Sunstein brought suit in federal district court in Massachusetts against a medical marijuana dispensary using the name Sage Naturals (formerly Sage Biotech) on behalf of Sage Therapeutics, a biopharmaceutical company based in Cambridge, Massachusetts, with global activities committed to developing novel medicines to treat patients suffering from CNS disorders. Sage Naturals promoted use of its medical marijuana products to treat the same types of CNS disorders that Sage Therapeutics’ investigational medicines were intended to treat. Sage Naturals subsequently changed its name to Sira Naturals.
Sunstein successfully represented ’47 in trademark litigation before the USPTO Trademark Trial and Appeal Board. ’47 opposed Contrast Imports’ application to register a 47 in a circle based on likelihood of confusion with its 47-formative marks. After TTAB trial proceedings, the Board agreed that there was a likelihood of confusion between ’47’s strong 47 marks used for apparel and headwear and Contrast Imports’ 47 mark used for silver jewelry, and held that consumers would likely mistakenly believe that Contrast Imports’ originated from or were associated with or sponsored by ’47. Accordingly, the TTAB sustained ‘47’s opposition.
Sunstein successfully represented Vertex in its opposition to the mark VERTOX in trial proceedings before the USPTO Trademark Trial and Appeal Board. After the submission of trial briefs, the Board agreed with Vertex that there was a likelihood of confusion between Vertex’s VERTEX marks registered for pharmaceutical preparations and pharmaceutical research services, and Hercules Brand’s VERTOX mark for vitamin and multivitamins. Among other factors, the Board considered the issue of public safety in cases involving confusingly similar trademarks for pharmaceuticals and closely related products like vitamins or nutritional supplements.
Sunstein obtained a summary judgment ruling in favor of its client, a Sonoma winery, holding that the winery’s trademark licensee, an importer of luxury vodka, breached its license to use the BELVEDERE® trademark, that the winery properly terminated the vodka importer’s license, and, accordingly, that the importer’s continued sales of BELVEDERE® vodka infringed the winery’s trademark rights. The case, which was litigated in the federal court in San Jose, settled shortly after the summary judgment ruling.
Sunstein represents Harvard University with respect to numerous trademark matters, and recently achieved victories in contested cybersquatting disputes through the Uniform Domain-name Dispute Resolution Process (UDRP). In two independent cases filed and decided on the same day, Harvard and its subsidiary Harvard Business School Publishing (publisher of, among other things, the famed Harvard Business Review magazine) sought transfer of the domains harvardbusinessreview.mobi and harvardbusiness.net. Harvard argued that both sites were registered and used in bad faith, as evidenced by the fame of the Harvard mark. In both cases, the respondents argued that their use and registration of the sites were made in good faith, for legitimate purposes. The WIPO panelist, siding with Harvard, emphasized the fame of the Harvard name in concluding that registration of the sites could only have been in bad faith.
Sunstein brought suit in federal district court in Massachusetts against Lone Peak Labeling System on behalf of its client M&M Label Company in an action for breach of contract, trademark infringement, false designation of origin and unfair competition. M&M Label is a leader in the label, decal and nameplate production and printing industry in the United States and the creator of the proprietary label-printing system sold under the trademark THE MERCHANDISER. After seeking a preliminary injunction, we obtained an agreement from Lone Peak to, among other things, immediately cease use of the mark THE MERCHANDISER and to abandon its application with the USPTO.
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