SolmeteX, LLC v. Apavia, LLC et al

Filing 43

District Judge Timothy S Hillman: MEMORANDUM AND ORDER entered denying 2 Motion for Preliminary Injunction. (Castles, Martin)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_______________________________________
)
)
SOLMETEX, LLC,
)
CIVIL ACTION
)
Plaintiff,
)
NO. 4:15-CV-40144-TSH
)
v.
)
)
DENTALEZ, INC., RAMVAC DENTAL
)
PRODUCTS, INC., AND APAVIA, LLC,
)
)
Defendants.
______________________________________ )
MEMORANDUM AND ORDER ON PLAINTIFF’S MOTION FOR PRELIMINARY
INJUNCTION (Docket No. 2)
December 10, 2015
HILLMAN, D.J.
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

1

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:

. 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.

1

DentalEZ claims that it is affiliated with RAMVAC but does not sell or distribute the new
amalgam separator at issue in this case. The exhibits do not clarify this assertion. Because the
instant motion is denied, I need not presently attempt to define DentalEZ’s relationship with the
other Defendants.
2

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,”
3

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
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

2

These names are suggestive of the products’ functions. For example, the “Owl” is a backlit
touchscreen control pad, and the “SlugBuster” is a dental vacuum line cleaner. Similarly, “HoG”
is suggestive of the product’s purpose because the separator “eats” amalgam from dental
wastewater.
4

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 (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 (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 probable outcomes” rather than final determinations. Id. at 116 (quoting
Narragansett Indian Tribe v. Guilbert, 934 F.2d 4, 6 (1st Cir. 1991)).

3

Historically, the First Circuit applied a presumption in this regard, holding that “a trademark
plaintiff who demonstrates a likelihood of success on the merits creates a presumption of
irreparable harm.” Am. Bd. of Psychiatry & Neurology, Inc. v. Johnson–Powell, 129 F.3d 1, 3 (1st
Cir. 1997) (citing to examples). However, the validity of this rule was called into question by the
Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393-94 (2006);
see Voice of the Arab World, Inc., 645 F.3d at 32. The First Circuit has since declined to decide
whether the presumption of irreparable harm in infringement cases violates the holding in eBay.
See Swarovski Aktiengesellschaft v. Bldg. No. 19, Inc., 704 F.3d 44, 54 (1st Cir. 2013); Voice of
the Arab World, Inc., 645 F.3d at 34.
5

Discussion
1. Likelihood of Success on the Merits: Federal Trademark Infringement
Plaintiff’s primary allegation with regard to the instant motion is trademark infringement
in violation of 15 U.S.C. § 1114 (count I).4 As a threshold matter, Defendants are under the
impression that Plaintiff’s motion applies only to its claim of infringement on the “HG5” word
mark. However, Plaintiff’s motion clearly alleges that Defendants are infringing on both the
design and word marks. Accordingly, I will consider Plaintiff’s likelihood of success on the merits
of its infringement claim with regard to each of its marks.
“The purpose of a trademark is to identify and distinguish the goods of one party from
those of another. To the purchasing public, a trademark signi[fies] that all goods bearing the
trademark originated from the same source and that ‘all goods bearing the trademark are of an
equal level of quality.” Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56, 60 (1st Cir.
2008) (quoting Colt Def. LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 705 (1st Cir. 2007))
(citation and quotation marks omitted). The Lanham Act creates a federal cause of action for
trademark infringement of both registered and unregistered marks. See 15 U.S.C. § 1114(1)(a)
(registered); § 1125(a)(1)(A) (unregistered); B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S.
Ct. 1293, 1301 (2015).
Here, Plaintiff brought its infringement claim under 15 U.S.C. § 1114(1)(a), which applies
to infringement of registered marks and provides in pertinent part as follows:

4

Plaintiff has also alleged false designation of origin in violation of 15 U.S.C. § 1125(a); state law
trademark infringement in violation of Mass. Gen. Laws ch. 110H, § 13; and state law trademark
dilution in violation of Mass. Gen. Laws ch. 110H, § 13. Plaintiff has not presented arguments for
likelihood of success on these claims in the context of its motion for preliminary injunctive relief.
6

