Unfortunately and predictably—which also is unfortunate—as the need for medical supplies to combat the coronavirus has increased, so have efforts by unsavory companies and individuals to profit from that need, often by offering counterfeit and otherwise unauthorized products to unsuspecting buyers. Two complaints filed last week highlight some of the harm caused by these activities and the important role trademarks can play in combating them.
3M Company v. Performance Supply, LLC
On Friday, 3M Company tackled efforts by Performance Supply to sell coveted, invaluable N-95 masks to New York City, filing a lawsuit in the Southern District of New York for trademark infringement, unfair competition, trademark dilution, and false advertising, among other things. According to 3M’s complaint, Performance Supply issued a formal quote to New York City’s Office of Citywide Procurement offering to sell millions of N-95 masks for approximately $45 million dollars. It reproduced the 3M trademarks and 3M SCIENCE. APPLIED TO LIFE slogan throughout the quote, referred to 3M’s St. Paul, Minnesota headquarters (Performance Supply is headquartered in NJ), and included other details designed to falsely signal to NYC that it was an authorized vendor, selling authentic products. Most egregious, perhaps, was its offer to sell the masks at a 500-600% mark-up over 3M’s list price. According to 3M, NYC was fooled and wrongly identified Performance Supply as a vendor of 3M products in later documentation. 3M’s complaint seeks an injunction, as well as profits, treble damages, and attorneys’ fees. Notably, it also seeks an order requiring that any money collected—including attorneys’ fees and costs—be donated to one or more COVID-19 charities.
CoronaCide, LLC v. Wellness Matrix Group, Inc.
Earlier in the week, in the Middle District of Florida, CoronaCide, LLC, a company that makes COVID-19 test kits, sued Wellness Matrix Group, Inc. and George Todt for advertising and offering its test kits for sale. CoronaCide is authorized by the FDA to distribute test kits to licensed healthcare practitioners. It advertises and sells those kits to medical distribution companies, hospitals, city and state governments, all of whom will ensure that the kits are used at the point of care as required by the FDA. The kits are not for at home use.
In February 2020, Defendant George Todt, a representative of Wellness Matrix, sent a purchase order to CoronaCide for some of its test kits. After discovering that both Todt and Wellness Matrix have been sued for fraud in the past, CoronaCide declined to sell to them. Regardless, Defendants continued to offer CoronaCide test kits for sale on their site, using CoronaCide’s trademarks, copying text from CoronaCide’s own website, and reproducing CoronaCide’s other marketing materials. Defendants advertised the kits as home test kits, which prompted Congress to send Defendants a letter asking for more information about the kits. This, as well reports that consumers never received the kits they purchased from Wellness Matrix drew negative attention from the media. The complaint includes claims for unfair competition and false advertising, and seeks to enjoin Defendants’ acts and to recover damages and attorneys’ fees.
Assuming the allegations in both complaints are generally accurate, shame on the defendants for their efforts to capitalize on a global health crisis. Hopefully, these lawsuits will bring a swift end to their activities. And, kudos to 3M for its commitment to donate any funds recovered to charity.