Saturday, October 23, 1999

                          TRISTATE BUSINESS SUMMARY
 

Wendy's blocks firm from using its name
                          A Dallas company has been banned from using Wendy's
                  International trademark names on the Internet.

                          The fast-food hamburger chain had accused Beswick Adams Corp.,
                  of violating its trademark rights by registering Wendy's names
                  on the Internet. The company then tried to sell the names back
                  to Wendy's, Joseph Dreitler, a lawyer representing Wendy's, said.

                          The company, based in Dublin, Ohio, filed a lawsuit last
                  month in U.S. District Court. Both sides signed a consent
                  decree that bans Mr. Hofstadter and his company from using
                  the trademarks.

_____________________________________________________________

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

WENDY’S INTERNATIONAL, INC.
4288 West Dublin-Granville Road
Dublin, Ohio  43017
 
 

                      and

MARKDEL, INC.
200 West Ninth Street Plaza
Wilmington, Delaware  19899

                        Plaintiffs  Plaintiffs,

                    V.      Case No. 99-875

      Judge Smith
      Magistrate Judge King
BESWICK ADAMS CORPORATION
2409 Clark Street
Suite 404
Dallas, Texas  75204

                 and

BRENAN M. HOFSTADTER
2409 Clark Street
Apartment 404
Dallas, Texas 75204
                        Defendants.
  Defendants.
 

FINAL CONSENT JUDGMENT AND PERMANENT INJUNCTION
 

 Plaintiff, Wendy’s International, Inc. and Markdel, Inc. (both collectively referred hereafter as “Wendy’s”), and defendants, Beswick Adams Corporation and Brenan M. Hofstadter (both collectively referred hereafter as “Beswick”), have submitted to the Court the following stipulations of facts which are hereby approved and adopted by the Court as the Final Judgment in this matter.
A. Prior to the acts of Beswick complained of herein, Wendy’s has extensively used, advertised, franchised, licensed and marketed products and services, including, but not limited to food and beverages and restaurant and carry-out restaurant services, throughout the United States under or in connection with its inherently distinctive common law and registered Wendy’s trademarks, (collectively, the “Wendy’s Trademarks”).

B. Prior to the acts of Beswick complained of herein, Wendy’s owned valid and enforceable trademark rights in the Wendy’s Trademarks as for marketed, franchised and licensed products and services, including, but not limited to, food and beverages and restaurant and carry-out restaurant services.
 

 C. Wendy’s owns valid and subsisting registrations for its Wendy’s Trademarks in the United States Patent and Trademark Office (“PTO”), and Wendy’s registrations include:

a. WENDY’S OLD FASHIONED HAMBURGERS and design – Registration No. 935,109, registered May 30, 1972, for food and beverage restaurant and carry-out services;

b. WENDY’S – Registration No. 935,110, registered May 30, 1972, for food and beverage restaurant and carry-out services;
 

c. WENDY’S – Registration No. 1,297,495, registered September 25, 1984, for chili, deep-French fried potatoes, milk, salad dressing, taco salad, tossed salad and garden salad, namely, mixed vegetables salad, mixed fruit salad and mixed vegetable and fruit salad, for consumption on and off premises; and paper napkins, wrapping paper, and paper sacks; and carbonated and non-carbonated soft drinks, for consumption on and off premises; and fresh fruit and fresh vegetables, for consumption on and off premises; and hamburger sandwiches, fish sandwiches, bacon cheeseburger sandwiches, chicken sandwiches, coffee, tea, hot chocolate, condiments, namely, mustard, ketchup and taco sauce, vegetable based or dairy based soft frozen desserts, for consumption on and off premises;
d. WENDY’S and design – Registration No. 1,969,444, registered April 23, 1996, for restaurant services and carry out restaurant services.
 

D. Registration numbers 935,109; 935,110; and 1,297,495 are incontestable, which provides conclusive evidence of their validity under 15 U.S.C. § 1115(b).

E. Wendy’s has, since 1969, used as a trademark and service mark the word Wendy’s in connection with food and beverages and restaurant and carry-out restaurant services in a continuous fashion, such that the trademark Wendy’s when used in conjunction with such activities is a strong indicia of origin in Wendy’s.

F. Wendy’s has, since 1995, owned and used the domain name “wendys.com” as the address on the internet for Wendy’s home page where consumers and potential consumers can view information about Wendy’s and its goods and services offered under the Wendy’s Trademarks. The domain name Wendys.com  when used in conjunction with the good and services offered by Wendy’s is a strong indicia of origin in Wendy’s.

G. Long after Wendy’s registered its domain name, Wendys.com, Beswick    registered the domain names Wendys.org, WendysRestaurant.com, WendysRestaurants.com on February 19, 1999, and the registered the domain names WendysIntlInc.com and WendysSucks.com on February 20, 1999.
 

