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18-P-325 Appeals Court

UNITED OIL HEAT, INC.1 vs. M.J. MEEHAN EXCAVATING, INC.,

& another.2

No. 18-P-325.

Bristol. October 10, 2018. - July 12, 2019.

Present: Neyman, Ditkoff, & Englander, JJ.

Trademark. Consumer Protection Act, Trademark. Internet.

Practice, Civil, Motion to dismiss. Oil and Gas.

Civil action commenced in the Superior Court Department on

August 2, 2017.

A motion to dismiss was heard by Karen F. Green, J.

Mark A. Berthiaume (Zachary C. Kleinsasser also present) 

for the defendants.

Ryan E. Prophett for the plaintiff.

NEYMAN, J. In this case we consider whether the Internet 

domain name "OrderMyOil.com" is entitled to trademark protection

under Massachusetts common law. On the complaint before us, we 

 

1 Doing business as OrderMyOil.com.

2 Michael Meehan.
2

hold that OrderMyOil.com is a generic name that is ineligible 

for such protection. Accordingly, this case presents the rare 

instance in which a trademark claim was properly dismissed under 

Mass. R. Civ. P. 12 (b) (6), 365 Mass. 754 (1974). 

Background. 1. Facts. The plaintiff, United Oil Heat, 

Inc., doing business as OrderMyOil.com, delivers home heating 

oil to customers in Massachusetts, southern New Hampshire, and 

northern Rhode Island. The plaintiff's website, using the 

Internet domain name OrderMyOil.com, went live in August 2008.3 

As its name denotes, the website allows customers to order

heating oil online for delivery. As of August 2, 2017, 

OrderMyOil.com had over 20,000 registered users, had sold over 

fifteen million gallons of home heating fuel, and had "done 

approximately $52,000,000 in revenue." The plaintiff marketed 

OrderMyOil.com through various media outlets. OrderMyOil.com 

also had a Facebook page with over 900 "likes," and delivery 

trucks displaying OrderMyOil.com thereon. The plaintiff does 

not allege that it registered OrderMyOil.com as a trademark in 

the United States or in any other jurisdiction. 

In February of 2016, the defendants, M.J. Meehan 

Excavating, Inc., and Michael Meehan, began using "OrderYourOil" 

 

3 The plaintiff registered the domain name 

"discountheatingoilprices.com" with GoDaddy.com, LLC, in April 

of 2008. In June of 2008, the plaintiff registered the domain 

name OrderMyOil.com with GoDaddy.com, LLC.
3

in connection with their home heating oil delivery services. 

OrderYourOil is a supplier of home heating and diesel fuel. The 

complaint alleges that the defendants offer the same goods and 

services as the plaintiff, in the same geographic areas. The 

defendants' website likewise allows customers to order heating 

oil online for delivery. 

2. Procedural history. On August 2, 2017, the plaintiff 

filed its complaint in the Superior Court, alleging common law 

trademark infringement, trademark dilution under G. L. c. 110H, 

§ 13,4 and violation of G. L. c. 93A, § 11.5 The defendants 

moved to dismiss the complaint under Mass. R. Civ. P. 12 (b)

 

4 General Laws c. 110H, § 13, provides that "[l]ikelihood of 

injury to business reputation or of dilution of the distinctive 

quality of a mark registered under this chapter, or a mark valid 

at common law, or a trade name valid at common law, shall be a 

ground for injunctive relief notwithstanding the absence of 

competition between the parties or the absence of confusion as 

to the source of goods or services."

5 On or about February 1, 2017, several months before filing 

the action at issue in this appeal, the plaintiff filed a 

complaint with the National Arbitration Forum under the Internet 

Corporation for Assigned Names and Numbers (ICANN) Uniform 

Domain Name Dispute Resolution Policy, seeking to transfer or 

cancel the OrderYourOil.com domain name. On March 9, 2017, the 

National Arbitration Forum panel (arbitration panel) denied the

ICANN complaint. As the plaintiff did not reference the 

arbitration or the arbitration panel's decision in its Superior 

Court complaint, we do not consider them in our analysis. Cf. 

Silverwood Partners, LLC v. Wellness Partners, LLC, 91 Mass. 

