Milk Street Cafe, a café and catering business located on Milk Street in Boston, sued CPK Media when the latter opened the “Craig Kimball’s Milk Street Kitchen” (they have since dropped the word “Kitchen”), a cooking school also located on Milk Street. Judge Casper last year denied Milk Street Café’s motion for preliminary injunction, finding it had not shown a reasonable likelihood of success. After a bench trial, the court concluded that the defendant had rebutted the presumption of secondary meaning that came with the registration of the mark “Milk Street Café,” based largely on the fact that only the defendant offered consumer survey evidence on this issue. The court also determined that there was no likelihood of confusion, in part because the only real similarity of the marks was the phrase “Milk Street” in which Milk Street Café had no trademark rights and because the goods and services – breakfast and lunch restaurant and corporate catering by Milk Street Café versus cooking demonstrations and classes by the defendant – were not similar. Judge Casper found no trademark infringement, no false association, and no unfair competition. He did, however, refuse to cancel Milk Street Café’s trademark registration, finding the defendant had not shown that it would be damaged by the continued registration of the mark.
WorldCare Limited Corp. sued NOW Health International (Holdings) Ltd. for breaching a trademark license and co-existence agreement and for trademark infringement. WorldCare and NOW had previously had a dispute over the use of the “WorldCare” name. The parties resolved the dispute by entering into an agreement by which NOW was granted the right to use the mark to sell health insurance, but was prohibited form offering “second opinion” medical advice services in connection with its “WorldCare” policies, as that was the nature of WorldCare’s business. Jurisdiction and venue over NOW, a Bermuda company with no physical presence in the United States, is based on a clause of the 2013 agreement.
Capsule Collective filed suit against Tilt Lacrosse, alleging willful infringement of the “TILT” trademark and various stylized “TILT” marks and seeking cancellation of defendant’s Registration No. 4,818,851 for the “TILT” mark on t-shirts, hats, and other clothing. Capsule Collective claims to have first used the mark in commerce on clothing, hats, push scooters, and scooter accessories before Tilt Lacrosse’s first use in commerce. Additionally, Capsule Collective claims trademark and trade dress infringement, false designation of origin, passing off, violation of the Lanham Act and violation of M.G.L. 93A. It further seeks cancellation of Defendant’s “TILT” registration.
The Life Is Good Company filed another suit against a company allowing users to design and sell t-shirts and the like, this time going after the company behind www.teespring.com. The allegations are virtually identical to the complaint mentioned yesterday against Viral Style.
Merchant Consulting sells payment processing technology equipment and services. It accuses the defendants of infringing its registered stylized mark, Registration No. 3,556,016, which is a gray “M” in a blue and green circle imposed over a gray arrowhead, with the company’s name to its right. It alleges that it also operates under its initials, MCG. Merchant Consulting alleges that the defendants run fraudulent merchant processing companies that misappropriate its “Merchant Consulting Group” and/or “MCG” marks, resulting in actual confusion. Indeed, one example of confusion cited was that the Consumer Protection Division of Missouri opened a complaint against the plaintiff, mistaking it for the defendant. Merchant Consulting charges trademark infringement, unfair competition, and cyberpiracy under the Lanham Act based on defendants’ use of the domain name “www.choosemcg.com.”