(1) Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the sale,
offering for sale, distribution, or advertising of any goods or services
on or in connection with which such use is likely to cause confusion,
or to cause mistake, or to deceive;
...
shall be liable in a civil action by the registrant for the remedies
hereinafter provided.
Thus, Plaintiff must prove two elements in order to succeed on its infringement claim: “(1)
that its mark merits protection and (2) that the allegedly infringing use of its mark is likely to result
in consumer confusion.” Swarovski Aktiengesellschaft v. Bldg. No. 19, Inc., 704 F.3d 44, 49 n.1
(1st Cir. 2013) (citing Borinquen Biscuit Corp., 443 F.3d at 116). As explained below, I find that
Plaintiff is likely to succeed on the first element but is not likely to succeed on the second element.
Overall, I find that Defendants are likely to prevail on the federal infringement claim.
A. Whether the Hg5 Marks Merit Protection
“[I]n order to be eligible for trademark protection, a mark must qualify as distinctive.”
Borinquen Biscuit Corp., 443 F.3d at 116. The distinctiveness standard engenders a taxonomical
classification, in which marks are categorized “along a continuum of increasing distinctiveness.”
Id. This continuum contains five categories of marks: generic, descriptive, suggestive, arbitrary,
and fanciful. Id. Generic marks can never be distinctive, whereas “suggestive, arbitrary, and
fanciful marks are considered inherently distinctive.” Id. Descriptive marks fall somewhere in the
middle. “Descriptiveness and distinctiveness are neither congruent concepts nor productive of
mutually exclusive classifications. Descriptive marks are tentatively considered non-distinctive
but can attain distinctive status upon an affirmative showing of secondary meaning.” Id. The
showing of secondary meaning “requires the trademark holder to establish that ‘in the minds of
the public, the primary significance of [the mark] is to identify the source of the product rather
7

than the product itself.’” Id. (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11
(1982)).
When a trademark is federally registered, this registration becomes “prima facie evidence
of the validity of the registered mark.” Id. at 117 (quoting 15 U.S.C. § 1115(a)). When the USPTO
“registers a mark without first requiring the applicant to prove secondary meaning, the holder of
the mark is entitled ‘to a presumption that its registered trademark is inherently distinctive, as
opposed to merely descriptive.’” Id. (quoting Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d
542, 545 (1st Cir. 1995)).5 The effect of this presumption varies depending on whether the
registered mark has become incontestable. Once a mark has attained incontestable status pursuant
to section 1065 of title 15, the presumption of distinctiveness becomes conclusive. Id.; 15 U.S.C.
§ 1115(b). The statutory requirements for incontestability require that the mark is currently in use
and has been in continuous use in interstate commerce for five consecutive years after the date of
registration, provided that there has been no successful challenge to the ownership of the mark.
§ 1065. Additionally, the registrant must file an affidavit with the USPTO stating that these
requirements have been satisfied. § 1065(3).
If a registered mark remains contestable, the defendant may defend an infringement suit on
the ground that the mark is not inherently distinctive and, therefore, does not merit protection.
Borinquen Biscuit Corp., 443 F.3d at 117; see § 1115(a). Thus, “the effect of registration for a
contestable mark is ‘to shift the burden of proof from the plaintiff . . . to the defendant, who must
introduce sufficient evidence to rebut the presumption of the plaintiff’s right to [exclusive] use’
through proof that the mark is merely descriptive.” Borinquen Biscuit Corp., 443 F.3d at 117

5

Even if a registrant is required to submit proof of secondary meaning to the USPTO, the holder
will still be entitled to a presumption of validity through acquired, if not inherent, distinctiveness.
Borinquen Biscuit Corp., 443 F.3d at 117 n.2; see 15 U.S.C. § 1115(a).
8

