The Massachusetts Appeals Court ruled today that an oil company that has long used OrderMyOil.com to sell heating oil online has no case against a competitor that set up OrderYourOil.com, because the words "order" and "oil" are just too generic to deserve any sort of competitive protection under state law, never mind federal trademark law.
United Oil Heat, which says it has sold in excess of $52 million worth of heating oil to homeowners in eastern Massachusetts, New Hampshire and Rhode Island through its OrderMyOil site since setting up the site in 2008, had sought a court order telling M.J. Meehan Excavating, which set up OrderYourOil in 2016, to knock it off, because the latter name was too close to the former and so would likely confuse consumers.
United Oil Heat acknowledged it had never sought federal trademark protection for its domain name.
Citing the federal case of Boston Duck Tours v. Super Duck Tours - in which federal courts ruled that "duck tours" was too generic a term to warrant a trademark - the Massachusetts Appeals Court said that the words "order" and "oil" can be used by pretty much anyone.
During oral argument, the plaintiff conceded that the term "OrderOil" is generic. The plaintiff argues, however, that the addition of "my" to OrderOil removes the term from the generic realm because "it takes imagination, thought and perception to reach the conclusion that the customer is ordering their own oil from the Company called 'OrderMyOil,'" as opposed to the plaintiff's oil. See Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (1st Cir. 1995) ("A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods" [quotation omitted]). The argument is unavailing. The plaintiff has merely inserted a commonly used possessive pronoun between what it has conceded are two generic words, resulting in a generic name that even more directly answers the question "What are you?" than the term OrderOil. ...
OrderMyOil.com is generic as a matter of law. The complaint contains no allegations to the contrary, and no amount of investment in the promotion of OrderMyOil can salvage it from being a generic way to refer to the act of ordering oil.