Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 1 of 12 Page ID #:966
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`DOUGLAS N. MASTERS (pro hac vice)
`dmasters@loeb.com
`LOEB & LOEB LLP
`321 N. Clark St., Suite 2300
`Chicago, IL 60654
`Telephone: 312.464.3100
`Facsimile: 312.464.3111
`
`KYLE R. PETERSEN (SBN 307483)
`kpetersen@loeb.com
`LOEB & LOEB LLP
`10100 Santa Monica Blvd., Suite 2200
`Los Angeles, CA 90067
`Telephone: 310.282.2000
`Facsimile: 310.282.2200
`
`Attorneys for Plaintiff
`WM. WRIGLEY JR. COMPANY
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
` Case No.: 5:21-cv-00777 JWH
`(SHKx)
`
`Assigned to Hon. John W. Holcomb
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`WM. WRIGLEY JR. COMPANY, a
`Delaware corporation,
`
`Plaintiff,
`
`
`v.
`
`ROBERTO CONDE d/b/a
`2020EDIBLEZ, an individual; JOEL
`LEDESMA d/b/a INLAND EMPIRE
`420 SUPPLY, an individual; JESSICA
`MOHR, an individual; STEVEN
`MATTA d/b/a OC 420 COLLECTION,
`an individual; DOE 1 d/b/a GASBUDS;
`DOE 2 d/b/a CANNABIS 420
`SUPPLY; and DOES 3 through 10,
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`Defendants.
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`FINAL JUDGMENT BY
`CONSENT UNDER RULE 54(b),
`INCLUDING PERMANENT
`INJUNCTIVE RELIEF RE:
`DEFENDANT STEVEN MATTA
`D/B/A OC 420 COLLECTION
`
`
`
`
`Complaint Filed: May 3, 2021
`Trial Date:
`October 31, 2022
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`
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`Loeb & Loeb
`A Limited Liability Partnership
`Including Professional
`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 2 of 12 Page ID #:967
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`This matter having come before the Court for the entry of Final Judgment
`against defendant Steven Matta d/b/a OC 420 Collection (the correct spelling of
`which, as stated in his answer [Dkt. 35], is Stephan Mata) (“Mata”), with the
`consent of plaintiff Wm. Wrigley Jr. Company (“Wrigley”) and Mata (Wrigley and
`Mata are collectively referred to herein as the “Parties,” and each individually as a
`“Party”), in accordance with Rule 54(b) of the Federal Rules of Civil Procedure, it is
`ORDERED, ADJUDGED, and DECREED as follows:
`1. Mata has been properly served and consents to the Court exercising
`personal jurisdiction over him. Mata waives all defenses of lack of jurisdiction over
`his person, improper venue, insufficiency of process, and insufficiency of service of
`process.
`2.
`This Court has subject matter jurisdiction over this action.
`3.
`The Parties agree to submit to the jurisdiction of this Court to enforce
`the provisions of this Stipulation and Final Judgment by Consent worldwide.
`4.
`Plaintiff Wrigley is a Delaware corporation with its principal place of
`business at 1132 West Blackhawk Street, Chicago, Illinois 60642.
`5.
`Defendant Mata is an individual residing in Orange County, California
`and has at all relevant times directed and controlled the complained of activities by
`the business known as OC 420 Collection (“OC420”), which conducts its operations
`through the website located at https://oc420collection.com.
`6. Wrigley is a recognized global leader in confections and, together with
`its affiliates, offers a wide range of product offerings including gum, mints, and
`candies. Wrigley markets products under dozens of well-known, distinctive, and
`famous brands, including SKITTLES®, STARBURST®, LIFE SAVERS®,
`DOUBLEMINT®, and JUICY FRUIT®, to name a few.
`7. Wrigley and its predecessors have long marketed candy and related
`products under the famous SKITTLES® mark and trade dress, which features,
`among other things, the word mark SKITTLES® in white block lettering, distinctive
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`Including Professional
`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 3 of 12 Page ID #:968
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`rainbow designs, distinctive candy-coated lentils with an “S” imprinted thereon, and
`a cascade design of these candy lentils (hereinafter referred to as the “Skittles Trade
`Dress”), examples of which are shown below:
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`Loeb & Loeb
`A Limited Liability Partnership
`Including Professional
`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 4 of 12 Page ID #:969
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`8.
