United Oil Heat, Inc. v. M.J. Meehan Excavating, Inc.

NOTICE: All slip opinions and orders are subject to formal
revision and are superseded by the advance sheets and bound
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error or other formal error, please notify the Reporter of
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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)'

The plaintiff also filed a motion for a preliminary
6

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.

The plaintiff did not seek trade dress protection, as
7

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 pre-

Lanham 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

11The 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

12As 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

13In 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.

14The 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

15Adding ".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").

16Where 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").