(quoting Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 373 (1st Cir. 1980)). However, “a
putative infringer must offer significantly probative evidence to show that the mark is merely
descriptive. . . . Simply alleging descriptiveness is insufficient . . .; the putative infringer must
prove descriptiveness by a preponderance of the evidence . . . .” Id. at 118 (emphases in original).
If the defendant meets this burden, the plaintiff is then tasked with proving that the mark has
acquired secondary meaning. Id.
Here, Plaintiff asserts that the Hg5 marks are incontestable and are, therefore, entitled to a
conclusive presumption of distinctiveness and validity. The Hg5 marks are currently in use and
have been in continuous use since their registrations in 2002. However, on this record I cannot
find that the marks have attained uncontestable status, because Plaintiff has not shown or alleged
that it filed the requisite affidavits with the USPTO. Nevertheless, the marks are registered, which
entitles them to a rebuttable presumption of validity. See 15 U.S.C. § 1115(a).
Defendants argue that Plaintiff’s marks are descriptive and therefore weak, because the
term “Hg” refers to the element mercury, which is an element that amalgam separators remove
from dental wastewater. However, Defendants have not presented anything beyond allegations
with regard to the descriptive nature of Plaintiff’s marks.6

More is required to rebut the

presumption of validity. See Borinquen Biscuit Corp., 443 F.3d at 118. Accordingly, I find that
Plaintiff is likely to succeed on the first element of the infringement claim.
B. Likelihood of Consumer Confusion
In addition to showing that its mark merits protection, a successful trademark infringement
plaintiff “must demonstrate that the defendant used an imitation of its protected mark in commerce

6

For example, evidence of descriptiveness could take the form of surveys showing that consumers
regard the mark as being merely descriptive of the plaintiff’s product. Borinquen Biscuit Corp.,
443 F.3d at 118 n.4.
9

in a way that is ‘likely to cause confusion, or to cause mistake, or to deceive.’” Swarovski
Aktiengesellschaft, 704 F.3d at 48-49 (citing 15 U.S.C. § 1114(1)(a)). Likely confusion means
“‘more than the theoretical possibility of confusion.’ . . . In other words, the allegedly infringing
conduct must create ‘a likelihood of confounding an appreciable number of reasonably prudent
purchasers exercising ordinary care.’” Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d
1, 12 (1st Cir. 2008) (quoting Int'l Ass'n of Machinists and Aerospace Workers, AFL–CIO v.
Winship Green Nursing Ctr., 103 F.3d 196, 200-01 (1st Cir. 1996)).
In the First Circuit, the likelihood of confusion is evaluated through the eight-factor
analysis set forth in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st
Cir. 1981). The eight Pignons factors are: “(1) the similarity of the marks, (2) the similarity of the
goods, (3) the relationship between the parties’ channels of trade, (4) the relationship between the
parties’ advertising, (5) the classes of prospective purchasers, (6) the evidence of actual confusion,
(7) the defendant’s intent in adopting the mark and (8) the strength of the plaintiff’s mark.”
Swarovski Aktiengesellschaft, 704 F.3d at 49 n.2 (citing Pignons, 657 F.2d at 487-91). “A proper
analysis takes cognizance of all eight factors but assigns no single factor dispositive weight.”
Peoples Fed. Sav. Bank v. People’s United Bank, 672 F.3d 1, 10 (1st Cir. 2012) (quoting Borinquen
Biscuit Corp., 443 F.3d at 120).
I find that Plaintiff is likely to succeed on three of the eight Pignons factors. Defendants
are likely to succeed on four factors, and one factor is neutral. Overall, I find that Plaintiff is not
likely to succeed on its infringement claim. The factors weighing in favor of Defendants are
sufficient to allay any substantial likelihood of confusion among an appreciable number of
consumers. See Boston Duck Tours, LP, 531 F.3d at 12.

10

i.

