Unleashed Doggie Day Care, LLC v. PetCo Animal Supplies Stores, Inc.
828 F. Supp. 2d 384
D. Mass.2010Background
- UDDC seeks a preliminary injunction against PetCo to stop use of the mark Unleashed.
- Blumgart operates UDDC and uses Unleashed in day care services and related dog products at multiple Massachusetts locations.
- PetCo operates Unleashed by PetCo, a national brand, selling pet supplies and some services in Massachusetts.
- PetCo conducted a trademark search and registered Unleashed by PetCo with the USPTO; UDDC’s mark Unleashed is unregistered.
- UDDC’s use began in 2002 and has limited advertising, relying largely on word-of-mouth; PetCo uses a standardized logo and broad advertising for Unleashed by PetCo.
- Court addresses whether Unleashed is entitled to protection, whether it acquired secondary meaning, and whether confusion is likely, under Lanham Act § 43(a].
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Unleashed eligible for trademark protection? | UDDC argues Unleashed is suggestive and inherently distinctive. | PetCo argues Unleashed is descriptive and lacks inherent distinctiveness. | Descriptive mark; not inherently distinctive; protection denied without secondary meaning. |
| Has Unleashed acquired secondary meaning? | Affidavits show consumer associations with Unleashed to UDDC. | Evidence insufficient; advertising and growth do not prove secondary meaning. | UDDC failed to prove substantial secondary meaning. |
| Is there a likelihood of consumer confusion from PetCo’s use? | Use of Unleashed by PetCo could cause confusion with UDDC. | Marks used with distinctive logos and different channels of trade reduce confusion. | Likelihood of confusion unlikely; overall, no Lanham Act violation established. |
Key Cases Cited
- Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981) (consider eight factors for confusion; total effect governs similarity)
- Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008) (distinguishes marks by overall impression and associational branding)
- Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (secondary meaning required for descriptive marks)
- Yankee Candle Co. v. Bridgewater Candle Co., Inc., 259 F.3d 25 (1st Cir. 2001) (direct evidence of secondary meaning; advertising alone insufficient)
- Calamari Fisheries, Inc. v. The Village Catch, Inc., 698 F. Supp. 994 (D. Mass. 1988) (descriptiveness and public perception in deciding mark strength)
- Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1st Cir. 2004) (multi-factor test for likelihood of confusion; not dispositive)