CR Associates sued Selfstorage and Sparefoot, Inc. (and a third party, since voluntarily dismissed), alleging state and federal trademark infringement and unfair competition relating to defendants’ alleged use of CR’s “Cross Road Storage” mark to boost defendants’ Google search results and to indicate, on defendants’ website, that CR’s self-storage facility is unavailable and redirect viewers to other storage sites under contract with the defendants. Judge Sorokin granted Selfstorage’s motion to dismiss for lack of personal jurisdiction, finding that Selfstorage merely licensed use of its “selfstorage.com” domain name to Sparefoot for a licensing fee, which was insufficient to demonstrate purposeful availment of Massachusetts. He granted Sparefoot’s motion to transfer pursuant to a forum selection clause in a contract between CR and Sparefoot executed on February 2, 2017, and denied CR’s emergency motion to amend its complaint as futile, as nothing in the amended complaint limited the allegations to the period prior to the execution of the agreement. Judge Sorokin rejected CR’s argument that the terms of service that included the forum selection clause could not be applied, finding the on-line terms’ notification and affirmative requirement of agreement sufficed to render the term enforceable. He likewise rejected CR’s argument that the requirement person executing the agreement on CR’s behalf lacked authority to bind CR, finding that the person had implied authority to do the acts required to enter into the agreement the company had asked him to enter into, and that the conduct of CR’s principal following the execution of the agreement was consistent with having conferred such authority. The case was transferred to the Western District of Texas.
The Plum Island Soap Company sued 1818 Farms sued Alabama’s 1818 Farms and its sole operator, Natasha McCrary for trademark and trade dress infringement relating to men’s grooming products sold in combination and packaged in a paint can. The background of the lawsuit is interesting. Plum Island Soap Co. has an incontestable registration on “THE MAN CAN” mark. It alleges it has been using the paint can trade dress for more than five years, establishing a prima facie case of secondary meaning, and successfully obtained injunctive relief relating to the mark in 2013.
After discovering 1818 Farms’ “The Man of the Farm Grooming Can” product in the fall, counsel for Plum Island Soap Co. contacted 1818 Farms.
According to the complaint, they negotiated and agreed upon terms to resolve the dispute in which 1818 Farms acknowledged the validity of the trade dress and agreed to be enjoined, needing only to memorialize the agreement into a formal settlement document, and in reliance upon this, Plum Island Soap Co. did not file suit; yet in January, while in daily communication with Plum Island’s attorneys , 1818 Farms filed suit in Alabama seeking declarations of non-infringement, challenging the validity of the trade dress , and seeking to cancel the trademark registration. Six days later, 1818 Farms then contacted Plum Island’s lawyers and reneged on the agreed-upon terms of the settlement and informed Plum Island of the Alabama complaint. Plum Island asserts that, but for the false indication that 1818 Farms was settling the dispute, it would have filed suit in Massachusetts, and that Massachusetts should thus be the forum for the litigation. Plum Island claims trademark and trade dress infringement, as well as contributory and vicarious trademark infringement in connection with third-party sales of “The Man of the Farm Grooming Can” product and the preparation of marketing materials by third parties for 1818 Farms’ benefit. Plum Island also alleges breach of contract and of the covenant of good faith and fair dealing, stating that the settlement discussions had reached the point of an actual agreement, as well as fraud relating to statements made in the Alabama complaint that Plum Island made false statements to the PTO when seeking to register THE MAN CAN mark, and unfair and deceptive practices under Mass. G.L. 93A. Plum Island seeks temporary, preliminary and permanent injunctions, enforcement of the settlement agreement, monetary damages, and treble damages and attorney’s fees.
Judge Sorokin denied Johnson & Johnson’s request to extend the time for amending the pleadings. Andover Healthcare accuses Johnson & Johnson of making false statements that certain products did not contain latex, when in fact they did. The Rule 16 deadline for amending the pleadings having passed, Johnson & Johnson sought additional time to consider bringing claims against some of its suppliers for including latex from products made for Johnson & Johnson in violation of contractual requirements to exclude latex from the products. Judge Sorkin denied the motion, noting that the contracts with the suppliers required potential violations to be addressed via arbitration rather than in court.
Judge Capser denied Bokhary’s motion for a preliminary injunction seeking to prevent Southern Foods from using the mark GODAVARI in connection with its Indian restaurants. Bokhary sells prepackaged rice-based food products under the mark, and has a registration, which serves as prima facie evidence that the mark is valid. Bohkary admits, however, that the products it sells originate from the Godavari River region of India, which is known as a major source of rice and rice products, which Judge Casper found sufficient to overcome the prima facie evidence based on the registration and to suggest that the mark is merely geographically descriptive. Bohkary propounded no evidence at this stage of the proceedings to show that the mark has secondary meaning; thus, it is not reasonably likely that Bohkary would succeed in proving that the mark is valid. Judge Casper also found that a likelihood of confusion had not been established, because restaurant services are sufficiently distinct from retail selling of pre-packaged foods, and that the rest of the evidence thus far put forth failed to overcome the weakness of the mark (assuming it were to be valid at all). (Full disclosure – Southern Foods is represented by Nate Harris here at my firm – congrats, Nate!).
Judge Stearns denied Global Strategies’ motion for a preliminary injunction for failure to establish a likelihood of success on the merits. Global alleges Interbulk infringes a Global patent and Global’s “DEMO BAGS” family of marks through sale of its “Ox Demolition Clean Up Bag” or “Ox Demo Bag.” Judge Stearns found that Interbulk had raised substantial questions concerning the validity of the asserted patent, because Interbulk had demonstrated that the accused product was on sale more than a year before the filing date of the asserted patent. He also indicated that there was a likelihood that at least some of the claims would be found obvious over the asserted prior art combined with common sense under KSR, which came out after the asserted patent had issued. With respect to the trademark, Judge Stearns found that “DEMO BAG” was an abbreviation for “demolition bag,” which would render the mark generic and unprotectable, which was enough to overcome the weak showing of likelihood of consumer confusion.
Solid Holdings, Solid Surface Care, Inc. and Solidcare, LLC (collectively, “Solid”) sued Solid Logic, along with two of its officers, for trademark and trade dress infringement, false designation of origin, dilution and cybersquatting. Solid alleges that it is the registrant and owner of SOLID marks in connection with cleaning and maintenance of stone, metal, concrete, terrazzo, grout and wood surfaces, as well as a distinctive trade dress using red-orange and gray. Solid asserts that, after meeting with Solid to discuss possibly becoming a franchisee, the defendants formed Solid Logic Limited to offer the same services in a deliberate attempt to poach off of the good-will of the SOLID mark and trade dress, and that its registration of its “solidlogicltd.com” website comprises cybersquatting on Solid’s “solidcare.com” domain name.
The Art and Creative Materials Institute (ACMI) is an international association of arts and crafts manufacturers that provides toxicology testing and safety certifications. Products that meet their requirements receive the AP SEAL certifying the safety of the product. ACMI asserts that Benstores, operating under the trade name Artilicious and Sorillo Brands, sell products through Amazon and eBay bearing the AP SEAL without approval from ACMI. ACMI brings counts for trademark infringement, counterfeiting, passing off, dilution, and unfair competition.