New England IP Blog

Covering intellectual property developments in New England, and other developments that impact New England companies.

Category Archives: Trademarks and Trade Dress

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Pre-Sale Use of Data Storage Trademark Not Enough to Secure Priority Rights

database-4A Massachusetts federal court recently found multiple early uses of a sought-after trademark insufficient to confer priority of rights.  The dispute concerned two technology companies, Nexsan and EMC, each seeking to use the UNITY mark in connection with their computer data storage technologies. The Court held that EMC’s pre-sale uses did not establish “use in commerce” and … Continue Reading

With $450.00 in Connecticut Sales, AMP Medical Subject to Personal Jurisdiction in Trademark Lawsuit

skin care-4A recent case from the District of Connecticut provides important insight into personal jurisdiction analysis, and serves as a reminder that sometimes even modest connections to a state can render a company subject to suit in that state. Here, Judge Vanessa Bryant found that Connecticut could exercise personal jurisdiction over AMP Medical Products, a Nevada company that sold … Continue Reading

Court Throws Out Back Massager Trade Dress Infringement Claims on Motion to Dismiss

As the first-filed paper in nearly any litigation, the complaint is typically subject to rigorous scrutiny from the named defendant to identify any flaws that may dispatch the case via a motion to dismiss. A plaintiff in the District of Connecticut recently felt this pain, as its complaint was dismissed under Rule 12(b)(6) for failing … Continue Reading

Edible Arrangements’ Trademark Case Bears Fruit

In a recent decision, Judge Vanessa L. Bryant shed some light on a significant new issue: trademark infringement in the world of internet keyword advertising. In a case with important implications for online marketing strategies, Judge Bryant denied Provide Commerce’s request for partial summary judgment against trademark owner Edible Arrangements, which had filed a suit … Continue Reading

Franchisee Can’t Work Its Way Out of Trademark Infringement and Breach of Contract Litigation on Jurisdictional Grounds

An out-of-state franchisee sought to escape the reach of the Massachusetts District Court in a breach of contract and trademark infringement litigation filed by its Massachusetts-based franchisor. But, the parties quickly discovered that the Court is primed to flex its muscles when deciding jurisdictional questions presented in the franchisee’s motion to dismiss.… Continue Reading

Summary Judgment Ruling Not a Pretty Picture for Massachusetts Copyright Plaintiff

A recent decision from the District of Massachusetts demonstrates the difficulties that can arise when attempting to protect copyrighted works displayed on the internet.  The July 29, 2015 order issued by the Honorable Patti B. Saris, granted defendants Orgill, Inc. (“Orgill”) and Farm & City Supply, LLC (“FSC”) a split ruling on their summary judgment … Continue Reading

In Trademark Dispute, New Hampshire School Website Address Not Taken For Granite

New Hampshire is commonly referred to as the Granite State.  In one recent trademark infringement case, however, a federal court in New Hampshire did not find a likelihood of consumer confusion between website addresses for competing trade schools, where one school uses the term “NH” and the other uses the term “Granite State.”… Continue Reading

Fraudulent Procurement Claim Dismissed: No Evidence Trademark Attorney Knew Statement Was False

It is not easy to cancel a federal trademark by way of a fraud claim. Investment services firm Navigator Investments (“NI”) found this out recently when the Rhode Island district court dismissed its fraudulent procurement counterclaim against trademark plaintiff Clark Capital Management. NI’s counterclaim had asked for cancellation of Clark’s federally-registered, “NAVIGATOR”  trademark, because of … Continue Reading

Non-Party Dodges Impleader Attempt in “CrossFit” Trademark Infringement Suit

The alleged infringer of the “CrossFit” trademark may have gotten winded after reading a recent order from Judge Saylor.  In that case, Plaintiff CrossFit alleged that Donald Mustapha—who appeared pro se—infringed its trademark by offering exercise programs under the “CrossFit” name.  In response to the complaint, Mustapha filed so-called “counterclaims” against various third parties, which were … Continue Reading

A Trademark Licensor Is Not Its Licensee’s Keeper

It appears Oban’s case against Nautilus now has no pulse.  In a recent opinion in Oban US, LLC v. Nautilus, Inc. and Sports Beat, Inc., Judge Arterton granted Nautilus’ motion to dismiss Oban’s claims against Nautilus for contributory trademark infringement, vicarious copyright infringement, trade dress infringement, and unfair competition under the Lanham Act and “unspecified” state … Continue Reading

No Helmet Needed in D. Mass. When Facing Motion to Strike New Counterclaims

In a recent trade dress infringement case involving manufacturers of sporting helmets, Judge Saylor set forth a unique approach in deciding a motion to strike newly added counterclaims.  The case started out, as they often do, with patent claims.  In its original complaint, plaintiff Bern Unlimited alleged that defendant Burton Corp. infringed a design patent directed … Continue Reading
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