On Thursday in the Eastern District of Louisiana, Align Technologies, Inc. filed a complaint against O.C. Tanner Company, Inc. alleging that the defendant infringed Align Technologies’ trademark by using the ALIGN mark in connection with similar goods and services.
Align Technologies “specializes in providing company goal tracking and communication software under its ALIGN trademark”; the plaintiff has used the mark since 2012 in connection with its services. Furthermore, Align Technologies claimed that it is a market leader with these services and that it has invested significant resources in its marketing efforts under the ALIGN mark.
Align Technologies averred that in 2019, “in an effort to seemingly trade off of the goodwill established by Plaintiff,” O.C. Tanner, a company “focused on developing strategic employee recognition and reward solutions,” announced a new software with the name Align; this new software was “a service tool focused on employee management and designed to aid managers into becoming leaders through communication and goal tracking,” purportedly similar to Align Technologies’ own software. Consequently, Align Technologies alleged that O.C. Tanner “threatened” its “goodwill and reputation” that it had built and that an internet search for “Align business” and other related terms bring the plaintiff’s website, illustrating its use of the term. Moreover, O.C. Tanner, according to the plaintiff, continues to use the “identical ALIGN word mark to sell competing goods and services to the same market” as Align Technologies without authorization or obtaining a license. Additionally, in January 2019, O.C. Tanner sought to register the ALIGN mark with the U.S. Patent and Trademark Office in class 42; the defendant states in the application that it first used the mark in February 2019, which is years after Align Technologies claimed it started using the mark. Align Technologies proffered that it has been harmed by this alleged conduct regarding similar names, marks as well as goods and services.
Specifically, the complaint is “for federal service mark infringement, unfair competition, and false designation of origin under the Trademark Act of 1946, as amended the Lanham Act, 15 U.S.C. § 1051 et seq., as well as common law infringement and deceptive trade practices under Louisiana law, arising from the use, by Defendant, of the name and trademark ALIGN.”
The plaintiff has sought declaratory judgment in its favor, a permanent injunction, an order for the defendant to pay the plaintiff for any and all profits and gains from using the ALIGN mark, an award for damages, an order to destroy all “signage, goods, packaging, containers,” etc. “bearing the ALIGN mark,” and other relief.
Align Technologies is represented by Intellectual Property Consulting, LLC.
