Holistic Technologies filed suit against Lumina Group, seeking a declaration that it does not infringe Lumina’s TENDLITE product trade dress. The TENDLITE is a therapy device that uses red light to treat skin conditions such as wrinkles, scars, and the like. Holistic markets its own red light therapy device, the Quantum Rejuvenation device.
In late July, Holistic received a cease-and-desist letter from Quantum, asserting trade dress infringement and asserting that Holistic had copied Lumina’s advertising and packaging. Holistic denies copying the advertising and packaging, and asserts that the product design is generic, has not acquired distinctiveness, and thus unprotectible. Holistic further alleges that Lumina had the Quantum Rejuvenation product removed from Amazon and Google by asserting infringement of Lumina’s trademark in bad faith – Holistic used the mark to reference the Lumina product in a comparative advertisement, which would not constitute infringement. Lumina further posted on Holistic’s Amazon page that Holistic was running inaccurate and illegal advertisements, and is alleged to have posted negative reviews of the Holistic product. Finally, Holistic asserts that Lumina falsely claims that the TENDLITE is patented. In addition to the declaratory judgment claim, Holistic brings affirmative claims of unfair competition, false patent marking and violation of 93A. Holistic seeks an award of Lumina’s profits for the unfair competition claim, as well as its damages and attorneys’ fees. Judge Talwani has the case.
Judge Mastroianni denied the parties’ joint motion to approve their consent judgment and permanent injunction. He noted that the court does not ordinarily adopt or endorse settlement agreements between private parties or retain jurisdiction over such agreements, and that there were no compelling public interest that would justify the court’s continued involvement. He further added that Penson & Co. had agreed to voluntarily cease using the trade dress in dispute, and that Excel would be able to enforce the injunction via a contract claim should Penson resume use.
Al Cass makes and sells lubricating oil for musical instruments under the “AL CASS FAST” mark – I fondly remember the distinct smell of their valve oil from my trumpet-playing days in elementary school. The company has been selling this oil for sixty years, after developing the formulation at the request of jazz trumpeter Dizzy Gillespie, and have used the AL CASS FAST mark since the Sixties. For the past thirty years or so, the oil was sold in these bottles, which Al Cass asserts to be its own trade dress. American Way Marketing (AWM) also makes and sells valve oil (including, at least in the past, Al Cass oil) and in early 2018 offered to buy All Cass, which Al Cass declined. Al Cass asserts that while the offer was being made, an AMW affiliate filed a federal trademark application for “AL CASS FAST” for lubricant oil for use with brass or metal musical instruments. AMW expressly abandoned this application in September following a demand to do so by Al Cass, but subsequently filed an application for “SUPERSLICK FAST.” Al Cass says that AMW sells their oil in bottles that are too similar to the Al Cass bottles.
Al Cass further alleges that AMW has told distributors and customers that Al Cass was no longer selling its FAST oil, saying that the Al Cass oil “is currently unavailable and future ETA is unknown.” Al Cass brings counts for federal, state and common law trademark infringement, trade dress infringement, false advertising, under the Lanham Act and state law, and unfair business practices.
DogWatch, a Natick company that makes electronic pet restraint systems such as the “invisible fence,” accuses its former Florida dealer DogWatch of Sarasota (“DoS”) of trademark and trade dress infringement, trade secret misappropriation, breach of contract, passing off, unfair competition, tortious interference with contractual relationships, and unjust enrichment in connection with DoS’ continued use of DogWatch’s name and proprietary information following termination of their business relationship. DogWatch has had a federal registration to its name since 1993, and asserts (with no real evidentiary support) that the name is famous. DogWatch further asserts trade dress protection in some combination of its order forms, yard flags, letterhead, stationary, internet web pages, URL’s van graphics and other unspecified materials. DogWatch further asserts trade secret protection in pricing information, draft marketing and promotional material, and business strategy and plans, and it asserts that the exclusive dealer agreement with DoS included an implied covenant not to use or disclose these purported secrets. Late last year, DogWatch notified DoS that they were terminating the exclusive dealer agreement, for reasons not specified in the complaint. Despite this, they assert that DoS continues to hold itself out as a DogWatch dealer and to use the trademark, trade dress, and trade secrets of DogWatch. The breach of contract count cites acts of DoS that occurred following termination of the agreement – there is no suggestion that DoS did anything wrong prior to termination. Judge Saris has this case.
Plum Island Soap Co. filed a lawsuit involving its “THE MAN CAN” trademark and trade dress, the second such suit over the past two years. Plum Island Soap has sold packages of men’s toiletries in a paint can, “The Man Can,” since 2004, and it has already obtained injunctive relief relating to the now-registered mark and trade dress in a 2013 decision. Plum Island Soap alleges that Duke Cannon sells sets of men’s toiletries in identical paint cans, under the names “The Handsome Man Grooming Can” and “The Dapper Gentleman’s Grooming Can.” Plum Island Soap urges federal and common law trademark and trade dress infringement, unjust enrichment, injury to business reputation, and violation of C. 93A, although proving that the infringing acts occurred primarily and substantially within the state may be difficult, given that Duke Cannon is a Delaware company whose connection with Massachusetts appears to be the operation of a generally-available website.
Excel Dryer accuses Penson & CO. of infringing its trade dress in its XLERATOR restroom air hand dryer. Excel asserts that its patented hand dryer has achieved considerable success, and that it has a distinctive shape and appearance that is associated with Excel.
Excel further asserts that it has already established secondary meaning of its trade dress in a prior proceeding before the International Trade Commission, in which Penson was a respondent, and both a General Exclusion Order and a Cease and Desist Order were entered prohibiting importation of the accused hand dryers. Excel brings charges of trade dress infringement and violation of C. 93A.
Acushnet, the maker of Titleist golf equipment, filed suit against Australia’s Golf Gods, accusing them of violating Titleist trademarks through Golf Gods’ sale of apparel bearing a “TITTIES” mark in the Titleist stylized script, “HOE V1” (instead of “PRO V1,” a Titleist golf ball), and a few other racy take-offs on Titleist marks. Titleist also asserts that golf balls sold by Golf Gods infringes the trade dress of Acushnet’s TITLEIST PRO V1 packaging.
Titleist asserts (and is almost certainly correct) that its marks are famous, and accuses Golf Gods of intentionally creating an “unwholesome and undesirable association” in consumers’ minds, thereby tarnishing the Titleist marks. Titleist asserts trademark infringement, false designation of origin, unfair competition, and trademark dilution under both state and federal law. Judge Boal has the case.