Back in the spring a local Beverly, MA pet supply company PETCO over its use of the trademark UNLEASHED. In this order, Judge O’Toole denied the Beverly company’s motion for a preliminary injunction, ruling that the word “unleashed” was descriptive and that there was no likelihood of confusion between the marks UNLEASHED DOGGIE DAY CARE and UNLEASHED BY PETCO, particularly given the differences between the marks as used in commerce.
Several points worked against the plaintiff here. First, the marks in commerce were not sufficiently similar. Second, the plaintiff was unable to show secondary meaning (a point almost impossible to prove without a costly survey). And third, 132 other pet care businesses in the U.S. use the word “unleashed” in their names.
With regard to this last point, the decision cites several cases which say that extensive use of a mark is an indication of descriptiveness. While this may sometimes be true, in my mind extensive use is more an indication of lack of originality. I might have held “unleashed” to be suggestive, rather than descriptive, as Judge O’Toole did here. The fact that it is used by 132 other pet care businesses almost certainly indicates an extremely limited scope of protection (for example, geographic protection or protection only for the specific name using “unleashed”) but I don’t know if I’d go so far to say that it indicates an outright lack of protectability.
Of course the marks in question weren’t simply UNLEASHED, but rather UNLEASHED DOGGIE DAY CARE and UNLEASHED BY PETCO. And for those marks, the court found no grounds to enjoin PETCO.
Unleashed Doggie Day Care, LLC v. PETCO Animal Supplies Stores, Inc., 10-10742-GAO (D. Mass. Dec. 16, 2010)
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