Baystate Health, Inc. v. Bay State Physical Therapy, PC et al. (20-cv-30042).

Baystate Health accuses Bay State Physical Therapy of willfully infringing its trademarks, and further seeks cancellation of Bay State Physical Therapy’s U.S Registration No. 3,943,252 for “BAY STATE PHYSICAL THERAPY.” In addition to Bay State Physical Therapy, Baystate Health seeks to hold Steven Windwer, Bay State Physical Therapy’s sole officer and director, personally liable. Baystate Health, which runs a number of hospitals and medical practices, asserts that it first began using the BAYSTATE mark in 1976 in association with a wide range of healthcare services, including physical therapy. Baystate Health holds registrations, both state and federal, for various marks that include “BAYSTATE,” including a registration on “BAYSTATE” standing alone. According to the complaint, Bay State Physical Therapy began using the name in August 1995, and Baystate Health first became aware of this use in 2008. At the time, all of Bay State Physical Therapy’s locations were in eastern Massachusetts, which Baystate Health deemed acceptable. In 2010, however, Bay State Physical Therapy applied for a federal registration in which it asserted that, to its knowledge, no one else had the right to use the same or a similar mark in commerce, which Baystate Health asserts was knowingly false. Further, in 2019, BayState Physical Therapy expanded considerably, including into Springfield, Massachusetts, an area Baystate Health operates. Baystate Health asserts common law, state and federal trademark infringement, false designation of origin, violation of M.G.L. c. 93A, and fraud on the PTO.

Given that “Baystate” seems (to me, at least) to be geographically descriptive of Massachusetts, I am curious to see how this plays out for both parties. Bay State Physical Therapy’s registration is to a design mark that incorporates both design elements and colors, and disclaims the wording absent the design, which may be sufficient to overcome the geographical descriptiveness issue (which was not raised in examination). The case, being in the Springfield Division, is before Judge Mastroianni.

SimpliSafe, Inc. v. Switchmate Home LLC (19-cv-12520).

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.

American Biltrite Inc. et al. v. Linatex Limited PLC et al. (19-cv-12466).

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.