JUUL Labs, Inc. v. Murshed (D. N.H. 20-cv-00868).

Vape maker JUUL sued Salam Murshed, accusing him of infringing the JUUL® trademark, counterfeiting, and unfair competition under the Lanham Act and under New Hampshire state law.  Murshed is said to own and operate the Salem Vape & Smoke Shop and the Smokers Choice II shop in Concord; each of these businesses are owned by corporations that Murshed owns and that are not in good standing with the State of New Hampshire.  JUUL holds federal registrations on a basic word mark and a styled mark for “JUUL” as well as a word mark for “JUULpods.”  JUUL asserts that Murshed sells counterfeit goods made outside of JUUL’s control and using unknown substances, and that Murshed also imports for sale in the United States products that are expressly identified on the packaging as authorized for sale only outside of the United States, with labeling that is not compliant with U.S. law.  Both businesses ignored cease and desist letters and continued to sell the accused goods.  Among other things, JUUL seeks an award of up to $2 million per mark for willful counterfeiting under 15 U.S.C. 1117(c).

Prime Hookah, Inc. v. MK Distributors Inc. et al. (D. Mass. 20-cv-10231).

Prime Hookah sued several distributors of hookah-related products, accusing them of importing and selling products bearing Prime Hookah’s DUD trademark.  The case was originally filed in New Jersey, and included trademark infringement and dilution claims as well as unfair competition claims under state and federal law.  The case was transferred to Massachusetts in early 2020, at which point the Defendants moved to dismiss for failure to state a claim.  Judge Saylor granted in part and denied in part that motion.  He noted that the complaint was poorly drafted with primarily conclusory allegations, and while it asserted that the Defendants sold DUD-labelled products, it did not allege that these products were not genuine DUD (i.e., Prime Hookah-produced) products.  The reference to the websites of the Defendants provided no further information, as one was disabled and a second did not display products, and no screenshots of the sites were attached to the complaint.  He reluctantly, and “with considerable misgivings,” however, determined that the infringement claims managed to “scrape over the low bar necessary to survive a motion to dismiss.”  He dismissed the dilution count, as the complaint did not sufficiently allege facts that would support the DUD mark being famous.  He also dismissed the count for importation of goods bearing infringing names or marks as inadequately pled, again pointing to the lack of specific, non-conclusory factual allegations.  Finally, the counts against specific individuals were dismissed for failing to allege that they personally took steps in the alleged infringements.

Judge Saylor has now denied Prime Hookah’s motion for a preliminary injunction.  He indicates his belief that Prime could have marshalled sufficient evidence to demonstrate a likelihood of success on the merits, but for whatever reason failed to do so.  He noted that the Defendants’ suggestion that the registration is invalid for fraud on the PTO was not implausible, even if at present they had not proven that Prime knew about a prior registration for the same mark by another company in the Netherlands.  He found that likelihood of confusion had not been demonstrated because Prime had introduced little evidence of what the allegedly infringing marks look like.  Prime’s registration is to a stylized version with the mark “DUD” in fanciful font, surrounded by a circle and with a flame arising from the “U” in DUD.  Yet Prime gave no description of what the marks on the accused products look like, and provided photos of unrelated products or unauthenticated photographs.  The sole exception is the testimony on a single individual that one of the defendants sold a single product at a trade show that bore a similar mark.  Further, Judge Saylor determined that the DUD mark is not particularly strong, having been registered only in January 2018 and having had no evidence of Prime’s renown in the industry or efforts made to promote and protect the mark.  Judge Saylor determined that, while there is certainly a chance that Prime will prevail, at this stage it has failed to demonstrate a substantial likelihood of success on the merits.  Accordingly, the motion for a permanent injunction was denied.

Vitaminsea LLC v. BeautyMark.International, LLC (D. Me. 20-cv-00284).

Vitaminsea accuses BeautyMark of infringing its federally-registered VITAMINSEA trademark.  Vitaminsea manufactures bath and beauty products that utilize seaweed as a key ingredient, and has used the VITAMINSEA mark on such goods continuously since 2011.  BeautyMark  also makes beauty products containing seaweed, and at some point adopted VITAMINSEA.BEAUTY as a mark.  BeautyMark sought to register this mark in 2018, but abandoned the application after receiving a rejection over Vitaminsea’s mark.  Vitaminsea asserts that BeautyMark nevertheless continues to use the mark on similar products that are sold through similar channels of trade, including via Amazon and brick-and-mortar stores.  Vitaminsea points to instances of actual confusion, where consumers contacted Vitaminsea looking for assistance with BeautyMark products.  Vitaminsea also asserts unfair competition under the Lanham Act.

