Northern California Record

Thursday, November 21, 2019

Judge orders Strauss Diamond Instruments enjoined from infringing Align Technology marks


By Shanice Harris | May 6, 2019

Trademark 06

SAN FRANCISCO – The maker of the Invisalign teeth-straightening system was partially granted a motion for injunction in a case over the use of hashtags in advertising by a competitor.

Align Technology sought to enjoin defendant Strauss Diamond Instruments from advertising or selling any of its MagicSleeve dental wand sleeve product or any other of the defendant's products. On April 12, Judge Thomas S. Hixon of the U.S. District Court for the Northern District of California granted in part and denied in part the request.

"The court orders that Strauss Diamond Instruments Inc., and its officers, agents, servants, employees and anyone in active concert or participation with them are enjoined from: (1) infringing Align’s registered marks for iTero, iTero Element or Invisalign; and (2) disseminating, publishing, or causing to be made available to the public the statement that the MagicSleeve provides a '25 percent faster scanning time' than Align’s iTero scanning sleeve," Hixson wrote.

Align filed the motion for preliminary injunction in January and Strauss filed its opposition the following month. The court held a hearing in March and came to the decision after reviewing both parties' positions and the evidence submitted.

The most well-known Align product is the Invisalign system. The product straightens teeth without traditional braces. Instead, Invisalign is a clear, removable plastic tray that can easily be installed and taken out by the customer. Align also sells other dental equipment, including a 3-D iTero scanner that is able to scan a patient's teeth, mouth and gums and create an image. The iTero Element scanner includes a protective sleeve that covers the long wand section of the scanner that is disposable.

Align has trademarked all of these products and are patented in connection with dental health and services. 

Strauss also sells dental products, one of which is the MagicSleeve. It’s a silicone sleeve that covers the wand of a mouth scanner. It’s similar to the iTero products, but there are some differences. 

“For example, it is reusable, the glass window in the sleeve is removable and does not have a secure connection to the sleeve, and the window in the MagicSleeve does not have antireflective coating and is thicker than the iTero Element sleeve’s window,” according to the ruling.

Both products were marketed to the same clientele. Align alleged that several YouTube and social media advertisements from Strauss featured the MagicSleeve but were Align-branded, referencing an ad where Strauss hashtagged their product using #invislign and #itero, Align's trademarks.

Align also called out their competition for using claims that MagicSleeve scanner acts 25 percent faster and is "just as sharp" as the iTero product. Align alleged that these statements are false.

Hixon ruled Align is likely to prevail on the merits of its trademark infringement case. Hixson wrote that Strauss' use of the Align marks in hashtags "is not nominative fair use."

The court denied Align’s motion to go forth in the trademark counterfeiting claim. 

"...The comparison between the MagicSleeve and the iTero protective sleeve that stays on the iTero wand when the machine is not in use is spurious because the blue MagicSleeve is an alternative to the white iTero disposable sleeve, not the protective sleeve. In short, the MagicSleeve is not a stitch-for-stitch copy. Accordingly, Align is not likely to prevail on its trademark counterfeiting claim," Hixson wrote.

However, Hixon wrote that "Align has not proven that Strauss’ statement that the MagicSleeve produces 'just as sharp of a scan' is false," but was likely to succeed on its false advertising claims on the 25 percent faster scanning time claim.

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