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[candbtuning]

LAW OFFICES
HOWARD, PHILLIPS & ANDERSEN
GREGORY D. PHILLIPS   560 East 200 South, Suite 300   Telephone: (801) 366-7471
Direct Dial: (801) 366-7709   Salt Lake City, UT 84102   Facsimile: (801) 366-7706
E-Mail: gdp@hpalaw.com
January 7, 2008
VIA E-MAIL (email) and FIRST CLASS MAIL
(name) C and B Tuning address
Re:      C AND B TUNING — Infringement & Dilution of VW and Audi Trademarks Dear (name):
This law firm represents Volkswagen of America, Inc. ("VWoA") in trademark enforcement actions. VWoA is a subsidiary of Volkswagen AG and the exclusive U.S. importer of cars manufactured by Volkswagen AG and Audi AG (collectively "VW"). As such, VWoA is charged with protecting the trademarks associated with VW automobiles.
VW takes protection of its trademark rights very seriously, and has obtained preliminary and permanent injunctions against infringers who use VW trademarks without authorization.
The VW EMBLEM®, AUDI RINGS®, and AUDI STYLIZED® design trademarks or logos (collectively the "VW Marks") are duly registered trademarks in the United States that belong to VW. Commercial use of the VW Marks, or any confusingly similar variations thereof, without the express written consent of VW violates state and federal law7, is misleading to the public, and constitutes a misappropriation of the goodwill and reputation developed by VW.
You are violating VW's trademark rights by using the VW Marks on your business cards without VW's authorization. The law is well settled that one person or entity may not use the trademarks of another without authorization. See, e.g., Volkswagen AG v. Uptown Motors. 1995 WL 605605 (S.D.N.Y. 1995) (enjoining use of VW EMBLEM® and AUDI RINGS® design trademarks in business telephone directory ads); Harlev-Davidson. Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) (enjoining unauthorized use of manufacturer's "bar-and-shield" logo in signage and in advertisements); Harlev-Davidson Motor Co. v. Iron Eagle of Central Florida, Inc., 973 F. Supp. 1421 (M.D. Fla. 1997) (enjoining use of "winged logo" in advertisements and signage). An image depicting the unauthorized use of the VW EMBLEM®, AUDI RINGS®, and AUDI STYLIZED® design trademarks or logos on your business cards is shown below for your reference:Benjamin Bonner January 7, 2008 Page 2
 
 
 
Audi
 
C and B Tuning ,    (address)
Sfjeciateing in VW and AtKN repair ifti wer f 5 pars 01 combined wpsttSfiB: B&n Banner
 
Unauthorized use of the VW EMBLEM®,
AUDI RINGS®, and AUDI STYLIZED®
   design trademarks   
 
Compare to U.S. Registered Trademark Nos. 3,032,408 and 2,073,484
 
This letter is intended to secure your voluntary agreement to cease from violating VW's intellectual property rights. VW requires that you sign and return the below-attached Agreement to our office by no later than January 23,2008. If we have not received a signed copy of the Agreement from you by the close of business on that day, including the required information and payment, we will infer that you will not resolve this matter voluntarily and we will advise VW to file a complaint against you.
This letter is without prejudice to the rights of VW, all of which are expressly reserved.
Should you have any questions concerning VW's position in this matter, please contact Jason Eves in our office at 801-366-7709.
Very truly yours,
 
 
 
Gregory D. Phillips
 
GDP:jpe
cc:       Volkswagen of America

(name) January 7, 2008 Page3
AGREEMENT
By execution of this Agreement, Christopher Cox and Benjamin A. Bonner, individually and as owners of C and B Tuning (collectively "CAB"), agree to permanently and immediately cease and desist from all unauthorized uses of copyrights, trademarks, and intellectual property-owned by Volkswagen AG and Audi AG (collectively the "VW Marks") in their products, services, advertisements, business cards, promotional literature, promotional telecasts, broadcasts, and signage. on the Internet, or otherwise, in connection with the advertisement or sale of any product, part, good, or service.
Specifically, by way of illustration and without limiting the general agreement expressed above, CAB agree that, on or before January 23,2008, they will:
(1)   cease using the VW Marks in any manner except as outlined in VW's Trademark
Usage Guide, attached.
(2)   provide evidence to counsel for VW that any signage, business cards, or
advertising that is not currently in conformance with VW's Trademark Usage Guide has been
changed to comply with this Agreement.
(3)   pay VW damages and attorney fees in the amount of $2,500, by cashier's check,
made payable to Volkswagen of America, Inc.
CAB agree and acknowledge that any violation or breach of this Agreement will cause irreparable harm to VW, and that VW will be entitled to entry of both a preliminary and permanent injunction against CAB for any violation of this Agreement, as well as any other remedy allowed by law. CAB further agree that if they breache this Agreement they will pay all costs incurred by VW in enforcing this Agreement including reasonable attorney fees.
CAB agree that the terms set forth in this Agreement are binding on CAB and their partners, employees, agents, and any other persons or entities acting for or in concert with CAB. CAB further agree that they shall not participate in or otherwise aid or assist any other person or entity in carrying out any acts that CAB covenant not to do in the paragraphs set forth above.
AGREED TO:
C AND B TUNING
Signed:      
(owner name), Individually and as Co-Owner of C and B Tuning
Signed:      
(co owner name), Individually and as Co-Owner of C and B Tuning
Date:
Trademark Usage Guide
Volkswagen of America, Inc. ("VWoA") is a subsidiary of and the exclusive U.S. importer of cars manufactured by Volkswagen AG ("VWAG") and as such, VWoA is charged with protecting trademarks associated with those cars. VWAG or VWoA own and use the following words, letters and symbols, among others, as trademarks, service marks and trade names.
(NOTE: These are only examples; there is a long list of trademarks owned by VWAG and VWoA.)
 
