Barking up the Wrong Tree: Appeal Denied in Canine Trademark Battle

February 24, 2021

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A Massachusetts trademark infringement case has shown that even man’s best friend can be affected by intellectual property issues.

As reported by The Berkshire Eagle, two dog-related businesses are involved in an ongoing trademark dispute regarding their company names. Since 2018, The Berkshire Dog has sold natural, organic dog treats and goods such as bandanas, essential oils, and health products. According to the U.S. Patent and Trademark Office, “The Berkshire Dog” was filed as a trademark in November 2019.

The dispute arose because of the similarly-named Berkshire Dogs Unleashed, which opened in November 2020 and provides onsite services such as boarding, day care, grooming, training and a gift boutique. The Berkshire Dog’s owner, Debra Tart, requested a preliminary injunction to have the owner of Berkshire Dogs Unleashed, Lee Kohlenberger Jr., change his business name. She claims that Kohlenberger is infringing on The Berkshire Dog trademark and is confusing the store’s customers.

On November 27, 2020, Berkshire Superior Court Judge John Agostini denied Tart’s request, stating that there was not a substantial likelihood of confusion. He reasoned that the businesses do not offer the same services and The Berkshire Dog has not lost customers nor profits to Berkshire Dogs Unleashed.

Tart then petitioned to reverse Agostini’s denial of the preliminary injunction, but Associate Justice John Englander of the Massachusetts Court of Appeals denied the appeal. He rejected the argument that Agostini had failed to consider the “actual confusion” in the marketplace, stating that some evidence of actual confusion does exist, but there is no evidence of actual harm.

Kohlenberger’s attorney, Christopher M. Hennessey, stated that the case will proceed to the Superior Court and that he expects to seek summary judgment. A successful judgment would be the final ruling in favour of Berkshire Dogs Unleashed. Hennessey has also filed a formal opposition with the U.S. Patent and Trademark Office to deny Tart’s application for a federal trademark for The Berkshire Dog.

Tart’s attorney, James C. Duda, has reportedly indicated a willingness to settle the matter out-of-court. However, he has reportedly stated that Berkshire Dogs Unleashed is being uncooperative at this time such that The Berkshire Dog has no choice but to defend itself and seek assistance from the court.

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Authors: Mark Leonard and Brennan Caldwell