CASE 0:14-cv-03122-RHK-FLN Document 14 Filed 12/02/14 Page 1 of 6

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

Candyland, Inc.,

Case No.: 14-cv-3122 RHKlFLN

Plaintiff,

v.

FINAL JUDGMENT ON CONSENT

CaramelCrisp LLC, d/b/a

Garrett Popcorn Shops,
Defendant.

This cause having come on to be heard upon the application of the parties to the
above-entitled action, and Plaintiff Candyland, Inc. ("Plaintiff')

and Defendant

CaramelCrisp LLC d/b/a Garrett Popcorn Shops ("Defendant") having agreed upon a
basis for settlement of the matters averred in Plaintiffs Complaint, without trial or
adjudication of the issues pursuant to a written settlement agreement (the "Settlement
Agreement"), and having stipulated in the Settlement Agreement that a Consent
Judgment in the form set forth herein be entered,
IT IS HEREBY ORDERED that:
1.

This Court has jurisdiction over the parties and over Plaintiff s claims

relating to trademark infringement and unfair competition, which are the subject matter
of this action, under the Lanham Act, 15 U.S.C. 1051, et seq., MINN.STAT. 325D.44,
et seq., and Minnesota Common Law.
2.

Plaintiff is the record owner of a federal trademark registration for the

CHICAGO MIXmark in connection with "flavored popped popcorn," Registration No.

CASE 0:14-cv-03122-RHK-FLN Document 14 Filed 12/02/14 Page 2 of 6

1,713,984 (the "CHICAGO MIXMark"). Registration No. 1,713,984 is incontestable as

set forth in 15 USC Section 1065, presently outstanding, validly subsisting, and
uncancelled.
3.

Defendant, including its affiliates, successors in interest, successors through

merger or corporate restructure, and successors through a sale of all or substantially all of
Defendant's assets or business, is permanently enjoined and restrained in the United
States from adopting or using any mark or designation, filing an application to register,
using as a metatag, or registering a domain name for CHICAGO MIX, or any other mark,
trade name, or slogan that consists of or includes the word CHICAGO MIX, or any
confusingly similar mark or name, in connection with popcorn or any good or service
related to popcorn. The terms of this Final Judgment on Consent are limited to the United
States.
4.

Notwithstanding the permanent injunction in Paragraph 3 above, Defendant

shall have until October 31, 2014 to utilize any signage, advertisements, electronic
material, product packaging, and any other material (collectively "Sales Material") that
display the CHICAGO MIX terms (the "Transition Period"). After the Transition Period,
Defendant agrees to destroy any existing Sales Material in its possession, custody, or
control, and no longer use, in any manner, the CHICAGO MIX mark in the United
States. To the extent Defendant learns that CHICAGO MIX is being used by a third
party retail location in the United States, Defendant agrees to provide Plaintiff on a
quarterly basis with a written report about such third party retail location use. Defendant's
obligation to provide Plaintiff with quarterly reports shall end on September 30,2016.
2

CASE 0:14-cv-03122-RHK-FLN Document 14 Filed 12/02/14 Page 3 of 6

5.

By December 22, 2014, Defendant shall send a written report, under oath,

setting forth in detail the manner and form in which the Defendant has complied with the
injunction to Plaintiff's attorneys (i.e., David A. Davenport).

6.

For so long as Plaintiff maintains United States trademark rights in the

CHICAGO MIXMark, Defendant agrees not to contest or otherwise challenge the use,
validity, or registration of the CHICAGO MIXMark in the United States, and will not,
directly or indirectly, aid or assist any other persons or entities in doing the same. This
provision shall not prevent Defendant from responding to written discovery requests or
subpoenas, complying with court orders, or complying with any other obligations arising
under the Federal Rules of Civil Procedure. Defendant acknowledges and agrees that
Plaintiff has priority to use its CHICAGO MIXMark in the United States in connection
with popcorn and any good or service related to popcorn.
7.

So long as Defendant complies with the terms of this Final Judgment on

Consent, Plaintiff will not commence any civil action or institute any other proceeding
against Defendant for trademark infringement, trademark dilution, or unfair competition
arising out of matters occurring on or prior to the date of this Final Judgment on Consent.
In the event that Plaintiff determines that this Final Judgment on Consent is being
breached, Plaintiff shall send written notice to Defendant of the breach and Defendant
shall have fourteen (14) calendar days to cure the breach (the "Cure Period").

If

Defendant fails to cure the breach within the Cure Period, Plaintiff may then file with this
Court a motion to enforce this Final Judgment on Consent and/or the Settlement
Agreement. The prevailing party in any motion to enforce or other similar legal action
3

CASE 0:14-cv-03122-RHK-FLN Document 14 Filed 12/02/14 Page 4 of 6

arising out of a breach of this Final Judgment on Consent and/or the Settlement
Agreement shall be reimbursed its reasonable costs and expenses, including attorneys'
fees, for such suit or action and any resulting appeal.
8.

This Court shall retain jurisdiction over the parties for the purpose of

enforcing this Final Judgment on Consent and the Settlement Agreement. In all other
respects, this civil action is dismissed with prejudice, with each party to bear its own
costs and expenses.
LET JUDGMENT BE ENTERED ACCORDINGLY.
Dated: ------

,2014
The Honorable Richard H. Kyle
United States District Court Judge

CASE 0:14-cv-03122-RHK-FLN Document 14 Filed 12/02/14 Page 5 of 6

Entry of#lef()regoing

Final

iuAgment6tI Consent

is hereby consented to:

:7;:;:;k~Lfttn13

Dated:~.2014

By~OfC)-

.ItsJgi5I1:::'NT

Dated:

11.\'

.. ,2014'

DavidA:.pavellpoJ,1; #2'85109"
ET:in;O:.;DMllgan~
#3~4$o.\ .'..
3500;CapellaTower
225 SOllth Sixth Street
lvllilneapolis; MN55402
Tel: (612) 604-6400
Fax: (612) 604;.6800Attorneys for Candyland; Inc. ,

. CAMMELCliISp!Ul.
sl
By:

lts: __ ~---------------

. BAKER & MCKENZIE tLP

/$---_,..------~----

.John C. Filosa ;

3()OEastRandolph Street Suite'SOOO

-Chicago, lUm,ois 60601
. >TeJ: (312) (j81-6S80
. Fax: (312) 69S..,?153
Attorneys/or CaramelilrispLLC

967$684v2

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CASE 0:14-cv-03122-RHK-FLN Document 14 Filed 12/02/14 Page 6 of 6

Entry of the foregoing Final Judgment on Consentis hereby consented to:

CANDYLAND, INC.
Dated:

~, 2014

sl
By:

Its;

WINTHROP & WEINSTINE, P.A.

Dated:

..........
, 2014

sl
David A. Davenport, #285109
Erin O. Dungan, #386430
3500 Capella Tower
225 South Sixth Street
Minneapolis, MN 55402
Tel: (612) 604-6400
Fax: (612) 604-6800
Attorneys for Candyland, Inc.
CruSPLLC

Dated: bee f.M~er-

l ,2014

.~

By:

Its:

SCbi SChcoojeV
MaVlQ .Jf

QhllC

Filosa

30Q . st Randolph Street, Suite 5000

cago, Illinois 60601
Tel: 012) 681-6580

Fax: (312) 698-2153

Attorneys for Carameltlrisp LLC
9618684\'2