Nucleus Research Inc. v. 3Sixty Insights Inc. (D. Mass. 22-cv-11339).

Nucleus accused 3Sixty of unfair competition under both the Lanham Act and c. 93A as well as common law trademark infringement relating to the publication of reports under the name “Anatomy of a Decision.”  Nucleus has published reports under this name since 2011, in which it examines the decision-making process  in adopting new technologies. Nucleus says that 3Sixty, which was founded in 2020 by two former Nucleus employees, has published two reports under the “Anatomy of a Decision” name since 2022, and that 3Sixty advertises through the same channels (Twitter, Facebook, LinkedIn) that Nucleus does.  One of the former Nucleus employees, who was a senior analyst with Nucleus, authored each of the two 3Sixty reports.  3Sixty sought to register the name with the USPTO, but was denied on the grounds that the mark was merely descriptive.

Judge Saris has denied Nucleus’ motion for a preliminary injunction.  Nucleus had sought an order prohibiting publication under the name by 3Sixty, as well as prohibiting the filing and prosecution of trademark applications with either the federal government or with the state.  She found no likelihood of success on the merits of the trademark count because the name was likely a descriptive mark.  The name sets forth descriptively what the underlying article is about – the way in which a decision was made.  She noted that both Nucleus and 3Sixty used the phrase as a descriptive beginning to a fuller title, such as “Anatomy of a decision: choosing Logility over ERP.”  She further noted that both 3Sixty and the USPTO had identified examples of the phrase being used elsewhere in the IT industry, further suggesting descriptiveness.

Having determined that the mark was descriptive, she noted that the burden was on Nucleus to show that the unregistered mark had obtained secondary meaning – that a “significant quantity of the consuming public understands the name as referring exclusively to the appropriate party.”  Nucleus offered no direct evidence of secondary meaning, such as consumer surveys.  Judge Saris further determined that despite having published under the name since 2011, length of exclusive use without more is legally insufficient to establish secondary meaning.  Also, Nucleus’ advertising failed to bridge the gap as it failed to show how its social media posts contributed to any consumer associations between itself and the phrase.