Spark451 Inc. v. 451 Marketing, LLC d/b/a Agency 451 (18-cv-10833).

Marketing and communications company Spark451 sued Agency 451 for trademark infringement and breach of a trademark co-existence agreement.  Spark451 provides services under the “SPARKS451” mark to college and university clients that allow the schools to reach potential students, and has been using the mark in 2011.  The Defendant, which began as “451 LLC” in 2004 and changed its name to “451 Marketing, LLC” in 2007, sought to cancel the “SPARK451” registration in 2015.  The proceeding ended with the parties executing a co-existence agreement whereby 451 Marketing agreed not to use any mark consisting solely of or ending with “451” and each party agreeing to take all reasonable steps to avoid confusion as to the source or origin of their services.  Despite this, 451 Marketing changed its name to “Agency 451” in April 2017, and changed its website to http://www.agency451.com.  Spark451 asserts that this change breached both of those clauses, and that the nature and potential customers of the two businesses are sufficiently similar, and the names and commercial appearance of the marks so similar, that the use of “Agency 451” infringes the “SPARK451” mark.  Spark451 seeks injunctive and monetary relief as well as a finding of willful infringement, treble damages and reasonable attorney’s fees and costs.  The case is before Judge Stearns.

Crosby Legacy Company, LLC d/b/a Philip Crosby Associates v. TechnipFMC plc (18-cv-10814).

Crosby Legacy offers quality consulting services that employ the teachings of its founder, Philip J. Crosby, a pioneer in the field.  Crosby Legacy consulted for energy company FMC under an agreement executed in 2014 which permitted FMC to utilize the Crosby materials company-wide, including copyrighted works and the use of three Crosby trademarks – Absolutes of Quality Management™, Absolutes of Quality™, and Price of Nonconformance™.  The 2014 Agreement restricted continued use of the Crosby materials should FMC experience a change in control.  FMC subsequently merged with Technip S.A., creating defendant company Technip FMC in January 2017. Pursuant to the change of control provisions, Crosby Legacy sought to negotiate an agreement with the new entity to allow them continued use of the Crosby materials.  TechnipFMC expressed a strong interest in continuing the relationship, and according to Crosby Legacy, a $2.3 million agreement was reached via a string of e-mails in May 2017, needing only to be memorialized and executed.  TechnipFMC dragged its feet on the specific language to be included in the new agreement, and ultimately announced in November 2017 that it was no longer interested in working with Crosby Legacy.  At that point, TechnipFMC had used the Crosby materials for eleven months without paying, in violation of the 2014 Agreement’s change of control language.  Crosby accuses TechnipFMC of breaching the 2014 Agreement and of having formed, and then breached, the 2017 Agreement, and also brings claims of breach of the implied covenant of good faith and fair dealing, fraud, 93A claims, trademark and copyright infringement, and unjust enrichment.  The case is before Judge Wolf.

Schawbel Technologies LLC v. The Heat Factory USA, Inc. (18-cv-10227).

Schawbel filed suit against The Heat Factory, accusing The Heat Factory of violating an Asset Purchase Agreement and patent license agreement. According to the complaint, the Heat Factory had agreed to buy and resell Schawbel’s heated insole inventory, to be paid in monthly installments.  When The Heat Factory missed some payments, Schawbel exercised its right to terminate the agreements.  Following termination, Schawbel says The Heat Factory continued selling the inventory.  Schawbel asserts breach of contract and willful infringement of eleven utility patents and eight design patents, as well as declaratory judgment that its termination of the APA and license agreement were legitimate.