Sazerac Brands sells flavored liquor under the name DR. MCGILLICUDDY’S, Sazerac alleges that DR. MCGILLICUDDY’S is particularly popular in Massachusetts, with its “Mentholmint” flavor being the most popular shot in the Commonwealth across all distilled spirits (it also comes in Apple Pie, Butterscotch, Cherry, Coffee, Peach, Peppermint, Raw Vanilla, Root Beer and Wild Grape, for the discriminating palate). Sazerac uses a design made up of a portrait of Dr. McGillicuddy, sporting a moustache and bowtie against a sepia background, and has used this design widely on the bottles themselves, as well as in their web presence, tap handles, signs, stand up displays, and the like. A considerable amount of their marketing material emphasizes the moustache, although a number of different moustache styles are employed. Sazerac owns a registration on a design mark that depicts said doctor sitting at a small table topped with bottles of spirits, with his arm around a dog. Sazerac does not, apparently, have a registration on the actual design used on their bottles, but asserts common law rights in that design, as well as a state registration in Massachusetts.
Sazerac asserts that MS Walker recently began selling a similar product, MAURICE’S distilled spirits in “Mentholated Mint” and “Root Beer” flavors, using a confusingly similar mark of a portrait of a turn-of-the-century style man with a moustache and bowtie against a sepia background. Sazerac asserts that these similarities, along with the use of other turn-of-the-century elements, use of the design on a product bearing a possessive personal name that begins with the letter “M,” and use of an uncommon “menthol” formative flavor name, infringes on the registered design mark, on the Massachusetts registration, and on Sazerac’s common law trademark rights, and also claims dilution under M.G.L. ch. 110H § 13.
FMR and Seaport Hotel Limited Partnership, collectively identified as “Fidelity,” filed suit against Omni Hotel and several other entities involved with construction of a new Boston waterfront hotel. Fidelity opened the Seaport Hotel twenty years ago, at a time when the south Boston waterfront consisted of little beyond parking lots, empty buildings and seafood shacks – I recall staying there when it first opened, and how little there was around. The hotel is located just down the street from the John Joseph Moakley Federal Courthouse, which opened in 1999, and the World Trade Center, built in the mid-80’s. The hotel has been named one of the greatest in America by Forbes, and has received numerous awards. The waterfront has since seen phenomenal levels of growth, in office space, apartment buildings, restaurants and the like, with the Seaport Hotel serving as a cornerstone – the complaint suggests that the “Seaport District,” as the area became known, took this moniker from the Seaport Hotel. Recently, Omni Hotel announced plans to build a hotel a block away from the Seaport Hotel, with an announced name of “Omni Boston Seaport Hotel.” Fidelity contends that this mark is confusingly similar to their incontestable SEAPORT HOTEL and SEAPORT trademarks, and could only have been chosen to trade upon the fame, reputation and good will that resides in its mark. Fidelity believes that the Omni name will suggest that Omni bought the Seaport Hotel, much in the way Omni renamed the “Parker House” as the “Omni Parker House” when it was acquired. In addition to trademark infringement, Fidelity brings claims for unfair competition and dilution, and seeks preliminary and permanent injunctive relief, monetary damages, and fees and costs.
In a case that has some potentially interesting legal questions, Hallmark sued waste management and recycling company Northstar and co-defendant Square Peg Logistics, LLC, for trademark infringement and dilution for the unauthorized sale of actual Hallmark products. Hallmark owns uncontestable registrations for the HALLMARK mark and the HALLMARK mark & crown design mark. In 2012, Hallmark entered into an Enterprise Agreement with Northstar by which Northstar would pick up for destruction by recycling Hallmark products that were deemed unfit for sale. When Hallmark decided to close its Enfield, Connecticut distribution center, it had Northstar pick up millions of cards and other goods bearing the HALLMARK marks for recycling. Hallmark alleges that, instead of destructively recycling the products as required, Northstar secretly sold 73 truckloads of HALLMARK-branded products to Square Peg, for a fraction of the fair market price, and that Square Peg subsequently sold about a third of the products to third-party distributors. Hallmark initially discovered the resale of these products by Dickens, Inc., of Long Island, NY. In litigation against Dickens, Hallmark discovered that the products had come from Square Peg, who, it subsequently sued. The parties entered into a consent decree in June 2017, enjoining Square Peg from further sales of Hallmark products pending the outcome of the Dickens litigation, and gave Hallmark the right to periodically inspect Square Peg’s warehouse. After a January inspection revealed further product movement, Hallmark filed the instant suit seeking immediate destruction of the remaining 50 or so truckloads of products in Square Peg’s possession. In addition to the Lanham Act charges, Hallmark asserts breach of contract against Northstar. Hallmark seeks destruction of the infringing products, as well as injunctive and monetary relief and attorney’s fees. The case is in the Springfield division, and is before Springfield native Judge Mastroianni.