Articles Posted in U.S. 1st Circuit Court of Appeals

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Peoples Federal, a community bank that operates exclusively in Eastern Massachusetts, was chartered in 1888 and became a federally insured savings and loan in 1937. It has used the term "Peoples" in its name and service marks since 1937 and claims to be the only continuous user of the mark for banking services in Eastern Massachusetts since that time. It owns six Massachusetts registrations for its marks. Defendant, People's United, was founded in 1842 in Connecticut, and has used the word "People" in its name for at least 80 years. After acquiring branches in Massachusetts, defendant re-opened them under the name "People's United Bank." Peoples Federal filed suit alleging trademark infringement, trademark dilution, and unfair competition under the Lanham Act, 15 U.S.C. 1125(a), and Massachusetts statutory and common law. The district court denied a preliminary injunction. The First Circuit affirmed, finding that the court properly weighed plaintiff's likelihood of success on the merits, likelihood of irreparable harm, the balance of relevant equities, and the effect of the court's action on the public interest. View "Peoples Fed. Sav. Bank v. People's United Bank" on Justia Law

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In 1995, plaintiff, a popular psychic and astrologer, and defendant entered into a contract for production and distribution of materials featuring plaintiff's psychic and astrological services. Plaintiff granted defendant the right to use his trademark, name, and likeness. After a 2006 dispute led to litigation; a jury rejected plaintiff's claim that he had validly terminated the agreement, found that he had violated the agreement, and found that defendant owed him no compensation. In 2009, both parties sought injunctive relief to prevent the other party from using the trademark. The district court entered a preliminary injunction in favor of defendant, finding that plaintiff had assigned the trademark in perpetuity. The First Circuit affirmed. The district court did not abuse its discretion in issuing a preliminary injunction, based on its interpretation of the agreement and application of collateral estoppel, based on the prior litigation. View "Mercado-Salinasl v. Bart Enter. Int'l, Ltd." on Justia Law

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The parties agree that defendant has used the mark continuously since 1998, Plaintiff claims, and defendant disputes, use since 1989. The defendant applied for registration of the mark in 1998 and the USPTO issued registration in 2002. The plaintiff applied for registration in 2000. The USPTO initially denied, but in 2008 granted, registration. The defendant sent a cease-and-desist letter in 2000, but plaintiff continued to use the mark. The parties negotiated and, in 2005, entered an agreement under which defendant would advertise on plaintiff's website. The relationship broke down and, in 2008 defendant petitioned the USPTO to cancel plaintiff's registration; the petition is still pending. Plaintiff sought declaratory judgment and defendant counterclaimed. The district court entered a preliminary injunction in favor of defendant. The First Circuit vacated and remanded. The district court erred in presuming irreparable harm upon finding a likelihood of success on the merits, in a case where there has been an excessive delay in seeking relief.