Zoi Foods Corp. v. Westside Famous Marketplace Inc. et al
| Zoi Foods Corp. |
| Does 1-5 and Westside Famous Marketplace Inc. |
| 1:2019cv09103 |
| October 1, 2019 |
| US District Court for the Southern District of New York |
| J Paul Oetken |
| Trademark |
| 28 U.S.C. § 1331 Fed. Question |
| Plaintiff |
Docket Report
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This docket was last retrieved on December 22, 2020. A more recent docket listing may be available from PACER.
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CASHIERS OFFICE REGISTRY DISBURSEMENT as per #36 Memo Endorsement, dated 12/7/2020, from Judge J. Paul Oetken, on 12/14/2020 disbursed to pay Zoi Foods Corp $1,000.00 Check No. 20115813 dated 12/14/2020.(cla)
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Filing 36
MEMO ENDORSEMENT on re: #35 Letter filed by Zoi Foods Corp. ENDORSEMENT: The Clerk of Court is directed to return the $1,000 injunction bond to Plaintiff at 148 West 24th Street, Suite 3A, New York, New York 10011. So ordered. (Signed by Judge J. Paul Oetken on 12/7/2020) (jca) Transmission to Finance Unit (Cashiers) for processing.
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Filing 35
LETTER addressed to Judge J. Paul Oetken from Ryan A. McGonigle dated December 4, 2020 re: Return of Injunction Bond. Document filed by Zoi Foods Corp...(McGonigle, Ryan)
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Filing 34
AO 120 FORM TRADEMARK - CASE TERMINATED - SUBMITTED. In compliance with the provisions of 15 U.S.C. 1116, the Director of the U.S. Patent and Trademark Office is hereby advised that a final decision was rendered on 8/20/2020 in a court action filed on the following trademark(s) in the U.S. District Court Southern District of New York. Director of the U.S. Patent and Trademark Office electronically notified via Notice of Electronic Filing (NEF). (Attachments: #1 Exhibit STIPULATION TO PERMANENT INJUNCTION AND FINAL JUDGMENT ON CONSENT).(jca)
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Filing 33
STIPULATION TO PERMANENT INJUNCTION AND FINAL JUDGMENT ON CONSENT: IT IS HEREBY ORDERED, ADJUDGED, AND DECREED, that 1. Defendant, which such term for purposes of the obligations stated herein shall be deemed to include Defendant's subsidiaries, affiliates, divisions, as well as their respective officers, directors, principals, servants, employees, and all others with notice hereof acting in direct and/or indirect concert or participation with them, be and hereby are PERMANENTLY ENJOINED and RESTRAINED from:: a. Using, registering and/or applying to register the term "WESTSIDE", shown either as one word or in the composite form "WEST SIDE", alone or in combination with any other term, in any manner as a corporate name, business name, trademark, service mark, logo, domain name, social media handle, or other indicia of source, on or in connection with the operation or promotion of grocery stores, establishments that sell food and/or beverage products, or on or in connection with food or beverage products; b. Using, advertising, marketing, displaying, offering for sale and/or selling any foods, beverages or related food and beverage services on or in association with the Plaintiff Westside Marks or marks confusingly similar thereto, either individually or in conjunction with other words, marks or designs. This Court retains jurisdiction of this action for the purpose of enforcing the provisions of this Permanent Injunction and Final Judgment on Consent by way of contempt or otherwise. Defendant agrees not to contest the validity of the Plaintiff Westside Marks in any such proceeding. The parties waive appeal of this Permanent Injunction and Final Judgment on Consent. Each party to this Permanent Injunction and Final Judgment on Consent shall bear its own costs and attorneys' fees of this Action. This Permanent Injunction and Final Judgment on Consent shall operate as the final judgment in this Action. The Clerk of Court is directed to close this case. SO ORDERED. (Signed by Judge J. Paul Oetken on 8/20/2020) (jca)
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Filing 32
PROPOSED STIPULATION AND ORDER. Document filed by Zoi Foods Corp.. (Attachments: #1 Text of Proposed Order Stipulation to Permanent Injunction and Final Judgment on Consent).(McGonigle, Ryan)
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Filing 31
ORDER granting #30 Letter Motion for Extension of Time to Answer. GRANTED. DEFENDANT SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE AUGUST 21, 2020. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken) (el)
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Filing 30
LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated July 17, 2020. Document filed by Westside Famous Marketplace Inc...(Butnick, Joshua)
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Filing 29
ORDER granting #27 , #28 Letter Motions for Extension of Time to Answer. Westside Famous Marketplace Inc. answer due 7/17/2020. GRANTED. DEFENDANT WESTSIDE FAMOUS MARKETPLACE INC. SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE JULY 17, 2020. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken)(Text Only Order) (el)
