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SoClean, Inc. v. Sunset Healthcare Sols., Inc.

SoClean, Inc. v. Sunset Healthcare Sols., Inc.

United States District Court for the District of Massachusetts

August 13, 2021, Decided; August 13, 2021, Filed

Civil Action No. 1:20-cv-10351-IT

Opinion

 [*291]  MEMORANDUM & ORDER

TALWANI, D.J.

Plaintiff SoClean, Inc. ("SoClean") alleges that Defendant Sunset Healthcare Solutions, Inc. ("Sunset") has infringed two of SoClean's trade dress registrations by selling knockoff versions of filters that SoClean sells for its popular device for cleaning continuous positive airway pressure ("CPAP") machines. SoClean seeks a preliminary injunction enjoining Sunset from using, selling, offering for sale, or making in the United States Sunset's allegedly infringing filter or any other filters that would infringe SoClean's trade dress. Pl.'s Mot. 3 [#161]. Sunset counters that SoClean's marks are invalid since they are functional and not distinctive and that, in any event, consumers are not likely to be confused by Sunset's use [**2]  of the marks. As set forth more fully below, because the United States Patent and Trademark Office ("PTO") has registered SoClean's marks on the principal register, SoClean is entitled to a presumption that its marks are non-functional and distinctive, and Sunset has not put forth sufficient evidence to rebut that presumption. Moreover, the court finds that SoClean has established a reasonable likelihood of success on the merits of its trade dress infringement claim where Sunset's identical product is likely to cause consumer confusion as to the source of the goods unless Sunset takes additional steps to distinguish its product on the marketplace. However, because Sunset may be able to cure the risk of consumer confusion with changes to its marketing of the product, the court declines to award Plaintiff its request for an injunction prohibiting the further sale of Sunset's filters. Accordingly, SoClean's Motion for Preliminary Injunction [#161] is GRANTED IN PART and DENIED IN PART as set forth further below.

I. BACKGROUND

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554 F. Supp. 3d 284 *; 2021 U.S. Dist. LEXIS 153233 **; 2021 WL 3605013

SOCLEAN, INC., Plaintiff, v. SUNSET HEALTHCARE SOLUTIONS, INC., Defendant.

Subsequent History: Affirmed by Soclean, Inc. v. Sunset Healthcare Sols., Inc., 2022 U.S. App. LEXIS 31003 (Fed. Cir., Nov. 9, 2022)

Prior History: Soclean, Inc. v. Sunset Healthcare Solutions, Inc., 2020 U.S. Dist. LEXIS 34384, 2020 WL 978037 (D. Mass., Feb. 28, 2020)

CORE TERMS

filter, consumers, secondary meaning, marks, registration, registered, trademark, alternative design, infringement, trade dress, injunction, packaging, features, product design, functionality, competitors, copying, selling, merits, online, color, marketing, sales, similarity, reasonable likelihood, likelihood of confusion, preliminary injunction, consumer confusion, Lanham Act, advertising

Business & Corporate Compliance, Federal Unfair Competition Law, Lanham Act, Remedies, Trademark Law, Equitable Relief, Injunctions, Permanent Injunctions, Civil Procedure, Grounds for Injunctions, Irreparable Harm, Remedies, Preliminary & Temporary Injunctions, Preliminary Injunctions, Trade Dress Protection, Causes of Action, Subject Matter of Trademarks, Labels, Packaging & Trade Dress, Infringement Actions, Elements of Trade Dress Infringement, Scope, Registration Procedures, Federal Registration, Principal Register, Burdens of Proof, Federal Registration as Evidence, Degree of Protection, Trademark Law, Causes of Action Involving Trademarks, Fraudulent Registrations, US Trademark Trial & Appeal Board Proceedings, Cancellations, Grounds, Cancellations, Terms Requiring Secondary Meaning, Descriptive & Laudatory Terms, Determinations of Protectability, Eligibility for Trademark Protection, Distinctiveness, Evidence of Distinctiveness, Similarity of Marks, Appearance, Meaning & Sound, Meaning, Evidence of Secondary Meaning, Circumstantial Evidence, Direct Evidence, Antitrust & Trade Law, Consumer Protection, False Advertising, Lanham Act, Unfair Competition, Evidence, Types of Evidence, Likelihood of Confusion, Factors for Determining Confusion, Comparison of Advertising, Consumer Confusion, Circuit Court Factors, 1st Circuit Court, Relationship of Goods, Intent of Defendant to Confuse, Inferred Intent, Commercial Impressions, Consumer Confusion, Likelihood of Confusion, Inferences & Presumptions, Presumptions, Rebuttal of Presumptions