H. Beswick’s acts of registering the Wendy’s Trademarks in Beswick’s own name as domain names, and then offering to sell those domain names back to Wendy’s constitutes “cyberpiracy” on the part of Beswick as that term has been judicially used in Panavision Int'l, L.P. v. Toeppen,  141 F.3d 1316, 1318 (9th Cir. 1998).

I. Such registration of the Wendy’s Trademarks as domain names by Beswick, and Beswick’s attempt to sell such domain names back to Wendy’s constitutes trademark infringement under the Lanham Act, 15 U.S.C. § 1114(a) et seq.; false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a); and dilution of famous marks under the Lanham Act, 15 U.S.C. § 1125(c).
 

J. The Wendy’s Trademarks have great goodwill and are of tremendous value to Wendy’s, and large sums of money have been spent by Wendy’s and its authorized franchisees and licensees in advertising, marketing, promoting, and selling both products and offering services that use the Wendy’s Trademarks or suggest a sponsorship, affiliation or endorsement of products and services by Wendy’s.

K. Beswick, through its acts of registering the Wendy’s Trademarks as domain names and attempting to sell those domain names back to Wendy’s has infringed and diluted Wendy’s trademarks and service marks, and has competed unfairly with Wendy’s.
 
 
 

PERMANENT INJUNCTION

 This cause having come on for hearing and by and with the consent of the parties and the Court having been fully advised in the premises, it is hereby ORDERED, ADJUDGED, and DECREED that:
1. This Court has jurisdiction over the parties to and subject matter of this action.

2. Beswick, their agents, partners, servants, employees, successors, representatives, assigns and those persons in active consort or participation with them are permanently enjoined and restrained directly or indirectly from:

(a) using any of Wendy’s Trademarks for commercial purposes, specifically including, but not limited to, registering them or any variation of the Wendy’s Trademarks, including any term that includes the words “wendys” or “wendy’s” as domain names”;

(b) doing any other act or thing likely to induce the belief that Defendant’s business or products are in any way legitimately connected with, sponsored, affiliated, licensed, or endorsed by Wendy’s;

(c) doing any act or thing likely to dilute the distinctiveness of Wendy’s’s Trademarks or likely to tarnish the goodwill associated with the Wendy’s Trademarks;

(d) using any of Wendy’s’s Trademarks for goods or services, or on the internet, or as domain names, e-mail addresses, meta tags, invisible data, or otherwise engaging in acts or conduct that would cause confusion as to the source, sponsorship or affiliation of Wendy’s with Beswick.
 

3. Within ten days of the entry of this Judgment, Beswick shall provide the court with an Affidavit stating that:

 Beswick have abandoned, canceled or otherwise given up any and all claims (but not transfer to any third party) to and domain names the include the Wendy’s Trademarks or variations of the Wendy’s Trademarks that include the word “wendys”.

4. Within ten days of the entry of this Judgment, Beswick shall remove from his web sites, and never again use, any and all materials, photographs and depictions set forth below; as well as any other material of an infringing, diluting, tarnishing, or unfair nature which utilize Wendy’s’s Trademarks, including, without limitation, the following:

5. Both Wendy’s and Beswick shall pay their own attorney’s fees and costs.

6. Jurisdiction over this cause is retained by this Court for the sole purpose of enforcement of compliance herewith, and for further orders and directions as may be necessary or appropriate from the construction and effectuation of this Final Consent Judgment and Permanent Injunction.

7. Except for the relief herein granted, the above identified civil action, including all claims, counterclaims, and affirmative defenses which Plaintiff or Defendant have, could have or should have accorded therein, is hereby dismissed with prejudice; and
 

8. Plaintiff and Defendant have waived notice of the entry of this Final Consent Judgment and Permanent Injunction and the right to appeal therefrom or to test its validity.
 
 

Dated:       Entered:
         United States District Judge George Smith

SO STIPULATED:

 BESWICK ADAMS CORPORATION
 

By
Title
 

BRENAN M. HOFSTADTER

_____/s/ _________________________
 

Wendy’s International, Inc.

____/s/__________________________
By
Title

Markdel, Inc.

______________________________
By
Title
 
 

APPROVED AS TO FORM:
 
 

Dan Thompson

Thompson & Howison
High Point Centre – Suite 995
1225 Greenville Ave.
Dallas, TX 75243
(972) 680-6069
Fax: (972) 479-0215

Counsel for Beswick Adams Corporation and Brenan M. Hofstadter
 

_____________________________
Joseph R. Dreitler
Trial Counsel (0012441)
Vorys, Sater, Seymour and Pease LLP
52 East Gay Street
Columbus, Ohio  43216-1008
(614) 464-6383
Fax: (614) 464-6350
Counsel for Wendy’s International, Inc. and Markdel, Inc.