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Filing 28
LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated June 2, 2020. Document filed by Westside Famous Marketplace Inc...(Butnick, Joshua)
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Filing 27
LETTER MOTION for Extension of Time to File Answer and Complete Settlement Agreement addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated May 13, 2020. Document filed by Westside Famous Marketplace Inc...(Butnick, Joshua)
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Filing 26
ORDER granting #25 Letter Motion for Extension of Time to Answer. GRANTED. DEFENDANT SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE MAY 15, 2020. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken)(Text Only Order) (el)
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Filing 25
LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated March 10, 2020. Document filed by Westside Famous Marketplace Inc...(Butnick, Joshua)
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Filing 24
ORDER granting #23 Letter Motion for Extension of Time to Answer re #1 Complaint. All Defendants. GRANTED. DEFENDANT SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE MARCH 13, 2020. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken)(Text Only Order) (el)
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Filing 23
LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated January 10, 2020. Document filed by Westside Famous Marketplace Inc..(Butnick, Joshua)
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Filing 22
ORDER granting #21 Letter Motion for Extension of Time to Answer re #1 Complaint. GRANTED. DEFENDANT SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE JANUARY 10, 2020. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken)(Text Only Order) (el)
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Filing 21
LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated December 11, 2019. Document filed by Westside Famous Marketplace Inc..(Butnick, Joshua)
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Filing 20
NOTICE OF CHANGE OF ADDRESS by Erica Dawn Klein on behalf of Westside Famous Marketplace Inc.. New Address: Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor, Southfield, Michigan, United States 48075, 2483584400. (Klein, Erica)
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Filing 19
NOTICE OF APPEARANCE by Erica Dawn Klein on behalf of Westside Famous Marketplace Inc.. (Klein, Erica)
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Filing 18
AO 120 FORM TRADEMARK - CASE OPENING - SUBMITTED. In compliance with the provisions of 15 U.S.C. 1116, the Director of the U.S. Patent and Trademark Office is hereby advised that a court action has been filed on the following trademark(s) in the U.S. District Court Southern District of New York. Director of the U.S. Patent and Trademark Office electronically notified via Notice of Electronic Filing (NEF). (pc)
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Filing 17
ORDER granting #16 Letter Motion for Extension of Time to Answer re #1 Complaint. GRANTED. DEFENDANTS SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE DECEMBER 13, 2019. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken)(Text Only Order) (el)
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| Filing 16 SECOND LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated 11/14/2019. Document filed by Westside Famous Marketplace Inc..(Butnick, Joshua) |
| Filing 15 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by Westside Famous Marketplace Inc..(Butnick, Joshua) |
| ***NOTICE TO ATTORNEY TO RE-FILE DOCUMENT - PDF ERROR. Notice to Attorney Joshua Adam Butnick to RE-FILE Document #10 Rule 7.1 Corporate Disclosure Statement. NOTE: The title of the document is incorrect. (ldi) |
| Filing 14 AO 120 FORM TRADEMARK - NOTICE OF SUBMISSION BY ATTORNEY. AO 120 Form Patent/Trademark for case opening submitted to court for review.(McGonigle, Ryan) |
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Filing 13
ORDER granting #12 Letter Motion for Extension of Time to Answer re #1 Complaint. Westside Famous Marketplace Inc. answer due 11/15/2019. GRANTED. DEFENDANT SHALL ANSWER OR OTHERWISE RESPOND TO THE COMPLAINT ON OR BEFORE NOVEMBER 15, 2019. SO ORDERED. (HEREBY ORDERED by Judge J. Paul Oetken)(Text Only Order) (el)
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| Filing 12 LETTER MOTION for Extension of Time to File Answer addressed to Judge J. Paul Oetken from Joshua Butnick, Esq. dated November 1, 2019. Document filed by Westside Famous Marketplace Inc..(Butnick, Joshua) |
| Filing 11 DECLARATION of WAHLID ALKANDI re: #8 Preliminary Injunction,,,,,,, Report in writing and under oath regarding compliance with preliminary injunction. Document filed by Westside Famous Marketplace Inc.. (Butnick, Joshua) |
| Filing 10 FILING ERROR - DEFICIENT DOCKET ENTRY - RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by Westside Famous Marketplace Inc..(Butnick, Joshua) Modified on 11/7/2019 (ldi). |
