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.
See decision here.
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.
Sunstein represented NameMedia in a federal court action in the Eastern District of Virginia “rocket docket” brought by AOL, Time Warner, and associated companies. Plaintiffs asserted claims including trademark infringement, cybersquatting, and breach of contract relating to the registration of certain domain names. After vigorous motion practice on numerous issues, including the successful defeat of plaintiffs’ motion to dismiss NameMedia’s reverse domain name hijacking counterclaim (an issue of first impression), and motion practice related to NameMedia’s defense that the agreement underlying AOL’s breach of contract claim was unenforceable due to conflict of interest, a stipulation of dismissal of the action, with prejudice, was entered.
Sunstein represents the HipSaver Company, an innovator in the design and manufacture of products which protect against hip fracture and newly invented products which protect against skin injury. We have represented HipSaver in two lawsuits which safeguard the marketplace integrity of its hip protector products under the Lanham Act and the Massachusetts business practices act. Significantly, we have also obtained an important judicial ruling which advances the law in the First Circuit on damages relief for willful, literally false advertising. Under this ruling, the trial court has recognized a rebuttable presumption of causation and injury where willful, literally false advertising is committed by a direct competitor in a concentrated market.
Sunstein won a $20.7 million jury verdict for First Act in this suit for false advertising in violation of the Lanham Act, commercial disparagement and interference with contractual relations. During the five-week trial, we presented extensive expert witness testimony including in-courtroom demonstrations as proof that defendant’s statements about our client’s musical instruments were false. The global aspects of the parties’ manufacture and distribution of the products in issue posed unique challenges involving discovery throughout the United States and in China and Hong Kong. In addition, because of the harm being caused to our client on an ongoing basis, we acted quickly upon filing suit to obtain expedited discovery and a preliminary injunction against the defendant. The case is also of general interest because we established jurisdiction in Massachusetts over the Texas-based defendant by proving (among other facts) the defendant’s contact with Massachusetts through email messages sent to residents of the forum state.
Sunstein represented Global Business Network, Inc., a wholly owned entity of Monitor Company Group of Cambridge, Massachusetts, in a domain name and copyright dispute with James Pinda, of Fremont, California. Our aggressive assertion of claims under the Digital Millennium Copyright Act and ICANN’s Uniform Dispute Resolution Policy caused Mr. Pinda’s website to be swiftly removed from the web, and his domain name to be transferred to our client.
Sunstein represented Ken’s Steak House, a restaurant in Framingham, Massachusetts, in a trademark lawsuit brought by Ken’s Foods. The parties reached an amicable settlement on the second day of trial. The terms of the settlement are confidential.
Sunstein represented ElizaGray, LLC in trademark infringement litigation concerning its design marks for crystal jewelry ornaments it sells in specialty retail shops throughout the country. We successfully resisted the Swiss corporation’s assertion of infringement, and after vigorous litigation in Boston and New York, we negotiated a favorable settlement on behalf of our client.
Sunstein represented Versal Technologies, a computer software development and consulting firm and owner of numerous VERSAL-formative marks, in a trademark infringement action against its competitor, Versalent, a software firm that used the trademark VERSALENT and had registered VERSALENT-formative domain names. Sunstein’s motion for preliminary injunction forced a settlement in which defendant Versalent agreed to cease using the VERSALENT mark, company name, and domain names.
Sunstein filed a lawsuit to enforce the rights of Judith E. Pancoast, a composer and performer of children’s music, in the KIDPOP! mark against a major music distributor using the confusingly similar KIDZ BOP mark. We were able to obtain a favorable outcome for our client in mediation.
Sunstein represented United States Trust Company of New York in a trademark infringement case against the Boston-based United States Trust Company, which asserted ownership of the name UNITED STATES TRUST COMPANY. After trial, and while an appeal of ownership rights was pending, we successfully negotiated a settlement. The Boston bank ceased use of the UNITED STATES TRUST COMPANY name, and our client now has exclusive rights to the name.
Sunstein represented Richardson’s Farms, one of the oldest family-owned dairies in the United States, in a trademark infringement action brought by Gifford’s Dairy. Gifford’s, a competitor, sought to prevent Richardson’s from using the mark MAINE BLACK BEAR for one of its ice cream flavors, and also sought treble damages. Our aggressive litigation strategy secured a highly favorable settlement. Today Richardson’s continues to sell MAINE BLACK BEAR ice cream free and clear of the plaintiff’s assertion of rights in the name.
