District of Massachusetts IP Blog

Not The Original Platter

Herb Reed Enterprises (Arlington, MA) has sued Cape Entertainment, Inc. (Coconut Creek, FL) and its owner for trademark infringement relating to use of HERB REED AND THE PLATTERS. The plaintiff alleges ownership of the rights to the mark dating back to the founding of the original musical group in the 1950s. Defendants are accused of promoting a different band under the same name (as the plaintiff discovered when a dissatisfied customer reported the defendants’ activities).

Herb Reed Enterprises LLC v. Cape Entertainment, Inc., 12-11004-MBB (D. Mass. June 6, 2012)

AAA Ticked Off at Hotel

American Automobile Association (Heathrow, FL) has sued 1261 Bass River Realty, LLC (North Easton, MA) for trademark infringement of plaintiff’s AAA mark.  The complaint alleges that a hotel owned and operated by the defendant uses the marks without permission to create a wrongful sense of affiliation between the hotel and the plaintiff. 

American Automobile Association v. 1261 Bass River Realty, LLC, 12-10641-MBB (D. Mass. Apr. 10, 2012)

Photographer Objects To Rent-Free Use of Pic

In a pro-se complaint, a Boston resident accused Boston Pads, LLC and a host of affiliated individuals of copyright infringement related to unauthorized use of plaintiff’s photograph on multiple real-estate websites.  No registration of the work in question is alleged, which is more understandable for a pro-se plaintiff. 

Rogers v. Boston Pads, LLC, 11-11890-MBB (D. Mass. Oct. 29, 2011)

Single Serve Coffee Cartridges Dispensed

Keurig, Inc. (Reading, MA) has sued JBR, Inc. (Lincoln, CA) for infringement of Patent Nos. D502,362, 7,165,488, and 7,347,138 related to single serving beverage cups and brewers.  Defendant sells infringing “OneCup” beverage cartridges for use with plaintiff’s patented brewers.  Plaintiff is steamed. 

Keurig, Inc. v. JBR, Inc., 11-11941-MBB (D. Mass. Nov. 2, 2011)

Stipulated Injunction Mitigates Prejudice From Stay

Gryphon Networks had sued a former employee and his new employer for patent infringement, trade secret misappropriation, breach of contract, unfair competition, etc.  The case was stayed by Magistrate Bowler pending the reexamination of the patent-in-suit.  Following that order the parties stipulated to a preliminary injunction prohibiting the defendant from selling the accused product.  I wonder what transpired to get the defendant to agree to the injunction. 

Gryphon Networks Corp. v. Contact Center Compliance Corp., 10-10258-MBB (D. Mass. Sep. 30, 2011)

Cosmetics Business Angers My Mom

Hadassah, The Women’s Zionist Organization of America, Inc. (New York, NY) has sued Esther Hadassah cosmetics (Lawrence, MA) and its owner for infringement of the trademark HADASSAH.  The plaintiff has a number of registrations in the mark, including one for jewelry with a first use dating back to 1941 (though only registered in 2009).  The plaintiff also has a registration for the mark ESTHER (the English translation of the Hebrew “Hadassah”) for pearls and jewelry set with pearls dating to 2004.  What the plaintiff does not have is a registration (or use) for either ESTHER or HADASSAH for cosmetics.  Defendant has applied for such a registration and claims a date of first use of 2008. 

The complaint alleges that the HADASSAH mark is strongly associated with the plaintiff (certainly true in certain circles) and is strongly associated with women (I’d be even more specific and say Jewish women).  Can the plaintiff, a century-old non-profit organization with a name based on a character from the Bible prevent a new cosmetics startup from using the same name?  We shall see. 

Hadassah v. Alvarez, 11-11660-MBB (D. Mass. Sep. 20, 2011) 

[Note:  My mom doesn’t actually know about this case.  Shhh.]

Tote Bag Sellers Fight MY LUNCH Mark

JJI Int’l, Inc. (Cranston, RI) has sued Upper Canada Soap and Candle Makers Corp. (Ontario, CA) and its New England sales representative for infringement of the mark MY LUNCH for tote bags. 

JJI Int’l, Inc. v. Upper Canada Soap and Candle Makers Corp., 11-11036-MBB (D. Mass. June 9, 2011)

Patent Claims Severed And Stayed Pending Reexam

Gryphon Networks had sued a former employee and his new employer for patent infringement, trade secret misappropriation, breach of contract, unfair competition, etc.  Gryphon alleges that the employee departed with a customer list that he promptly shared with his new employer.  The defendant moved to sever the patent claims and for a stay pending reexamination of the patent, a reexamination instituted by the defendant shortly after the suit was filed. 

Magistrate Judge Bowler balanced the requisite factors and granted the motion and stayed the patent claims pending resolution of the reexam.  At the time of the decision fact discovery was underway, though depositions were just beginning and claim construction had been briefed, but not decided. 

Gryphon Networks Corp. v. Contact Center Compliance Corp., 10-10258-MBB (D. Mass. June 13, 2011)

Magistrate Bowler Reversed on Patent Standing

In December 2010 Magistrate Judge Bowler issued a decision denying a motion to dismiss on lack of standing.  Considering the significant facts favoring the movant, this blog wondered whether this might be a rare case where the Magistrate is reversed.  And so it came to pass. 

Here the plaintiff ATI asserted it has rights to the asserted patents based on an arbitration decision so stating.  However the arbitration decision also stated that ATI was a co-owner.  In reversing Magistrate Judge Bowler, Judge Gorton holds that ATI lacks standing to assert the patents without joining the co-owners.  The case was dismissed without prejudice. 

Acoustic Technologies, Inc. v. Itron, Inc., 10-10500-NMG (D. Mass. Mar. 18, 2011)

Trademark Fight Drives On

A dispute over trademarks featuring the word DRIVE for financial services / auto loans has been going for several years.  One company, Santander Consumer, uses a variety of DRIVE themed marks for financial services, in particular purchasing loans from automobile dealerships.  Another company, Inopin uses marks featuring DRIVEUSA for financial services including auto and vehicle loans. 

Santander instituted a TTAB proceeding against Inopin’s mark, which it dismissed after two years (“on the eve of trial” as alleged by Inopin) in favor of federal litigation in the N.D. Tex.  That case was transferred to Mass. for lack of personal jurisdiction over the defendants.  Then things got messy.