Sensitech, Inc. v. Grupo OFAS, SA de CV et al. (19-cv-12554).

Sensitech, a maker of monitoring devices for monitoring and maintaining manufacturing and storage conditions, sued its former Mexican distributor Grupo, accusing Grupo OFAS of trademark infringement and breach of contract. The agreement by which OFAS would distribute certain Sensitech products in Mexico terminated on November 30, 2015; at that point, OFAS was obliged to return all Sensitech IP and make all payments due. Sensitech asserts that OFAS never made the required payments and continues to use Sensitech trademarks and hold itself out as a licensed Sensitech distributor, and was using shell companies to try to obtain additional Sensitech products. Sensitech alleges a 93A violation in addition to the Lanham Act and contract causes of action. The case is before Judge Burroughs.

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.

Moreland a/k/a Ana Cheri et al. v. Malebox, LLC d/b/a Shadow Bar & Lounge et al. (19-cv-30093).

Judge Mastroianni granted Shadow Box owner Brian Goldricks’ motion to dismiss the claims asserted against him in his individual capacity. To survive the motion to dismiss, Moreland was required to make factual allegations that Goldrick was the motive, active conscious force behind the alleged trademark infringement, and (with respect to the state law claims) that he was personally involved in the alleged tortious acts. Judge Mastroianni found that the complaint made only conclusory statements (such as “on information and belief” allegations), which are not, as phrased, factual allegations and are therefore not credited when determining whether the complaint meets the Iqbal/Twombly pleading standards.

Bodega, LLC v. Bodega Rose, Inc. at al. (19-cv-12474).

Bodega, LLC of Boston is an on-line and brick-and-mortar store that sells limited edition footwear and clothing, including footwear co-branded with the “Bodega” label. Bodega asserts that Bodega Rose infringes its registered “BODEGA” and “BDGA” trademarks through sales of “Bodega Rose”- labelled clothing and sneaker-shaped planters. Bodega noted that, in addition to the complaint, it was opposing the “BODEGA ROSE” trademark application that the defendant had filed. In the complaint, Bodega asserts both federal and common law trademark infringement, unfair competition and unjust enrichment.

Mitchell Repair Information Company, LLC v. Kevin Truong d/b/a Kevin Nguyen (19-cv-12388).

Mitchell Repair is the owner of the copyright in an automotive diagnostic software program series known as “Mitchell On-Demand.” The software is available for license from Mitchell Repair, either as a perpetual license or as a twelve-month, renewable license. In either case, the license is non-transferable. Mitchell asserts copyright infringement against Kevin Truong, asserting that Truong obtained an unauthorized version of the software and sold copies to service stations in towns north of Boston. Mitchell also asserts violation of c. 93A.

Dunkin’ Donuts Franchising LLC et al. v. RMG Donuts, LLC et al. (19-cv-12395).

Dunkin’ Donuts Franchising filed suit against former franchisee RMG Donuts, who had operated a Dunkin’ Donuts franchise in Maverick Square, East Boston, as well as three individuals who, as members of RMG Donuts, executed a personal guarantee in connection with the franchise agreement. Dunkin’, which holds a number of registrations related to their business, asserts that RMG was run in a fashion not permitted by the franchise agreement, which established standards for health, food safety and sanitation that RMG is alleged to have failed to meet. Dunkin’ pointed to a November 2019 Facebook post regarding a pest infestation at the shop, and required that it be immediately closed. Pursuant to the franchise agreement, Dunkin’ provided notice to RMG that they had 24 hours to cure the issue, and terminated the franchise when the problem remained two days later, on November 21st. Dunkin’ asserts that despite this, RMG continued to operate the store using the Dunkin’ Donuts systems and trademarked materials. Dunkin’ asserts breach of contract, trademark and trade dress infringement, and unfair competition.

It appears that the store had been closed by the Boston Inspectional Services pending clean-up of the facility; Dunkin’ seeks to prevent its reopening under the Dunkin’ Donuts name.  Judge Sorokin has been assigned to the case.

Cedar Bay Grilling Co. Ltd. V. Canadian Fish Exporters, Inc. (19-cv-12264).

