Is the domain name “OrderMyOil.com” entitled to common law trademark protection? An appellate court in Massachusetts has answered in the negative.
The court held that the domain is so generic that it renders it ineligible for trademark protection under common law. That was the ruling despite the fact that the domain name had been used in commerce since August 2008 and that, through the website, United Oil Heat (owner of the domain name) had done approximately $52 million in revenue.
This is a legit company with a recognized domain name that has been in business for a long time. It did not matter to the court.
The entire controversy made its way to the judicial system based on United Oil Heat’s disdain for M.J. Meehan Excavating, Inc.’s use of “OrderYourOil” in connection with its home heating oil delivery services. “OrderYourOil” is certainly very similar to the “OrderMyOil.com” domain name used by United Oil Heat for over a decade.
United Oil Heat sued M.J. Meehan Excavating and alleged common law trademark infringement as well as trademark dilution. The case, filed in Massachusetts, was dismissed based on defendant’s filing of a motion to dismiss. That dismissal was upheld on appeal.
It ultimately did not matter whether or not the domain name had acquired distinctiveness. As the appellate court noted, generic terms “can never merit trademark protection because they cannot distinguish the goods or services of one producer from the goods or services of another.” Establishing secondary meaning can help push a descriptive mark to protected status, but is meaningless when a mark is deemed to be generic.
The bottom-line is that OrderMyOil.com was determined to identify a key aspect of the plaintiff’s services and there is generic for the services themselves. It should be a lesson for any mark owner, of a domain name or otherwise. Do not do business under a generic mark unless you are okay with not being able to preclude others from trading on similar names.