 
Drivers wonted
s
The word:      VOLKSWAGEN The letters:      VW
The symbol consisting
of the letters VW
vertically arranged
within a circle:
The advertising tag
line with or without
the circle logo:
 

 

 

 
The vehicle names:
 
BEETLE, NEW BEETLE, JETTA,   PASSAT, GOLF, GTI, EUROVAN
 
 
 


The New Beetle logo:
The New Beetle Design
The classic Beetle Design
 
These marks have been registered or submitted for registration by VWAG or VWoA in the United States Patent and Trademark Office ("USPTO"). Several of these marks are registered in the color blue as well as black. These registrations cover not only the use of these marks in the color blue, but in any other color as well.
The numbers of the USPTO Principal Register registrations are: 617,131; 631,649; 653,695; 790,621; 791,311; 804,869; 808,381; 815,632; 819,297; 2,059,841. Other registered trademarks of VWAG in the USPTO include, but are not limited to: BEETLE 1,014,346; BUG 1,088,911; JETTA 1,176,044; PASSAT 1,468,206; GOLF 1,361,724; GTI 1,540, 381; EUROVAN 1,512,598.
VWoA will object to any use whatever of a trademark or service mark belonging to VWAG or VWoA and used as the name of, or as the means of identifying, any
business, Internet domain name, website, service or product not having its source in VWAG, one of its subsidiaries, or one of its licensees. Equally, objection will be raised to any use for these purposes of a part of any such mark (e.g. Volks), or of the likeness of a Volkswagen vehicle, or of any word or expression synonymous in the popular mind with Volkswagen as, for example, Bug or Beetle, as the name of or as the means of identifying any business, Internet domain name; website; the service, sale or repair of Volkswagen vehicles; or of parts or accessories for such vehicles. VWoA will also object to the use of the encircled VW logo as a decoration or link button on any Internet website not having its source in VWAG, one of its subsidiaries, or one of its licensees.
Examples of infringing and objectionable uses of Volkswagen trademarks are:
(1)   Use of a mark as part of a trade name, domain name, or corporate
name, such as Volks City; Old Volks Home; Volkswagen Center;
www.johnsvw.com; www.Ilovevolkswagens.com; or by a business specializing
in the sale or repair of Volkswagen products, The New Beetle Shop.
(2)   Use of the mark alone or set off from its background, or dominating its
surroundings by reason of size, color or style of lettering, such as a sign reading
VOLKSWAGEN.
(3)   Use of the mark as an adjective to qualify or designate services, as, for
instance, Volkswagen Sales.
(4)   Use of the mark as an adjective to qualify or designate services, as, for
instance, Volkswagen Service or Volkswagen Repair.
(5)   Use of the mark as an adjective to qualify or designate goods, as, for
instance, Volkswagen Parts, unless such goods have their source with or are
expressly licensed by VWAG.
On the other hand, VWAG does not want to interfere in any way with the right of any person engaged in the sale or repair of Volkswagen products to advise the public of this fact in a fashion that is not misleading. Accordingly, there is no objection to the use of Volkswagen (or its equivalent, the initials VW) provided all of the following conditions are met:
(a)   Volkswagen is used denotatively as part of an informational statement
referring to Volkswagen products, as, for instance, in We Sell Volkswagen
Automobiles; Repair of Volkswagen Vehicles; or Parts for Volkswagen Cars;
(b)   "Volkswagen" is not set out either alone or in type face, mounting,
spacing, illumination, format or material contrasting with or larger than the
surrounding text, nor in Memphis Bold lettering, nor in a color combination involving
blue; and
(c)   "Volkswagen" is not displayed in such a way that members of the
public are likely to regard it as a trade name or as pa
LICENSING
VWoA has a licensing program in place for enthusiast websites and clubs. If you fit these categories and are interested in being licensed, please visit us at www.vw.com to review the application requirements.
If you wish to manufacture products that include our trademarks, you must complete a merchandise license application and submit it directly to VWAG. To request a merchandise license application, please send your e-mail request to VWTrademarks@vw.com