App. Ct. 856, 857 n.4 (2017) ("we need not decide whether to 

take judicial notice of the arbitration decision, as it does not 

factor into our decision"). Likewise, the Superior Court judge 

did not consider the arbitration or the arbitration panel's 

decision in deciding the motion to dismiss.
4

(6). Following a hearing, the judge issued a written decision 

and order allowing the motion.6 The judge concluded that 

OrderMyOil is a generic name that is not entitled to trademark 

protection, and that the plaintiff failed to state a claim for 

trademark infringement, trademark dilution, or violation of 

G. L. c. 93A. Judgment entered for the defendants. The 

plaintiff now appeals.7

Discussion. 1. Legal standards. a. Motion to dismiss. 

"We review the allowance of a motion to dismiss de novo," 

Curtis v. Herb Chambers I-95, Inc., 458 Mass. 674, 676 (2011), 

accepting as true the facts alleged in the plaintiff's complaint 

as well as any favorable inferences that reasonably can be drawn 

from them. See Lopez v. Commonwealth, 463 Mass. 696, 700 

(2012). "What is required at the pleading stage are factual 

'allegations plausibly suggesting (not merely consistent with)' 

 

6 The plaintiff also filed a motion for a preliminary 

injunction seeking, inter alia, to enjoin the defendants from 

using the name OrderYourOil in any way. Having allowed the 

motion to dismiss, the judge took no action on the preliminary 

injunction motion.

7 The plaintiff did not seek trade dress protection, as 

confirmed at oral argument. A trade dress is "the design and 

appearance of [a] product together with the elements making up 

the overall image that serves to identify the product presented 

to the consumer." Chrysler Corp. v. Silva, 118 F.3d 56, 58 (1st

Cir. 1997), quoting Fun-Damental Too, Ltd. v. Gemmy Indus. 

Corp., 111 F.3d 993, 999 (2d Cir. 1997). See 1 J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair Competition § 8:1 

(5th ed. 2017) (defining trade dress and comparing to and 

contrasting with trademark).
5

an entitlement to relief . . . ." Iannacchino v. Ford Motor 

Co., 451 Mass. 623, 636 (2008), quoting Bell Atl. Corp. v. 

Twombly, 550 U.S. 544, 557 (2007) (Twombly). "Factual 

allegations must be enough to raise a right to relief above the 

speculative level . . . ." Twombly, supra at 555. 

b. Trademark law principles. In Massachusetts, the test 

for common law trademark infringement is the same as under the 

Lanham Act.8 See Jenzabar, Inc. v. Long Bow Group, Inc., 82 

Mass. App. Ct. 648, 654 n.11 (2012) ("The gravamen of a claim of 

trademark infringement under Massachusetts common law is the 

same as under the Lanham Act"). See also Bose Corp. v. Ejaz, 

732 F.3d 17, 26 n.7 (1st Cir. 2013) (common law trademark 

infringement claims in Massachusetts require same elements as 

Federal trademark infringement claims); Leejay, Inc. v. Bed Bath 

& Beyond, Inc., 942 F. Supp. 699, 701 n.2 (D. Mass. 1996) 

 

8 In 1946, Congress enacted the Trademark Act of 1946 

(Lanham Act), 15 U.S.C. §§ 1051 et seq. "[T]he purpose of the 

Lanham Act was to codify and unify the common law of unfair 

competition and trademark protection." Inwood Labs., Inc. v. 

Ives Labs., Inc., 456 U.S. 844, 861 n.2 (1982) (White, J., 

concurring). Under the Lanham Act, a trademark is defined as 

"any word, name, symbol, or device, or any combination thereof" 

that is used "to identify and distinguish [the user's] goods, 

including a unique product, from those manufactured or sold by 

others and to indicate the source of the goods, even if that 

source is unknown." 15 U.S.C. § 1127 (2012). The Lanham Act 

also "protects qualifying unregistered marks." Boston Beer Co. 

Ltd. Partnership v. Slesar Bros. Brewing Co., 9 F.3d 175, 180

(1st Cir. 1993), citing Two Pesos, Inc. v. Taco Cabana, Inc., 

505 U.S. 763, 768 (1992).
6

("trademark infringement is defined in essentially the same 

terms under the Lanham Act and under Massachusetts law"); Black 

Dog Tavern Co. v. Hall, 823 F. Supp. 48, 53–54 (D. Mass. 1993)

(same).9 Under that test, "[t]o succeed on a claim of trademark 

infringement, a plaintiff must establish (1) that its mark is 

entitled to trademark protection, and (2) that the allegedly 

infringing use is likely to cause consumer confusion." Boston 

Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st 

Cir. 2008). 

