Merchant Consulting Group, Inc. v. Beckpat, LLC (17-11405).

Merchant Consulting served a third-party subpoena on Blue Square Resolutions, a Scottsdale Arizona entity, seeking documents in its trademark infringement case against Beckpat. When Blue Square failed to respond or otherwise make contact with Merchant, Merchant filed a motion for contempt pursuant to Fed. R. Civ. P. 45(g). In granting the motion, Magistrate Judge Kelley found that the subpoena was properly served by mailing it to Blue Square, noting that in Massachusetts, service is proper where effectuated by a means reasonably calculated to complete delivery and the respondents had actual notice of the subpoena. She found that Massachusetts was the proper forum to enforce the subpoena, because the subpoena called for documents to be produced in Massachusetts, making this state the district where compliance was required, particularly given that Blue Square never raised an objection to production in Massachusetts. Having found Blue Square in contempt, Judge Kelley ordered Blue Square to comply with the subpoena within ten days, with a recommendation to the District Court that failure to do so should result in an order to show cause why monetary sanctions should not be imposed. She further recommended that Blue Square be ordered to pay Merchant’s legal fees associated with bring the motion for contempt.

Jaho Inc. v. Adagio Teas, Inc. (18-cv-11451).

Jaho sued Adagio Teas for infringement of Jaho’s ZODIAC TEA trademark. Jaho began using the mark in 2004 and obtained an incontestable federal registration on the mark. Jaho asserts that Adagio Teas sells a line of tea blends that it calls “the Zodiac Series,” and uses “Zodiac” and “Zodiac Gifts” on its website in connection with tea blends. Jaho brings claims of state and federal trademark infringement and unfair competition. The case is assigned to Judge Zobel.

BMW of North America, LLC et al. v. Dunbar Euro-Sports, Inc. (18-cv-11395).

bmwroundelBMW sued Brockton’s Dunbar Euro-Sports for infringing BMW’s registered “roundel” trademark, which BMW has used since 1955 on automobiles and motorcycles.  BMW licenses the mark to authorized dealerships for use in connection with the sale and service of BMW products. Dunbar was on such licensee, having been authorized in 1987 to sell and service BMW motorcycles.  BMW asserts that Dunbar is using the roundel outside of the direction of BMW, apparently through the use of outdated and/or unauthorized signage, which hinders BMW’s ability to control the nature and quality of products and services provided under the mark. The complaint asserts breach of contract as well as trademark infringement, and seeks an order that Dunbar remove and destroy any BMW signage containing BMW marks, including the roundel. Oddly, the complaint does not specifically indicate how Dunbar’s use of the roundel is improper, and appears to assert that Dunbar’s dealership agreement remains in force.

Fertility Centers of New England, LLC v. IntegraMed America, Inc. (18-cv-11350).

Fertility Centers accuses IntegraMed of infringing its “IVF ASSIST” trademark. Fertility Centers began using the mark in 2011 in connection with a cost-effective in vitro fertilization program, and has promoted the program extensively, including through its website. The mark was registered in 2012, and has become incontestable. IntegraMed offers a similar program under the name “Attain IVF Assist,” and at one time simply “IVF Assist,” which IntegraMed described as inadvertent in response to a cease and desist letter. IntegraMed removed the stand-alone use of “IVF Assist,” but refused to stop using the “Attain IVF Assist” mark. Fertility Centers asserts that IntegraMed also uses the “IVF Assist” mark in metadata to drive search results to their site. In addition to trademark infringement, Fertility Centers brings claims of federal and state unfair competition and false designation of origin.

Purse Seine Holdings, LLC v. Starkist Co. (17-cv-11186).

Judge Stearns granted Starkist’s motion to amend its answer to introduce an additional counterclaim of fraud on the Trademark Office. He found the proposed counterclaim, which alleged that Purse Seine had declared to the PTO that it was using the “Bela” mark for fish pate and fish paste when it knew this to be false, properly alleged facts which, accepted as true, stated a viable claim that met the “good cause” standard for amending after the date when such amendments can only be made for good cause. He further determined the motion to be timely, in that Starkist had learned of the relevant facts during discovery and filed within a month of so learning. The discovery schedule was amended to permit fact and expert discovery on the counterclaim.

Butler Home Products, LLC v. Avent, Inc. et al. (18-cv-11263).

GlovesButler filed a complaint against Avent and O&M Halyard, Inc., seeking a declaratory judgment of non-infringement and cancellation of two trademark registrations claiming rights in the color purple for latex gloves. Butler, a manufacturer of home cleaning products, sells reusable purple latex gloves to Wegmans Food Markets, who then sells the gloves under the WEGMANS® brand.  The registrations cover the color purple for “protective gloves for industrial use, and disposable nitrile gloves for use in laboratories and clean room environments,” “gloves for medical and surgical uses,” and “disposable nitrile gloves for general uses.” In April, Avent and O&M Halyard sent Wegmans a cease and desist letter, which was forwarded to Butler. After a response challenging the protectability of the color purple, Butler received a second cease and desist letter, setting up the DJ action. Butler asserts that the color purple is functional, in that laboratories use different color gloves for different areas to prevent cross-contamination or to signify the material the gloves are made of, as well as the existence of other purple gloves, asserted to preclude the color from serving as an identifier of source.

Auratone LLC v. Music Group IP Ltd. Et al. (18-cv-11228).

Auratone is a speaker company founded by Jack Wilson in the 50’s. The company became known for monitor speakers, the “Auratone 5C and 50C Super Sound Cubes, that became the studio standard monitor speaker in the 70’s, and achieved considerable success and fame – the Auratone 5C Super Sound Cube was inducted into the National Association of Music Merchants (NAMM) Hall of Fame in 2015. While running the company, Wilson obtained a federal trademark registration on AURATONE; in 2004, however, the mark lapsed when Wilson’s failing health prevented him from filing an affidavit of continuing use; Wilson passed away shortly thereafter. His heirs attempted to continue the business, marketing and selling existing inventory, and eventually sold the business, along with the rights to the AURATONE mark to one of Wilson’s grandsons, who formed Auratone, LLC in 2013. Auratone continued to market and manufacture speakers, and filed a new trademark application for the AURATONE mark, claiming a date of first use of 1959. Aruatone accuses the defendants, a pair of companies residing in the British Virgin Islands and the Philippines, of trademark and trade dress infringement and passing off as a result of the defendants’ making knock-offs of the Super Cube speakers that utilize the AURATONE mark and the trade dress of the speakers. Auratone also challenges the defendants’ application for a trademark on the AURATONE mark, which was based on an intent to use. Of interest, the suit is being brought by law students at the Suffolk University Intellectual Property and Entrepreneurship Clinic pursuant to SJC Rule 3:03.