LEGO A/S et al. v. OYO Toys, Inc. et al. (D. Ct/D. Mass. 19-01610).

Connecticut Federal Judge Bolden granted OYO Toys’ motion to transfer venue to Massachusetts.  LEGO sued OYO in Connecticut Federal Court, accusing it of copyright and trademark infringement, false designation of origin and violation of the Connecticut Unfair Trade Practices Act in connection with LEGO’s Minifigure characters.  OYO moved to dismiss for lack of personal jurisdiction or in the alternative to transfer.  Connecticut has a statute under which foreign corporations that do business in the state (which OYO does) without first obtaining a certificate of authenticity (which OYO lacks) “shall be subject to suit in this state by a resident of this state…”  The Court found that this did not apply, however, because neither of plaintiffs LEGO A/S or LEGO Juris A/S. private companies located in Denmark, are “residents” of Connecticut who could take advantage of the statute, and the two cannot “bootstrap” themselves into being able to invoke the statute by way of the residency of third plaintiff LEGO Systems, Inc.’s Connecticut place of business.  The Court further determined that OYO is not “conducting business” in Connecticut merely by selling figurines to national distributors who then bring them into Connecticut.  Similarly, OYO’s sales of figurines through its website falls below the “conducting business” standard of the statute because the sales were a very minor part of OYO’s overall sales and were not targeted specifically to Connecticut.  Rather than definitively find that Connecticut lacks personal jurisdiction over OYO, however, the Court instead opted to transfer the case to OYO’s home state of Massachusetts, and both personal jurisdiction and venue were certain to exist.  While the Plaintiffs’ choice of forum is normally granted considerable weight, where the claims are nationwide, and the owners of the copyrights and trademarks at issue are non-residents of the chosen forum, that weight is not controlling.  LEGO identified no Connecticut-based witnesses, while OYO identified both party and non-party witnesses located in Massachusetts, leading to the transfer.

Hanesbrands Inc. et al. v. Keds, LLC et al. (D. Mass. 20-cv-11354).

Hanesbrands (“Hanes”) accuses Keds and SR Holdings of infringing its “CHAMPION” brand.  Hanes and its predecessors in interest have used the CHAMPION brand for about 100 years on athletic clothing and uniforms, and asserts that it is one of the most recognized sportswear brands in history.  Keds owned rights to the CHAMPION mark for footwear, so when Hanes sought to expand into athletic footwear in 1987, it reached a coexistence agreement with Keds to share the brand with Keds for footwear only and only in the United States, Canada and Puerto Rico.  Under this agreement, Keds could utilize the mark for casual street and play time shoes, while Hanes could use the mark for athletic shoes.  The two businesses did not specifically allocate usage of the marks in other countries, with each free to pursue rights under the mark elsewhere.  Hanes asserts that it obtained superior rights in much of the world, and that it agreed in 2018 to hold off on asserting these rights against Keds in exchange for a promise to renegotiate the 1987 agreement to enhance Hanes’ rights in the US.  Hanes now asserts that Keds has refused to enter into negotiations, in an attempt to preserve the “moratorium” on Hanes’ enforcement abroad for as long as possible and in breach of that agreement.  Hanes asserts actual and anticipatory breach of contract, breach of the implied covenant of good fair and fair dealing and violation of 93A as well as trademark infringement, unfair competition, false association and trademark dilution based on usage of the CHAMPION mark beyond that permitted by the 1987 coexistence agreement and on Keds’ foreign use, which Hanes contends is driven from Keds’ U.S. headquarters

RS Means Company, LLC et al. v. SED Associates, Inc. et al. (D. Mass. 20-cv-10993).

Judge Casper granted RS Means’ motion for a preliminary injunction.  She noted that RS Means had purchased copies of its construction cost estimation books that were sold by Defendant Aaron Richardson of SED.  Judge Casper had previously entered a temporary retraining order prohibiting sales of the book by Defendants.  She reasoned that RS Means had demonstrated a likelihood of success on the merits of both the copyright and trademark allegations that supported the preliminary injunction.

Onyx Enterprises International, Corp. v. ID Parts LLC (D. Mass. 20-cv-11253).

