IP Law Daily Domain name generic despite promotional investment; no trademark protection
Monday, July 15, 2019

Domain name generic despite promotional investment; no trademark protection

By George Basharis, J.D.

The Internet domain name OderMyOil.com was not entitled to trademark protection because it was a generic name for online oil ordering.

The Internet domain name OderMyOil.com owned by a seller of home heating oil was not entitled to trademark protection because it was generic as a matter of law, the Massachusetts Appeals Court determined when affirming the decision of the lower court. The domain name, OrderMyOil.com, was a generic way to refer to the act of ordering oil despite the seller’s investment in the promotion of OrderMyOil (United Oil Heat, Inc. v. M.J. Meehan Excavating, Inc., July 12, 2019, Neyman, E.).

United Oil Heat, Inc., (United) doing business as OrderMyOil.com, uses the Internet domain name OrderMyOil.com on its website on which customers can order heating oil for delivery. United did not contend that it registered OrderMyOil.com as a trademark in any jurisdiction. After competitors began using OrderYourOil to sell their home heating oil delivery services, United filed suit alleging common law trademark infringement and trademark dilution under Massachusetts law. In addition to concluding that OrderMyOil was a generic name not entitled to trademark protection, the court found that United failed to state a claim.

United contended in the appeal that the name OrderMyOil.com, even if generic, was entitled to protection under Massachusetts common law if it had acquired a secondary meaning in relation to the public. The court agreed with the competitors’ argument that generic terms never are entitled to trademark protection because they primarily describe products rather than identify their sources. Therefore, the name OrderMyOil.com cannot acquire a secondary meaning if it is generic. The court noted that the test for trademark infringement under Massachusetts common law is the same as under the Lanham Act.

United argued that the complaint sufficiently alleged that OrderMyOil.com was a distinctive, nongeneric mark entitled to trademark protection and that the competitors’ use of the name OrderYourOil was likely to cause consumer confusion because it is "confusingly similar" to OrderMyOil in violation of Massachusetts common law. The court found that the argument related to the element of consumer confusion but did not address whether OrderMyOil.com was entitled to trademark protection, which is the first element of a trademark infringement claim. None of United’s allegations suggested the domain name had any purpose other than identify the nature of a service, the court determined. Rather, the relevant public uses OrderMyOil within the common meaning and use of the words. Further, the name OrderMyOil.com identifies a key aspect of United’s services and is generic for the services themselves.

United conceded that OrderMyOil is generic but contended that the addition of the word "my" makes the name nongeneric because "it takes imagination, thought and perception" in order to conclude a customer is ordering oil from the company called OrderMyOil rather than United’s oil. The court was not swayed by the argument, and stated that adding a commonly used possessive pronoun between two generic words results in a generic name.

This case is No. 18-P-325.

Attorneys: Ryan E. Prophett (Prophett Law Office LLC) for Oil Heat, Inc. Mark A. Berthiaume (Greenberg Traurig, LLP) for M.J. Meehan Excavating, Inc.

Companies: Oil Heat, Inc.; M.J. Meehan Excavating, Inc.

MainStory: TopStory TechnologyInternet Trademark MassachusettsNews

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