`For 50 years, Wrigley and its predecessors-in-interest have
`continuously used the SKITTLES® mark to advertise, promote, and sell candy
`throughout the United States.
`9. Wrigley has earned billions of dollars in revenues from the sale of
`SKITTLES® candy in the United States. Many millions of people throughout the
`country have purchased or consumed SKITTLES® candy. In fact, SKITTLES®
`candy has been the best-selling non-chocolate candy in the United States for years.
`10. Wrigley has invested many millions of dollars to promote SKITTLES®
`candy. Wrigley’s advertisements and commercials for SKITTLES® have been seen
`by many millions of people nationwide. Wrigley advertises SKITTLES® candy
`during the Super Bowl and other highly watched events.
`11. Based on the wide-spread and long-standing use and recognition of the
`SKITTLES® brand, Wrigley enjoys extensive trademark rights in the SKITTLES®
`mark and the Skittles Trade Dress.
`12. Wrigley owns numerous federal registrations for its SKITTLES® mark
`and the Skittles Trade Dress, including, but not limited to, U.S. Reg. Nos.
`1,221,105; 2,535,714; 4,377,303; and 4,983,664 (such federal registrations,
`collectively with the common law trademark rights in the SKITTLES® mark and
`Skittles Trade Dress, are hereinafter referred to as the “SKITTLES® Mark and
`Trade Dress”).
`13. Similarly, Wrigley and its predecessors have long marketed candy and
`related products under the famous STARBURST® mark and trade dress, which
`features, among other things, the word mark STARBURST® in stylized lettering
`and distinctive wrappers with an “S” imprinted thereon (hereinafter referred to as
`the “Starburst Trade Dress”), examples of which are shown below:
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`A Limited Liability Partnership
`Including Professional
`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 5 of 12 Page ID #:970
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`14. For 50 years, Wrigley and its predecessors-in-interest have
`continuously used the STARBURST® mark to advertise, promote, and sell candy
`throughout the United States.
`15. Wrigley has earned billions of dollars in revenue from the sale of
`STARBURST® candy in the United States. Many millions of people throughout
`the country have purchased or consumed STARBURST® candy.
`16. Wrigley has invested many millions of dollars to promote
`STARBURST® candy. Wrigley’s advertisements and commercials for
`STARBURST® have been seen by many millions of people nationwide.
`17. Based on the wide-spread and long-standing use and recognition of the
`STARBURST® brand, Wrigley enjoys extensive trademark rights in the
`STARBURST® mark and the Starburst Trade Dress.
`18. Wrigley owns numerous federal registrations for its STARBURST®
`mark and trade dress, including, but not limited to, U.S. Reg. Nos. 1,000,007;
`1,545,544; 4,179,436; 4,268,392; and 4,625,960 (such federal registrations,
`collectively with the common law trademark rights in the STARBURST® mark and
`
`Loeb & Loeb
`A Limited Liability Partnership
`Including Professional
`Corporations
`
`
`
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 6 of 12 Page ID #:971
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`Starburst Trade Dress, are hereinafter referred to as the “STARBURST® Mark and
`Trade Dress”).
`19. Each of the above-referenced trademark registrations are valid,
`subsisting, and in full force under 15 U.S.C. § 1065, and, together with Wrigley’s
`extensive common law rights, make the SKITTLES® Mark and Trade Dress and
`STARBURST® Mark and Trade Dress (collectively, the “Wrigley Trademarks”)
`valuable assets owned by Wrigley.
`20. Mata, doing business as OC420, is engaged in the marketing, offering
`for sale, sale, and distribution of edible cannabis candy products.
`21. Mata used the Wrigley Trademarks, without authorization or license, in
`the marketing of his products.
