District of Massachusetts IP Blog

Federal Case Initiated to Prevent Domain Transfer

Rare Names, Inc. (Waltham, MA) has sued Foster, Andrew & Co. (Bolingbrook, IL) for a declaration that a domain name registered by the plaintiffs, <faci.com>, does not violate defendant’s rights.  Defendant was successful in a UDRP action to have the domain transferred.  Plaintiffs initiated this action to prevent the transfer. 

Rare Names, Inc. v. Foster, Andrew & Co., 12-10800-DJC (D. Mass. May 3, 2012)

MR. CLEAN Wipes Up

Butler Home Prods., LLC (Marlborough, MA) has sued Polymer Group, Inc. (Charlotte, NC) for declaratory judgment of non-infringement and cancellation of a trademark registration for a diamond pattern for textile wipes and fabrics.  The defendant had trouble originally registering the pattern in the face of ornamental objections and ended up opting for the supplemental register.  The defendant then accused plaintiff’s MR. CLEAN brand wipes of infringement.  Plaintiff asserted that the accused pattern was in use prior to the registered pattern and brought this action seeking the DJ and cancellation. 

Butler Home Prods., LLC v. Polymer Group, Inc., 11-12176-GAO (D. Mass. Dec. 8, 2011)

Patentee Files DJ Over Threatened Suit

Carl Zeiss Meditec, Inc. (Dublin, CA) has sued Optovue, Inc. (Fremont, CA) and MIT for declaratory judgment that it does not infringe Patent No. 7,884,945 (directed to optical coherence tomography scanning) and that the patent is invalid.  MIT is the assignee of the patent and Optovue is the exclusive licensee.  Carl Zeiss and Optovue are engaged in litigation on Carl Zeiss’s patents in Delaware.  The complaint alleges that Optovue threatened Carl Zeiss with suit under the ‘945 patent if the Delaware case didn’t settle.  Carl Zeiss acted first on that threat, and brought this DJ claim. 

Carl Zeiss Meditec, Inc. v. Optovue, Inc., 11-11990-JCB (D. Mass. Nov. 9, 2011)

Clothing Maker Seeks DJ of No Copyright Infringement

Potpourri Group, Inc. (Chelmsford, MA) has sued Star Fabrics, Inc. (Los Angeles, CA) for a declaratory judgment that the plaintiff does not infringe the defendant’s copyrights in a specific fabric pattern.  You be the judge:

Individual Alleges Earlier Use in Trademark DJ

An individual personal trainer (residing in Wellesley, MA) has sued MizzFit LLC (New York, NY) for a declaration that she does not infringe defendant’s trademark rights as well as for cancellation of defendant’s registrations.  Defendant owns federal registrations for two MIZZFIT based marks.  Plaintiff received a voicemail and email from the defendant threatening infringement if she did not cease use of her MISS FIT based marks, which apparently were being featured by the Style Network.  The complaint alleges that plaintiff’s use predates the defendant’s use. 

Boyd v. MizzFit LLC, 11-11751-JLT (D. Mass. Oct. 4, 2011)

Midwest Companies Bring DJ Fight to Boston

TA Operating LLC (Westlake, OH) has sued Cascades Branding Innovation, LLC (Northbrook, IL) and N99 LLC (Boston, MA) for a declaratory judgment that Patent No. 7,768,395 (directed to “Brand Mapping”) is invalid.  N99 is the patent owner, Cascades is the exclusive licensee.  Cascades had contacted TA to notify TA of infringement, to make a license offer, and to notify TA of other actions asserting Cascades’ patent rights.  TA decided to strike first. 

TA Operating LLC v. Cascades Branding Innovation, LLC, 11-11432-WGY (D. Mass. Aug. 10, 2011)

Research Chemical Supplier DJs Retail Drug Manufacturer Over Marks

PKC Pharm., Inc. (Woburn, MA) has sued Celgene Corp. (Summit, NJ) for a declaratory judgment that PKC does not infringe Celgene’s REVLIMID, REVAMID, and REVIMID trademarks.  A division of PKC sells research compounds not intended for medical treatment to “research customers.”  In its catalogs PKC lists the commercial names of FDA products next to their corresponding compounds.  Celgene objected to the use of REVLIMID in PKC’s catalogs and sued PKC’S division in New Jersey.  (11-01697-WJM-MF (D. N.J.))  PKC moved to dismiss for lack of personal jurisdiction and filed this corresponding DJ case asserting that there is no trademark infringement. 

PKC Pharm., Inc. v. Celgene Corp., 11-11211-WGY (D. Mass. July 8, 2011)

CT Scanning Acquisition Turned Sour Leads to DJ Complaint

Analogic Corp. (Peabody, MA) has been sued by NeuroLogica Corp. (Danvers, MA), two of NeuroLogica’s founders, and NeuroLogica’s Chairman of the Board Bernard Gordon.  All used to be with Analogic, including Gordon, who used to be Chairman of the Board at Analogic.  The dispute stems from NeuroLogica’s attempts to find an acquisition partner and its claims that Analogic threatened legal action with NeuroLogica simply to drive down Neurologica’s price for potential acquisition by Analogic.  The plaintiffs seek declarations that they have not breached their fiduciary duties to Analogic, that they own certain intellectual property related to CT scanning, that Neurologica has not infringed Analogic’s Patent No. 5,867,553, and that the patent is invalid.  They also bring their own claims for tortious interference and 93A violations. 

The details of the interaction between the parties make for interesting reading, but the summary is as follows: 

One Patent Removed From DJ Action

Last year ATMI sued a number of defendants accusing them of infringing seven ATMI patents.  One defendant, Millipore, counterclaimed for a declaratory judgment of non-infringement on one of the patents (7,469,884).  Only ATMI never accused Millipore of infringing the ‘884 patent and so it moved to dismiss that specific counterclaim.  Judge Stearns noted that the court “takes ATMI at its word” and declined to exercise jurisdiction over that counterclaim, dismissing it without prejudice. 

Advanced Technology Materials, Inc. v. Millipore Corp., 10-11247-RGS (D. Mass. May 5, 2011)

Employment Lawyers Fight Over EMPLOYMENT LAW Trademark

The Najjar Employment Law Group, P.C. (Andover, MA) has sued The Employment Law Group (DC) for a declaratory judgment that Najjar has not infringed defendants rights in THE EMPLOYMENT LAW GROUP® (for legal services) and that the trademark is not valid.  I am a bit curious how that mark was registered in the first place.  

The Najjar Employment Law Group, P.C. v. The Employment Law Group, 11-11012-GAO (D. Mass. June 7, 2011)