Three Ten Merchandising, a concert merchandising company for Beyonce, sued unnamed persons and corporations to preempt sales of counterfeit merchandise bearing any of Beyonce’s registered or pending trademarks – BEYONCE, BEYHIVE, BEYGOOD, #BEYGOOD, and YONCE – at or around Gillette Stadium during her August 5th concert. Three Ten seeks an injunction and an order that U.S. Marshalls and local and state police seize and impound any such merchandise. This preemptive, effectively ex-parte mechanism is permitted under 1984 amendments to the Lanham Act. Judge Zobel, who has been assigned to the case, seems to be the Massachusetts judge for such matters – she has had a number of similar cases involving artists such as Pink, Coldplay, Katy Perry and Lady Gaga .
Oomph Hair filed suit against Hair Illusions and its founder, Salvatore Passariello, accusing them of infringing Oomph’s trademark, cybersquatting, falsely disparaging Oomph products, and other forms of unfair competition, as well as seeking declaratory judgment that Hair Illusion’s “hairline enhancement” trademark application is invalid as merely descriptive. Hair Illusions is purported to control 90% of the real hair fiber market (real hair fiber is, as near as I can tell, small hair fibers, that are temporarily adhered to natural hair, making thinning hair look fuller). Oomph claims that Hair Illusions uses unfair and tortious means to maintain this market share, such as threatening Oomph and Oomph customers with patent lawsuits, despite having no patent to assert (Passariello had a pair of application undergoing prosecution at the time; they have since gone abandoned). Oomph also asserts that Hair Illusion registered domain names confusingly similar to Oomph’s registered HAIR FUSION trademark, which disparage Oomph’s product (e.g., alleging that the product contains parasites) and redirect customers to Hair Illusion’s on-line store. Oomph seeks preliminary and permanent injunctive relief, transferal of the offending domain names, and monetary damages. Oomph filed a motion for a preliminary injunction concurrently with the filing of the complaint. Judge Zobel scheduled a hearing on the motion for March 28.
Judge Capser denied Bokhary’s motion for a preliminary injunction seeking to prevent Southern Foods from using the mark GODAVARI in connection with its Indian restaurants. Bokhary sells prepackaged rice-based food products under the mark, and has a registration, which serves as prima facie evidence that the mark is valid. Bohkary admits, however, that the products it sells originate from the Godavari River region of India, which is known as a major source of rice and rice products, which Judge Casper found sufficient to overcome the prima facie evidence based on the registration and to suggest that the mark is merely geographically descriptive. Bohkary propounded no evidence at this stage of the proceedings to show that the mark has secondary meaning; thus, it is not reasonably likely that Bohkary would succeed in proving that the mark is valid. Judge Casper also found that a likelihood of confusion had not been established, because restaurant services are sufficiently distinct from retail selling of pre-packaged foods, and that the rest of the evidence thus far put forth failed to overcome the weakness of the mark (assuming it were to be valid at all). (Full disclosure – Southern Foods is represented by Nate Harris here at my firm – congrats, Nate!).
Judge Stearns denied Global Strategies’ motion for a preliminary injunction for failure to establish a likelihood of success on the merits. Global alleges Interbulk infringes a Global patent and Global’s “DEMO BAGS” family of marks through sale of its “Ox Demolition Clean Up Bag” or “Ox Demo Bag.” Judge Stearns found that Interbulk had raised substantial questions concerning the validity of the asserted patent, because Interbulk had demonstrated that the accused product was on sale more than a year before the filing date of the asserted patent. He also indicated that there was a likelihood that at least some of the claims would be found obvious over the asserted prior art combined with common sense under KSR, which came out after the asserted patent had issued. With respect to the trademark, Judge Stearns found that “DEMO BAG” was an abbreviation for “demolition bag,” which would render the mark generic and unprotectable, which was enough to overcome the weak showing of likelihood of consumer confusion.