`22. Specifically, Mata has marketed, offered for sale, sold, and distributed
`the products online via the OC420 website, located at https://oc420collection.com,
`which violate Wrigley’s rights in the Wrigley Trademarks. Those products include:
`(1) “Medicated Skittles” (sold in four flavors: “Original,” “Sour,” “Wild Berry,” and
`“Seattle Mix”); (2) “Medicated Cannaburst Gummies” (sold in three flavors:
`“Original Sours,” “Berry Sours,” and “Tropical”); and (3) a “Munchies Edible Deal”
`which includes a package of the “Cannaburst Gummies.” These products,
`collectively referred to as the “OC420 Infringing Products,” are pictured below as
`they appear or appeared on OC420’s website:
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`A Limited Liability Partnership
`Including Professional
`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 7 of 12 Page ID #:972
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`A Limited Liability Partnership
`Including Professional
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 8 of 12 Page ID #:973
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`23. With respect to the SKITTLES® Mark and Trade Dress, Mata adopted
`and used the SKITTLES mark in plain text and white block lettering, distinctive
`rainbow designs, images of candy-coated lentils with an “S” imprinted thereon,
`and/or a design featuring such candy lentils cascading along an upside-down
`rainbow, marks and trade dress that are identical to, substantially indistinguishable
`from, and/or imitations of the SKITTLES® Mark and Trade Dress and the marks
`and logos in the SKITTLES® registrations.
`24. With respect to the STARBURST® Mark and Trade Dress, Mata
`adopted and used the “Cannaburst” mark with stylized lettering and images of
`square candies with a stylized “S” imprinted thereon, marks and trade dress that are
`identical to, substantially indistinguishable from, and/or imitations of the
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`Loeb & Loeb
`A Limited Liability Partnership
`Including Professional
`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 9 of 12 Page ID #:974
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`STARBURST® Mark and Trade Dress and the marks and logos in the
`STARBURST® registrations.
`25. Mata took such actions with full knowledge of, and in willful disregard
`of, Wrigley’s intellectual property rights, and with the intent to take advantage of
`the good will that Wrigley has developed in the Wrigley Trademarks.
`26. Mata’s complained-of acts above constitute the following:
`a.
`Counterfeiting of the Wrigley Trademarks in violation of 15
`U.S.C. § 1114;
`b.
`Infringement of the Wrigley Trademarks in violation of 15
`U.S.C. §§ 1114 and 1125(a);
`c.
`Dilution of the inherently distinctive and famous Wrigley
`Trademarks in violation of 15 U.S.C. § 1125(c);
`d.
`Unfair competition and deceptive acts and practices in violation
`of 15 U.S.C. § 1125(a)(1)(A);
`e.
`Unlawful, unfair, and/or fraudulent acts or business practices,
`including unfair, deceptive, untrue, and misleading advertising, in violation of
`California Business and Professions Code §§ 17200, et seq.;
`f.
`Dilution of the inherently distinctive and famous Wrigley
`Trademarks in violation of California Business and Professions Code
`§ 14247;
`g.
`Unfair competition and deceptive acts and practices in violation
`of common law.
`27. This is an exceptional case in accordance with 15 U.S.C. § 1117.
`28. Mata, in his capacity both as an individual and as the proprietor of
`OC420, and his/its respective officers, agents, servants, employees, successors,
`assigns, attorneys, and all other persons acting in concert or in participation with or
`affiliated with Mata and/or OC420, jointly and severally, are permanently enjoined
`and restrained:
`
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`A Limited Liability Partnership
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`Corporations
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 10 of 12 Page ID #:975
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`a.
`From directly or indirectly engaging in any further trademark
`counterfeiting, trademark infringement, trademark dilution, unfair
`competition, or deceptive business practices relating to the Wrigley
`Trademarks, including the SKITTLES® Mark and Trade Dress and the
`STARBURST® Mark and Trade Dress, or any other trademarks or trade
`dress owned by Wrigley;
`b.
`From making, manufacturing, advertising, marketing, offering,
`selling, or distributing any products that feature, copy, imitate, simulate, or
`are confusingly similar to, or are likely to dilute the distinctive nature of, or
`tarnish the goodwill of, the Wrigley Trademarks, including the SKITTLES®
`Mark and Trade Dress and the STARBURST® Mark and Trade Dress, or any
`other trademarks or trade dress owned by Wrigley;
`c.
`From representing by any means whatsoever, directly or
`indirectly, that any products sold or services rendered by Mata and/or OC420
`are associated with, sponsored by, licensed by, and/or connected or affiliated
`with Wrigley, or from otherwise taking any action likely to cause confusion,
`mistake, or deception on the part of purchasers as to the origin or licensing of
`Mata’s and/or OC420’s products or services;
`d.
