Plum Island Soap Company, LLC v. Duke Cannon Supply Company, LLC (19-cv-10222).

  • February 11, 2019

The Plum Island Soap Company sued 1818 Farms sued Alabama 2019s 1818 Farms and its sole operator, Natasha McCrary for trademark and trade dress infringement relating to men 2019s grooming products sold in combination and packaged in a paint can. The background of the lawsuit is interesting. Plum Island Soap Co. has an incontestable registration on 201cTHE MAN CAN 201d mark. It alleges it has been using the paint can trade dress for more than five years, establishing a prima facie case of secondary meaning, and successfully obtained injunctive relief relating to the mark in 2013.

After discovering 1818 Farms 2019 201cThe Man of the Farm Grooming Can 201d product in the fall, counsel for Plum Island Soap Co. contacted 1818 Farms.

According to the complaint, they negotiated and agreed upon terms to resolve the dispute in which 1818 Farms acknowledged the validity of the trade dress and agreed to be enjoined, needing only to memorialize the agreement into a formal settlement document, and in reliance upon this, Plum Island Soap Co. did not file suit; yet in January, while in daily communication with Plum Island 2019s attorneys , 1818 Farms filed suit in Alabama seeking declarations of non-infringement, challenging the validity of the trade dress , and seeking to cancel the trademark registration. Six days later, 1818 Farms then contacted Plum Island 2019s lawyers and reneged on the agreed-upon terms of the settlement and informed Plum Island of the Alabama complaint. Plum Island asserts that, but for the false indication that 1818 Farms was settling the dispute, it would have filed suit in Massachusetts, and that Massachusetts should thus be the forum for the litigation. Plum Island claims trademark and trade dress infringement, as well as contributory and vicarious trademark infringement in connection with third-party sales of 201cThe Man of the Farm Grooming Can 201d product and the preparation of marketing materials by third parties for 1818 Farms 2019 benefit. Plum Island also alleges breach of contract and of the covenant of good faith and fair dealing, stating that the settlement discussions had reached the point of an actual agreement, as well as fraud relating to statements made in the Alabama complaint that Plum Island made false statements to the PTO when seeking to register THE MAN CAN mark, and unfair and deceptive practices under Mass. G.L. 93A. Plum Island seeks temporary, preliminary and permanent injunctions, enforcement of the settlement agreement, monetary damages, and treble damages and attorney 2019s fees.

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