Unleashed Doggie Day Care, LLC v. PetCo Animal Supplies Stores, Inc.

828 F. Supp. 2d 384, 2010 U.S. Dist. LEXIS 133192, 2010 WL 5207599
CourtDistrict Court, D. Massachusetts
DecidedDecember 16, 2010
DocketCivil Action No. 10-10742-GAO
StatusPublished
Cited by8 cases

This text of 828 F. Supp. 2d 384 (Unleashed Doggie Day Care, LLC v. PetCo Animal Supplies Stores, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Massachusetts primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Unleashed Doggie Day Care, LLC v. PetCo Animal Supplies Stores, Inc., 828 F. Supp. 2d 384, 2010 U.S. Dist. LEXIS 133192, 2010 WL 5207599 (D. Mass. 2010).

Opinion

OPINION AND ORDER

O’TOOLE, District Judge.

This is an action for trademark infringement. The plaintiff, Unleashed Doggie Day Care, LLC (“UDDC”), has moved for a preliminary injunction to preclude the defendant, PetCo Animal Supplies Stores, Inc. (“PetCo”), from using the mark “Unleashed.”

I. Background

The following facts are taken from the parties’ submissions:

A UDDC

UDDC is owned and operated by Oliver Blumgart. Blumgart originally operated a dog-walking company named “Beverly Pet-sitters.” After his business grew substantially, Blumgart opened a daycare facility for dogs, where they could play and exercise off the leash. Blumgart opened “Unleashed” as a sole proprietorship at 8 Trask Street in Beverly, Massachusetts in July 2002. Three years later, he converted the sole proprietorship to a limited liability company, “Unleashed Doggie Day Care, LLC.” According to Blumgart, UDDC currently serves 1500 dog owners in Massachusetts, Rhode Island, and New Hampshire.

Blumgart also operates a dog grooming facility that sells dog food, treats, and accessories. Originally called “A Cut Above the Rest,” Blumgart changed the facility’s name to “Unleashed — The Shop” in 2002. “Unleashed — The Shop” has moved sever[389]*389al times, but is currently located at 12 Lothrop Street, Beverly, Massachusetts.

UDDC engages in limited advertising because most of its business is generated by word of mouth recommendations. UDDC maintains a website and Facebook fan pages. UDDC has printed two brochures: one to announce the name change to “Unleashed — The Shop” and one when “Unleashed Doggie Day Care” opened. UDDC also mailed 25,000 postcards to dog owners in surrounding communities when “Unleashed — The Shop” changed locations. UDDC received an Honorable Mention in the 2006 Community Newspaper Company’s Readers Choice Awards. UDDC’s advertisements frequently feature “Unleashed” with a paw print. “Unleashed” sometimes appears in script lettering, but sometimes appears in uppercase lettering. Sometimes the lettering is black, but sometimes the lettering is white.

Blumgart applied to register the mark “Unleashed” with the U.S. Patent and Trademark Office (“USPTO”) in June 2003. The USPTO initially determined that there was a likelihood of confusion with a pet daycare center called “Unleash Yourself’ in Portland, Oregon. Blumgart overcame this determination, however, and his application was published for comment. In April 2005, Christi Blaskoski d/b/a “Unleashed, Behavior and Training Services” in Shakopee, Minnesota, filed an opposition to Blumgart’s application. Blumgart abandoned his application soon thereafter.

B. PetCo

PetCo operates large-scale retail pet supply stores nationwide. In 2008, PetCo created a new concept store called “Unleashed by PetCo,” designed to bring Pet-Co’s best selling retail products to more convenient, hometown locations. PetCo opened seven “Unleashed by PetCo” stores in Massachusetts. One opened in Beverly, Massachusetts on May 15, 2010. “Unleashed by PetCo” sells pet supplies, but does not offer pet sitting or pet grooming in Massachusetts.

PetCo’s advertising campaign for “Unleashed by PetCo,” developed by its marketing department, includes regional radio advertisements, print advertisements, internet banner advertisements, and mass-transit billboards. PetCo also operates a website, a Facebook fan page, and a Twitter page for “Unleashed by Petco.” PetCo distributes promotional materials, including coupon flyers, door hangers, and tennis balls to members of the community. The marketing department develops new advertising methods each month.

PetCo has strict logo guidelines to maintain a consistent corporate identity. Each advertisement depicts the word “Unleashed” underlined by a collar and leash bearing the words “by PetCo.” Generally, the mark appears in a brown rectangle with “Unleashed by PetCo” in white lettering, the leash in orange, and the collar in light green.

PetCo conducted a full trademark search before applying to register the mark “Unleashed by PetCo” with the USPTO. This search revealed that Blumgart had abandoned his application for the mark “Unleashed.” PetCo also learned that 132 companies in the pet care products and services market used “Unleashed” in their names. Ultimately, Pet-Co settled on Unleashed by PetCo because it thought the mark was sufficiently distinguished from other marks in this market. The USPTO agreed. PetCo successfully registered its mark with the USPTO.

II. Preliminary Injunction Standard

To obtain a preliminary injunction under Federal Rule of Civil Procedure 65, UDDC must demonstrate (1) “a [390]*390substantial likelihood of success on the merits,” (2) “a significant risk of irreparable harm if the injunction is withheld,” (3) “a favorable balance of hardships,” and (4) “a fit (or lack of friction) between the injunction and public interest.” Nieves-Marquez v. Puerto Rico, 353 F.3d 108, 120 (1st Cir.2003). Likelihood of success on the merits is always the sine qua non of the preliminary injunction inquiry, Esso Standard Oil Co. (P.R.) v. Monroig-Zayas, 445 F.3d 13, 18 (1st Cir.2006), but its importance is magnified in a trademark infringement action because the other three factors depend largely on whether the plaintiff can prove infringement, Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir.2006).

III. Likelihood of Success on the Merits

UDDC’s purported mark “Unleashed” is not a registered mark.1 Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), creates a cause of action for infringement of unregistered marks. That provision, in relevant part, provides:

Any person who ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ... shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

Id. To succeed on an infringement claim, UDDC “must demonstrate both that its mark merits protection and that the allegedly infringing use is likely to result in consumer confusion.” Borinquen Biscuit Corp., 443 F.3d at 116. PetCo challenges both elements.2

A. Is “Unleashed” Entitled to Trademark Protection?

“[T]o be eligible for trademark protection, a mark must qualify as distinctive.” Id.

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828 F. Supp. 2d 384, 2010 U.S. Dist. LEXIS 133192, 2010 WL 5207599, Counsel Stack Legal Research, https://law.counselstack.com/opinion/unleashed-doggie-day-care-llc-v-petco-animal-supplies-stores-inc-mad-2010.