Company files complaint against rival store but loses.
When you hear “Pet Meds”, what do you think about? The store 1-800-PetMeds.com or simply “pet medications”.
Pet meds is a simple descriptive term, shorthand for pet medications.
But online pet pharmacy PetMed Express, Inc., a.k.a. 1-800-PetMeds, says it owns the term “PetMeds” and is going after competitors that use the term in their domains.
Amazingly, the company was granted a trademark to “PetMeds” on the principal register in 2006. It’s granted under 2f, meaning there’s a claim of acquired distinctiveness. It’s been challenged, but the company still holds the mark.
And it’s using it in UDRP cases to try to take down competitor sites.
The latest challenge was against online pet pharmacy petmedsnmore.com. The company had sales in February of close to half a million dollars and employees over a dozen pharmacists and pharmacist technicians.
PetMed Express argued that PetMedsNMore.com registered the domain in bad faith to capitalize on PetMed Express’ name.
The panel ruled that the domain owner was merely using the domain in a descriptive sense, and that it may keep the domain name.
Another panel made a similar ruling in a previous case involving five domain names including petmedoutlet.com.
PetMed Express owns PetMeds.com, which it forwards to its main web site.
This is another reminder that branding around a generic term has its advantages but also its challenges.
Mark says
We registered PetMeds.tel 3 years ago thinking it was generic. We got a cease and desist letter last year claiming trademark infringement. So we simply transferred the domain to them. It is sitting there unused, no links, nothing.
Head Count says
They took a domain from me using threats!!!
Bastards!!!!!
What a dirty company to claim they own Pet Meds . This is a perfect example of what is wrong with the USPTO
John Berryhill says
The geniuses at Citizenhawk send a c&d claiming rights against a domain name that referred to “pet beds”.
Lie down with dogs, wake up with fleas.
steve says
I can sole all your problems although my price is steep.