Similarity of the Marks
The degree of similarity between the marks is the “single most important factor in

determining likelihood of confusion.” McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC,
511 F.3d 350, 367 (3d Cir. 2007) (quoting A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc.,
237 F.3d 198, 216 (3d Cir. 2000)). Moreover, the similarity of the marks takes prominence when,
as is the situation here, the goods are direct competitors in the marketplace. See Boston Duck Tours,
LP, 531 F.3d at 30 (citing McNeil Nutritionals, LLC, 511 F.3d at 367). Regarding both word marks
and design marks, “similarity is determined on the basis of the total effect of the designation, rather
than a comparison of individual features.” Id. at 29 (quoting Pignons, 657 F.2d at 487) (citation
omitted). For design marks, similarity of appearance is controlling. Id. (citing 4 McCarthy on
Trademarks and Unfair Competition § 23:25 (4th ed.)). “Even if elements of each party’s mark
overlap, or are visually similar, the marks as a whole may still create a distinct commercial
impression, especially if the similarities are limited to generic or descriptive elements.” Id.7
Plaintiff argues that “Hg5” and “HoG” are similar because they each contain three letters,
they each contain an “h” and a “g,” and they each contain a small character sandwiched between
two larger characters. Defendants, on the other hand, argue that the marks are not similar at all.
They present a side-by-side comparison of the Amalgam HoG logo and the printed characters
“Hg5” to illustrate the significant differences. Defendants also assert that they do not use “HoG”

7

It is also true that “otherwise similar marks are not likely to be confused if they are used in
conjunction with clearly displayed names, logos or other source-identifying designations of the
manufacturer.” Int'l Ass'n of Machinists & Aerospace Workers, AFL-CIO v. Winship Green
Nursing Ctr., 103 F.3d 196, 204 (1st Cir. 1996). Here, however, the names of RAMVAC and
DentalEZ have been associated with both the Hg5 and the Amalgam HoG. Thus, to the extent that
these names now appear in the context of the Amalgam HoG, this appearance would not
necessarily dispel confusion.
11

as a standalone mark; rather, it is part of a logo that consists of the phrase “Amalgam HoG Powered
by Apavia” and includes a picture of a hog’s head.

,8 I find that the overall effect is quite different from

Regarding the design mark,

Defendants’ logo,

.

The logos are different sizes, lengths, shapes, and

colors,9 and they utilize different fonts. One includes a picture, while the other does not. In fact,
the only similarity is that they both contain the letters “h” and “g.” I do not find any likelihood of
confusion between Defendants’ mark and Plaintiff’s design mark.
Regarding the word mark, Plaintiff’s registration covers the word “HG5.” Even when
compared to a shortened version of Defendants’ logo, “HOG,” I do not find that these two marks
are sufficiently similar to create a likelihood of confusion. The similarities are that each word
contains an “h” and a “g” and each is three characters in length. However, HOG spells a
recognized English word, while HG5 does not; and HOG contains all letters, while HG5 has two
letters and a number. The order of the letters is also important in this context because “Hg” is the
chemical name for mercury, which relates to the product’s use as an amalgam separator. This
chemical name is explicitly included in “HG5” but is only implied by “HOG.” Moreover, the
exhibits submitted by both parties reveal that the word “HOG” does not usually appear by itself.
It is almost always preceded by the word “Amalgam.” Plaintiff has submitted only one screenshot,
relating to the California Dental Association’s 2015 meeting, which refers to the product simply

8

I acknowledge that this representation contains the word “RAMVAC,” which is no longer an
authorized distributor of the Hg5. However, this image is an accurate representation of how the
Hg5 design mark has appeared on Plaintiff’s product labels. I do not rely on the presence of
RAMVAC’s name for the determination of dissimilarity.
9
The Hg5 design mark contains the colors maroon, blue, black, and gray, whereas the Amalgam
HoG mark contains only black and white.
12

as “the HoG.” Overall, I find that the marks are not significantly similar, and this factor weighs
heavily in favor of Defendants.
ii.

The Similarity of the Goods
The parties do not dispute that the Amalgam HoG and the Hg5 are substantially similar

pieces of equipment. Both are amalgam separators used to filter dental wastewater streams, and
the Amalgam HoG has been designed to retrofit onto already-installed Hg5 systems. This factor
weighs in favor of Plaintiff.
iii.

