Sage Therapeutics, Inc. v. Sage Naturals, Inc.
| Sage Therapeutics, Inc. |
| Sage Naturals, Inc. |
| Judge Edward F. Harrington |
| 1:2017cv11089 |
| June 13, 2017 |
| US District Court for the District of Massachusetts |
| Boston Office |
| Middlesex |
| Nathaniel M Gorton |
| Richard G Stearns |
| Trademark |
| 15 U.S.C. § 1125 |
| Both |
Docket Report
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| Document Text |
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| Filing 43 Judge Richard G. Stearns: ORDER entered. ORDER DISMISSING CASE. (Pacho, Arnold) |
| Filing 42 NOTICE of Voluntary Dismissal by Sage Therapeutics, Inc. (Sternberg, Sharona) |
| Filing 41 Judge Richard G. Stearns: ELECTRONIC ORDER entered granting #40 Motion to Stay all deadlines until 4/9/2018 upon parties' representation that they are close to completing a settlement. Parties to file dismissal or joint status report by that date. (RGS, int2) |
| Filing 40 Joint MOTION to Stay (Suspend Case Deadlines Pending Settlement Compliance) by Sage Therapeutics, Inc..(Scruggs, Brandon) |
| Filing 39 Judge Richard G. Stearns: ORDER entered granting #38 Motion for Protective Order pursuant to the parties' joint stipulation. (RGS, int2) |
| Filing 38 Joint MOTION for Protective Order by Sage Therapeutics, Inc.. (Attachments: #1 Exhibit 1 - Proposed Stipulated Protective Order)(Scruggs, Brandon) |
| Filing 37 ANSWER to Counterclaim by Sage Therapeutics, Inc..(Tittemore, Lisa) |
| Filing 36 Judge Richard G. Stearns: ORDER entered. SCHEDULING ORDER: Initial disclosures to be exchanged no later than 1/3/2018; joint proposed protective order due 1/31/2018; amended pleadings and joinder of parties due by 2/28/2018. Fact discovery to be completed by 5/16/2018. If experts are utilized, opening reports due 6/13/2018; rebuttal reports 7/11/2018; expert discovery closes 8/8/2018; summary judgment motions to be filed no later than 9/5/2018. If experts are not utilized, summary judgment motions to be filed no later than 6/13/2018. Summary judgment oppositions to be filed no later than 21 days after the motion, reply by leave of court only. The parties to inform the court no later than 6/13/2018 (if summary judgment motions are not filed on that date) whether they intend to utilize experts.(RGS, int2) |
| Filing 35 ANSWER to #1 Complaint with Jury Demand , COUNTERCLAIM against Sage Therapeutics, Inc. by Sage Naturals, Inc..(Michaelis, Brian) |
| Senior Judge Edward F. Harrington: The parties notified the Court that this case is not ripe for mediation at this time and want to cancel the mediation. ORDER entered. (McLaughlin, Tracy) |
| Filing 34 Judge Richard G. Stearns: ELECTRONIC ORDER entered granting #33 Motion for Extension of Time until 12/8/2017 to answer in light of the ongoing settlement efforts. (RGS, int2) |
| Filing 33 Third MOTION for Extension of Time to December 8, 2017 to Respond to Complaint by Sage Naturals, Inc..(Michaelis, Brian) |
| Filing 32 CERTIFICATION pursuant to Local Rule 16.1 . (Michaelis, Brian) |
| Filing 31 Judge Richard G. Stearns: ELECTRONIC ORDER entered granting #30 Motion for Extension of Time to Answer until 11/8/2017 in light of the parties' settlement efforts. (RGS, int2) |
| Filing 30 Assented to MOTION for Extension of Time to November 8, 2017 to Respond to Complaint by Sage Naturals, Inc..(Michaelis, Brian) |
| Filing 29 ELECTRONIC NOTICE of ADR Conference Alternative Dispute Resolution Hearing set for 12/4/2017 10:30 AM in Courtroom 20 before Senior Judge Edward F. Harrington. Counsel and principals are ORDERED to be present and to have full settlement authority. A brief mediation memorandum addressing both the merits of the case and the filing party's settlement position should be submitted to the court via email as an attachment to tracy_mclaughlin@mad.uscourts.gov or facsimile to (617) 204-5801 by 11/29/2017 at 12:00P.M. The mediation memo should be marked "Confidential - Not for docketing" and is not to be served upon opposing parties. Counsel are asked to accommodate this date. In the event that you believe the case is not ripe for mediation at this time or the date poses a serious conflict, please contact Tracy McLaughlin at the email address above.(McLaughlin, Tracy) |
| Filing 28 Notice of assignment to ADR Provider. Judge Edward F. Harrington appointed.(Garvin, Brendan) |
Filing 27
ORDER REFERRING CASE to Alternative Dispute Resolution. Parties have requested a date of 12/4/17. The court will schedule the mediation in case the parties do not themselves settle the dispute. The parties are to notify the mediator no later than 3 business days ahead of the scheduled date if they will not proceed. If the settlement ultimately prove unsuccessful, the court will enter a scheduling order. (Garvin, Brendan)
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| Filing 26 CERTIFICATION pursuant to Local Rule 16.1 for Plaintiff Sage Therapeutics, Inc.. (Tittemore, Lisa) |
