United Oil Heat, Inc. v. M.J. Meehan Excavating, Inc.

• Decision Date: 12 July 2019
• Docket Number: No. 18-P-325,18-P-325
• Citation: 95 Mass.App.Ct. 579,129 N.E.3d 856
• Parties: UNITED OIL HEAT, INC. v. M.J. MEEHAN EXCAVATING, INC., & another.
• Court: Appeals Court of Massachusetts

95 Mass.App.Ct. 579

129 N.E.3d 856

UNITED OIL HEAT, INC.¹

v.M.J. MEEHAN EXCAVATING, INC., & another.²

No. 18-P-325

Appeals Court of Massachusetts, Bristol..

Argued October 10, 2018

Decided July 12, 2019

Mark A. Berthiaume (Zachary C. Kleinsasser also present), Boston, for the defendants.

Ryan E. Prophett, Raynham, for the plaintiff.

Present: Neyman, Ditkoff, & Englander, JJ.

NEYMAN, J.

In this case we consider whether the Internet domain name "OrderMyOil.com" is entitled to trademark protection under Massachusetts common law. On the complaint before us, we hold that OrderMyOil.com is a generic name that is ineligible for such protection. Accordingly, this case presents the rare instance in which a trademark claim was properly dismissed under Mass. R. Civ. P. 12 (b) (6), 365 Mass. 754 (1974).

Background. 1. Facts. The plaintiff, United Oil Heat, Inc., doing business as OrderMyOil.com, delivers home heating oil to customers in Massachusetts, southern New Hampshire, and northern Rhode Island. The plaintiff's website, using the Internet domain name OrderMyOil.com, went live in August 2008.³ As its name denotes, the website allows customers to order heating oil online for delivery. As of August 2, 2017, OrderMyOil.com had over 20,000 registered users, had sold over fifteen million gallons of home heating fuel, and had "done approximately $52,000,000 in revenue." The plaintiff marketed OrderMyOil.com through various media outlets. OrderMyOil.com also had a Facebook page with over 900 "likes," and delivery trucks displaying OrderMyOil.com thereon. The plaintiff does not allege that it registered OrderMyOil.com as a trademark in the United States or in any other jurisdiction.

In February of 2016, the defendants, M.J. Meehan Excavating, Inc., and Michael Meehan, began using "OrderYourOil" in connection with their home heating oil delivery services. OrderYourOil is a supplier of home heating and diesel fuel. The complaint alleges that the defendants offer the same goods and services as the plaintiff, in the same geographic areas. The defendants' website likewise allows customers to order heating oil online for delivery.

2. Procedural history. On August 2, 2017, the plaintiff filed its complaint in the Superior Court, alleging common law trademark infringement, trademark dilution under G. L. c. 110H, § 13,⁴ and violation of G. L. c. 93A, § 11.⁵ The defendants moved to dismiss the complaint under Mass. R. Civ. P. 12 (b) (6). Following a hearing, the judge issued a written decision and order allowing the motion.⁶ The judge concluded that OrderMyOil is a generic name that is not entitled to trademark protection, and that the plaintiff failed to state a claim for trademark infringement, trademark dilution, or violation of G. L. c. 93A. Judgment entered for the defendants. The plaintiff now appeals.⁷

Discussion. 1. Legal standards. a. Motion to dismiss. "We review the allowance of a motion to dismiss de novo," Curtis v. Herb Chambers I-95, Inc., 458 Mass. 674, 676, 940 N.E.2d 413 (2011), accepting as true the facts alleged in the plaintiff's complaint as well as any favorable inferences that reasonably can be drawn from them. See Lopez v. Commonwealth, 463 Mass. 696, 700, 978 N.E.2d 67 (2012). "What is required at the pleading stage are factual ‘allegations plausibly suggesting (not merely consistent with)’ an entitlement to relief ...." Iannacchino v. Ford Motor Co., 451 Mass. 623, 636, 888 N.E.2d 879 (2008), quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ( Twombly ). "Factual allegations must be enough to raise a right to relief above the speculative level ...." Twombly, supra at 555, 127 S.Ct. 1955.

b. Trademark law principles. In Massachusetts, the test for common law trademark infringement is the same as under the Lanham Act.⁸ See Jenzabar, Inc. v. Long Bow Group, Inc., 82 Mass. App. Ct. 648, 654 n.11, 977 N.E.2d 75 (2012) ("The gravamen of a claim of trademark infringement under Massachusetts common law is the same as under the Lanham Act"). See also Bose Corp. v. Ejaz, 732 F.3d 17, 26 n.7 (1st Cir. 2013) (common law trademark infringement claims in Massachusetts require same elements as Federal trademark infringement claims); Leejay, Inc. v. Bed Bath & Beyond, Inc., 942 F. Supp. 699, 701 n.2 (D. Mass. 1996) ("trademark infringement is defined in essentially the same terms under the Lanham Act and under Massachusetts law"); Black Dog Tavern Co. v. Hall, 823 F. Supp. 48, 53–54 (D. Mass. 1993) (same).⁹ Under that test, "[t]o succeed on a claim of trademark infringement, a plaintiff must establish (1) that its mark is entitled to trademark protection, and (2) that the allegedly infringing use is likely to cause consumer confusion." Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008).

