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First Circuit Court of Appeals Upholds Ruling in Favor of Firm’s Client Great Clips
January 7, 2014
On January 5, 2010, the U.S. Court of Appeals affirmed the previous ruling by the District Court that upheld a settlement agreement confirming Great Clips’ right to use the its trademarked name throughout the United States, including the Boston market.
In December 1989, Great Clips entered into a settlement agreement with Dalan Corporation to resolve a trademark dispute before the United States Patent and Trademark Office (PTO). Under the agreement, Great Clips agreed to withdraw its opposition to Dalan’s application to register the mark "Great Cuts" and Dalan agreed to withdraw its counterclaim for the cancellation of the "Great Clips" mark. The agreement also bound successors and affiliates of the two companies. Dalan subsequently merged with salon operator Great Cuts, Inc., which then had a right to use the trademark "Great Cuts."
In 2008, Great Clips secured franchise agreements to open up several salons in Massachusetts and New Hampshire. The Hair Cuttery, which had licensed the trademark "Great Cuts" from Great Cuts, threatened legal action against Great Clips over its planned use of the "Great Clips" mark in the New England market. Great Clips filed for declaratory judgment, arguing its use of "Great Clips" in New England was allowed under the terms of the settlement agreement with Dalan. Great Cuts and Hair Cuttery countersued for trademark infringement and several related causes of action.
On February 19, 2009, the U.S. District Court for the District of Massachusetts upheld the settlement agreement giving the hair salon chain Great Clips, Inc. the right to use the trademark "Great Clips" in the Boston market. Judge Douglas P. Woodlock granted Great Clips' motion for declaratory judgment in the case and also dismissed a counterclaim of trademark infringement against the company.
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