In December, home theater maker Sound United sued Amazon sellers Amazing Deals Online, and a third, unknown seller identified as “Amazon.com seller audio video sales guy” (“AVSG”), accusing each of infringing Sound United trademarks for such products, including DENON, POLK AUDIO, MARANTZ, DEFINITIVE TECHNOLOGY, HEOS, BOSTON ACOUSTICS, and CLASSE while not being authorized resellers of such products. The resellers are further accused of suggesting that a manufacturer’s warranty. Sound United does not assert that the marks are being placed on non-Sound United products; instead, Sound United asserts that the defendants obtained Sound United product from authorized resellers in knowing violation of the resellers’ agreements with Sound United. Sound United asserted trademark infringement, tortious interference with contractual relations, and violation of Ch. 93A.
Sound United, having been unable to find a physical mailing address or business location for the unknown seller AVSG, sought permission to serve that entity using its Amazon.com electronic mail service. Magistrate Judge Cabell granted the motion, noting that under Massachusetts law, when a process servers reports back that after a diligent search he or she cannot find the defendant, the defendant’s last and usual address, or an agent upon whom process may be served, the court may issue an order of notice. He determined that, under the circumstances, service via Amazon was reasonably calculated to prove requisite notice.
Welch Foods, a cooperative corporation owned by more than 750 farmer families, filed suit against its former licensee Healthy Food Brands (“HFB”), accusing it of violating its contract with Welch and of trademark infringement in connection with HFB’s continued marketing and sale of licensed products post-termination. Welch owns a number of federal trademark registrations to marks that include the term “WELCH’S” for a variety of food products and services. In 2014, Welch and HFB entered into a license agreement under which HFB would develop, manufacture and sell products such as dried and freeze-dried fruits and trail mixes under the WELCH’S BRAND. The license granted exclusivity in this area. The agreement provided for the payment of royalties based on sales, with certain minimum royalties established, and also sets forth reporting requirements on HFB sales. Welch asserts that HFB has missed a number of royalty payments and has never provided the required sales information, with the purpose of hiding the actual level of sales. After providing written notice of these breaches and allowing the passage of the required time to cure, Welch terminated the agreement in June, 2019. While the agreement requires the return or destruction of all WELCH’S-branded products upon termination, Welch asserts that HFB has instead continued to sell these products. Welch asserts breach of contract, breach of the covenant of good faith and fair dealing that is inherently applied to Massachusetts contracts, quantum meruit, unjust enrichment, trademark infringement, false association, unfair competition and dilution under the Lanham Act, and violation of Mass. G.L. c. 93A. Judge Stearns has been assigned the case.
Sensitech, a maker of monitoring devices for monitoring and maintaining manufacturing and storage conditions, sued its former Mexican distributor Grupo, accusing Grupo OFAS of trademark infringement and breach of contract. The agreement by which OFAS would distribute certain Sensitech products in Mexico terminated on November 30, 2015; at that point, OFAS was obliged to return all Sensitech IP and make all payments due. Sensitech asserts that OFAS never made the required payments and continues to use Sensitech trademarks and hold itself out as a licensed Sensitech distributor, and was using shell companies to try to obtain additional Sensitech products. Sensitech alleges a 93A violation in addition to the Lanham Act and contract causes of action. The case is before Judge Burroughs.
SimpliSafe, a company that sells home security products and services under registered SIMPLISAFE marks, sued Switchmate Home for trademark infringement, false designation of origin, unfair competition, and unfair business practices under both the Lanham Act and Ch. 93A. SimpliSafe asserts that Switchmate’s use of SIMPLYSMART, SIMPLYSMART HOME, SIMPLYSMART CUBE, and SIMPLYSMART HOME CUBE in connection with “smart” home technology such as light switches, power outlets, picture frames and doorbell video cameras infringes the SIMPLISAFE marks. SimpliSafe further asserts that the color scheme and font selected by Switchmate mirrors the font and gray and blue stylized SIMPLISAFE registration. According to the complaint, upon receiving notice from SimpliSafe of these issues, Switchmate not only refused to cease use of the marks, it introduced a line of home security products under the SIMPLYSMART mark. Switchmate also registered several of the SIMPLYSMART marks with the PTO. SimpliSafe points to both actual customer confusion and survey evidence of confusion. In addition to the affirmative claims, SimpliSafe seeks cancellation of Switchmate’s SIMPLYSMART HOME, SIMPLYSMART CUBE, and SIMPLYSMART HOME CUBE registrations.
Judge Mastroianni granted Shadow Box owner Brian Goldricks’ motion to dismiss the claims asserted against him in his individual capacity. To survive the motion to dismiss, Moreland was required to make factual allegations that Goldrick was the motive, active conscious force behind the alleged trademark infringement, and (with respect to the state law claims) that he was personally involved in the alleged tortious acts. Judge Mastroianni found that the complaint made only conclusory statements (such as “on information and belief” allegations), which are not, as phrased, factual allegations and are therefore not credited when determining whether the complaint meets the Iqbal/Twombly pleading standards.
American Biltrite sued Linatex, seeking to cancel Linatex’s trademark registration for the color red for rubber products used in mining equipment. The two companies compete directly with one another in selling rubber products for industrial applications including mining and minerals processing. American Biltrite claims to have sold more than $20 million in solid red rubber products since 1991, and that numerous third parties also sell red rubber products into that market. In 2014, Linatex filed a trademark application for the color red on rubber products. In its application, Linatex asserted that, to its knowledge, no one else had the right to use the color red for rubber products in the mining and processing field. Further, to overcome a rejection that the color was not inherently distinctive, Linatex asserted that it had become distinctive through Linatex’s substantially exclusive and continuous use in commerce for the preceding five years. American Biltrite asserts that each of these statements was knowingly false, as Linatex was aware of both its and third parties’ red rubber products that were sold both before and throughout the five-year period of time. American Biltrite further asserts that the color is merely ornamental and does not serve as s designator of source, and that red is functional as a universal symbol of caution and increases the visibility of the rubber products, improving safety. American Biltrite notes that, faced with its opposed the application based on lack of acquired distinctiveness and fraud, Linatex expressly abandoned the application. Linatex subsequently filed a new application for the color red, this time limiting the scope to rubber used in mining and minerals processing equipment. During prosecution, Linatex again asserted five years of substantially exclusive use, without notifying the examining attorney of the prior, abandoned application and the opposition thereto, and the application was granted registration in 2017. Linatex thereafter notified customers of American Biltrite that it had the exclusive right to the color red for rubber products used in the mining industry. American Biltrite asserts lack of distinctiveness and two counts of fraud on the PTO. American Biltrite also seeks damages under 35 U.S.C. 1120 for the false or fraudulent registration.
On November 4, 2019, Ronald Satish Emrit filed a pro se lawsuit against the NFL, the Washington Redskins, and Daniel Snyder, the Redskins’ majority owner. Emrit claimed to be both Native American and African American, and sought to institute a class action case for trademark infringement for misappropriating the image of a Native American person as the Redskins’ logo, as well as defamation against Native Americans as a class. The case was assigned to Judge Saris, who has now dismissed the complaint as being essentially duplicative of a number of prior-filed suits. Emrit first filed against the NFL on October 10th in the Eastern District of Virginia, the District of Maryland, and the District Court for the District of Columbia. He subsequently filed the same case in the Southern District of Iowa and the Middle District of Florida before filing the Massachusetts case.
Emrit is a frequent pro se plaintiff, and has been deemed a vexatious litigant in multiple district courts. This practice of filing the same claims in multiple courts no doubt contributes to this characterization.