`From otherwise competing unfairly with Wrigley in any manner
`or engaging in deceptive conduct;
`e.
`From continuing to perform in any manner whatsoever any of the
`acts complained of in the Complaint as to Wrigley; and
`f.
`From causing, engaging in, or permitting others to do any of the
`aforesaid acts.
`29. Within thirty (30) days of the entry of this Final Judgment, Mata shall
`file with the Court and serve on counsel for Wrigley a sworn written statement as
`provided in 15 U.S.C. § 1116(a) setting forth in detail the manner and form in which
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`A Limited Liability Partnership
`Including Professional
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 11 of 12 Page ID #:976
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`Mata, in his capacity as an individual and as the proprietor of OC420, has complied
`with the permanent injunction.
`30. Mata, in his capacity as an individual and as the proprietor of OC420,
`shall immediately recall from all distribution channels any products, packaging,
`advertising, and promotional materials bearing or infringing on the Wrigley
`Trademarks, including the SKITTLES® Mark and Trade Dress, STARBURST®
`Mark and Trade Dress, or any other trademarks or trade dress owned by Wrigley.
`31. Mata, in his capacity as an individual and as the proprietor of OC420,
`shall immediately deliver to Wrigley’s counsel for destruction any products,
`packaging, advertising, and promotional materials bearing or infringing on the
`Wrigley Trademarks, including the SKITTLES® Mark and Trade Dress,
`STARBURST® Mark and Trade Dress, or any other trademarks or trade dress
`owned by Wrigley, pursuant to 15 U.S.C. § 1118. Any electronic equivalents of
`such materials shall be immediately deleted.
`32. Mata, in his capacity as an individual and as the proprietor of OC420,
`shall immediately cease sales of the products described above on the OC420
`website, located at https://oc420collection.com, and in any other locations on the
`Internet, including other websites owned or operated by Mata or any of his affiliates,
`and any social media platforms owned or operated by Mata or any of his affiliates.
`33. Mata shall immediately account for and disgorge to Wrigley all profits
`wrongfully derived by his unlawful conduct and pay to Wrigley:
`a.
`All monetary actual and/or statutory damages sustained and to be
`sustained by Wrigley as a consequence of Mata’s unlawful conduct,
`including, without limitation, statutory damages in the amount of $2,000,000
`per counterfeit mark per type of goods sold, offered for sale, or distributed
`pursuant to 15 U.S.C. § 1117(c)(2), lost profits, and corrective advertising
`damages;
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`Case 5:21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 12 of 12 Page ID #:977
`Case
`5[21-cv-00777-JWH-SHK Document 85 Filed 07/19/22 Page 12o0f12 Page ID #:977
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`b.
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`All profits, gains, and advantages obtained by Mata from his
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`unlawful conduct;
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`c.
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`Exemplary damages, including treble damagesresulting from
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`Mata’s unlawful conduct;
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`d.
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`e.
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`Pre-judgmentinterest on all damages; and
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`Wrigley’s costs and disbursements in this action, includingits
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`reasonable attorneys’ fees.
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`34. Mata’s wrongful conduct is deemed to be willful and malicious andthis
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`judgmentis, therefore, non-dischargeable in the eventhefiles for bankruptcy,
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`pursuant to 11 U.S.C. § 523(a)(6).
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`35.
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`The Parties shall comply with the termsof the confidential settlement
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`agreemententered into by and betweenthe Parties and executed concurrently with
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`their stipulation to this Final Judgment by Consent (the “Settlement Agreement’),
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`the terms of which are incorporated herein byreference.
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`36.
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`This Final Judgment by Consentshall have no effect on any of
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`16]| Wrigley’s claims against any other defendants to this action besides Mata.
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`17|| Notwithstanding the foregoing, this Court shall retain jurisdiction overthis action,
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`18]|
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`19}|
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`as it relates to Mata, to enforce this Final Judgment by Consentand the termsof the
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`Settlement Agreement.
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`IT IS SO ORDERED.
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`21
`22|] Dated:
`23
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`_JUY!9
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`2022
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`
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`UNITED STATES DISTRICTJUDGE
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