AL CASS, INC. v. CASSINELLI, No. 99-0103 (Ma.Super. Feb. 12, 1999)


AL CASS, INC. vs. STEPHEN CASSINELLI AND OTHER[1]

No. 99-0103Commonwealth of Massachusetts Superior Court CIVIL ACTION WORCESTER, SS.
February 12, 1999

[EDITOR’S NOTE: This case is unpublished as indicated by the issuing court.]
[1] Steve Cass Co., Inc.

MEMORANDUM OF DECISION

TOOMEY, JUSTICE.

On January 29, 1999 the parties were before the court for hearing on the motion of plaintiff Al Cass, Inc. (“Cass”) for injunctive relief. Cass seeks to enjoin defendants Stephen Cassinelli (“Stephen”) and Steve Cass Co. Inc. (“SCC”) from the use of registered trademarks, common law marks and Cass’ trade name, “Al Cass `Fast.'” (“trademarks”). Cass also seeks to bar defendants from their use, in the packaging, advertising, marketing or sale of their product, “Steve Cass Ultra Fast,” of the image of a rocket ship or of a boy and man playing the trumpet.

For the following reasons, plaintiff’s motion for injunctive relief is DENIED.

BACKGROUND
Stephen is the son of Vera and the late Al Cassinelli (“Vera” and “Al”). In the early 1960s, Al, a musician from Milford, Massachusetts, began producing and marketing a valve, slide and key oil for musical instruments. The oil was known as “Al Cass `Fast.'” When Al passed away in 1989, Vera inherited the business, a sole proprietorship. She incorporated in 1990 and is now the President and sole stockholder of Al Cass, Inc.. Stephen was employed by Al Cass, Inc., but he left the company in 1997.

In the fall of 1998 Stephen began producing, marketing and advertising a valve, slide and key oil for musical instruments known as “Steve Cass Ultra Fast.” Cass, concerned by the advent of Stephen’s business, alleges that the injunctive relief sought by this lawsuit is necessary because the packaging and advertising used by Stephen create a likelihood of injury to the business reputation of Cass as well as a dilution of the distinctive quality of the Cass trademarks.

DISCUSSION
In considering whether or not to grant a preliminary injunction, the court conducts a balancing test. The court evaluates the moving party’s claim of injury together with its likelihood of success on the merits. Packaging Industries Group, Inc. v. Cheney, 380 Mass. 609, 617 (1980). If the court discerns such a likelihood and also finds that a failure to issue the injunction would “subject the moving party to a substantial risk of irreparable harm,” the court will weigh that risk against any similar risk of irreparable harm which the grant of injunctive relief would work upon the opposing party. Id. Only when the balance between the risks cuts in favor of the moving party may a preliminary injunction properly be issued. Id.; Planned Parenthood League of Mass., Inc. v. Operation Rescue, 406 Mass. 701,710 (1990).

A. Likelihood of Success on the Merits
It appears, at this very early stage of the lawsuit, that Cass does have a substantial likelihood of success on the merits. Trademark rights, which accrue from the prior usage of a mark, find their source in the common law. Planned Parenthood Fed’n. Inc. v. Problem Pregnancy of Worcester, Inc., 398 Mass. 480,486 (1986). The central issue in such cases is whether the allegedly infringing use creates a likelihood of confusion as to the source of the product. The Black Dog Tavern Co., Inc. v. J. Peter Hall, 823 F. Supp. 48,52 (D. Mass., 1993).

In determining the likelihood of such confusion, the court will assess whether members of the purchasing public are likely to mistake one party’s effort for another party’s protected product. Id. The court is urged to consider eight different factors, including the similarity of the goods, the similarity of the marks, the relationship between the parties’ channels of trade, the relationship between the parties’ advertising, the classes of prospective purchasers, and evidence of actual confusion. Id. at 54. A similar assessment is used to gauge the likelihood of injury to business reputation or of dilution of the distinctive quality of a trademark. Id. at 59.

At bar, Cass makes a credible showing of the likelihood of consumer confusion with respect to the source of the two products. See Id. at 58. Cass presents evidence which, if believed, suggests that the parties are marketing the same product, for the same use, under similar family names, and using a similar logo. It is likely that, at trial, a violation of Cass’ registered or common law marks will be found.

B. Balance of Harms
Cass argues that an injunction is now necessary because Stephen’s advertising, marketing, and use of a similar name and logo has confused several of Cass’ regular customers and will redound to Cass’ economic disadvantage. Cass has failed to establish, however, that it has or will suffer a loss that cannot be remedied by money damages should it succeed at a trial on the merits. Packaging Industries, supra, at 616. Consequently, Cass has not made the requisite showing, on this record, that it will suffer irreparable harm in the absence of preliminary injunctive relief. See Foxboro Co. v. Arabian American Oil Co., 805 F.2d 34
(1st Cir., 1986) (money loss does not constitute irreparable injury where the plaintiff has a satisfactory remedy at law).

ORDER
For the foregoing reasons, plaintiff’s motion for injunctive relief is DENIED.

_______________________________ Daniel F. Toomey Justice of the Superior Court

Dated: February, 1999