Sunstein’s client, racing legend Carroll Shelby, obtained a consent judgment and comprehensive injunction against Factory Five Racing, Inc. on the first day of trial. Factory Five was the largest maker of “replicas” of Shelby’s famous COBRA® race cars of the 1960’s. In the lawsuit, Shelby claimed that the “replicas” are counterfeits of the Shelby-designed COBRAs and that Factory Five’s use of the famous COBRA, 427 S/C, and DAYTONA COUPE trademarks violated the Lanham Act and the Federal Trademark Dilution Act. Factory Five has been barred from selling cars or chassis for cars that make any use of the trademarks. Factory Five also is required to make specific disclaimers and to inform customers at the time of sale that it cannot use and is not authorized to use Shelby or Ford trademarks on Factory Five products.
Sunstein successfully defended Jean Kilbourne, an internationally known media critic, lecturer and writer, against a claim of trademark infringement. The plaintiff initiated the suit against Kilbourne seeking to prevent her use of the mark KILLING US SOFTLY in connection with her most recent documentary film, Killing Us Softly III. Kilbourne asserted her rights to the mark and filed counterclaims for trademark infringement. We negotiated a settlement agreement that, among other things, acknowledged Kilbourne’s undisputed right to the KILLING US SOFTLY mark and allowed her to continue distributing Killing Us Softly III. The case also involved significant copyright issues.
Sunstein represented Harvard University in this significant trademark licensing case. Harvard Pilgrim asserted exclusive ownership of the name “Harvard Pilgrim.” The University asserted that Harvard Pilgrim used the name pursuant to a trademark license, based in part on the fact that Harvard Pilgrim’s predecessor, Harvard Community Health Plan, was founded by Harvard in 1968 and has engaged in joint teaching, research and patient care activities with Harvard since that time. The parties entered into a settlement agreement in which Harvard Pilgrim abandoned its ownership claim and agreed to use the “Harvard Pilgrim” name pursuant to a written trademark license.
Sunstein successfully defended Rhythms NetConnections, a national telecommunications company, and preserved its multi-million dollar marketing campaign against allegations of trademark infringement and trademark dilution. In a case turning on legal and expert analysis contrasting the market for high-end enterprise software with the market for DSL connectivity, i2 ultimately dropped its suit. The lawsuit presented a variety of complex trademark claims, including allegations of reverse confusion and trademark dilution based on “niche fame.” Our attorneys worked closely with experts specializing in consumer surveys, the economics of the Internet, and market analysis in the fields of enterprise software and telecommunications.
Sunstein represented RLM Software, Inc., owner of the mark FLIGHTVIEW, and sued WSI Corporation for trademark infringement and unfair competition based on its use of the mark FLIGHTWATCH. Both parties’ marks were used in connection with the provision of real-time flight information and weather data. Shortly after we filed the complaint on behalf of RLM, the parties entered into a settlement agreement by which WSI agreed to cease using the FLIGHTWATCH mark.
Sunstein secured preliminary injunctive relief against an Internet-based business, which the Court found willfully misrepresented itself as an affiliate of our client Dragon Systems, a renowned developer of speech recognition software and related technology. In addition, the Court found that the defendants used the Dragon Systems and Lernout & Hauspie names and marks on a website and in domain names, secretly linked their website to Dragon Systems’ database, sold Dragon Systems’ products without authorization and sold nonexistent software support services to customers over the Internet. The Court issued a preliminary injunction, which halted all of these activities.
Sunstein represented Harvard University in a suit alleging trademark dilution, infringement and unfair competition. We moved for a preliminary injunction preventing Eschool from using the “notHarvard” trademark in connection with its so-called “on-line universities.” Eschool and Harvard entered into a consent judgment by which Eschool agreed to cease use of the “notHarvard” mark.
Sunstein sued on behalf of Cubist for violations of the Anti-Cybersquatting Consumer Protection Act and false advertising. The defendant had registered multiple Internet domain names that contained the names of pharmaceutical preparations that Cubist was developing, and was using the sites to disparage Cubist. We obtained a temporary restraining order against the defendant and put a halt to this activity. The defendant soon agreed to transfer ownership of all of the domain names to Cubist and refrain from any public comment or disparagement of Cubist, its trademarks and its goods and services.
