Holistic Technologies filed suit against Lumina Group, seeking a declaration that it does not infringe Lumina’s TENDLITE product trade dress. The TENDLITE is a therapy device that uses red light to treat skin conditions such as wrinkles, scars, and the like. Holistic markets its own red light therapy device, the Quantum Rejuvenation device.
In late July, Holistic received a cease-and-desist letter from Quantum, asserting trade dress infringement and asserting that Holistic had copied Lumina’s advertising and packaging. Holistic denies copying the advertising and packaging, and asserts that the product design is generic, has not acquired distinctiveness, and thus unprotectible. Holistic further alleges that Lumina had the Quantum Rejuvenation product removed from Amazon and Google by asserting infringement of Lumina’s trademark in bad faith – Holistic used the mark to reference the Lumina product in a comparative advertisement, which would not constitute infringement. Lumina further posted on Holistic’s Amazon page that Holistic was running inaccurate and illegal advertisements, and is alleged to have posted negative reviews of the Holistic product. Finally, Holistic asserts that Lumina falsely claims that the TENDLITE is patented. In addition to the declaratory judgment claim, Holistic brings affirmative claims of unfair competition, false patent marking and violation of 93A. Holistic seeks an award of Lumina’s profits for the unfair competition claim, as well as its damages and attorneys’ fees. Judge Talwani has the case.
Massachusetts strip club owners beware – an IP firm is scouring advertising that falsely suggests that models are appearing at, or otherwise sponsoring, local establishments. The five cases here include These suits, which include more than thirty different plaintiffs (some of whom appear in several cases) follow the Mitcheson suit earlier this month, and include counts for false advertising and false association, rights of privacy and publicity, statutory unauthorized use of an individual’s name, portrait or picture, conversion, unjust enrichment, quantum meruit and negligence.
Motus, a mobile workforce and fleet management company headquartered in Boston, sued Event Solutions for infringement of its federally-registered MOTUS trademark. According to the complaint, Event Solutions rebranded itself as “Motus One” in September 2018, and provides similar consulting services for parking, transportation, and the like. Motus alleges that, following a cease and desist letter, Event Solutions agreed to transition away from the “Motus One” name by the end of June, 2019. Despite this, Event Solutions continues to use the “Motus One” name and has indicated an intention to keep it. Motus brings counts for breach of contract (relating to the agreement to cease use of the mark), federal and state trademark infringement and dilution, unfair competition, and injury to business reputation.
A number of models, including first-named plaintiff Dessie Mitcheson, sued Springfield’s Aquarius Nightclub and its owner for false advertising and false association under the Lanham Act, as well as common law and statutory right of privacy, common law right of publicity and statutory unauthorized use of an individual’s name, portrait or picture in connection with the nightclub’s alleged use of photographs of the models in their advertising and promotional material. The models, who model for magazines such as Maxim, Stuff, Playboy and Glamour and appear in music videos, advertisements, assert that their being falsely associated with Aquarius, a strip club, injures their professional reputations and was done without their knowledge or consent and without payment. In addition to the above claims, the plaintiffs bring counts for conversion, unjust enrichment, quantum meruit and negligence.
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.
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.
James Naismith created the game of basketball in Springfield, Massachusetts in 1891. Beginning at least as early as 1959, the Hall of Fame began operating a basketball hall of fame in the same town, named for James Naismith. The Hall owns a number of trademark registrations involving the name Naismith, including NAISMITH MEMORIAL BASKETBALL HALL OF FAME, NAISMITH BASKETBALL HALL OF FAME, NAISMITH COACHES CIRCLE, NAISMITH ORANCE, and several logo marks that incorporate “Naismith” in the logo. The Hall accuses Naismith’s Pub & Pretzel of deceit as to affiliation, false designation of origin, sponsorship or approval, dilution, and unfair competition, under both the Lanham Act and Massachusetts common law, asserting that the name of the restaurant, located a mere 1.3 miles from the Hall of Fame, was intended to trade off the good will of the Hall. The Hall notes that the restaurant is decorated with basketball memorabilia, including a number of images of James Naismith. The Hall’s claims all rely on “Naismith” being the dominant part of both its registered marks and Defendant’s name. Notably, the Hall does not indicate any direct connection with Naismith or his family. Also noteworthy, the first of the registrations was initially refused over a prior registration to “Naismith Awards,” with the examining attorney noting that the dominant part of each was “Naismith.” The Hall overcame the rejection through a consent agreement in which each asserted that there was no confusion between the two. While that might seem inconsistent with the current lawsuit, the “Naismith Awards” took place in Atlanta, not Springfield, and had coexisted at the time for nearly twenty years with no confusion noted.