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.
Global Protection is a condom company formed by Tufts graduates in 1988. Global and its Malaysian owner/manufacturer, Karex Berhad SDN BHD, bring charges of trademark infringement, design patent infringement and unfair competition against Eric Arthur and his company, MSC of Fort Smith, doing business as MSCI. Global has an incontestable mark for “ONE” for use with condoms, and Karex owns a design patent on a foil package for a condom.
MSCI sells condoms in a similar foil package with a large “1” on the packaging, which Global alleges will likely cause confusion. Global seeks injunctive and monetary relief as well as fees and costs.
Anova filed suit against RJ Brands, a New Jersey company, accusing RJ of infringing on Anova’s “PRECISION” trademark and trade dress relating to Anova’s Sous Vide Precision Cooker, a constant temperature immersion circulator. This is the second lawsuit relating to the trademark and trade dress for the product brought in this district in the last six months. Anova asserts personal jurisdiction via RJ’s website, Chefman.com, which is available in Massachusetts, as well as stream of commerce theories based on the accused Chefman Precision Cooker being sold via on-line retailers such as Amazon.com, Bestbuy.com, Target.com, and Walmart.com. Anova seeks injunctive relief, disgorgement of profits, punitive damages, and attorney’s fees.
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.
Plaintiff Cutting Edge Systems sued Cutting Edge Tecsolutions for poaching on its reputation and good name by opening a competing business utilizing substantially the same name. Both companies sell and install audiovisual and automation systems in area businesses and homes. Cutting Edge Systems has been operating under the “Cutting Edge” name since 1992, and has a registration on the mark. Tecsolutions is alleged to have been incorporated in 2013, but to have actually begun operations substantially later than its formation. Cutting Edge Systems cites a number of instances of actual confusion, including receipt of bills for Tecsolutions’ purchases, and asserts that Tecsolutions has on at least one occasion deflected criticism of its work on Yelp by saying that the customer must have confused them with a different company. Tecsolutions has twice refused to cease using the “Cutting Edge” mark. Cutting Edge Systems brings counts for trademark infringement and unfair competition under federal, state and common law, and seeks disgorgement of Tecsolutions’ profits as well as injunctive relief and attorney’s fees. The case was assigned to Judge Saris.
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 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.