. (“Plaintiff” or “Ayush Herbs”) and 2 Defendants Distacart, Inc. (“Distacart”) and Genie Exports Pvt. Ltd. (“Genie Exports”) 3 (collectively “Defendants”), having agreed that a Final Judgment By Consent 4 (“Consent Judgment”) and Permanent Injunction should be entered between them and 5 good cause appearing therefor: 6 IT IS ORDERED, ADJUDGED AND DECREED: 7 1. This case arose under the provisions of the Trademark Act of 1946, 15 8 U.S.C. § 1051, et seq., particularly under 15 U.S.C. § 1125 and 15 U.S.C. § 1115 and 9 related claims for infringement and contributory infringement of a registered trademark 10 and unfair competition. The Court has subject matter jurisdiction pursuant to 15 U.S.C. 11 § 1121 and 28 U.S.C. §§ 1331, 1338 and 1367(a). The Court further has continuing 12 jurisdiction to enforce the terms and provisions of this Consent Judgment. 13 2. Each Defendant affirms that it has reviewed and agrees to this Consent 14 Judgment voluntarily, and that no promise or threat of any kind has been made by 15 Plaintiff, or any officer or employee of Plaintiff, to induce it to consent to entry of this 16 Consent Judgment and Permanent Injunction. 17 3. Each Defendant affirms it was represented by legal counsel in connection 18 with the negotiation of this Consent Judgment and Permanent Injunction. 19 4. Each Defendant acknowledges service of the Summons and Complaint. 20 5. Each Defendant admits that this Court has personal jurisdiction over it. 21 6. Each Defendant admits that venue properly lies with this Court. 22 7. Each Defendant waives any and all rights to appeal this action. 23 8. Each Defendant consents to the continued jurisdiction of this Court for the 24 purpose of enforcing the terms and conditions of this Consent Judgment and Permanent 25 Injunction and for any other purposes relevant to this case. 26 27 FINDINGS OF FACT AND CONCLUSIONS OF LAW 9. Plaintiff Ayush Herbs, Inc. (“Ayush Herbs”) is the owner of U.S. 28 Trademark Registration No. 2,493,772 in International Trademark Class 003 for -2[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION 1 AYUSH HERBS for “cosmetics, namely, skincare preparations, [ skin lotions, skin 2 creams ] and skin moisturizers; massage oil; replenishing oil, namely, hair 3 conditioners,” as well as in International Trademark Class 005 for “herbal and 4 nutritional supplements; [ medicated candy for alleviating pain and intestinal distress; 5 homeopathic and pharmaceutical preparations, ] natural medicines, and herbal and 6 plant extracts for medical use, all for human and veterinary use for alleviating pain and 7 for treating gastrointestinal problems, joint ailments and stress related nervous 8 disorders.” The AYUSH HERBS Certificate of Registration is attached as Exhibit A. 9 10. Plaintiff Ayush Herbs is the owner of U.S. Trademark Registration No. 10 6,762,042 in International Class 003 for AYUSH for “Cosmetics; Hair conditioner; 11 Massage oil; Skin moisturizer; Non-medicated skin care preparations,” as well as in 12 International Class 005 for “Dietary and nutritional supplements; Herbal extracts for 13 medical purposes; Herbal supplements; Plant extracts for medical, veterinary and 14 pharmaceutical purposes.” The AYUSH Certificate of Registration is attached as 15 Exhibit B. 16 11. The AYUSH HERBS and AYUSH trademarks (collectively the “Ayush 17 Herbs Trademarks”) are valid and in full force and effect and Ayush Herbs has the 18 exclusive right to use the registered marks in connection with the goods or services 19 identified in the registration certificates. 20 12. The AYUSH HERBS trademark has become incontestable pursuant to 15 21 U.S.C. § 1065. 22 13. Ayush Herbs has used the AYUSH HERBS trademark continuously since 23 at least as early as November 1990 and has used the AYUSH trademark continuously 24 since at least as early as 1994. 25 14. Defendant Genie Exports has sold products in the United States that use 26 or display the word or term AYUSH as an element of a mark or product name, such as 27 AYUSH Kwath, AYUSH Kadha, and AYUSH-64, that Ayush Herbs alleges infringe 28 the Ayush Herbs Trademarks. -3[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION 1 15. Defendant Distacart has allowed the sale of products in the United States 2 that use or display the word or term AYUSH as an element of a mark or product name, 3 such as AYUSH Kwath, AYUSH Kadha, and AYUSH-64, through its online platform 4 at distacart.com, and Ayush Herbs alleges that through these actions Distacart has 5 contributed to the infringement of the Ayush Herbs Trademarks. 6 16. Ayush Herbs contends that Defendants’ use or display of the word or term 7 AYUSH as an element of a mark or product name in United States commerce in 8 connection with the sale, offering for sale, distribution, or advertising of such products 9 is likely to cause confusion, or to cause mistake, or to deceive, and therefore constitutes 10 trademark infringement and contributory trademark infringement in violation of 15 11 U.S.C. § 1114, unfair competition in violation of 15 U.S.C. § 1125(a), and unfair 12 competition against Ayush Herbs in violation of Cal. Bus. & Prof. Code § 17200 and 13 the common law of the State of California. 