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 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 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 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 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 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’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 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 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 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.
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