United States District Court, D. Massachusetts
MEMORANDUM & ORDER
Talwani United States District Court, Judge.
the court is Plaintiffs' Motion for Preliminary
Injunction [#2]. In their Motion, Plaintiffs seek relief
based on claims of common law trademark infringement,
trademark infringement in violation of 15 U.S.C. § 1114,
and misappropriation of trade secrets in violation of
Massachusetts General Laws ch. 93, § 42. For the reasons
that follow, the relief Plaintiffs seek based on their
trademark claims is GRANTED in part and DENIED without
prejudice in part. The court will address Plaintiffs'
claim for misappropriation of trade secrets in a separate
John Mahoney is the President of Plaintiff Atomic Cafe, Inc.,
a Massachusetts coffee business. Compl. 4 [#1]. Atomic Cafe
owns and operates retail cafes in several Massachusetts
locations, and a roasting, toll-roasting, and kegging
facility in Salem, Massachusetts. Compl. 4 [#1]. Atomic Cafe
owns two registered trademarks related to the Atomic Coffee
Roasters brand. Compl. 4 [#1]; Opp. to Mot. for Prelim. Inj.
[“Opp.”] 6 n.21 [#15].
Kyle Roy and Peter Roy are co-founders of LeanBox, a company
that provides food vending services to businesses. Compl. 6
[#1]. Grind or Grind Coffee (“Grind”) is
LeanBox's coffee business. Compl. 6 [#1]. Grind coffee
products are offered in connection with LeanBox's vending
machines and office supply services. Compl. 6 [#1].
around September 2016, the parties agreed to pursue a
business venture together called “Cold Brew
Ventures.” Compl. 6-7 [#1]. On September 18, 2017,
Peter Roy informed Mahoney that Defendants were no longer
interested in pursuing the joint venture with him. Decl. of
John Mahoney [“Mahoney Decl.”] 6 [#4]. Mahoney
“withdrew any permission Defendants had” to use
the Trademarks “immediately following”
Mahoney's removal from the venture. Pl.'s Mem. 6-7
contend that Defendants are no longer authorized to use the
trademarks but have continued to do so. Specifically,
Plaintiffs claim that Defendants have sold products,
including stale products, labeled with the trademarks, and
have displayed, and continue to display, Atomic Cafe's
trademarks on at least some webpages and social media pages.
Mahoney Decl. 7 [#4]; Decl. of Michael E. Strauss, Esq.
[“Strauss Decl.”] 1-6 [#16-1].
generally concede that they are no longer authorized to use
the trademarks, but contend that they are authorized to sell
products purchased for the express purpose of resale. They
state further that after September 18, they “began
discontinuing their use of Atomic's trademarks, ”
and that they “no longer are using Atomic's
trademarks in any way other than on products purchased for
the express purpose of resale.” Opp. 6 [#15].
Likelihood of Success on the Merits
succeed on a claim of trademark infringement, Plaintiffs must
demonstrate that they own a protectable mark, that
Defendants' use of that mark is unauthorized, and that
such use will likely cause consumer confusion. 15 U.S.C.
§ 1125; Borinquen Biscuit Corp. v. M.W. Trading
Corp., 443 F.3d 112, 116 (1st Cir. 2006) (“Before
a party can succeed in an infringement action, it must
demonstrate that its mark merits protection and that the
allegedly infringing use is likely to result in consumer
first element is satisfied. Registration of a mark on the
Principal Register is “prima facie evidence of the
validity of the mark and of the registration of the mark, the
registrant's ownership of the mark, and of the
registrant's exclusive right to use the registered mark
in commerce.” 15 U.S.C. § 1115(a). Defendants
offer no evidence to rebut that prima facie showing.
second element is also satisfied as to uses of the trademarks
on Defendants' website and social media pages. Defendants
do not dispute that they are no longer authorized to use the
trademarks on these platforms, while Plaintiffs have come
forward with evidence of Defendants' continued use of the
trademark on these platforms after the termination of the
parties' relationship. See Strauss Decl. 1-6
record is less clear as to the use of the trademarks on
products offered for sale. At the hearing, Plaintiffs
clarified that they were not seeking to enjoin
Defendants' resale of prepackaged coffee beans, but that
they did object to Defendants' use of the trademarks on
coffee products, such as cold brew, that were produced by
Defendants after the relationship was terminated. The record
at this juncture does not demonstrate a likelihood that