The barking and biting within the authorized enviornment continues between The Berkshire Canine — it’s a Lanesborough-based wholesale and on-line enterprise opened in 2018 to promote pure, natural canine treats, bandannas, important oils and well being merchandise — and Berkshire Canine Unleashed, opened in November on Pittsfield Street (Routes 7 and 20) in Lenox, with on-site providers together with boarding, day care, grooming, coaching and a small reward boutique.
Affiliate Justice John Englander of the state Court docket of Appeals has denied The Berkshire Canine proprietor Debra Tart’s attraction of a Nov. 27 ruling by Berkshire Superior Court Judge John Agostini denying Tart’s request for a preliminary injunction to pressure Lee Kohlenberger Jr. to vary the identify of his new enterprise.
Tart, via her Springfield legal professional, James C. Duda, contends that Kohlenberger is infringing on her state trademark and complicated The Berkshire Canine’s clients.
In his submitting to the appeals courtroom, Duda, a companion at Bulkley, Richardson and Gelinas, requested Englander to contemplate whether or not Berkshire Superior Court docket dedicated “reversible error by failing to contemplate many of the ample proof of precise confusion by shoppers” attributable to Berkshire Canine Unleashed “infringement” on The Berkshire Canine trademark.
Agostini had dominated that “there may be not a considerable probability of confusion” as a result of “Berkshire Canine doesn’t supply the identical providers as Unleashed, and it has neither misplaced earnings nor misplaced any clients to Unleashed.”
In a courtroom order posted Dec. 30, Englander denied Tart’s petition to reverse Agostini’s denial of a preliminary injunction within the trademark infringement case.
Duda, Berkshire Canine’s legal professional, had challenged Agostini’s ruling, arguing that he had erred in concluding that The Berkshire Canine’s enterprise trademark was not a robust one, and that he had failed to contemplate all of the “precise confusion” within the market between the 2 companies.
Englander wrote that he had not discovered any error of regulation within the Berkshire courtroom’s ruling.
“Some proof of precise confusion exists,” Englander acknowledged, “however as but there isn’t any proof of precise hurt” to Tart’s The Berkshire Canine enterprise.
Duda, in a remark to The Eagle, expressed disappointment with “the cursory overview and determination” by the state Court docket of Appeals, and he criticized Englander’s “failure to acknowledge the importance of the elemental errors” within the preliminary ruling by Agostini.
In accordance with Kohlenberger’s legal professional, Christopher M. Hennessey, “the case will now proceed within the Superior Court docket and we anticipate to hunt abstract judgment.” If profitable, that might be a last ruling in favor of Berkshire Canine Unleashed.
Hennessey, of Cohen Kinne Valicenti and Cook dinner in Pittsfield, additionally acknowledged that he has filed formal opposition with the U.S. Patent and Trademark Workplace to disclaim Tart’s software looking for a federal trademark for The Berkshire Canine.
He advised The Eagle that the Dec. 28 Appeals Court docket submitting by Duda on behalf of Tart “depends on a preposterous authorized argument that ‘The Berkshire Canine’ is a robust trademark as a result of the corporate doesn’t truly promote canine — solely dog-related objects.” The written attraction states that Tart “adopted THE BERKSHIRE DOG to designate its species of treats, shampoos, and comparable merchandise.”
Hennessey cited Duda’s assertion that Tart’s “merchandise aren’t a species of ‘canine,’ not more than ladies’s footwear are a species of ‘woman.’ ”
“This argument was rapidly and summarily rejected by [the state appeals court justice] and we anticipate an identical outcome on the U.S. Patent and Trademark Workplace,” Hennessey commented.
Regardless of the authorized wrangling over alleged canine buyer confusion, Tart’s legal professional outlined the contours of a possible out-of-court settlement to keep away from returning the case to Agostini for a last injunction and a possible trial many months sooner or later.
“At this level, this matter might be resolved if the events would conform to take steps to finish or no less than restrict confusion,” Duda acknowledged in an electronic mail to The Eagle.
“However as long as Unleashed as an alternative continues its efforts to cancel The Berkshire Canine’s trademark registration in Massachusetts, to oppose the registration of its mark with the U.S. Patent and Trademark Workplace, to assault The Berkshire Canine on social media, and in any other case to not cooperate to no less than restrict the confusion amongst shoppers, The Berkshire Canine can have no alternative however to defend itself and attempt to get the courtroom’s cooperation to assist finish that confusion,” he declared.