As to the first requirement, "[a] proposed mark cannot 

acquire trademark protection unless the mark is distinctive, 

that is, unless it serves the purpose of identifying the source 

of the goods." Colt Defense LLC v. Bushmaster Firearms, Inc., 

486 F.3d 701, 705 (1st Cir. 2007), citing Two Pesos, Inc. v. 

Taco Cabana, Inc., 505 U.S. 763, 768 (1992). In making this 

determination, courts categorize "proposed marks along a 

spectrum of distinctiveness." Boston Duck Tours, LP, 531 F.3d 

at 12. That spectrum contains five categories: generic, 

descriptive, suggestive, arbitrary, or fanciful. Id. 

At one end of the spectrum there are generic terms, which 

can never merit trademark protection because they cannot 

 

9 Both parties rely on Federal case law to support their 

arguments. This is unsurprising in view of the dearth of 

Massachusetts cases analyzing common law trademark infringement 

after the enactment of the Lanham Act in 1946.
7

distinguish the goods or services of one producer from the goods 

or services of another.10 See Boston Duck Tours, LP, 531 F.3d at 

13-14 ("generic terms are incapable of becoming trademarks"); 

Colt Defense LLC, 486 F.3d at 705 (generic terms receive no 

trademark protection); Miller Brewing Co. v. Falstaff Brewing 

Corp., 655 F.2d 5, 7 (1st Cir. 1981) ("Under no circumstances is 

a generic term susceptible of de jure protection under § 43[a]

of the Lanham Act . . . or under the law of unfair 

competition"). A generic term "is one that either by definition 

or through common use has come to be understood as referring to 

the genus of which the particular product is a species." Colt 

Defense LLC, supra, quoting Keebler Co. v. Rovira Biscuit Corp., 

624 F.2d 366, 373-374 (1st Cir. 1980). "[A] generic term 

answers the question 'What are you?' while a mark answers the 

question 'Where do you come from?'" Colt Defense LLC, supra, 

 

10 "Awarding trademark rights to any user of [a generic 

term], especially the first user, would harm competitors and 

consumers alike. Competitors unable to use a common term that 

describes or designates their product are at a significant 

disadvantage communicating to potential customers the nature and 

characteristics of the product. . . . Likewise, consumers will 

be forced either to pay a higher price to purchase the desired 

goods from the seller who owns the generic term as a trademark 

or expend additional time investigating the alternative products 

available." Boston Duck Tours, LP, 531 F.3d at 14. See Closed 

Loop Mktg., Inc. v. Closed Loop Mktg., LLC, 589 F. Supp. 2d 

1211, 1220 (E.D. Cal. 2008) ("to allow a producer of goods to 

usurp a generic term as a protectable trademark would prevent 

competitors from describing their own goods adequately" 

[quotation omitted]).
8

quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair 

Competition § 12:1 (2007). "For a term to be generic, then, its 

primary significance . . . to the relevant public must be to 

identify the nature of a good [or service], rather than its 

source" (quotation omitted). Colt Defense LLC, supra. 

Moreover, "[a] term that names the central focus or subject 

matter of the services is generic for the services themselves." 

In re Tires, Tires, Tires, Inc., 94 U.S.P.Q.2d 1153, 1157

(Trademark Trial & App. Bd. 2009). See In re Meridian Rack & 

Pinion, 114 U.S.P.Q.2d 1462, 1466 (Trademark Trial & App. Bd.

2015) ("'BuyAutoParts' is a generic phrase for auto parts retail 

sales"). A genericism analysis requires viewing the name in its 

entirety, rather than dissecting it into its constituent parts. 

See Boston Duck Tours, supra at 18-19 ("a complete phrase may 

signify something different than the sum of its parts").