The Relationship Between the Parties’ (a) Advertising and (b) Channels of Trade, and
(c) the Classes of Prospective Purchasers
These three factors are interrelated and generally considered as a group rather than

individually. See, e.g., Peoples Fed. Sav. Bank, 672 F.3d at 14; Pignons, 657 F.2d at 488. The
Amalgam HoG is being sold by the same distributors (DentalEZ and RAMVAC) that previously
sold the Hg5 for six years, and it is being sold to the same customer base. The two amalgam
separators appear to be competing for the same purchasers, in the same market. Defendants do
not dispute these facts. Accordingly, the first two factors in this group weigh in favor of Plaintiff.
As for the third factor in this group, although the parties sell their products to the same
class of purchases, it is important to note that these are sophisticated customers with particularized
knowledge of the dental supply industry. Additionally, amalgam separators are specialized, longlasting pieces of equipment, which are sold for upwards of $1,000 apiece. “If likelihood of
confusion exists, it must be based on the confusion of some relevant person; i.e., a customer or
purchaser. And there is always less likelihood of confusion where goods are expensive and
purchased after careful consideration.” Astra Pharm. Products, Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 1206 (1st Cir. 1983) (citing Pignons, 657 F.2d at 489). I find that there is little
likelihood that individuals in the business of selecting amalgam separators will be easily confused
13

by subtle similarities between Plaintiff’s and Defendants’ marks. This factor weighs in favor of
Defendants.
iv.

The Evidence of Actual Confusion
As evidence of actual confusion, Plaintiff has submitted three screenshots from the

websites of dental supply companies that sell amalgam separators. The first is from a company
called “IQ Dental,” and the screenshot shows a listing of the Hg5, with a bullet-point description
and a photograph of the product, alongside a heading that reads “HoG Amalgam Separator.” The
second two screenshots are from the website of an Australian company, “Dentec,” and they show
(1) a listing of the Amalgam HoG, with a photograph and a two-paragraph description,
accompanied by a heading that reads “Hg5 Amalgam Separators”; and (2) a listing for an “Hg5
Amalgam Separator – Replacement Cartridge” alongside a photograph of the Amalgam HoG.
In response to these exhibits, Defendants submitted an email written by Sergey Kunin of
IQ Dental and sent to Agnes Marie Pennington, Product Manager for DentalEZ products. In this
email, Kunin explains that IQ Dental sells both the Hg5 and the Amalgam HoG and is “well aware
of the differences between the two units.” (Docket No. 41-1 at 6.) Kunin attributes the erroneous
website listing to a “data entry mistake,” and he states that IQ Dental is “taking steps to ensure
[its] site correctly identifies both products going forward.” (Docket No. 41-1 at 6.)
Based on Kunin’s statement, I am convinced that the IQ Dental screenshot reflects a
clerical error. Regarding Dentec, however, neither party has presented supporting evidence to
reveal the origin of the mistakes. The apparent errors could reflect accidental data-entry issues, or
they could be the results of actual confusion. However, Defendants have also submitted an
affidavit of Pennington, in which she asserts that neither she nor any members of her customer
service department have received any questions from customers who are confused about the

14

respective origins of the Hg5 and the Amalgam HoG. I find that the Dentec screenshots, submitted
without explanation or context, are not sufficiently substantial to show a likelihood that an
appreciable number of customers are confused about the origins of the two products. This factor
is neutral and does not weigh in favor of either party.
v.

The Defendants’ Intent in Adopting the Mark
“[A]lthough bad intent is not required for a finding of trademark infringement, the

defendant’s intent in adopting the mark is an appropriate consideration in the court’s assessment
of whether the public is likely to be confused about the actual source of the goods . . . at issue.”
Peoples Fed. Sav. Bank, 672 F.3d at 11-12 (internal quotation marks omitted). Likewise, the
absence of a putative infringer’s bad faith weighs against a finding of infringement. See Boston
Duck Tours, LP, 531 F.3d at 30.
Plaintiff argues that Defendants’ intent to infringe is clear, because Apavia was formed on
the theft of Plaintiff’s trade secrets. This allegation is the subject of a pending state court lawsuit,
and I am not in a position to determine whether the claim has any merit. Although there is clearly
ill will on both sides of this controversy, Plaintiff has submitted nothing beyond allegations
regarding the nefarious nature of how the Amalgam HoG came into being. Moreover, I find it
significant that Defendants’ new logo is consistent with its line of other animal-themed products.
RAMVAC has marketed at least seven other dental utility products, each with a different animal
name relating to the product’s use, accompanied by a picture of the animal (usually the head). The
“HoG” element of the Amalgam HoG logo fits neatly into this line of products, suggesting
Defendants’ intent to continue with its own ongoing commercial scheme rather than to infringe on
Plaintiff’s reputation. I find that this factor weighs in favor of Defendants.