14 17. On June 23, 2022, Ayush Herbs commenced the above-captioned action 15 (the “Civil Action”) by filing a Complaint against Defendants. On November 17, 2022, 16 Plaintiff filed a First Amended Complaint (the “FAC”), which is the operative 17 complaint. 18 18. Defendants expressly deny any liability in connection with Ayush Herbs’ 19 claims in this Civil Action. Notwithstanding Defendants’ denial of liability, each 20 Defendant consents to a permanent injunction as set forth below. 21 19. Ayush Herbs has waived all claims for damages against Defendants, 22 including Defendants’ profits, treble damages, and attorneys’ fees and costs. 23 ACCORDINGLY, IT IS FURTHER ORDERED, ADJUDGED AND 24 DECREED: 25 20. The Court expressly determines that there is no just reason for delay in 26 entering this judgment, and pursuant to Rule 54(b) of the Federal Rules of Civil 27 Procedure, the Court directs entry of judgment for permanent injunction against each 28 Defendant as follows: -4[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION 1 21. Defendants Distacart, Inc. and Genie Exports Pvt. Ltd. and all affiliated 2 or related entities, agents, officers, employees, servants, representatives, successors, 3 assigns, and attorneys, and all those in active concert or participation with any of them, 4 and all other persons acting for, with, by, through, or under authority from them, are 5 hereby PERMANENTLY ENJOINED AND RESTRAINED from: 6 a. manufacturing, producing, acquiring, purchasing, importing, 7 receiving, exporting, distributing, circulating, selling, offering for sale, advertising, or 8 promoting in the United States any product that bears one or more of the Ayush Herbs 9 Trademarks, any mark confusingly similar to the Ayush Herbs Trademarks, or any 10 mark that includes the word or term AYUSH as an element of a mark or product name, 11 in connection with the goods or services identified in the Ayush Herbs Trademarks’ 12 registration certificates; 13 b. acting through or forming other entities or associations, or using 14 any other instrumentalities or devices, for the purpose of circumventing, evading, or 15 avoiding or otherwise violating the prohibitions referred to in subparagraph (a) above. 16 c. directly or indirectly assisting any other individual or entity in 17 engaging in or performing any of the activities referred to in subparagraph (a) above. 18 22. This Consent Judgment and Permanent Injunction shall be deemed to have 19 been served upon the Defendants at the time of its execution by the Court. 20 23. Each party shall bear its own costs and expenses, including but not limited 21 to attorneys’ fees. 22 24. This Court retains jurisdiction over the parties and the subject matter for 23 the purposes of enforcing this Consent Judgment and Permanent Injunction and the 24 Settlement Agreement between the Parties relating to this Civil Action. 25 25. This case is now closed as to all parties and claims. 26 27 28 -5[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION 1 APPROVED OF AS TO FORM: 2 3 DATED: August 22, 2023 HON. CHARLES R. BREYER UNITED STATES DISTRICT JUDGE 4 5 6 CONSENTED TO BY THE PARTIES: 7 8 9 10 11 DATED: 8/21/2023 Amin Talati Wasserman, LLP By: /s/George R. Spatz George R. Spatz (pro hac vice) Manon Burns 12 Attorneys for Plaintiff, Ayush Herbs, Inc. 13 HM Law Group, LLP 14 15 16 17 18 By: /s/Devasena Reddy Devasena Reddy Vani Moodley Attorneys for Defendants Distacart, Inc., and Genie Exports Pvt. Ltd. 19 20 21 22 23 24 25 26 27 28 -6[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION 1 2 CERTIFICATE OF SERVICE I hereby certify that on this 21 day of August, 2023, I caused the electronic filing 3 of the foregoing document described as [PROPOSED] FINAL JUDGMENT BY 4 CONSENT AND PERMANENT INJUNCTION through the CM/ECF system. This 5 document will be sent electronically to the registered participants as identified on the 6 Notice of Electronic Filing and paper copies will be sent to those indicated as non7 registered participants. 8 9 10 /s/Manon Burns Manon Burns 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -7[PROPOSED] FINAL JUDGMENT BY CONSENT AND PERMANENT INJUNCTION Exhibit A Exhibit B Reg. No. 6,762,042 Registered Jun. 14, 2022 Int. Cl.: 3, 5 Trademark Principal Register AYUSH HERBS, INC. (WASHINGTON CORPORATION) 2239 152ND AVE NE REDMOND, WASHINGTON 98052 CLASS 3: Cosmetics; Hair conditioner; Massage oil; Skin moisturizer; Non-medicated skin care preparations FIRST USE 00-00-1994; IN COMMERCE 4-26-2022 CLASS 5: Dietary and nutritional supplements; Herbal extracts for medical purposes; Herbal supplements; Plant extracts for medical, veterinary and pharmaceutical purposes FIRST USE 00-00-1994; IN COMMERCE 4-25-2022 THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR OWNER OF U.S. REG. NO. 2493772 SER. NO. 90-523,109, FILED 02-10-2021
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