An update from Jennifer Madaras, one of the firm’s summer associates:

A California federal judge has ruled that two animal rescue groups can proceed with unfair competition claims against numerous defendants accused of misusing the word “rescues” when advertising dogs they purchased from breeders and puppy mills.

The plaintiffs asserted claims under both state and federal law. The plaintiffs’ federal claim arises under the Lanham Act, which prohibits trademark infringement and false advertising, among other things.  The plaintiffs, PetConnect Rescue Inc. and Lucky Pup Dog Rescue.Com, allege the defendants’ use of an infringing mark has harmed the plaintiffs’ reputation, caused customer confusion, and required plaintiffs to divert resources to correct the confusion.

The plaintiffs’ state claim arises under California’s Unfair Competition Law, which prohibits “any unlawful, unfair or fraudulent business act or practice” and any “unfair, deceptive, untrue, or misleading advertising. . . .” The plaintiffs’ claim is based upon California’s Health and Safety Code, which prevents pet stores from selling a live dog, cat, or rabbit unless the animal comes from a public animal control agency or shelter/rescue group, and which defines a “rescue group” as a non-profit that does not obtain the animals from breeders or brokers for compensation. The plaintiffs allege that the defendants committed unlawful business practices by selling dogs bred for profit in California that they obtained from out-of-state breeders and brokers, and that the defendants fraudulently advertised those dogs as “rescues.”

The defendants moved to dismiss the claims, arguing the plaintiffs failed to establish standing and provide facts to support their claim. Judge Huff of the Southern District of California declined to dismiss the claims because he found the plaintiffs had sufficiently pled that the defendants sold dogs bred for profit and misrepresented those dogs as “rescues.” He further found standing because the plaintiff “clearly uses their mark to accompany the services it provides.”

Judge Huff also held that the summary judgment phase is better suited to determine whether one plaintiff’s mark, “PetConnect Rescue,” is a protectable trademark.  He did find the mark descriptive – i.e. it describes the qualities or characteristic of the plaintiffs’ goods or services – but noted that descriptive marks are protectable if they acquire secondary meaning and that  whether the mark has gained an association in consumers’ minds is better suited for summary judgment.

Although specific to its facts and involving an advertising term (“rescues”) unlikely to be used in many other contexts, still this case serves as a cautionary reminder that all promotional materials should comply with state and federal law and that sometimes companies are sued by even unlikely plaintiffs.