JB Sports, LLC v. Café Tres Coracoes SA (D. Mass. 22-cv-10920).

Café Tres Coracoes is a Brazilian company that sells coffee products under the “3 Coracoes” mark.  The company has a federal registration on a design mark having the “3 Coracoes” phrase in a red circle with three gold hearts above it. 

JB Sports obtains and resells consumer products through Amazon (among other channels) through a storefront under the name “Flexi Ventures 21 Years On-Line.”  It has sold through Amazon since 2000, and is among the top 3000 Amazon sellers.  JB Sports began purchasing 3 Coracoes products from a distributor, Triunfo Foods, in 2006 and began selling these products through its Amazon storefront. 

JB Soprts says that Café Tres Coracoes has sought to control distribution and pricing of its products through unlawful means, including making false allegations of intellectual property infringement and defamation.  In this case, Café Tres Coracoes made several such allegations about JB Sports to Amazon, who removed a number of JB Sports listings as a result.  JB Sports says that all of the accused sales were of legitimate, legally-obtained products and that the first sale doctrine should preclude a finding of trademark infringement.  To date, however, Café Tres Coracoes has refused to withdraw their complaints, and the products remain suspended.  In addition to lost revenue from the unavailability of these sales, JB Sports says that these complaints negatively affect JB’s “buy box” standing on other JB offerings, which account for as much as 90% of all Amazon sales, and actually resulted in JB’s entire storefront being suspended for two weeks, resulting in the loss of about $200,000 in revenue.  

JB Sports seeks a declaration of no trademark infringement or counterfeiting, and also brings claims of unfair and deceptive trade practices under c. 93A, tortious interference with contract and business relations, and defamation.

I would note that there are ways to control unauthorized sale of authentic products, and that the first sale doctrine does not automatically apply in situations like this.  If the trademark holder can show that the products differ in a material way, the unauthorized sale can be enjoined.  Material differences can include non-physical things like warranty coverage, quality control standards and the like.  If you are interested in this, please see my Massachusetts Lawyers Weekly article here.