The ServiceMaster Company provides residential and commercial services around the world through company owned and franchised market-leading brands such as Terminix (pest control), Merry Maids (residential cleaning), Furniture Medic (furniture repair), and AmeriSpec (home inspection). As part of their company growth, they decided to re-emphasize their focus on cleaning by adding the word “Clean” to their famous ServiceMaster trademark, which had been in use since 1954.
After ServiceMaster registered its new ServiceMaster Clean trademark and invested millions of dollars converting all of its operations to the new trademark, a carpet cleaning company in Ohio called “Master Clean” filed a trademark infringement action against ServiceMaster. Although only in business since 1989, Master Clean had developed common law rights to its name and sought to stop ServiceMaster and its franchisees from using the ServiceMaster Clean trademark in any form in central Ohio, including in ServiceMaster’s new national advertising. Faced with the prospect of being forced to shut down its ongoing national advertising campaign and abandoning its new trademark, ServiceMaster turned to Gray Plant Mooty and attorney Michael Gray, who has been representing ServiceMaster and its franchise brands for almost 20 years.
Gray Plant Mooty’s IP litigation team tailored a strategy based not only on where their long-term client had been in the past, but where they were planning to go in the future. Invoking a seldom-used principle in trademark law, Michael Gray argued that the “tacking rule” gave ServiceMaster priority over Master Clean, and after a two day court trial, the court ruled in favor of ServiceMaster. The Court denied Master Clean’s request for an injunction, which allowed ServiceMaster and its franchisees to continue using the ServiceMaster Clean trademark in Central Ohio and throughout the United States. The reported decision can be found at D&J Master Clean, Inc. v. The ServiceMaster Co., 181 F. Supp. 2d 821 (S.D. Ohio 2002).