In December 2016, Caffeinate Labs sued New York’s Vante Inc. and Alexander Shlaferman, also a New York resident, for patent infringement, trademark infringement, and ancillary state law claims related to Vante’s sale of the “Wallet Ninja” in competition with Caffeinate’s PocketMonkey®. Schlaferman filed a motion to dismiss for failure to state a claim of design patent infringement in May; while that motion was pending, Caffeinate Labs voluntarily dismissed the design patent claim with prejudice. Shlaferman then moved in to transfer the case to the Eastern District of New York. Judge O’Toole granted that motion in light of the In re Micron Technology decision, finding that the defendants timely moved for transfer after the TC Heartland decision and thus did not waive a venue challenge. Judge O’Toole found the case to be “primarily one alleging patent infringement,” thus making the patent venue statue the applicable touchstone for venue.
New England Anime Society (NEAS”) sued Fantastic Gatherings and Interactive Meet and Greet for trademark infringement, false designation of origin, unfair competition, and cybersquatting. NEAS holds a three day convention every spring, known as “Anime Boston,” to celebrate Japanese pop-culture, including anime, manga, J-Pop, J-Rock, and live-action Japanese media. NEAS registered the ANIME BOSTON mark and has used it in connection with this convention for sixteen years. The event garners publicity through NEAS’ promotional efforts, news coverage, and social media, and is attended by more than twenty-five thousand people from all over the world. NEAS alleges that the defendants have developed and are promoting an event to take place in Hanover, Massachusetts. The formal name of the event is Boston SouhCoast Comic Con & Collectibles Extravaganza, but is allegedly being promoted by the defendants as “Boston AnimeFest” and “Boston Anime Fest,” and the website relating to the event is at www.bostonanimefest.com, which redirects to the defendants’ webpage at www.necomicon.net. Fantastic Gatherings, the company actually sponsoring the event, is alleged to have direct knowledge of NEAS’ marks, because two of its officers and directors previously worked as volunteers for NEAS. In response to a cease and desist letter, the defendants asserted that the terms ‘Boston” and “Anime” “fall into fair use as generic when used together in either order.” NEAS asserts, however, that the PTO registered the mark after determining that the mark had acquired distinctiveness through the years of NEAS’ use. NEAS asserts that the defendants deliberately chose a confusingly similar mark to ride on the coattails of NEAS and its anime festival.
Core Brands sued Jane Cheung and George Chan, Athome-products.com, AZ Electronics, AV Custom Pro for trademark infringement. Core Brands makes and sells audio, power management and control products under the brand names ATON, BlueBOLT, ELAN, Furman, Korus, Niles, Panamax, Proficient, SpeakerCraft, Sunfire, and Xantech through a network of authorized dealers. Among other things, Core Brands’ agreement with its authorized dealers prevents the dealers from selling Core Brands products to other retailers or resellers. The defendants are alleged to sell Core Brands products without authorization, of removing serial numbers from the Core Brands products, which voids the warranty, and of using Core Brands trademarks in advertising the products. Core Brands brings counts of trademark infringement, counterfeiting, false designation of origin, unfair competition, and tortious interference with contractual relations. The complaint does not made clear why the suit was brought in Massachusetts, as all parties are alleged to be California residents.
Anova sued a number of different Chinese businesses for trademark and trade dress infringement related to its Sous Vide Precision Cooker, a constant temperature immersion circulator that cooks food in a sealed bag at a constant temperature in a water bath.
Anova designed its product in 2014 using funds generated via a Kickstarter campaign. Anova registered the mark PRECISION, and asserts that the distinctive design of the product constitutes highly distinctive trade dress. The product enjoyed considerable success, leading to Anova being purchased by Electrolux for $250 million in February of this year. Anova asserts that the defendants make nearly-identical replicas and sell them through internet websites such as GlobalSources.com and Alibaba.com, as well as through U.S. distributors. In addition to infringement, Anova asserts claims for trademark dilution, unfair competition, and false designation of origin.
School Family Media (“SFM”) sued School Tool Box (“STB”) under the Anti-Cybersquatting Consumer Protection Act and the Lanham Act. SFM runs a website, www.teacherlists.com, that allows teachers to list materials their students will need and allows parents to order the materials online by providing connections to school supply vendors. SFM asserts that, as of November 2017, close to one and a half million supply lists were posted to the site and that the site had attracted nearly six million page views in 2017 alone. Based on this, and on several awards that the site has received, SFM asserts that the (as-yet unregistered) TeacherLists™ mark is famous. SFM obtained many similar sounding domain names to prevent others from selecting a domain name too close to its own, but mistakenly allowed its registration of “teacherlist.com” to lapse. STB, a business that sells school supplies to PTO and PTA organizations, is alleged to have registered “teacherlist.com” and to have that site redirect traffic to its www.schooltoolbox/teacherlist/ site that is alleged to be substantially identical to SFM’s site. SFM further alleges that the computer source code for the STB site was literally copied from SFM’s site. Finally, SFM alleges that, after notifying STB of its concerns with the new website, SFM’s Facebook page was merged into a TeacherList Facebook page, believed to have been caused by STB.
Global Licensing filed suit against New Bedford’s Club Déjà vu and its owner, Kelvin Ortiz, for infringing on Global’s DÉJÀ VU family of trademarks and service marks in connection with strip clubs. Global licenses the DÉJÀ VU marks to companies throughout America, and apply variants of the mark to goods and electronic magazines. Global asserts federal service mark infringement, unfair competition, false designation of origin, trademark dilution, and common law trademark infringement.
DR Media Holdings and its wholly-owned subsidiary, DealerRater.com, LLC, sued Saskatchewan resident Dan Robinson, alleged to be the founder and operator of Dealeradar, Inc., for trademark infringement. DR Media’s website, www.dealerrater.com, is asserted to be a leader in the field of automotive consumer reviews on dealers and service centers, while its subsidiary, DealerRater.com, offers online reputation management and monitoring services for automotive dealers. DR media alleges that the defendant also offers reputation management and social media services for automobile dealers under the DEALERADAR name at its website, www/radaresults.com/automotive, and that it also owns the domain name www.dealeradar.com, which Mr. Robinson previously used for the business and which, since being notified of DR Media’s rights, redirects users to the current site. DR Media further alleges that Mr. Robinson falsely uses the trademark registration symbol ® in association with the DEALERADAR mark, despite not having a registration. Aside from trademark infringement, DR Media brings claims for false designation of origin, unfair competition, and violation of the Massachusetts Consumer Protection Act (Ch. 93A).