Discus Dental LLC, Culver City, Calif, has filed a lawsuit in Los Angeles federal court against Florida-based BSML Inc, charging BSML with breach of contract and violation of Discus’ trademark rights.
According to Discus, the company seeks to end a license agreement with BSML for use of the Discus-owned BriteSmile® trademark. The company also seeks a court order prohibiting BSML from future use of the trademark and damages to its intellectual property rights associated with the trademarked brand.
According to an announcement from Discus, “In 2006 Discus purchased substantially all assets of BSML’s predecessor company, BriteSmile Inc, and its related entities, in a transaction valued at $35 million. Discus currently owns the rights to the BriteSmile in connection with teeth-whitening services offered in dental offices, where it is the exclusive supplier of BriteSmile teeth-whitening products and procedures. As part of the transaction, Discus agreed to provide BSML with limited rights to use the BriteSmile trademark and related patents, for certain teeth-whitening procedures that BSML offers in its spa locations. BSML also retained the limited right to use the trademark for certain types of toothpaste, mouthrinse, and teeth-whitening pens that it offers over the Internet and on the QVC home-shopping network.”
Discus’ lawsuit alleges that BSML breached the license agreement and violated Discus trademark rights by harming the goodwill, reputation, and value of its BriteSmile trademark based on various BSML actions. This includes reports that BSML has charged consumer credit cards for services never performed, closed BSML spa locations without notice, and refused to refund prepaid appointment charges. Additionally, the lawsuit alleges BSML improperly has sought its own trademark registrations on variations of the BriteSmile trademark, placing it in further breach of the license agreement.
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