Ethic, an investment advisor that specializes in socially aware investing, filed suit against Admirals Bancorp and Ethic Wealth Advisors, LLC, accusing the two of rebranding to the “ETHIC” mark for the provision of similar services. Ethic asserts federal and common law trademark infringement, false designation of origin and unfair competition and unfair trade practices. Ethic further asserts that the infringement was willful, because Admiral’s intent-to-use applications for registration of ETHIC and ETHIC A WEALTH BANK were each refused in light of Ethic’s prior registration. Ethic asserts that, in response to the latter rejection, Admiral misled the PTO as to the differences between the respective services, banking services versus investment advisory services, that rendered confusion unlikely. According to Ethic, at the time of this representation, Admiral had already taken steps to offer investment services under the “Ethic” mark, as evidenced by Admiral’s SEC filings. The case is before Judge Sorokin.
Biogen, along with the University of Zurich, accuses New York-based Creative Biolabs of infringing U.S. Patent No. 8,906,367. The patent is said to cover an antibody, Aducanumab, that Biogen is investigating as a treatment for early Alzheimer’s disease. Biogen licensed the antibody from a Swiss biotech company, Neurimmune Therapeutics, who had itself licensed the antibody and accompanying intellectual property from the University of Zurich. The antibody was developed from antibodies in healthy, aged donors who did not have Alzheimer’s, under the theory that these individuals’ immune systems had successfully resisted the disease, and the treatment has reduced the plaques that are a marker of the disease in animal studies. Biogen is presently working in collaboration with pharmaceutical company Eisai in clinical development and commercialization of the antibody, which is also known by the widely-used designation “BIIB037,” and is currently seeking regulatory approval for its use, currently back in trials after having previously been pulled. In addition to patent infringement, Biogen asserts that Creative Biolabs infringes Biogen’s trademark rights in the “BIIB037” alternate designation, which Biogen believes will cause confusion or mistake as to the origin, sponsorship or approval of Creative Biolabs’ aducanumab products. Biogen also asserts violation of 93A. The case is with Magistrate Judge Cabell.
Cambridge’s HubSpot, a marketing and customer relations software company, accuses India’s Zoho of trademark infringement and dilution of its HUBSPOT and HUB family of marks, including HUBSPOT MARKETING HUB (the sole mark on which it has registration) and MARKETING HUB, which HubSpot alleges to have used since 2017. HubSpot asserts that Zoho’s use of the term “ZOHO MARKETINGHUB” on similar products through similar channels, infringes these marks. Zoho announced in January 2019 that it was rebranding its products with that mark. HubSpot asserts that Zoho continued with the use of this mark despite receiving cease and desist communications, making the infringement willful. In addition to the federal trademark infringement and dilution claims, HubSpot alleges false designation of origin, common law trademark infringement and violation of 93A, although it is difficult to see how Zoho’s acts occurred primarily and substantially in Massachusetts to sustain the 93A claim.
JT IP and its member and manager, Jeffery Eldredge, filed suit against FloPack, LLC and its members and managers Thomas Florence and his daughter, Kimberly Perry. According to the complaint, Florence approached Eldredge in 2016 about going into business together. The two subsequently formed JT IP Holdings, with Florence’s contribution to the company to include the development of a new product, as well as to set up the business, which Eldredge contends Florence failed to do. In the summer of 2019, Florence was issued U.S. Patent No. 10,364,563 entitled “Runoff Water Management System.” Eldredge asserts that this patent was the result of his working with Florence to update and improve upon a previous Florence patent to a similar system. He says that he relied upon Florence’s assertion that he need not be named an inventor, and that the ‘563 patent was assigned to JT IP, protecting his rights. Eldredge asserts that Florence has hindered JT IP’s ability to obtain necessary additional funding, and subsequently that Florence purported to assign the ‘563 patent to new entity, FloPack, LLC, that was set up in the name of Kimberly Perry, in violation of the operating agreement of JT IP. Eldredge brings claims for correction of inventorship. violation of the Lanham Act in misrepresenting ownership of the ‘563 patent, infringement of the ‘563 patent, declaratory judgment that the assignment of the ‘563 patent to FloPack is null and void, conversion, breach of fiduciary duty, unjust enrichment, fraud and misrepresentation, tortious interference with a contract and with prospective economic advantage, and violation of 93A.
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.