Next on the spectrum, there are descriptive terms, which

"convey an immediate idea of the ingredients, qualities or 

characteristics of the goods to which they are attached"

(quotation omitted). Boston Duck Tours, LP, 531 F.3d. at 13. A 

descriptive term can receive trademark protection "only if it 

has acquired secondary meaning by which consumers associate it 

with a particular producer or source" (quotation omitted). 

Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., 9 
9

F.3d 175, 180 (1st Cir. 1993). Whether a term has acquired 

secondary meaning is a question of fact. Id.

Finally, "[a]t the other end of the spectrum, there are 

suggestive, arbitrary and fanciful terms that can be protected 

without proof of secondary meaning. These terms are considered 

inherently distinctive" (quotation omitted). Boston Beer Co. 

Ltd. Partnership, 9 F.3d at 180. In contrast, "generic marks 

can never be ranked as distinctive." Borinquen Biscuit Corp. v. 

M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006), citing 

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 

(1985). 

2. Analysis. a. Generic name and secondary meaning. The 

plaintiff does not allege that it registered OrderMyOil.com as a 

trademark, and there is no dispute that it is not registered. 

Instead, the plaintiff contends that the name OrderMyOil.com, 

even if generic, is entitled to protection under Massachusetts 

"common law if it has acquired a 'secondary meaning' in the 

minds of the relevant public." The defendants respond that 

generic terms are never entitled to trademark protection. The 

defendants have the better argument.

First, as discussed above, it is black letter law that 

generic names cannot receive trademark protection. See Boston 

Duck Tours, LP, 531 F.3d at 14; Colt Defense LLC, 486 F.3d at 

705; Miller Brewing Co., 655 F.2d at 7. "Because they serve 
10

primarily to describe products rather than identify their 

sources, generic terms are incapable of becoming trademarks, at 

least in connection with the [services] that they designate." 

Boston Duck Tours, LP, supra. Accordingly, assuming the name 

OrderMyOil.com is generic, it cannot acquire secondary meaning. 

See Closed Loop Mktg., Inc. v. Closed Loop Mktg., LLC, 589 F. 

Supp. 2d 1211, 1220 (E.D. Cal. 2008) ("Once it has been 

established that a name is generic, that name is ineligible for 

protection regardless of any evidence of a secondary meaning"). 

As explained in a leading treatise: 

"[i]t is jarring and incongruous to intrude the terminology 

'secondary meaning' into a dispute as to whether a 

designation is an unprotectable generic name or is a 

protectable trademark. . . . If a designation is a generic 

name, then it is not a trademark. If it is not a 

trademark, then, by definition, it does not have the kind 

of 'secondary meaning' needed to achieve trademark status." 

2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair 

Competition § 12:46, at 12-198 (5th ed. 2019). See Desai & 

Rierson, Confronting the Genericism Conundrum, 28 Cardozo L.

Rev. 1789, 1809 (2007) ("Generic words are unprotectable under 

the Lanham Act and the common law doctrine of unfair competition 

because they do not [or no longer] have the capacity for source 

identification. The generic name is incapable of ever becoming 

a trademark, at least as to the product with which the generic 

name is associated" [footnote omitted]).
11

The plaintiff responds that Massachusetts common law 

affords protection to any name that has acquired secondary 

meaning regardless of whether it is generic or descriptive. As 

authority for this proposition the plaintiff relies on the 

following language from Jenney Mfg. Co. v. Leader Filling 

Stations Corp., 291 Mass. 394, 397-398 (1935) (Jenney): 

"[i]t is settled that a word or device in common use, which 

is not susceptible of being a technical trade mark because 

generic or descriptive, may nevertheless be used in such a 

manner as to confer on the user the right to be protected 

against a subsequent similar use by a competitor in 

marketing a similar product. . . . In the case of a word 

not subject to exclusive appropriation there may be such a 

use in connection with a product as to attach to the word a 

secondary meaning, through association, as denoting the 

product of the user." 

This reliance on Jenney is unpersuasive. 