| Filing 9 NOTICE OF APPEARANCE by Joshua Adam Butnick on behalf of Westside Famous Marketplace Inc.. (Butnick, Joshua) |
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Filing 8
PRELIMINARY INJUNCTION ORDER: NOW, THEREFORE, IT IS HEREBY ORDERED that: 1. Defendant, its respective subsidiaries, affiliates, divisions, officers, directors, principals, servants, employees, successors and assigns, and all those in active concert or participation with it, is hereby preliminarily enjoined from: a. Using, registering or applying to register any word(s), name(s), mark(s), trade name(s), logo(s), design(s), domain name(s), alone or in combination that is/are confusingly similar or dilutive of the WESTSIDE MARKET trademarks, including, "West Side Famous Market" and the Westside Famous Marketplace Inc. trade name in connection with goods or services in commerce that is likely to cause confusion in the minds of the consuming public; IT IS FURTHER ORDERED that Defendant, its respective subsidiaries, affiliates, divisions, officers, directors, principals, servants, employees, successors and assigns, and all those in active concert or participation with it, shall within five (5) days of this Order: d. Remove and/or cancel all placements of any advertising or promotional signage in any media or format, including but not limited to WFMI's place of business, 2753-2755 Broadway, New York, New York 10025, which bear or display the "West Side Famous Market" trademark alone or in combination, that is/are confusingly similar to or dilutive of the WESTSIDE MARKET trademarks, or used in a manner that: (i) is likely to cause confusion with or calculated to dilute the WESTSIDE MARKET trademarks; and/or (ii) is intended to deceive the public as to the origin, sponsorship, or approval of Defendant by Plaintiff and/or its infringing service, (And as further set forth in this Order.) (Signed by Judge J. Paul Oetken on 10/18/2019) (jca)
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| Minute Entry for proceedings held before Judge J. Paul Oetken: Show Cause Hearing held on 10/17/2019. (bh) |
| Filing 7 AFFIDAVIT OF SERVICE of Civil Cover Sheet, Summons in a Civil Action, Complaint, Rule 7.1 Statement, Declaration of George Zoitas, Order to Show Cause of Preliminary Injunction and Memorandum of Law in Support of Its Order to Show Cause for a Preliminary Injunction served on Secretary of the State of New York on 10/02/2019. Service was accepted by Colleen Banahan, Office Assitant. Document filed by Zoi Foods Corp.. (McGonigle, Ryan) |
| Filing 6 MEMORANDUM OF LAW in Support of Application for an Order to Show Cause. Document filed by Zoi Foods Corp.. (McGonigle, Ryan) |
| Filing 5 DECLARATION of George Zoitas in Support. Document filed by Zoi Foods Corp.. (McGonigle, Ryan) |
| Filing 4 RULE 7.1 CORPORATE DISCLOSURE STATEMENT. No Corporate Parent. Document filed by Zoi Foods Corp..(McGonigle, Ryan) |
| NOTICE OF REDESIGNATION TO ANOTHER MAGISTRATE JUDGE. The above entitled action has been redesignated to Magistrate Judge Sarah L. Cave. Please note that this is a reassignment of the designation only. (laq) |
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Filing 3
ORDER TO SHOW CAUSE FOR PRELIMINARY INJUNCTION: NOW, THEREFORE, IT IS HEREBY ORDERED that Defendant Westside Famous Marketplace Inc. (hereinafter, "Defendant") appear before this Court, located at the Daniel Patrick Moynihan United States Courthouse, 40 Foley Square, in the City, County and State Of New York on 10/17/2019 at 03:00 PM in Courtroom 706, 40 Centre Street, New York, NY 10007 before Judge J. Paul Oetken. IT IS FURTHER ORDERED that service of a copy of this Order, together with copies of the papers upon which it is granted, on Defendant on or before 5:00 p.m. on October 3, 2019 shall be deemed good and sufficient service hereof. Answering papers, if any, are to be served on Plaintiff's counsel on or before noon on October 11, 2019. Security in the amount of $1000, will be posted by Oct. 4, 2019. (Signed by Judge J. Paul Oetken on 10/01/2019) (ama)
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| Filing 2 CIVIL COVER SHEET filed. (pc) (pne). |
| Filing 1 COMPLAINT against Does 1-5, Westside Famous Marketplace Inc.. (Filing Fee $ 400.00, Receipt Number 465401245282)Document filed by Zoi Foods Corp..(pc) (pne). |
| SUMMONS ISSUED as to Does 1-5, Westside Famous Marketplace Inc.. (pc) |
| Case Designated ECF. (pc) |
| ***NOTICE TO ATTORNEY TO SUBMIT AO 120 FORM PATENT/TRADEMARK. Notice to Attorney Ryan Andrew McGonigle to submit a completed AO 120 Form Patent/Trademark to court for review. Use the event type AO 120 Form Patent/Trademark - Notice of Submission by Attorney found under the event list Other Documents. (pc) |
| Magistrate Judge Henry B. Pitman is so designated. Pursuant to 28 U.S.C. Section 636(c) and Fed. R. Civ. P. 73(b)(1) parties are notified that they may consent to proceed before a United States Magistrate Judge. Parties who wish to consent may access the necessary form at the following link: #http://nysd.uscourts.gov/forms.php. (pc) |
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