Earthwatch is a non-profit corporation that supports scientific research through “citizen science.” Under this approach, Earthwatch joins ordinary citizens who are concerned about environmental issues together with world-class scientists to conduct environmental surveys and research, such as tracking chimpanzees through the Ugandan forests. Earthwatch has been in existence since 1971, and has won numerous awards and achieved many scientific publications of its work. Earthwatch has operated under a number of federally-registered EARTHWATCH marks in a variety of classes, which have become incontestible. DigitalGlobe is a Colorado company that offers high-resolution satellite imagery of the globe for, among other things, environmental monitoring. Among the products offered by DigitalGlobe is a customizable subscription service under the name “EARTHWATCH.” Earthwatch asserts that DigitalGlobe is thereby infringing its trademarks under both federal and common law, and moreover that the infringement is willful – DigitalGlobe initially operated as “EarthWatch Incorporated,” and changed its corporate name after a cease and desist demand from Earthwatch. In addition to the trademark counts, Earthwatch asserts violation of Ch. 93A. Earthwatch has been a client of my firm, Lando & Anastasi, for many years, and the case was filed by my colleagues Nate Harris and Peter Lando. The case is before Judge Woodlock.
Al Cass makes and sells lubricating oil for musical instruments under the “AL CASS FAST” mark – I fondly remember the distinct smell of their valve oil from my trumpet-playing days in elementary school. The company has been selling this oil for sixty years, after developing the formulation at the request of jazz trumpeter Dizzy Gillespie, and have used the AL CASS FAST mark since the Sixties. For the past thirty years or so, the oil was sold in these bottles, which Al Cass asserts to be its own trade dress. American Way Marketing (AWM) also makes and sells valve oil (including, at least in the past, Al Cass oil) and in early 2018 offered to buy All Cass, which Al Cass declined. Al Cass asserts that while the offer was being made, an AMW affiliate filed a federal trademark application for “AL CASS FAST” for lubricant oil for use with brass or metal musical instruments. AMW expressly abandoned this application in September following a demand to do so by Al Cass, but subsequently filed an application for “SUPERSLICK FAST.” Al Cass says that AMW sells their oil in bottles that are too similar to the Al Cass bottles.
Al Cass further alleges that AMW has told distributors and customers that Al Cass was no longer selling its FAST oil, saying that the Al Cass oil “is currently unavailable and future ETA is unknown.” Al Cass brings counts for federal, state and common law trademark infringement, trade dress infringement, false advertising, under the Lanham Act and state law, and unfair business practices.
S&S operates a restaurant and pub known as The Bowery (which serves the “8th Wonder of the World,” a full pound hamburger) just off the beach in Myrtle Beach. The establishment has been open since 1944, and registered the BOWERY mark in 1987. Cool Hand Luke opened an establishment it calls “The Bowery Bar” in Dorchester, Massachusetts in 2018. Cool Hand Luke itself has an application for THE BOWERY BAR for restaurant services, which is currently under rejection for likelihood of confusion with S&S’ BOWERY trademark. S&S brings claims of service mark infringement, false designation of origin, common law trademark infringement, and violation of Ch. 93A, and seeks injunctive relief, an accounting of profits, trebling of damages and an award of attorney’s fees, and (oddly) a separate demand for damages in the amount of at least $200,000 without explanation as to why that particular number was sought.
Elvan, a Turkish candy maker, utilized Turkana Food to import and distribute its products in the United States. In 2017, Elvan formed a U.S. entity, based in Massachusetts, to import and distribute its products through grocery stores, which Turkana did not do. Turkana in response terminated their agreement, claiming that Elvan’s actions were in violation of “exclusive rights” of Turkana under the agreement. Elvan accuses that Turkana, its affiliate Spirit Food Group, and their agent Cengiz Yalim of breaching their distribution agreement and selling Elvan products without authorization. Elvan further asserts that the defendants fraudulently attempted to register Elvan’s trademarks, including JELAXY, COFFEX, TOFFEX and TODAY, with the PTO and asserted the marks against customers who were buying directly from Elvan. Finally, Elvan asserts that the Defendants are obtaining and selling counterfeit Elvan products bearing Elvan’s trademarks. In addition to this complaint, Elvan and Turkana have several cancellation proceedings before the USPTO as each tries to register the same marks.
Salem’s Harbor Sweets has been using the HARBOR SWEETS mark for candy since 1973, and has held registrations of the name for candy and mail order services in the field of candy since 1978 and 1979, respectively. Recently, Marissa Maccusso opened Village Harbor Sweets in the beautiful Padanarum neighborhood of South Dartmouth, selling gelato, bubble tea, and chocolates. Harbor Sweets accuses Village Harbor of federal and common law trademark infringement, state and federal trademark dilution, unfair competition, and violation of Ch. 93A.
Boise Cascade, a large lumber, wood and paper, has utilized a graphic of a tree in a circle as a trademark since 1964, and has held federal registrations for the mark since 1981. Boise Cascade accuses NE Treatment Access of infringing this mark through sales of marijuana products utilizing a similar graphic. Boise Cascade brings counts for federal and common law trademark infringement, false designation of origin, dilution under Massachusetts law, injury to business reputation, and unfair business practices. The case is before Judge Gorton.
Oakley accuses Kyong Kim and his retail business known as “It’s All About the Accessories” of selling counterfeit Oakley sunglasses. Oakley investigators visited Kim’s locations at the Northshore Mall in Peabody and the Cambridgeside Galleria (just down the street from my office in Cambridge) in February, and purchased sunglasses bearing Oakley trademarks that are asserted to be counterfeit. Oakley claims trademark counterfeiting and seeks injunctive and monetary relief. The case is before Judge Burroughs.