In Jenney, the Supreme Judicial Court determined that the 

mark at issue -- "Aero" -- when used in connection with the sale 

of gasoline, had acquired a secondary meaning. Jenney, 291 

Mass. at 397, 399. The court did not, however, hold that the 

term "Aero" used in connection with gasoline is generic, and did 

not suggest that "Aero," unlike "gas," was a common way to refer 

to gasoline. Rather, "Aero" as used in Jenney appears to have 

been a descriptive term related to the use of gasoline in

"aeroplanes." Jenney, 291 Mass. at 396. There was no claim, 

argument, or discussion in Jenney regarding the threshold 

question whether the term "Aero" was generic, descriptive, 
12

suggestive, arbitrary, or fanciful. Thus, Jenney is inapposite, 

as the issue in dispute in the present case was not addressed 

there.11 

Jenney, decided in 1935 -- over a decade before the 

enactment of the Lanham Act -- is best understood in its preLanham Act context. In that context, common law courts

"did not attempt to draw a bright line between generic and 

descriptive terms. In other words, common law courts --

unlike modern ones -- did not devote a great deal of 

attention to determining whether a given term should be 

etymologically classified as generic or descriptive. Both 

'words descriptive of qualities or attributes' and 'generic 

designations' were potentially protectable as trade names 

(but not as technical trademarks) if they functioned as 

source identifiers in the marketplace; if, in other words, 

they had acquired secondary meaning" (footnote omitted). 

Desai & Rierson, Confronting the Genericism Conundrum, 28 

Cardozo L. Rev. at 1816-1817. See George G. Fox Co. v. Glynn, 

191 Mass. 344, 349-350 (1906) ("The courts will not recognize 

trademarks which are not chosen in such a way as not to conflict 

with the rights of others to use common names and things" but 

courts may recognize "trade names" where goods "come to be known 

as of a particular manufacturer, and acquire a valuable 

reputation, by means of a designation that could not be made the 

 

11 The plaintiff's reliance on Planned Parenthood Fed'n of 

Am., Inc. v. Problem Pregnancy of Worcester, Inc., 398 Mass. 480 

(1986), is similarly unavailing, as there was no argument in 

that case that the trade name in question was generic.
13

subject of a trademark, because others may have occasion to make 

some use of the words or marks chosen"). 

Moreover, as discussed above, we have long recognized that 

the test for trademark infringement under Massachusetts common 

law is the same as under the Lanham Act. See Jenzabar, Inc., 82 

Mass. App. Ct. at 654 n.11. See also Bose Corp., 732 F.3d at 26 

n.7; Leejay, Inc., 942 F. Supp. at 701 n.2; Black Dog Tavern 

Co., 823 F. Supp. at 53–54. Thus, viewed in its pre-Lanham Act 

context, the reference to "generic" terms acquiring secondary 

meaning in Jenney is best understood as dicta. Accordingly, the 

plaintiff's contention that a generic name is entitled to 

trademark protection under Massachusetts common law is 

unavailing. 

b. Nongeneric claim. In the alternative, the plaintiff 

argues that the complaint sufficiently alleged that 

OrderMyOil.com is a distinctive, nongeneric mark that is 

entitled to trademark protection. See Colt Defense LLC, 486 

F.3d at 705 ("A proposed mark cannot acquire trademark 

protection unless the mark is distinctive, that is, unless it 

serves the purpose of identifying the source of the goods"). We 

disagree. 

The complaint goes to great lengths to attempt to 

demonstrate secondary meaning, and to satisfy the second prong 

of a trademark infringement claim -- that the defendants' use of 
14

OrderYourOil "is likely to cause consumer confusion." Boston 

Duck Tours, LP, 531 F.3d at 12. For example, the complaint 

asserts that the plaintiff "is in the business of delivering 

home heating oil"; that the plaintiff created "a real e-commerce 

site with functionality that would offer heating oil to 

customers at a discounted price in an easy to use manner"; that 

the plaintiff "expended an enormous amount of time and money in 

marketing OrderMyOil.com"; that OrderMyOil.com "has over 20,000 

registered users, has sold over 15 million gallons of home 

heating fuel[,] and done approximately $52,000,000.00 in 

revenue"; that OrderMyOil.com "delivers home heating fuel to 

eighty percent (80%) of Massachusetts, southern New Hampshire 

and northern Rhode Island"; that the defendants' use of 

OrderYourOil commenced "well after [the plaintiff] made its 

first commercial use of OrderMyOil"; and that "OrderYourOil is 

confusingly similar to" OrderMyOil.com, which "is likely to 

cause confusion, or to cause mistake, or to deceive consumers or 

potential consumers in violation of Massachusetts common law." 