Christopher Annis was engaged by Shinbone Alley to assist with photography for Shinbone’s planned website. Annis’ work included retouching photographs, work as a digital capture technician set styling and lighting, and photography over the course of several sessions. After delaying payment several times, Shinbone ultimately did not pay Annis for his work. The photographs were, however, put up on Shinbone’s website, www.shinbonealley.com, when it went live. Annis, having registered copyright in seventeen of the photographs, demanded Shinbone cease and desist using the photographs, which Shinbone has not done. Annis asserts copyright infringement, breach of contract, breach of the covenant of good faith and fair dealing, promissory estoppel, quantum meruit and unjust enrichment and breach of M.G.L. c. 93A. The complaint further notes that the Massachusetts Attorney General’s office has been given the information to review and that Annis will seek to amend the complaint to add a claim under M.G.L. c. 149 § 150, which relates to requirements for payment of wages, if the Attorney General fails to take action. Judge Young is assigned to the case.
The Art and Creative Materials Institute (“ACMI”) is an association of arts and crafts material manufacturers that provides safety certifications for such materials. It tests materials to ensure that materials that are given the “ACMI Approved Product (AP) Seal” and “ACMI Cautionary Labeling (CL) Seal” are non-toxic and carry appropriate cautionary labels. ACMI obtained a federal registration on the “AP SEAL” mark in 2008. ACMI accuses Creative Paperclay of trademark infringement, counterfeiting, passing off, dilution, breach of contract and unfair competition and violation of 93A in connection with Creative Paperclay’s alleged wrongful use of the ACMI Seals. Creative Paperclay had been a member of ACMI via a Subscription Agreement that governs the terms of membership, including initial and subsequent testing of the materials and payment of annual fees. ACMI asserts that Creative Play was using the AP SEAL mark on products that had not been assessed and approved in a timely fashion and on products that had been tested and decertified.
Ecobee accusses Pro Click, Budrug Sales, Green Good Deals and Stelli Products of infringing ecobee’s trademark, unfair competition, and false designation of origin in connection of their unauthorized sales of ecobee products. Each of the defendants is accused of selling actual ecobee products via websites such as Amazon.com, designating the products as “new” without offering all of the services, specifically quality control standards, that come with the authorized sale of a new ecobee product. Ecobee’s complaint is similar to many other such complaints that it has filed against Amazon sellers. Ecobee, who does not know the name and address of the Defendants, asserts that personal jurisdiction exists in Massachusetts as a result of the sale of product into the Commonwealth. In addition to the federal claims, ecobee asserts tortious interference with contractual relations and violation of c. 93A. Judge Stearns has the case.
In December, home theater maker Sound United sued Amazon sellers Amazing Deals Online, and a third, unknown seller identified as “Amazon.com seller audio video sales guy” (“AVSG”), accusing each of infringing Sound United trademarks for such products, including DENON, POLK AUDIO, MARANTZ, DEFINITIVE TECHNOLOGY, HEOS, BOSTON ACOUSTICS, and CLASSE while not being authorized resellers of such products. The resellers are further accused of suggesting that a manufacturer’s warranty. Sound United does not assert that the marks are being placed on non-Sound United products; instead, Sound United asserts that the defendants obtained Sound United product from authorized resellers in knowing violation of the resellers’ agreements with Sound United. Sound United asserted trademark infringement, tortious interference with contractual relations, and violation of Ch. 93A.
Sound United, having been unable to find a physical mailing address or business location for the unknown seller AVSG, sought permission to serve that entity using its Amazon.com electronic mail service. Magistrate Judge Cabell granted the motion, noting that under Massachusetts law, when a process servers reports back that after a diligent search he or she cannot find the defendant, the defendant’s last and usual address, or an agent upon whom process may be served, the court may issue an order of notice. He determined that, under the circumstances, service via Amazon was reasonably calculated to prove requisite notice.
Welch Foods, a cooperative corporation owned by more than 750 farmer families, filed suit against its former licensee Healthy Food Brands (“HFB”), accusing it of violating its contract with Welch and of trademark infringement in connection with HFB’s continued marketing and sale of licensed products post-termination. Welch owns a number of federal trademark registrations to marks that include the term “WELCH’S” for a variety of food products and services. In 2014, Welch and HFB entered into a license agreement under which HFB would develop, manufacture and sell products such as dried and freeze-dried fruits and trail mixes under the WELCH’S BRAND. The license granted exclusivity in this area. The agreement provided for the payment of royalties based on sales, with certain minimum royalties established, and also sets forth reporting requirements on HFB sales. Welch asserts that HFB has missed a number of royalty payments and has never provided the required sales information, with the purpose of hiding the actual level of sales. After providing written notice of these breaches and allowing the passage of the required time to cure, Welch terminated the agreement in June, 2019. While the agreement requires the return or destruction of all WELCH’S-branded products upon termination, Welch asserts that HFB has instead continued to sell these products. Welch asserts breach of contract, breach of the covenant of good faith and fair dealing that is inherently applied to Massachusetts contracts, quantum meruit, unjust enrichment, trademark infringement, false association, unfair competition and dilution under the Lanham Act, and violation of Mass. G.L. c. 93A. Judge Stearns has been assigned the case.