As to the first requirement, "[a] proposed mark cannot acquire trademark protection unless the mark is distinctive, that is, unless it serves the purpose of identifying the source of the goods." Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 705 (1st Cir. 2007), citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). In making this determination, courts categorize "proposed marks along a spectrum of distinctiveness." Boston Duck Tours, LP, 531 F.3d at 12. That spectrum contains five categories: generic, descriptive, suggestive, arbitrary, or fanciful. Id.

At one end of the spectrum there are generic terms, which can never merit trademark protection because they cannot distinguish the goods or services of one producer from the goods or services of another.¹⁰ See Boston Duck Tours, LP, 531 F.3d at 13-14 ("generic terms are incapable of becoming trademarks"); Colt Defense LLC, 486 F.3d at 705 (generic terms receive no trademark protection); Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 7 (1st Cir. 1981) ("Under no circumstances is a generic term susceptible of de jure protection under § 43[a] of the Lanham Act ... or under the law of unfair competition"). A generic term "is one that either by definition or through common use has come to be understood as referring to the genus of which the particular product is a species." Colt Defense LLC, supra, quoting Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 373-374 (1st Cir. 1980). "[A] generic term answers the question ‘What are you?’ while a mark answers the question ‘Where do you come from?’ " Colt Defense LLC, supra, quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:1 (2007). "For a term to be generic, then, its primary significance ... to the relevant public must be to identify the nature of a good [or service], rather than its source" (quotation omitted). Colt Defense LLC, supra. Moreover, "[a] term that names the central focus or subject matter of the services is generic for the services themselves." In re Tires, Tires, Tires, Inc., 94 U.S.P.Q.2d 1153, 1157 (Trademark Trial & App. Bd. 2009). See In re Meridian Rack & Pinion, 114 U.S.P.Q.2d 1462, 1466 (Trademark Trial & App. Bd. 2015) (" ‘BuyAutoParts’ is a generic phrase for auto parts retail sales"). A genericism analysis requires viewing the name in its entirety, rather than dissecting it into its constituent parts. See Boston Duck Tours, supra at 18-19 ("a complete phrase may signify something different than the sum of its parts").

Next on the spectrum, there are descriptive terms, which "convey an immediate idea of the ingredients, qualities or characteristics of the goods to which they are attached" (quotation omitted). Boston Duck Tours, LP, 531 F.3d. at 13. A descriptive term can receive trademark protection "only if it has acquired secondary meaning by which consumers associate it with a particular producer or source" (quotation omitted). Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir. 1993). Whether a term has acquired secondary meaning is a question of fact. Id.

Finally, "[a]t the other end of the spectrum, there are suggestive, arbitrary and fanciful terms that can be protected without proof of secondary meaning. These terms are considered inherently distinctive" (quotation omitted). Boston Beer Co. Ltd. Partnership, 9 F.3d at 180. In contrast, "generic marks can never be ranked as distinctive." Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006), citing Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985).

2. Analysis. a. Generic name and secondary meaning. The plaintiff does not allege that it registered OrderMyOil.com as a trademark, and there is no dispute that it is not registered. Instead, the plaintiff contends that the name OrderMyOil.com, even if generic, is entitled to protection under Massachusetts "common law if it has acquired a ‘secondary meaning’ in the minds of the relevant public." The defendants respond that generic terms are never entitled to trademark protection. The defendants have the better argument.

First, as discussed above, it is black letter law that generic names cannot receive trademark protection. See Boston Duck Tours, LP, 531 F.3d at 14 ; Colt Defense LLC, 486 F.3d at 705 ; Miller Brewing Co., 655 F.2d at 7. "Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks, at least in connection with the [services] that they designate." Boston Duck Tours, LP, supra. Accordingly, assuming the name OrderMyOil.com is generic, it cannot acquire secondary meaning. See Closed Loop Mktg., Inc. v. Closed Loop Mktg., LLC, 589 F. Supp. 2d 1211, 1220 (E.D. Cal. 2008) ("Once it has been established that a name is generic, that name is ineligible for protection regardless of any evidence of a secondary meaning"). As explained in a leading treatise:

"[i]t is jarring and incongruous to intrude the terminology ‘secondary meaning’ into a dispute as

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