15

vi.

The Strength of the Plaintiff’s Marks
The strength factor entails two types of analyses. One aspect involves the strength of the

mark in its inherent capacity to function as a source identifier of goods; this goes to the viability
of the mark regarding its entitlement to trademark protection. See, e.g., Peoples Fed. Sav. Bank,
672 F.3d at 15; Boston Duck Tours, LP, 531 F.3d at 15-17. The second aspect of the analysis
involves commercial strength, shown by market factors relating to the mark’s use in commerce.
See, e.g., Borinquen Biscuit Corp., 443 F.3d at 121; Keds Corp. v. Renee Int'l Trading Corp., 888
F.2d 215, 222 (1st Cir. 1989).
Plaintiff’s argument focuses on the commercial strength of its marks.

Relevant

considerations in this regard include “the length of time a mark has been used and the relative
renown in its field; the strength of the mark in plaintiff’s field of business; and the plaintiff’s action
in promoting the mark.” Keds Corp., 888 F.2d at 222 (quoting Boston Athletic Ass'n v. Sullivan,
867 F.2d 22, 32 (1st Cir. 1989)). Plaintiff has been selling its amalgam separators for nearly fifteen
years; the marks have been registered for thirteen years; and Plaintiff has won numerous awards
for the Hg5. Defendants note, however, that the marks have historically been marketed alongside
the names of distributors, including RAMVAC and DentalEZ. Thus, although consumers may be
familiar with the Hg5 name and logo, they may not necessarily identify the mark as belonging to
SolmeteX. I find, however, that Plaintiff’s marks have been promoted, advertised, and used in the
dental industry for a sufficient period of time that they are commercially strong, even though the
“Hg5” logo is sometimes accompanied by the logo of an authorized reseller.
Defendants’ primary argument focuses on the conceptual weakness of Plaintiff’s word
mark. Defendants contend that the word mark is merely descriptive and is, therefore, weak. A
mark is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics

16

of the goods.” Equine Techs., Inc., 68 F.3d at 544 (quoting Blinded Veterans Ass'n v. Blinded Am.
Veterans Found., 872 F.2d 1035, 1040 (D.C. Cir. 1989)). On the sliding scale of distinctiveness,
descriptive marks occupy the lowest level that warrants protection. See Boston Duck Tours, LP,
531 F.3d at at 12. A descriptive mark is entitled to trademark protection only if it has acquired
secondary meaning—consumers associate the mark with a particular product. Equine Techs., Inc.,
68 F.3d at 544 n.2 (citing Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.
1993)); see 15 U.S.C. § 1052(f). Suggestive marks are one notch higher on the spectrum of
distinctiveness.

They are considered inherently distinctive, with no requirement to prove

secondary meaning. Equine Techs., Inc., 68 F.3d at 544 n.2 (citing Boston Beer Co., 9 F.3d at 180).
If a mark “requires imagination, thought and perception to reach a conclusion as to the nature of
goods,” it is suggestive. Id. at 544 (quoting Blinded Veterans Ass'n, 872 F.2d at 1040). The line
between descriptiveness and suggestiveness can be a blurry one and is not easily drawn. In making
this determination, the court considers “the mark in its entirety, with a view toward ‘what the
purchasing public would think when confronted with the mark as a whole.’” Id. (quoting In re
Hutchinson Technology Inc., 852 F.2d 552, 552-54 (Fed. Cir. 1988)).
As explained above with regard to the first element of the infringement claim, the Hg5
marks are entitled to a presumption of validity, because they have been successfully registered
with the USPTO. See 15 U.S.C. § 1115(a). Although validity does not necessarily equal inherent
distinctiveness—because the marks could have acquired distinctiveness through secondary
meaning—on the record presently before me there is no indication that Plaintiff was required to
submit evidence of secondary meaning in order to obtain its federal registrations.
Moreover, I find that the Hg5 word mark has a descriptive element but is, overall,
suggestive. The “Hg” aspect of the mark is a descriptive term, because “Hg” is the chemical

17

symbol for mercury.

