ROAM Fitness, which opened a fitness center for travelers in 2017 at the Baltimore International Airport, sued Worcester resident Dianne Lesage, who runs a company called the “Roam Team” that connects hotel guests with personal trainers, accusing Lesage of trademark infringement and false designation of origin. ROAM Fitness, who plans to expand to other airports in the country, obtained a federal registration for ROAM FITNESS for health club services in June 2017. ROAM Fitness says that Lesage approached them about a potential partnership between the two companies, which led to the discovery of the extensive use of “Roam Team” on Lesage’s website. After several requests to have Lesage change the name of her business, ROAM Fitness filed suit.
Channing Bete filed suit against Dr. Mark Greenberg for trademark infringement, tortious interference with business relations, and violations of non-compete and non-disclosure agreements. Dr. Greenberg jointly developed a curriculum for the social and emotional development of children, known as the “PATHS® Program,” in 1993. This curriculum was exclusively licensed to Channing Bete predecessor Developmental Research Programs, Inc., who registered the PATHS® trademark in 1995. Dr. Greenberg continued to develop the program, resulting in a “PATHS® Preschool/Kindergarten Program,” and jointly registered copyright in these developments. Channing Bete obtained exclusive rights to this program as well, and has since worked with Dr. Greenberg and the other authors to develop additional program-based materials to cover elementary-school children. Channing Bete partnered with a training organization run by Dr. Greenberg, “PATHS® Education Worldwide (PEW), to train purchasers of the PATHS® programs, and licensed PEW certain rights in the programs.
In the summer of 2014, Channing Bete decided to sell its rights in the PATHS® programs. They allege that Dr. Greenberg immediately began to interfere with its efforts to sell. According to the complaint, this interference led to the major large publishers refusing to consider a purchase. Channing Bete subsequently put the program out for bid, requiring non-disclosure agreements from any bidder. PEW placed a bid and executed an NDA, as did Dr. Greenberg personally. Channing Bete subsequently notified Dr. Greenberg that they had selected a different buyer, who would need to coordinate with Dr. Greenberg and the other authors. Dr. Greenberg was reminded of his non-disclosure obligations in this communication. The complaint alleges that Dr. Greenberg threatened to withhold assent to the transfer of the curriculum unless he received concessions for himself and PEW. It further alleges that Dr. Greenberg directly contacted the buyer on multiple occasions, indicating again that he intended to block the sale unless he received concessions and revealing the contents of his communications with Channing Bete, in violation of the NDA he had signed. Channing Bete then received an offer from a different party, seeking to buy the curriculum at the same terms offered by PEW. Channing Bete subsequently received communications from other authors of curriculum materials, each threatening to withhold consent to the sale, that Channing Bete alleges to have been orchestrated by Dr. Greenberg. Finally, Dr. Greenberg has published books laying out “PATHS Plus” that he has marketed as an alternative to the PATHS® program, allegedly in violation of non-compete language contained in his original exclusive license to Channing Bete.
South Shore Health Care (“SSHC”) has been offering health care services under the “South Shore Health Care” and “South Shore Health Center” marks in Braintree since 1993. SSHC has had a Massachusetts state registration in the “South Shore Health Center” mark for “physician’s office providing primary health care (family health care), preventative medicine and occupational health services” since 1993, expanded by a subsequent 2018 registration for “medical services,” and began using the “South Shore Health Care” mark in 2008. SSHC filed an application for a federal registration on “South Shore Health Care” last month. SSHC asserts that their state and common law trademark rights are infringed by South Shore Health Systems (“SSHS”) and South Shore Health Express (“SSHE”). According to the complaint, SSHS was formed in 1922 under the name “Weymouth Hospital,” which was changed to “South Shore Hospital” in 1945. In 2016, Defendants allegedly registered the domain name <southshorehealth.org> and used it to promote not only the hospital, but also other parts of its organization, such as health care services such as South Shore Medical Center and South Shore NeuroSpine. In 2018, SSHE formally adopted that moniker, a change from its previous name “Health Provider Services Organization of the South Shore.” Defendants further moved towards partnering with or purchasing Health Express Urgent Care, a business having multiple urgent and primary care clinics in the South Shore region, triggering newspaper reporting that referred to Defendants as “South Shore Health.” Plaintiffs allege a distinct loss of business, as well as actual confusion, resulting from these actions. While Plaintiffs acknowledge that many other health care providers have used the term “South Shore” in their names (e.g. South Shore Urology, South Shore Orthopedics, and South Shore Medical Center), they assert that no other entity has used the exact three-word phrase “SOUTH SHORE HEALTH” in the 25 years that they have operated under that name. Plaintiffs further allege that Defendants have “never used their obscurely-registered corporate name” as a trademark or service mark. Plaintiffs bring claims for state, federal and common law trademark infringement, cybersquatting, and unfair competition.
