SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 554 F.Supp.3d 284

SoClean sells CPAP disinfecting devices and replacement ozone-to-oxygen filters and owns a registered product-design trademark (U.S. Reg. No. 6,080,195) covering the filter shape.
Sunset began marketing and selling visually indistinguishable replacement filters in February 2021 that SoClean internally described as “knockoffs.”
SoClean sued for trade dress/trademark infringement and moved for a preliminary injunction to stop Sunset from using, selling, offering for sale, or making the accused filter in the U.S.
The PTO registration gives SoClean a statutory presumption of validity, distinctiveness, and non-functionality, shifting the burden to Sunset to rebut those presumptions.
The court found Sunset’s product identical to SoClean’s and that Sunset intentionally copied the design and marketed cartridge-only images online, creating a high risk of consumer confusion online.
The court granted a limited preliminary injunction requiring Sunset to stop marketing online with cartridge-only images and to prominently display the Sunset brand on any promotional images of the cartridge; it declined to bar in-store sales of the filters.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Validity / Distinctiveness of the registered product-design mark	SoClean: registration presumptively shows secondary meaning and distinctiveness	Sunset: registration was procured improperly and mark lacks secondary meaning	Court: registration creates prima facie presumption; Sunset failed to rebut; SoClean likely to establish distinctiveness
Functionality of the design	SoClean: some head features are arbitrary; overall design protectable	Sunset: many features are utilitarian and essential to fit and function	Court: design has both functional and non-functional elements; body functional, some head elements arbitrary; SoClean likely to prevail at this stage
Likelihood of consumer confusion	SoClean: identical design plus intentional copying causes confusion	Sunset: packaging and in-store indicators reduce confusion; product design copying alone insufficient	Court: high likelihood of confusion for online sales (cartridge-only listings); not shown for in-store sales where packaging distinguishes source
Scope of preliminary relief & irreparable harm	SoClean: full injunction against use/sale of Sunset filter and any infringing products	Sunset: full ban is overbroad; packaging suffices to avoid confusion	Held: limited injunction tailored to prevent online source confusion by requiring prominent Sunset branding on cartridge images; presumption of irreparable harm applied and not rebutted

Winter v. Natural Res. Def. Council, 555 U.S. 7 (2008) (preliminary injunction standard requires likelihood of success and irreparable harm)
TrafFix Devices, Inc. v. Marketing Displays, 532 U.S. 23 (2001) (functionality doctrine and tests for when design features are unprotectable)
Samara Bros. v. Wal-Mart Stores, 529 U.S. 205 (2000) (product design marks are not inherently distinctive; require secondary meaning)
Qualitex Co. v. Jacobson Prods., 514 U.S. 159 (1995) (trademark protection where feature identifies source and is nonfunctional)
Inwood Laboratories, Inc. v. Ives Laboratories, 456 U.S. 844 (1982) (definitions of functionality and traderelated infringement principles)
Park ‘N Fly, Inc. v. Dollar Park & Fly, 469 U.S. 189 (1985) (registration creates presumption of validity but is rebuttable)
Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56 (1st Cir. 2008) (likelihood of confusion factors in First Circuit)
Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008) (similarity-of-marks central in direct competition cases)
WCVB-TV v. Boston Athletic Ass’n, 926 F.2d 42 (1st Cir. 1991) (intent to deceive can create a presumption of likelihood of confusion)