| Filing 25 JOINT STATEMENT re scheduling conference . (Tittemore, Lisa) |
| Filing 24 Judge Richard G. Stearns: Initial case management ORDER entered. (Attachments: #1 Standing Order Re Courtsey Copies, #2 Standing Order re Default PO, #3 Standing Order re Related Actions)(RGS, int2) |
| Filing 23 Judge Richard G. Stearns: ELECTRONIC ORDER entered denying #10 Motion to Dismiss for Failure to State a Claim. Plaintiff Sage Therapeutics, Inc. (STI) is a pharmaceutical company that develops medicines to treat various central nervous system (CNS) disorders. Since 2011, STI has used its Sage Therapeutics mark and Sage-formative product names in connection with human clinical trials for its medicines. In addition to appearing on materials distributed to healthcare professionals and patients, the Sage Therapeutics mark has been displayed on the STI website and on CNS disorder educational websites, and distributed through the popular press and advertisements on public transit trains and buses in the Greater Boston area. The Sage Therapeutics mark, consisting on the left side of a larger not fully-closed circle surrounding a smaller closed circle, and on the right side of the large word SAGE above the smaller word THERAPEUTICS, was registered with the Patent and Trademark Office (PTO) on January 5, 2016. STI alleges that defendant Sage Naturals, Inc. (SNI) uses confusingly similar logos and marks in connection with SNI's sales of medical marijuana. According to the Complaint, SNI advertises its medical marijuana products for the treatment of CNS disorders and uses SAGE and SAGENATURALS as marks. In particular, SNI has displayed, inter alia, a logo that consists on the left side of three concentric circles, the outer two being slightly elongated at one corner to evoke a leaf, and on the right side the word SAGE in bold letters. STI further alleges that because both companies have facilities in Cambridge, Massachusetts, costumers have arrived at STI's office in search of SNI's dispensary. And as the use and sale of marijuana remains illegal under federal law, STI fears that any associated stigma will adversely impact its reputation. STI asserts five claims: federal trademark infringement (Count I); federal unfair competition and false designation of origin (Count II); Massachusetts unfair competition (Count III); Massachusetts trademark infringement (Count IV); and Massachusetts trademark dilution (Count V).SNI moves to dismiss the Complaint. SNI contends that because the term "SAGE" has appeared in the trademarks of numerous other businesses, STI's mark is necessary a weak one entitled to at-best a narrow scope of protection. Further, "S.A.G.E." is an acronym for a particular species of cannabis and "SAGE" commonly connotes cannabis, and SNI's adoption of the term for its marijuana products is consistent with that usage. Finally, SNI contends that STI has not adequately alleged the likelihood of consumer confusion, a common element of the trademark claims. See Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 120 (1st Cir. 2006) ("This court has enumerated eight factors to guide the inquiry into likelihood of confusion: (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) evidence of actual confusion; (7) the defendants intent in adopting its mark; and (8) the strength of the plaintiff's mark."). SNI maintains that because the marks only share the word "SAGE" over which STI has no trademark rights (STI has an application pending at the PTO on the "SAGE" mark), the marks are not meaningfully similar. Further, the companies have different products, different channels of trade, advertising, and different customers. Finally, SNI notes that it has already modified its corporate name and logos in response to being contacted by STI's attorneys, demonstrating its good faith in the use of its own marks.Whatever the ultimate merits of SNI's arguments, they depend on questions of fact - such as the degree and extent to which SAGE connotes cannabis in popular usage, and the amount of potential overlap between the companies' business issues that this court cannot adequately assess without an evidentiary record. STI has pled that it is the rightful owner of a valid mark; see id. at 117 ("Registration is 'prima facie evidence of the validity of the registered mark.'" (quoting 15 U.S.C. 1115(a)), that the companies use overall similar marks (at least as to the nested circles and prominent use of the word SAGE) for similar products (treatments for CNS disorders), and that because of the companies' geographic proximity, consumers are exposed to advertisements for both companies such that actual confusion between STI and SNI has occurred. This is enough to satisfy the plausibility standard at the pleading stage. (RGS, int2) |
