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.
DogWatch, a Natick company that makes electronic pet restraint systems such as the “invisible fence,” accuses its former Florida dealer DogWatch of Sarasota (“DoS”) of trademark and trade dress infringement, trade secret misappropriation, breach of contract, passing off, unfair competition, tortious interference with contractual relationships, and unjust enrichment in connection with DoS’ continued use of DogWatch’s name and proprietary information following termination of their business relationship. DogWatch has had a federal registration to its name since 1993, and asserts (with no real evidentiary support) that the name is famous. DogWatch further asserts trade dress protection in some combination of its order forms, yard flags, letterhead, stationary, internet web pages, URL’s van graphics and other unspecified materials. DogWatch further asserts trade secret protection in pricing information, draft marketing and promotional material, and business strategy and plans, and it asserts that the exclusive dealer agreement with DoS included an implied covenant not to use or disclose these purported secrets. Late last year, DogWatch notified DoS that they were terminating the exclusive dealer agreement, for reasons not specified in the complaint. Despite this, they assert that DoS continues to hold itself out as a DogWatch dealer and to use the trademark, trade dress, and trade secrets of DogWatch. The breach of contract count cites acts of DoS that occurred following termination of the agreement – there is no suggestion that DoS did anything wrong prior to termination. Judge Saris has this case.
Daniel Earle and his Amazon reseller company, The Antitrend, filed a lawsuit seeking a declaration that they do not infringe a number of Standard Process’ trademarks or otherwise unfairly compete with Standard Process. The Antitrend is in the business of reselling branded goods bought on the open market through an Amazon storefront. This district has seen a number of suits brought by trademark holders against Amazon resellers, notably ecobee’s recent series of suits. In this case, Earle claims that he obtains Standard Process goods legally and without restriction. He further asserts that his site makes clear that it is not affiliated with any of the manufacturers whose products are sold thereon, and that no manufacturer’s guarantees or warranties will apply to goods purchased from his site. Despite this, he has received a number of cease and desist letters from Standard Process, and that Standard Process filed (but did not serve) a complaint against his site in the Western District of Wisconsin last month. By this complaint, Earle challenges the claims in that complaint, asserting that the first sale doctrine prohibits these claims. Earle notes that Standard Process has already lost on the first sale doctrine in a prior litigation in the Eastern District of Wisconsin (although I would note that Banks prevailed at summary judgment with respect to a website that included an express disclaimer of affiliation, but denied summary judgment with respect to solicitations that included pictures of Standard’s products and lacked a disclaimer of affiliation). Earle also asserts that Standard Process’ resale policy does not form an enforceable contract, particularly where Earle bought the products on the open market, another issue that Standard Process had previously litigated and lost on (in a 2008 case, Standard’s unilateral resale policy was found not to constitute a valid contract, because it imposed no obligations on Standard; it is unclear from the complaint in this case whether Standard has since changed the policy). Earle’s complaint does not provide a reason why this case should be heard in Massachusetts instead of the first-filed district, so it will be interesting to see whether this case moves forward in the Commonwealth.