However, although mercury is involved in the process of amalgam

separation, the chemical symbol “Hg” by itself does not signify the process of amalgam separation.
A small leap of imagination is required to travel from “mercury” to the process of separating
mercury from dental wastewater. Furthermore, the “5” adds a suggestive element, as this number
does not appear to correlate with an aspect of the product’s purpose.
In this particular situation, however, the strength factor is affected by the fact that the only
common aspect of Plaintiff’s and Defendants’ marks is the weakest element. See 4 McCarthy on
Trademarks and Unfair Competition § 23:48 (4th ed.) (“If the common element of conflicting
marks is a word that is ‘weak’ then this reduces the likelihood of confusion.”). As noted above,
the only similarities between the marks are that they both feature the letters “H” and “G.” These
letters form the most descriptive—i.e., weakest—element of Plaintiff’s mark. This lessens the
likelihood of confusion, because consumers will look past the more descriptive element of the
marks to the other portions of the designs and will not be confused unless other aspects are also
similar. See id. (citing In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir.
1985)); see Boston Duck Tours, LP, 531 F.3d at 30. In this instance, the marks are not otherwise
similar. The weakness of the “Hg” aspect is further underscored by the presence of at least two
other amalgam separators currently on the market with names that include “HG.”10 Although
Plaintiff’s marks are worthy of protection and have been commercially promoted, I find that the
strength factor weighs slightly in favor of Defendants, because the overlapping element is weak.

10

These other amalgam separators are the “PUREVAC Hg System” and the “Rebec CATCH HG.”
(Docket No. 17-3 at 2-3.)
18

2. Likelihood of Irreparable Harm, Balancing of the Equities, and
Promoting the Public Interest
“[A]n injunction should issue only where the intervention of a court of equity is essential
in order effectually to protect property rights against injuries otherwise irremediable.” Voice of the
Arab World, Inc., 645 F.3d at 32 (quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312
(1982)). This Court must balance “the hardship that will befall the nonmovant if the injunction
issues” against “the hardship that will befall the movant if the injunction does not issue.” MercadoSalinas v. Bart Enterprises Int'l, Ltd., 671 F.3d 12, 23-24 (1st Cir. 2011) (quoting Borinquen
Biscuit, 443 F.3d at 115).
Plaintiff alleges that it is suffering irreparable harm because of the high likelihood of
confusion between the Hg5 and Amalgam HoG marks. Plaintiff views this confusion as an
immediate threat to its commercial reputation. Plaintiff also asserts that the relief sought will
merely require Defendants to place new labels on their products; whereas Plaintiff stands to risk
its longstanding, respected, and highly developed trademark. Defendants, however, will suffer
harm if they are enjoined from marketing and selling their new product, which has already been
introduced publicly to the dental community as the Amalgam HoG. Defendants further assert that
they began using the Amalgam HoG logo in February of 2015, and Plaintiff was aware of this use
but delayed in seeking judicial intervention.
Considering the significant dissimilarity between the marks and the overall low likelihood
of confusion, I find that Plaintiff is not likely to suffer irreparable harm absent preliminary
injunctive relief. I also find that to enjoin Defendants’ use of the Amalgam HoG logo would cause
significant hardship. The public interest does not require a preliminary injunction under these
circumstances.

19

Conclusion
For the reasons set forth above, Plaintiff’s motion for preliminary injunction (Docket
No. 2) is denied.

SO ORDERED.

/s/ Timothy S. Hillman
TIMOTHY S. HILLMAN
DISTRICT JUDGE

20