IP Law Daily, TRADEMARK—D. Mass.: Replacement window installer’s ad phrase not protectable under state law, (Sep 12, 2022)

By Linda O’Brien, J.D., LL.M.

A window company’s advertising phrase was not protectable because the state trademark statute excluded descriptive marks from protection regardless of any secondary meaning they possessed.

In its action against a competitor for infringement and dilution, a window replacement company was not entitled to trademark protection for its registered advertising phrase under the state trademark law, the federal district court in Boston has ruled. The language of the statute was clear that descriptive marks were excluded from protection without regard to any distinctiveness the marks may have acquired, the court noted. Thus, the plaintiff’s motion for a preliminary injunction was denied and the defendant’s motion to dismiss the claims for damages, infringement, and dilution was granted. However, the plaintiff’s claim for unfair business practices was allowed to proceed (L&P Boston Operating, Inc. v. Window Nation, LLC, September 7, 2022, Gorton, N.).

L&P Boston Operating, Inc. (“L&P”), a Massachusetts corporation that sells and installs replacement vinyl windows, siding, and doors, became the local franchisee of the national brand “Window World” in 2018. L&P advertises its products and services on numerous local radio and television station and registered the phrase “House Full of Windows Installed” as a trademark with the Secretary of the Commonwealth of Massachusetts. Competitor Window Nation entered the Massachusetts window replacement market in either 2020 or 2021 and began to advertise its window replacement products and services with the phrases “Whole House of Windows for $99” and “Get a Whole House of Windows for $99 a Month.”

In December 2021, L&P brought suit in state superior court, alleging that Window Nation’s advertisements infringed and diluted its trademarked phrase and asserted claims under: (1) the injunctive relief and damages for the dilution of the distinctive quality of a registered mark (M.G.L. Ch. 110H, §§13 and 14); (2) infringement and dilution (M.G.L. Ch. 110H, §§12 and 14); and (3) unfair business practices in violation of M.G.L. Ch. 93A. Window Nation removed the case to federal court on the basis of diversity jurisdiction. Before the court was L&P’s motion for a preliminary injunction to prevent Window Nation from using the alleged infringing phrases and Window Nation’s motion to dismiss the complaint for failure to state a claim.

The court found that L&P was not entitled to trademark protection of its phrase “House Full of Windows Installed” under the state trademark statute, regardless of whether the phrase was classified as generic or descriptive. Although registration serves as prima facie evidence of the registrant’s exclusive right to use the registered mark, under the plain language of the statute terms, the Massachusetts trademark statute categorically excludes descriptive marks from protection without regard to any distinctiveness the marks may have acquired. Thus, L&P could not maintain claims for infringement or dilution to the extent that those claims were predicated on the registrability of its mark, the court explained.

Regarding L&P’s request for injunctive relief, the state statute extends protection both to marks protected under the statute and valid under common law. According to the court, in Massachusetts, the test for common law trademark infringement is the same as under the federal Lanham Act, which extends protection to descriptive marks that have become distinctive. However, there was insufficient evidence in the present record to address the common law issue. Therefore, L&P’s motion for preliminary injunction and Window Nation’s motion to dismiss the unfair business practices claim were denied, Window Nation’s motion to dismiss the claims for damages, infringement, and dilution was allowed, and L&P was directed to provide a supplemental briefing or an amended complaint with respect to common law trademark infringement, the court concluded.

The case is No. 1:21-cv-12069-NMG.

Attorneys: Michael T. Marshall (TKCK Law) for L&P Boston Operating, Inc. Curtis B. Dooling, II (Pierce & Mandell, PC) for Window Nation, LLC.

Companies: L&P Boston Operating, Inc.; Window Nation, LLC

Cases: Trademark MassachusettsNews GCNNews