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Solmetex, LLC v. Dentalez, Inc.

United States District Court, D. Massachusetts

December 10, 2015

SOLMETEX, LLC, Plaintiff,
v.
DENTALEZ, INC., RAMVAC DENTAL PRODUCTS, INC., AND APAVIA, LLC, Defendants

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          For SolmeteX, LLC, Plaintiff: Aaron D. Rosenberg, LEAD ATTORNEY, Daniel J. Lyne, Steven M. Veenema, Murphy & King, PC, Boston, MA.

         For Apavia, LLC, Defendant: David Koha, Casner & Edwards LLP, Boston, MA.

         For DentalEZ, Inc., Defendant: Robert J. Kaler, Holland & Knight LLP, Boston, MA; Steven L. Caponi, PRO HAC VICE, Blank Rome LLP, Wilmington, DE.

         For RAMVAC Dental Products, Inc., Defendant: Robert J. Kaler, Holland & Knight LLP, Boston, MA; Steven L. Caponi, Blank Rome LLP, Wilmington, DE.

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         MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION (DOCKET NO. 2)

         TIMOTHY S. HILLMAN, DISTRICT JUDGE.

         Plaintiff moves to preliminarily enjoin Defendants from marketing and selling any product used for the collection of amalgam in dental wastewater streams under the name " HOG." For the reasons set forth below, this motion is denied.

         Background

         The following facts are taken from Plaintiff's verified complaint and the exhibits submitted by both parties. SolmeteX, LLC (Plaintiff) manufactures and distributes amalgam separators that are used to remove amalgam filling particles from dental wastewater streams. Plaintiff owns two federally registered trademarks associated with its brand of amalgam separators, called the " Hg5." Apavia, LLC (Apavia) recently began producing a competing amalgam separator, which is distributed by RAMVAC Dental Products, Inc. (RAMVAC) and DentalEZ, Inc. (DentalEZ) under the name " Amalgam HoG." [1] Plaintiff believes that, by using the word " HoG," Apavia, RAMVAC, and DentalEZ (collectively, Defendants) have intentionally copied the fundamental appearance and elements of the Hg5 marks.

         Plaintiff introduced the Hg5 approximately fifteen years ago. It has since been endorsed by state dental associations and has received numerous industry awards. Plaintiff maintains two federal registrations for the word and design of the Hg5 mark. Specifically, Plaintiff owns U.S. Patent and Trademark Office (USPTO) registration number 2,560,362 for the word mark " HG5" in International Class 11 for an " amalgam separator for the removal of mercury and other contaminants from waste streams" (the word mark). It also owns USPTO registration number 2,623,925 for a design mark in the same International Class, covering the same use, and utilizing the same three-letter arrangement: " Hg5" (the design mark). Both marks were registered in 2002 and have been continuously used in interstate commerce since 2000.

         The registration document for the design mark contains the following image: .

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As this image shows, the " 5" is much smaller than the letters, it is enclosed in a circle, and it is placed directly above the " g." The registration document also contains the following description of the design mark, which further specifies its appearance:

The mark consists of the letters " HG" in gray on a black background with black shading diagonally through the " HG" lettering. The black background is outlined in maroon. Above the letter " G" is the number " 5" in blue on a circular black background surrounded with a maroon outline. Below the letter " H" are the words " mercury removal strategies for today's dental practice" all in blue imposed upon the black background of the mark.

         Plaintiff contends that, since introducing the Hg5 line of amalgam separators, it has always referred to its product using a capital " H" and lowercase " g," followed by a " 5" sized to match the " H," as in " Hg5."

         Plaintiff believes that Apavia was formed with the help of a rogue SolmeteX executive who conspired to steal Plaintiff's trade secrets, for the purpose of using the information to create an amalgam separator to compete with the Hg5. An action between SolmeteX and Apavia for theft of trade secrets is currently pending in state court. DentalEZ and RAMVAC are former authorized resellers of Plaintiff's Hg5. From April of 2003 until April of 2014, RAMVAC marketed and distributed a RAMVAC version of the Hg5, which it sold under the name " DentalEZ 'RAMVAC Hg5.'" With Plaintiff's permission, descriptions of the RAMVAC Hg5 unit featured RAMVAC's name alongside Plaintiff's Hg5 design mark, as follows: . As recently as April of 2014, RAMVAC was promoting the Hg5 through its website.

         According to Plaintiff, Defendants unveiled the new " Amalgam HoG" in February of 2015 at the Chicago Dental Society's Mid-Winter Meeting. The Amalgam HoG is an amalgam separator designed and manufactured by Apavia, with replacement containers designed to fit existing Hg5 installations. The Amalgam HoG is the only non-Hg5 amalgam separator on the market that retrofits directly onto the Hg5 system. The Amalgam HoG logo appears as follows: .

         Plaintiff contends that Defendants are now intentionally trading on its longstanding goodwill in the Hg5 marks, which the dental community had previously associated with DentalEZ and RAMVAC because of their history as Hg5 resellers. RAMVAC has historically marketed other dental supply products under animal names such as " Badger," " Bison," " Otter," " Bulldog," and " Owl." [2] But, unlike the other animal-themed products, when naming the " Amalgam HoG" Defendants chose to capitalize the " H" and the " G," while leaving the " o" lowercase, making the word visually similar to " Hg5." Plaintiff further notes that, although Defendants' product's full

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name is the " RAMVAC Amalgam HoG, powered by Apavia," Defendants' marketing materials sometimes refer to it simply as " the HoG," emphasizing its similarity to the Hg5.

         After a cease-and-desist letter failed to accomplish its requested relief, Plaintiff brought the instant suit against Defendants on October 19, 2015, asserting the following counts: trademark infringement in violation of 15 U.S.C. § 1114 (count I); false designation of origin in violation of 15 U.S.C. § 1125(a) (count II); state law trademark infringement in violation of Mass. Gen. Laws ch. 110H, § 13 (count III); state law trademark dilution in violation of Mass. Gen. Laws ch. 110H, § 13 (count IV); and violation of Mass. Gen. Laws ch. 93A, § 11 (count V).

         Plaintiff also moves for a preliminary injunction, seeking to enjoin Defendants from " selling, marketing, advertising, or distributing any product used in the collection of amalgam waste in dental waste water streams using a tradename or mark based on the word 'HOG,' irrespective of the manner of capitalization." Plaintiff also seeks injunctions requiring Defendants to remove markings and labels bearing the name " HOG" from all products associated with Apavia's amalgam separator, and to cease using the term " HOG" in promotional materials.

         Standard of Review

         Traditional equitable principles govern a request to preliminarily enjoin alleged trademark infringement. Voice of the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 34 (1st Cir. 2011). " A preliminary injunction is an extraordinary and drastic remedy . . . never awarded as of right." Id. at 32 (quoting Munaf v. Geren, 553 U.S. 674, 689-90, 128 S.Ct. 2207, 171 L.Ed.2d 1 (2008)) (quotation marks and citation omitted). A plaintiff seeking preliminary injunctive relief must show (1) likelihood of success on the merits; (2) likelihood of irreparable harm absent preliminary relief; (3) that the balance of equities tips in the plaintiff's favor; and (4) that an injunction is in the public interest. Id.; Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008).

         The first element, likelihood of success on the merits, is especially important in trademark cases " because the resolution of the other three factors will depend in large part on whether the movant is likely to succeed in establishing infringement." Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 115 (1st Cir. 2006).[3] However, for purposes of a preliminary injunction, the trademark holder need only show a likelihood of success on the elements of its infringement claim, and the " court's conclusions as to the merits of the issues presented . . . are to be understood as statements of ...


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