Sunstein successfully defended AltaVista Technologies, Inc., licensee of the altavista.com domain name, against trademark infringement and related charges made by Digital Equipment Corporation, owner of the AltaVista Search service, in a dispute over trademark rights. After extensive pretrial activities, we negotiated a settlement agreement favorable to our client.
Sunstein represented Blue Cross in a dispute with a health care company regarding the domain name HEALTHWIRE.COM and related trademarks. After we took action to put the health care company’s domain name on hold, the company sued our client for a declaratory judgment in Illinois. We succeeded in having the Illinois action dismissed and countersued in Massachusetts for trademark infringement. Shortly before trial, we negotiated an amicable settlement on behalf of our client. Today, our client uses the HEALTHWIRE mark in connection with its business.
Sunstein brought suit for infringement and dilution of Harvard’s trademarks by an unauthorized ‘sports annual’ published by the defendant. The case was settled when the defendant agreed to cease all unauthorized use of Harvard’s trademarks, with strict penalties, including payment of attorneys’ fees, for breach of the agreement.
Sunstein prevented U.S. Robotics from obtaining federal trademark registration of the mark COURIER for modems on grounds of likelihood of confusion with our client’s mark IDEA COURIER for video display terminals.
Sunstein represented a large investment firm that marketed and sold shares of mutual funds under the KEYSTONE mark. We threatened to bring an action against another investment company using that mark in connection with investment services offered in the state of Michigan. Upon reviewing the preliminary injunction papers that we intended to file, the company entered into a settlement by which it agreed to cease all use of the KEYSTONE mark.
Sunstein successfully fought off the attempt by a multinational telecommunications company to bar I.D.E. Corporation’s registration of its trademark. By vigorously defending the suit and by counterattacking to bar registration of the telecommunications company’s own marks, we forced it to the bargaining table and obtained not only the right to proceed with registration of our client’s trademark, but also a substantial monetary settlement for our client.
Sunstein represented Future Electronics, a company using the acronym FIRST to identify a sophisticated proprietary system for inventory replenishment in the field of electronic components. We sued a competitor for using an identical trademark to identify its services. We were successful in obtaining a preliminary injunction at an early stage of the litigation, and negotiated a settlement by which the competitor agreed to cease all use of the mark.
In this action for trademark infringement and unfair competition, Sunstein obtained a preliminary injunction prohibiting defendants from making use on computer products of a trademark using the word IDEA and defeated defendants’ counter-motion for a preliminary injunction. A subsequent settlement required the defendants to assign IDEA-formative marks relating to computer hardware and software products to our client, IDEAssociates.
On behalf of Blue Cross and Blue Shield, Sunstein sued for trademark infringement and unfair competition relating to the defendant’s use of the mark MASTER DRUG, which infringed plaintiff’s identical MASTER DRUG mark and their family of well known MASTER formative marks for health insurance and related services, including MASTER MEDICAL and MASTER HEALTH. After protracted litigation, a settlement was reached in which the defendant agreed to cease using the mark and to assign all its rights therein to our client.
On behalf of Converse, Sunstein brought suit for trademark infringement, misappropriation of trade secrets and unfair competition relating to the defendant’s sale of consumer products in the United States and in European countries. We obtained a temporary restraining order and preliminary injunction prohibiting the individual defendant from producing, marketing and selling products bearing trademarks and designs proprietary to Converse. In a subsequent settlement of the case, the corporate defendant agreed to redesign its ankle patch to distinguish its shoes from Converse’s shoes.
Sunstein represented Blue Cross and Blue Shield, obtaining a preliminary injunction against the use by defendants of the service mark MASTER HEALTH in connection with health benefits services and services in the medical and health care insurance field. The case was settled shortly thereafter and the preliminary injunction was made permanent.
Sunstein obtained a preliminary injunction on behalf of Botsini Corp., which prohibited defendants from opening a restaurant in our client’s trade area employing a similar name and logo for use on signage, uniforms, napkins, cups, vehicles and in advertising. The case settled based upon the defendants’ agreement to change the name and logo of their restaurant.
Sunstein represented Converse, obtaining a temporary restraining order, which shortly resulted in a favorable settlement under which the defendants agreed to change the objectionable trademark.
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