The latter two allegations speak to the element of consumer 

confusion, but do not address the first element of a trademark 

infringement claim -- whether OrderMyOil.com is entitled to 

trademark protection. Similarly, the other allegations purport 

to exhibit secondary meaning in the phrase OrderMyOil.com. None 

of them speak to the issue whether OrderMyOil.com is generic. 
15

Although the determination of classification of a purported mark 

typically entails a factual inquiry,12 none of these allegations 

plausibly suggest that the name OrderMyOil.com does anything 

more than identify the nature of a service. The allegations do 

not "convey an immediate idea of the ingredients, qualities or 

characteristics of the goods to which they are attached" 

(quotation omitted). Boston Duck Tours, LP, 531 F.3d. at 13. 

As a matter of law, the allegations purportedly establishing 

secondary meaning do nothing to alter that fact. See Closed 

Loop Mktg., Inc., 589 F. Supp. 2d at 1219-1220 ("allegations 

establishing a secondary meaning do not indicate that the term 

is not generic. The question is whether the original meaning of 

the name identifies a thing's [or service's] genus or . . . its 

qualities. Plaintiff does not provide allegations or arguments 

that speak directly to this question, and thus secondary meaning 

 

12 As the plaintiff argues, many courts have held that the 

determination whether a term is generic is a question of fact. 

See, e.g., Boston Beer Co. Ltd. Partnership, 9 F.3d at 180 

("Whether a term is generic, descriptive, or inherently 

distinctive is a question of fact"). But see America Online, 

Inc. v. AT & T Corp., 243 F.3d 812, 821 (4th Cir. 2001) 

(analysis of meaning and usage of "would-be mark" is mixed 

question of fact and law). Where, as here, the issue can be 

determined as a matter of law, there is nothing precluding the 

allowance of a motion to dismiss on the issue of genericness. 

See, e.g., CES Publ. Corp. v. St. Regis Publs., Inc., 531 F.2d 

11, 14-15 (2d Cir. 1975) (motion to dismiss appropriate as

generic name could not "be rescued as trademark[] by" proof of 

secondary meaning); Closed Loop Mktg., Inc., 589 F. Supp. 2d at 

1220 (finding "closed loop marketing" generic and allowing 

defendant's motion to dismiss).
16

is beside the point"). See also CES Publ. Corp. v. St. Regis 

Publs., Inc., 531 F.2d 11, 14-15 (2d Cir. 1975). The pleadings 

instead demonstrate that the relevant public and the plaintiff 

use OrderMyOil or "order my oil" within the "heartland" of 

"common meaning of words and their common usage." America 

Online, Inc. v. AT & T Corp., 243 F.3d 812, 821 (4th Cir. 2001). 

See id. at 822 ("the repeated use of ordinary words functioning 

within the heartland of their ordinary meaning, and not 

distinctively, cannot give [the user] a proprietary right over 

those words, even if an association develops between the words 

and [the user]"). Put another way, the term OrderMyOil.com is a 

generic name that answers the question, "What are you?" The 

answer is, "A website where I may order my oil." See id. at

819-820 ("You Have Mail" generic as matter of law in granting 

summary judgment). See also 2 J. Thomas McCarthy, McCarthy on 

Trademarks and Unfair Competition § 11:11. 

We further note that the present case involves a name that 

identifies the focus of a service. In this context, we are 

mindful that "a term that names the 'central focus' or 'key 

aspect' of a service is generic for the service itself." In re 

Meridian Rack & Pinion, 114 U.S.P.Q.2d at 1464. Here, the name 

OrderMyOil.com "identifies a key aspect of [the plaintiff's] 

services, i.e., the [service provided on the website]" and 

therefore it "is generic for the services themselves." In re 
17

Tires, Tires, Tires, Inc., 94 U.S.P.Q.2d at 1157. See In re 

Meridian Rack & Pinion, supra at 1466 ("'BuyAutoParts' is a 

generic phrase for auto parts retail sales"). 