Having previously granted summary judgment in favor of Defendants and having determined that the case was exceptional and that Defendants were entitled to their reasonable attorney’s fees under 25 U.S.C. § 1117(a), Judge Casper ordered Plaintiffs to pay $153,820.35 in fees. Relying on the opinion of lead counsel, a 2013 Massachusetts Lawyers Weekly article on average rates in Boston, and the approval (over no objection) of the rates sought in earlier discovery proceedings between the parties before Magistrate Judge Kelley, Judge Casper approved of rates of $590-$600 for partners, $290-$465 for associates, and $100-$250 for paralegals. She did reduce the total fees sought by 10% due to some block billing that did not divide out time spent on particular tasks, but otherwise rejected Plaintiffs’ objections to the amount sought.
Plum Island Soap Co. filed a lawsuit involving its “THE MAN CAN” trademark and trade dress, the second such suit over the past two years. Plum Island Soap has sold packages of men’s toiletries in a paint can, “The Man Can,” since 2004, and it has already obtained injunctive relief relating to the now-registered mark and trade dress in a 2013 decision. Plum Island Soap alleges that Duke Cannon sells sets of men’s toiletries in identical paint cans, under the names “The Handsome Man Grooming Can” and “The Dapper Gentleman’s Grooming Can.” Plum Island Soap urges federal and common law trademark and trade dress infringement, unjust enrichment, injury to business reputation, and violation of C. 93A, although proving that the infringing acts occurred primarily and substantially within the state may be difficult, given that Duke Cannon is a Delaware company whose connection with Massachusetts appears to be the operation of a generally-available website.
Pure Encapsulations sued Wind & Sky, which does business as “Wendy’s Wellness Supply” on Amazon, for Lanham Act and common law unfair competition, unfair and deceptive trade practices, and tortious interference with Pure Encapsulations’ agreements with its authorized resellers. The complaint is extremely similar to the one brought against Lean Living, down to identifying the same negative on-line reviews received for the defendants’ alleged bad acts (although the negative reviews on the defendants’ site differ from those of the prior complaint). Judge Burroughs has this case.
Pure Encapsulations, a Sudbury company that makes and sells non-allergenic dietary supplements, sued lean Living and Tsalevich, as well as their principals, for Lanham Act and common law unfair competition, unfair and deceptive trade practices, and tortious interference with Pure Encapsulations’ agreements with its authorized resellers. Pure Encapsulations sells solely through authorized resellers and implements strict quality control requirements on their resellers. According to the complaint, the defendants operate Amazon storefronts, through which they sell Pure Encapsulation products that were purchased from authorized resellers. Pure Encapsulations asserts that the defendants mishandle these products, resulting in numerous complaints and poor on-line reviews, to the detriment of Pure Encapsulations. For example, customers complain if having received products whose safety seals had been tampered with; products with the incorrect number of pills or incorrect dosages; counterfeit products; and products that should have been, but were not, refrigerated. Pure Encapsulations seeks monetary and injunctive relief, as well as an order that the defendants take all action to remove references to Pure Encapsulation products from all sites on which defendants had listed them for sale.