Onyx, which sells auto parts and accessories under its “iD®” mark, accuses ID Parts of copying this mark in connection with sales of auto parts to benefit from the name recognition and good will associated with the mark and to mislead consumers into believing that ID Parts’ website, www.idparts.com, is associated with Onyx.  Onyx, a pure online retailer, began selling through its www.CARiD.com website in 2008. Since then, Onyx says it’s iD® line has grown into one of the largest online retailers of automotive products in the country, receiving over 10 million visitors monthly.  Onyx holds registrations for several stylized “iD” marks as well as “CARiD,” “BOATiD,” “CAMPERiD,” “MOTORCYCLEiD,” “POWERSPORTSiD,” “RACINGiD,” “RECREATIONiD,” “STREETiD,” “TOOLSiD” and “TRUCKiD.”  Onyx asserts that ID Parts took on that name at the end of 2009, with full knowledge of Onyx’s rights in the “iD” marks, and in 2014 sought registration of a stylized mark consisting of the term “id” contained within a circle.  That registration was refused due to a likelihood of confusion with Onyx’s “iD” mark, and ultimately the application was abandoned.  Despite this, and despite receiving two cease and desist letters from Onyx, ID Parts has continued using the mark and domain name.  Onyx asserts trademark infringement, unfair competition and false designation of origin under the Lanham Act and Massachusetts common law, dilution, cybersquatting, and deceptive trade practices under M.G.L. c. 93(a) § 2.  Judge Zobel has the case.

FH Cann & Associates, Inc. et al. v. Moorman (D. Mass. 20-cv-11251).

FH Cann, a debt collection company, sought to collect defendant and North Carolina resident Troy Moorman’s past due student loan debt.  In response, Moorman mailed a packet of documents to FH Cann that included an affidavit claiming that he had a “common law copyright” and had trademarked his name and another purporting to establish a security interest in all of FH Cann’s assets, which FH Cann says included a forged signature on behalf of FH Cann.  Moorman subsequently sent an invoice to FH Cann seeking $500,000 for Cann’s use of Moorman’s name.  He then filed a UCC-1 statement with the Secretary of the Commonwealth, purporting to place a $500,000 lien on the home of co-plaintiffs Sherri and Frank Cann, owners of FH Cann.  Cann seeks declaratory judgment that Moorman has no copyright or trademark rights in his name, that the purported contract, lien and UCC statement are not valid, injunctive relief preventing continuations of Moorman’s behavior, a decree granting the Cann’s quiet title in the house on which Moorman purports to have a lien, and actual and punitive damages resulting from the lien under a conversion or trespass to chattel theory.  Judge Woodlock has the pleasure of unwinding this case.

Tile, Inc. v. S&W Dealz et al. (D. Mass. 20-cv-10712).

Tile sued S&W Dealz in April for trademark infringement.  After S&W Dealz failed to answer the complaint or to oppose Tile’s motion for entry of default, Judge Burroughs granted Tile’s motion.  As a result of the default, the willfulness allegations of the complaint are deemed to be true, so S&W Dealz is deemed to have willfully infringed.  Tile sought $500,000 in willfulness damages for each of the two trademarks in suit, primarily to serve as a deterrent to future infringer (Tile apparently acknowledged the low likelihood of recovering any money from S&W Dealz).  Judge Burroughs acknowledged that Tile could opt for statutory damages, but the statutory damages provision was intended to provide compensation to the plaintiff and serve as a deterrent against future willful infringement, but noted that the statutory damage provision was not intended to provide plaintiff with a windfall.  She awarded $50,000 per mark, for a total of $100,000.  She also granted Tile’s request for a permanent injunction.

Marpac, LLC d/b/a Yogasleep v. 1st Avenue Superstore (D. Mass. 20-cv-11091).

Yogasleep sells white noise sound machines under a variety of registered trademarks, including Yogasleep®, Dohm®, Dohm Elite®, Hushh®, Rohm® and Whish® accuses 1st Avenue of trademark infringement, unfair competition and false designation of origin in connection with 1st Avenue’s sales of Yogasleep products through online commerce sites such as Amazon.  The complaint characterizes the accused products as being “non-genuine, potentially stolen or counterfeit,” and asserts that advertising such products as “new” deceives customers.  Because 1st Avenue is not a licensed retailer and it is unclear how it obtains Yogasleep products, Yogasleep’s warranty may not apply to 1st Avenue-sold products.  Yogasleep further points to a negative review on Amazon that cited 1st Avenue’s lack of customer service as evidence of harm to Yogasleep’s good will.  Judge Wolf has the case.