Studio Method, which operates a fitness studio under the name “Studio Nantucket,” accused marketing and design business Nantucket Studio for trademark and trade dress infringement, false designation of origin, and unfair competition. Judge Saylor granted Nantucket Studios summary judgment on all counts. He questioned Studio Method’s argument that the state registrations that it has for the mark serve as prima facie evidence of distinctiveness that would shift the burden of proving lack of distinctiveness, but found that even if such a shift of burden were to occur, the defendant had provided sufficient evidence to rebut any presumption of validity.
He found that the mark was merely descriptive and not inherently distinctive, noting that “studio” functions primarily to identify the type of service that the plaintiff offers, while “Nantucket” identifies the geographic location of the business. He further found that the alleged trade dress, which comprised the mark along with a color palette used on the plaintiff’s website, was not inherently distinctive, as the plaintiff had not provided any evidence that the color combination was so unusual as to create a unique commercial impression.
Judge Saylor then determined that the plaintiff did not provide sufficient evidence of secondary meaning. While the plaintiff showed sales of more than $1 million since its founding in 2016, it failed to show that these sales were driven by the mark or the alleged trade dress. Likewise, the evidence of advertising expenditures failed to prove secondary meaning because the plaintiff did not provide any estimates of the number of people reached by its advertising. Accordingly, he determined that the mark was unprotectible for lack of secondary meaning. While this would have concluded the case, Judge Saylor also found that there was no likelihood of consumer confusion because the two businesses operated in entirely different fields.
Judge Saylor further granted summary judgment on the state statutory trademark claims, finding that the Massachusetts statute, Mass G.L. c. 110H, § 14, does not permit protection of descriptive marks regardless of whether secondary meaning could be demonstrated.
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