| Filing 22 SUR-REPLY to Motion re #10 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM filed by Sage Therapeutics, Inc.. (Tittemore, Lisa) |
| Filing 21 Judge Richard G. Stearns: ELECTRONIC ORDER entered granting #20 Motion for Leave to File Surreply re Motion to Dismiss of no more than five pages no later than 9/29/2017; Counsel using the Electronic Case Filing System should now file the document for which leave to file has been granted in accordance with the CM/ECF Administrative Procedures. Counsel must include - Leave to file granted on (date of order)- in the caption of the document. (RGS, int2) |
| Filing 20 Assented to MOTION for Leave to File Sur-Reply in Opposition to Motion to Dismiss by Sage Therapeutics, Inc..(Scruggs, Brandon) |
| Filing 19 AFFIDAVIT in Support re #18 Reply to Response to Motion . (Attachments: #1 Exhibit 1 - Article, #2 Exhibit 2 - Website print-out, #3 Exhibit 3 - Website print-out, #4 Exhibit 4 - Website screenshots)(Michaelis, Brian) |
| Filing 18 REPLY to Response to #10 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM filed by Sage Naturals, Inc.. (Michaelis, Brian) |
| Filing 17 Judge Richard G. Stearns: ELECTRONIC ORDER entered granting #16 Motion for Leave to File a Reply re Motion to Dismiss no later than 9/25/2017 and no more than 10 pages; Counsel using the Electronic Case Filing System should now file the document for which leave to file has been granted in accordance with the CM/ECF Administrative Procedures. Counsel must include - Leave to file granted on (date of order)- in the caption of the document. (RGS, int2) |
| Filing 16 MOTION for Leave to File Reply to Plaintiff's Opposition to Defendant's Motion to Dismiss by Sage Naturals, Inc..(Michaelis, Brian) |
| Filing 15 Opposition re #10 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM filed by Sage Therapeutics, Inc.. (Tittemore, Lisa) |
| Filing 14 NOTICE of Appearance by Sharona H. Sternberg on behalf of Sage Therapeutics, Inc. (Sternberg, Sharona) |
| Filing 13 ELECTRONIC NOTICE issued requesting courtesy copy for #11 Memorandum in Support of Motion, #12 Declaration. Counsel who filed this document are requested to submit a courtesy copy of this document (or documents) to the Clerk's Office. These documents must be clearly marked as a Courtesy Copy and reflect the document number assigned by CM/ECF. (Caruso, Stephanie) |
| Filing 12 DECLARATION re #10 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM by Sage Naturals, Inc.. (Attachments: #1 Exhibit 1 - Registration 4879416, #2 Exhibit 2 - Application 87/366, 176, #3 Exhibit 3 - March 8, 2017 Letter, #4 Exhibit 4 - March 27, 2017 Letter, #5 Exhibit 5 - S.A.G.E. - T.H. Seeds Website, #6 Exhibit 6 - S.A.G.E. EUTM File Information, #7 Exhibit 7 - March 2, 2001 WayBack Machine Printout, #8 Exhibit 8 - Aptil 7, 2017, #9 Exhibit 09 - U.S. Reg. Nos. 3443043 & 4642363, #10 Exhibit 10 - Sage-Formative Registrations)(Michaelis, Brian) |
| Filing 11 MEMORANDUM in Support re #10 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM filed by Sage Naturals, Inc.. (Michaelis, Brian) |
| Filing 10 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM by Sage Naturals, Inc..(Michaelis, Brian) |
| Filing 9 ELECTRONIC NOTICE of Case Reassignment. Judge Richard G. Stearns assigned to case. (adminn, ) |
| Filing 8 Judge Nathaniel M. Gorton: ORDER entered. ORDER OF RECUSAL.(Lima, Christine) |
| Filing 7 Judge Nathaniel M. Gorton: ELECTRONIC ORDER entered granting #6 Motion for Extension of Time to Answer re #1 Complaint Sage Naturals, Inc. answer due 8/28/2017. (Caruso, Stephanie) |
| Filing 6 First MOTION for Extension of Time to August 28, 2017 to Respond to Plaintiff's Complaint (Assented-to) by Sage Naturals, Inc..(Michaelis, Brian) |
| Filing 5 WAIVER OF SERVICE Returned Executed by Sage Therapeutics, Inc.. Sage Naturals, Inc. waiver sent on 6/13/2017, answer due 8/14/2017. (Scruggs, Brandon) |
| Filing 4 Summons Issued as to Sage Naturals, Inc.. Counsel receiving this notice electronically should download this summons, complete one for each defendant and serve it in accordance with Fed.R.Civ.P. 4 and LR 4.1. Summons will be mailed to plaintiff(s) not receiving notice electronically for completion of service. (Coppola, Katelyn) |
| Filing 3 ELECTRONIC NOTICE of Case Assignment. Judge Nathaniel M. Gorton assigned to case. If the trial Judge issues an Order of Reference of any matter in this case to a Magistrate Judge, the matter will be transmitted to Magistrate Judge Judith G. Dein. (McKillop, Matthew) |
| Filing 2 CORPORATE DISCLOSURE STATEMENT by Sage Therapeutics, Inc.. (Tittemore, Lisa) |
| Filing 1 COMPLAINT against Sage Naturals, Inc. Filing fee: $ 400, receipt number 0101-6670185 (Fee Status: Filing Fee paid), filed by Sage Therapeutics, Inc.. (Attachments: #1 Civil Cover Sheet, #2 Category Form)(Tittemore, Lisa) |
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