Cedar Bay sued Canadian Fish Exporters, or “CFE,” for false association and false designation of origin in connection with the importation of salmon products. Cedar Bay is a Nova Scotia business that holds registrations on “CEDAR BAY” and on design marks that include “CEDAR BAY GRILLING COMPANY.” cedarbay-new-logo

Cedar Bay and Massachusetts business CFE had previously entered into an agreement by which CFE distributed Cedar Bay’s products in the United States and the Caribbean. Cedar Bay alleges that CFE demanded lower prices from Cedar Bay to permit sales to large retail customers such as Kroger and Walmart, but did not pass the cost savings on to these customers, and that CFE misled Cedar Bay about the mark-ups CFE was charging on Cedar Bay products. Cedar Bay further alleges that the failure to pass on the cost savings resulted in the loss of accounts, and that CFE failed to properly seek to expand the business. Cedar Bay hired a broker to assist in expanding the business, but alleges that CFE has blocked the broker from contacting existing customers and has asserted that Cedar Bay has no right to contact retail customers in the United States, which Cedar Bay denies. Cedar Bay asserts that CFE uses Cedar bay’s trademarks in a manner that falsely suggests that the products and trademarks are owned by CFE. In addition to false designation of origin, Cedar Bay alleges tortious interference with economic advantage and violation of 93A. Apparently, the contract with CFE remains in place, however, as there is no allegation that it terminated or was breached.

Timmins Software Corporation d/b/a Mitrend v. EMC Corporation d/b/a Dell EMC et al. (19-cv-12053).

Mitrend, a Marlborough company that provides software and services relating to datacenter infrastructure assessment and performance, accuses EMC and Dell of copyright infringement, violation of the Digital Millenium Copyright Act, unjust enrichment, breach of contract, and unfair competition. Mitrend contends that EMC, a wholly-owned Dell subsidiary, began using Mitrend’s analysis service in 2006 under a master services agreement and a number of statements of work, using EMC software for data collection. Mitrend realized that the data collection process could be improved upon, and independently conceived of an automated and accelerated process for data collection that substantially reduced collection times. Mitrend contends that the new software was adopted throughout EMC and became the company’s primary data collection method. Mitrend’s relationship with EMC rapidly grew to several million dollars per year, and EMC did not develop its own competing software. Under the statement of work dealing with this, Mitrend’s software was deemed to remain Mitrend’s property, and all derivative works would belong to Mitrend. Further, a separate software license agreement prohibited reverse engineering of the software by EMC, as well as prohibiting removal of copyright notices. These terms were carried forward in a 2015 agreement between the businesses. In 2017, however, after EMC was acquired by Dell, EMC demanded changes to the license that would include transfer of ownership of the software IP to EMC/Dell. Mitrend refused, and provided notice of termination effective March 2, 2017, although at EMC’s request the parties subsequently agreed to extend the termination date to November 30, 2017. Shortly thereafter, EMC announced the launch of its own competing product. Mitrend contends that EMC sought the extension to develop and deploy its competing software, which it later discovered to be using the same scripts as the Mitrend product, which it alleges EMC copied. The case is assigned to Judge Talwani.

Fenway Enterprises 1271 Boylston Street LLC v. Hard Rock Café International (USA), Inc. (19-cv-11998).

Fenway Enterprises runs the “Verb” Hotel, a retro, music-themed hotel located just outside of Fenway Park that opened in 2014. Verb hotelAs is mentioned on its website, the name for the hotel was chosen as a shortened form of the musical term “reverb,” as well as for signifying action.

Fenway asserts that Hard Rock’s planned launch of a series of musical themed hotels under the name “Reverb” will infringe its federally-registered “VERB” mark for hotel services, as well as its common law rights in the mark. Hard Rock has filed intent-to-use applications for “Reverb” and “Reverb by Hard Rock” for hotel, restaurant, bar and casino services, and already has a website devoted to the new hotel chain, Fenway Enterprises asserts that its hotel’s success hinges on the authenticity of its hotel, which would be harmed by association with the Hard Rock’s “glitzy, overstated chain hotels,” expressly citing a giant, guitar-shaped hotel to be opened by the Hard Rock in Florida that has earned the description “monstrosity that has offended nature itself.” Fenway Enterprises further cites the reality television show Rehab: Party at the Hard Rock Hotel as associating the Hard Rock brand with drinking, drug abuse and debauchery. Fenway says that Hard Rock was notified of the Verb Hotel in March, but has thus far refused to rebrand the planned REVERB hotel franchise. In addition to trademark infringement, Fenway asserts violation of Ch. 93A, although it may have difficulty proving that the acts complained of occurred substantially within the Commonwealth – the first REVERB hotel is planned for Atlanta, with a second to follow in California.

Holistic Technologies, LLC v. Lumina Group Inc. (19-cv-11677).

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.