99 Ranch, an Asian supermarket, operates 53 stores in the United States, including their most recent store in Massachusetts (which just opened in January). The store has utilized a red “99” surrounded by green laurel leaves as a mark, as well as the name “99 RANCH MARKET” for thirty years, and has registrations on both. 99 Ranch asserts that 99 Asian Supermarket opened a store in Malden that utilizes a red 99 surrounded by green laurel leaves in an attempt to capture 99 Ranch customers, and that “99 Asian Supermarket” infringes the 99 RANCH MARKET mark. 99Ranch asserts trademark counterfeiting under 15 U.S.C. 1114(a), state and federal trademark infringement, state and federal unfair competition, and state federal trademark dilution.
FabriClear, LLC developed a spray for treating bed bug infestations, and reached an agreement with Harvest Direct by which Harvest would advertise and sell the product, which was known as “FabriClear.” FabriClear asserts that, after several years of complying with the agreements with FabriClear, Harvest began re-labelling the product as “X-Out” and failing to pay FabriClear on sales of the same. FabriClear identifies several examples in which the “X-Out” label was simply superimposed directly over the “FabriClear” label. The complaint further alleges that Harvest essentially copied FabriClear’s label, packaging, website and advertisements for X-Out, including an advertisement in which the FabriClear bottle remained in several segments. FabriClear asserts breach of contract, trade secret misappropriation, and false designation of origin, as well as unfair competition. Magistrate Judge Hillman has the case.
(Note – I filed this complaint on behalf of FabriClear. As I always do when reporting on cases in which I and my firm are involved, I blog about the issues presented in the pleadings or orders, and avoid adding any “insider information.”)
Ethic, an investment advisor that specializes in socially aware investing, filed suit against Admirals Bancorp and Ethic Wealth Advisors, LLC, accusing the two of rebranding to the “ETHIC” mark for the provision of similar services. Ethic asserts federal and common law trademark infringement, false designation of origin and unfair competition and unfair trade practices. Ethic further asserts that the infringement was willful, because Admiral’s intent-to-use applications for registration of ETHIC and ETHIC A WEALTH BANK were each refused in light of Ethic’s prior registration. Ethic asserts that, in response to the latter rejection, Admiral misled the PTO as to the differences between the respective services, banking services versus investment advisory services, that rendered confusion unlikely. According to Ethic, at the time of this representation, Admiral had already taken steps to offer investment services under the “Ethic” mark, as evidenced by Admiral’s SEC filings. The case is before Judge Sorokin.
Biogen, along with the University of Zurich, accuses New York-based Creative Biolabs of infringing U.S. Patent No. 8,906,367. The patent is said to cover an antibody, Aducanumab, that Biogen is investigating as a treatment for early Alzheimer’s disease. Biogen licensed the antibody from a Swiss biotech company, Neurimmune Therapeutics, who had itself licensed the antibody and accompanying intellectual property from the University of Zurich. The antibody was developed from antibodies in healthy, aged donors who did not have Alzheimer’s, under the theory that these individuals’ immune systems had successfully resisted the disease, and the treatment has reduced the plaques that are a marker of the disease in animal studies. Biogen is presently working in collaboration with pharmaceutical company Eisai in clinical development and commercialization of the antibody, which is also known by the widely-used designation “BIIB037,” and is currently seeking regulatory approval for its use, currently back in trials after having previously been pulled. In addition to patent infringement, Biogen asserts that Creative Biolabs infringes Biogen’s trademark rights in the “BIIB037” alternate designation, which Biogen believes will cause confusion or mistake as to the origin, sponsorship or approval of Creative Biolabs’ aducanumab products. Biogen also asserts violation of 93A. The case is with Magistrate Judge Cabell.
Cambridge’s HubSpot, a marketing and customer relations software company, accuses India’s Zoho of trademark infringement and dilution of its HUBSPOT and HUB family of marks, including HUBSPOT MARKETING HUB (the sole mark on which it has registration) and MARKETING HUB, which HubSpot alleges to have used since 2017. HubSpot asserts that Zoho’s use of the term “ZOHO MARKETINGHUB” on similar products through similar channels, infringes these marks. Zoho announced in January 2019 that it was rebranding its products with that mark. HubSpot asserts that Zoho continued with the use of this mark despite receiving cease and desist communications, making the infringement willful. In addition to the federal trademark infringement and dilution claims, HubSpot alleges false designation of origin, common law trademark infringement and violation of 93A, although it is difficult to see how Zoho’s acts occurred primarily and substantially in Massachusetts to sustain the 93A claim.
Bravado, the holder of exclusive rights to the “BILLIE EILISH” mark in connection with tour merchandise, filed a lawsuit against unknown bootleggers in advance of Eilish’s March 19th concert at the TD Garden. Eilish has several pending trademark applications, but does not appear to have any issued registrations. Bravado claims common law trademark rights by way of Eilish’s having played concerts throughout the United States before hundreds of thousands of people. and brings a count for false designation of origin under 15 U.S.C. § 1125(a), rather than common law trademark infringement, thus obtaining federal subject matter jurisdiction. Bravado has appeared in this blog several times previously, filing similar suits in advance of shows by Lady Gaga, Arianna Grande, and Post Malone. As with all of these cases, this case is before Judge Zobel.
Baystate Health accuses Bay State Physical Therapy of willfully infringing its trademarks, and further seeks cancellation of Bay State Physical Therapy’s U.S Registration No. 3,943,252 for “BAY STATE PHYSICAL THERAPY.” In addition to Bay State Physical Therapy, Baystate Health seeks to hold Steven Windwer, Bay State Physical Therapy’s sole officer and director, personally liable. Baystate Health, which runs a number of hospitals and medical practices, asserts that it first began using the BAYSTATE mark in 1976 in association with a wide range of healthcare services, including physical therapy. Baystate Health holds registrations, both state and federal, for various marks that include “BAYSTATE,” including a registration on “BAYSTATE” standing alone. According to the complaint, Bay State Physical Therapy began using the name in August 1995, and Baystate Health first became aware of this use in 2008. At the time, all of Bay State Physical Therapy’s locations were in eastern Massachusetts, which Baystate Health deemed acceptable. In 2010, however, Bay State Physical Therapy applied for a federal registration in which it asserted that, to its knowledge, no one else had the right to use the same or a similar mark in commerce, which Baystate Health asserts was knowingly false. Further, in 2019, BayState Physical Therapy expanded considerably, including into Springfield, Massachusetts, an area Baystate Health operates. Baystate Health asserts common law, state and federal trademark infringement, false designation of origin, violation of M.G.L. c. 93A, and fraud on the PTO.
Given that “Baystate” seems (to me, at least) to be geographically descriptive of Massachusetts, I am curious to see how this plays out for both parties. Bay State Physical Therapy’s registration is to a design mark that incorporates both design elements and colors, and disclaims the wording absent the design, which may be sufficient to overcome the geographical descriptiveness issue (which was not raised in examination). The case, being in the Springfield Division, is before Judge Mastroianni.