During oral argument, the plaintiff conceded that the term 

"OrderOil" is generic.13 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. See Colt Defense LLC, 486 F.3d at 705. Compare

Boston Duck Tours, LP, 531 F.3d at 12 n.10 ("'COPPERTONE' is 

 

13 In 2016, the owner of "ORDEROIL" sought to transfer or 

cancel the domain name OrderMyOil.com. A National Arbitration 

Forum panel (arbitration panel) denied the claim. See Tiger 

Payment Solutions LLC vs. Wes Madan/United Oil Heat, Inc., FA 

1602001660350 (March 23, 2016). We reference the arbitration to 

provide context, but do not consider the arbitration or the 

arbitration panel's decision in our analysis. See note 5, 

supra.
18

suggestive of suntan lotion because it hints at the nature of 

the connected product"); America Online, Inc., 243 F.3d at 821 

("You Have Mail" generic where used to alert user of e-mail 

arrival).

 Finally, the plaintiff claims that the various 

advertisements, testimonials, invoices, and other exhibits 

appended to the complaint "support[] its position that the 

company is known to the general public as 'OrderMyOil'" and 

confirm that the name OrderMyOil.com is inherently distinctive 

and has become a source identifier. See Schaer v. Brandeis 

Univ., 432 Mass. 474, 477 (2000) (court may take into account 

exhibits attached to complaint in evaluating motion to dismiss 

under Mass. R. Civ. P. 12 [b] [6]). We disagree. The exhibits 

to the complaint confirm that the "primary significance . . . to 

the relevant public" of the name OrderMyOil.com is "to identify 

the nature of [the plaintiff's service]" -- an online service 

for ordering home heating oil.14 Colt Defense LLC, 486 F.3d at 

705, quoting 15 U.S.C § 1064(3). While the exhibits may also 

speak to the issue of secondary meaning, discussed supra, they

do not support the argument that OrderMyOil.com is a distinctive 

mark or that distinctiveness was alleged. 

 

14 The customer testimonials, attached as an exhibit to the 

complaint, describe customer satisfaction with "ordering" and 

receiving oil from the plaintiff.
19

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.15 See 

Miller Brewing Co., 655 F.2d at 8, quoting Abercrombie & Fitch 

Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) ("No 

matter how much money and effort the user of a generic term has 

poured into promoting the sale of its merchandise and what 

success it has achieved in securing public identification, it 

cannot deprive competing manufacturers of the product of the 

right to call an article by its name"). In short, 

OrderMyoil.com is a generic term for online oil ordering, and 

the plaintiff did not allege otherwise in its complaint. 

Accordingly, the judge properly allowed the motion to dismiss.16

 

15 Adding ".com" to the name OrderMyOil does not transform 

it into a protectable mark. See In re Hotels.com, L.P., 573 

F.3d 1300, 1304 (Fed. Cir. 2009) ("generic term 'hotels' did not 

lose its generic character by placement in the domain name 

HOTELS.COM"); In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 

(Fed. Cir. 2004) (noting Patent and Trademark Office's finding 

that .com is "top level domain indicator [TLD] without any 

trademark significance").

16 Where the plaintiff's claims under G. L. c. 110H, § 13 

(trademark dilution) and G. L. c. 93A (unfair trade practices) 

proceeded under the same theory and alleged conduct as the claim 

of trademark infringement, they were likewise properly dismissed 

under rule 12 (b) (6). See Pignons S.A. de Mecanique de 

Precision v. Polaroid Corp., 657 F.2d 482, 493-494 (1st Cir. 

1981) ("To sustain an action under [the Massachusetts

antidilution statute], a plaintiff must show that its mark is 

distinctive"); S.S. Kresge Co. v. United Factory Outlet, Inc., 
20

Judgment affirmed.

 

598 F.2d 694, 697 (1st Cir. 1979) ("In applying [the 

Massachusetts antidilution statute then codified at G. L. 

c. 110B, § 12], the courts have been reluctant to grant 

exclusive rights . . . to all but the 'strongest' trade names"); 

PPG Indus. v. Clinical Data, Inc., 620 F. Supp. 604, 606 (D. 

Mass. 1985) (dilution claim requires showing that mark in 

question is distinctive, i.e., not generic). See also Black Dog 

Tavern Co., 823 F. Supp. at 59–60 (granting summary judgment to 

defendant on plaintiff's c. 93A claim after "conclud[ing] that 

defendant was fully within his rights in parodying plaintiff's 

marks").