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.
Hillside owns a trademark registration for the design of its “Sugarhill Jug” plastic maple syrup jugs, and accuses Dominion of violating that trade dress. Dominion moved for judgment on the pleadings, on the grounds that the trade dress was invalid as functional.
The trademark application had, in fact, initially been refused because of functionality concerns, but Hillside was able to overcome the refusal with evidence of the many alternative designs for syrup jugs. Dominion, once a Hillside distributor, began offering the accused jugs in 2016. Magistrate Judge Robertson recommended denial of Dominion’s motion. She noted that, as the trade dress is registered and incontestable, Dominion bears the burden of demonstrating functionality. Further, functionality is a question of fact, and Dominion was unable to demonstrate through the pleadings that the designs were factually functional. Judge Robertson did grant Dominion’s motion to stay discovery pending appeal of her recommendation to the District Court judge.
1818 Farms, after negotiating a settlement in principal on Plum Island’s trade dress and trademark assertions, surreptitiously filed this lawsuit and withdrew form settlement talks. Upon learning of this lawsuit, Plum Island Soap filed its own suit in Massachusetts. The background is discussed in detail here. Plum Island Soap sought to dismiss or stay the Alabama suit or, in the alternative, to transfer the Alabama suit to the District of Massachusetts for consolidation. Judge Kallon determined that transfer was appropriate. While 1818 Farms was the first to file suit, Judge Kallon noted that filing suit in anticipation of another pending proceeding or to improperly forum shop may be sufficient to show the compelling circumstances needed to overcome the presumption in favor of the first-to-file rule, particularly when the suit is a declaratory judgment action brought in the face of clear threats to sue. Here, he found that the parties were engaged in on-going discussions that had reached a mutually agreeable framework for settlement, and that in the middle of these discussions, and without informing Plum Island Soap, 1818 Farms filed the Alabama suit. 1818 Farms then continued negotiating without informing Plum Island Soap about their filing. This was found to be a clear attempt to preempt Plum Island Soap and obtain a jurisdiction desirable to 1818 Farms. Additionally, it was found to be in bad faith, given that 181 Farms continued to mislead Plum Island that settlement was imminent. Finally, Judge Kallon determined that a refusal to transfer would undermine the strong Federal interest in encouraging potential plaintiffs to attempt settlement negotiations rather than racing to the courts.