Judge Mastroianni granted individual defendant Paul Ramesh’s motion to dismiss, finding the complaint includes no factual assertions that Ramesh personally was the moving, active conscious force behind the alleged trademark infringement or was personally involved in a tortious act, but instead only contained conclusory statements. The complaint asserted that “according to publicly available records and upon information and belief,” Ramesh maintained operational control over the club. Judge Mastroianni noted that, had the complaint specified what publicly available records had been consulted and stated what those records contained, they would likely have risen to factual assertions sufficient to survive a motion to dismiss.
Smartling asserted that Skawa’s “EASYLING” mark infringed its “SMARTLING” mark and sought to cancel the mark pursuant to 15 U.S.C. § 1115. In June, however, the jury found for Skawa on all counts. Undeterred, Smartling moved the TTAB to reopen its petition to cancel Skawa’s mark on the same grounds, leading Skawa to ask the Court to order dismissal of Smartling’s petition. Judge Burroughs denied Skawa’s motion, finding that while § 1115 gives the court the power to order the TTAB to cancel a mark or register a mark, it does not empower the court to order the TTAB to dismiss a cancellation proceeding. She further noted that Skawa can (and has) asserted res judicata before the TTAB, who can reach their own conclusion.
Cedar Bay sued Canadian Fish Exporters, or “CFE,” for false association and false designation of origin in connection with the importation of salmon products. Cedar Bay is a Nova Scotia business that holds registrations on “CEDAR BAY” and on design marks that include “CEDAR BAY GRILLING COMPANY.”
Cedar Bay and Massachusetts business CFE had previously entered into an agreement by which CFE distributed Cedar Bay’s products in the United States and the Caribbean. Cedar Bay alleges that CFE demanded lower prices from Cedar Bay to permit sales to large retail customers such as Kroger and Walmart, but did not pass the cost savings on to these customers, and that CFE misled Cedar Bay about the mark-ups CFE was charging on Cedar Bay products. Cedar Bay further alleges that the failure to pass on the cost savings resulted in the loss of accounts, and that CFE failed to properly seek to expand the business. Cedar Bay hired a broker to assist in expanding the business, but alleges that CFE has blocked the broker from contacting existing customers and has asserted that Cedar Bay has no right to contact retail customers in the United States, which Cedar Bay denies. Cedar Bay asserts that CFE uses Cedar bay’s trademarks in a manner that falsely suggests that the products and trademarks are owned by CFE. In addition to false designation of origin, Cedar Bay alleges tortious interference with economic advantage and violation of 93A. Apparently, the contract with CFE remains in place, however, as there is no allegation that it terminated or was breached.
Exxon Mobile filed suit against Ayer, Massachusetts business Turbo Lube, accusing the repair shop of trademark infringement, dilution, counterfeiting, unfair competition and unjust enrichment. Exxon Mobile asserts a number of trademarks, including the “MOBILE” mark in red and blue, the red Pegasus mark, and “Mobile 1 Lube Express.” Exxon Mobile accuses Turbo Lube of misusing these marks in its on-site advertising, website, and even on the employees’ uniforms, and of ignoring Exxon Mobile’s cease and desist demand letter. Exxon Mobile seeks a finding of willful infringement, and seeks preliminary and permanent injunctive relief as well as monetary damages.
Another series of lawsuits involving models accusing strip clubs of using their likenesses in promotional materials was filed in Massachusetts, this time accusing Mojito’s Country Club of Randolph, Mario’s Showplace of Webster, and Riviera Show Club of Worcester of misappropriating the model’s names and images for promotional purposes. As with prior suits brought by the same firm, The complaints include counts for false advertising and false association, rights of privacy and publicity, statutory unauthorized use of an individual’s name, portrait or picture, conversion, unjust enrichment, quantum meruit and negligence.
Fenway Enterprises runs the “Verb” Hotel, a retro, music-themed hotel located just outside of Fenway Park that opened in 2014. As is mentioned on its website, the name for the hotel was chosen as a shortened form of the musical term “reverb,” as well as for signifying action.
Fenway asserts that Hard Rock’s planned launch of a series of musical themed hotels under the name “Reverb” will infringe its federally-registered “VERB” mark for hotel services, as well as its common law rights in the mark. Hard Rock has filed intent-to-use applications for “Reverb” and “Reverb by Hard Rock” for hotel, restaurant, bar and casino services, and already has a website devoted to the new hotel chain, www.reverbhotels.com. Fenway Enterprises asserts that its hotel’s success hinges on the authenticity of its hotel, which would be harmed by association with the Hard Rock’s “glitzy, overstated chain hotels,” expressly citing a giant, guitar-shaped hotel to be opened by the Hard Rock in Florida that has earned the description “monstrosity that has offended nature itself.” Fenway Enterprises further cites the reality television show Rehab: Party at the Hard Rock Hotel as associating the Hard Rock brand with drinking, drug abuse and debauchery. Fenway says that Hard Rock was notified of the Verb Hotel in March, but has thus far refused to rebrand the planned REVERB hotel franchise. In addition to trademark infringement, Fenway asserts violation of Ch. 93A, although it may have difficulty proving that the acts complained of occurred substantially within the Commonwealth – the first REVERB hotel is planned for Atlanta, with a second to follow in California.
Massachusetts strip club owners beware – an IP firm is scouring advertising that falsely suggests that models are appearing at, or otherwise sponsoring, local establishments. The five cases here include These suits, which include more than thirty different plaintiffs (some of whom appear in several cases) follow the Mitcheson suit earlier this month, and include counts for false advertising and false association, rights of privacy and publicity, statutory unauthorized use of an individual’s name, portrait or picture, conversion, unjust enrichment, quantum meruit and negligence.