Alleged Exclusive Licensee of PRENATE® Trademarks Sues for Infringement
The complaint alleges: "Pursuant to a license from Acella Pharmaceuticals, LLC ('Acella'), Avion has the exclusive right to promote, market, sell, and distribute products under the famous and distinctive PRENATE marks, which are used in connection with a variety of nutritional supplement and prenatal vitamin products." Avion identifies the following as "PRENATE Marks":
Reg. No. or App. Serial No.
Link to PTO Assignment Records
PRENATE DHA RX PRENATAL VITAMIN & DHA and Design
In November 2012, according to the complaint, Avion became aware that the defendants were using the marks PRENA1, PRENA1 PLUS, and PRENA1 CHEW for prenatal vitamin products, and on November 14, it sent a cease-and-desist letter to defendants' CEO, to which Avion alleges it did not receive a substantive response.
Avion's complaint asserts counts for trademark infringement, false designation of origin and federal unfair competition (§ 43(a) of the Lanham Act), common law trademark infringement, common law unfair competition, and violation of the Georgia Uniform Deceptive Trade Practices Act. Counts I and V allege willful conduct. Avion seeks injunctive and monetary relief, "including without limitation reasonable attorneys' fees and treble damages."
Regarding Avion's claim of standing to sue for infringement, courts have held: "As with standing analysis in patent infringement cases, 'the determination of whether a licensee has standing to sue under [15 U.S.C.] § 1114 largely depends on the rights granted to the licensee in the licensing agreement.'" Hako-Med USA, Inc. v. Axiom Worldwide, Inc., No. 8:06-CV-1790, 2006 U.S. Dist. LEXIS 94239, at *19 (S.D. Fla. Nov. 15, 2006) (quoting Ultrapure Sys., Inc. v. Ham-Let Group, 921 F.Supp. 659, 665 (N.D. Cal. 1996)).
The case is Avion Pharmaceuticals, LLC v. TherapeuticsMD, Inc. and BocaGreenMD, Inc., No. 1:12-cv-4164-AT, filed 11/30/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Amy Totenberg.