Wag Hotels, Wag Labs in Trademark Tussle

Wag Hotels, which operates as simply WAG, has filed a complaint against Wag Labs for breach of contract, breach of implied covenant of good faith and fair dealing, cancellation of trademark, trademark infringement, and unfair competition. Wag Labs filed a removal notice to remove the case from the Santa Clara Superior Court, “based on federal question [of] jurisdiction and supplemental jurisdiction.” Wag Hotels is represented by Adelson, Hess & Kelly. Wag Labs is represented by Lewis Brisbois Bisgaard Smith.

Wag Hotels accused Wag Labs of breaching a Settlement Agreement effective June 15, 2016, arising from an earlier trademark dispute. With the earlier agreement breached, Wag Hotels has again alleged trademark infringement.

Wag Hotels provides “boarding, training, grooming, bathing, dog-walking and other exercise.” Wag Hotels argued it has used its trademark in its advertising, and as such, it was well recognized. Wag Labs provides “temporary use of on-line non-downloadable software for coordinating pet care services in the form of dog-walking and pet sitting through its mobile app.” Wag Hotels believed that Wag Labs offered dog-walking services using the name “WAG.” Wag Hotels argued that this is misleading, confusing and deceptive to consumers. Consumers may believe the two companies are affiliated or that Wag Hotels sponsors Wag Labs. In May 2015, Wag Hotels notified Wag Labs of its infringement in a cease and desist letter; Wag Labs allegedly refused to stop its violations, after which Wag Hotels filed a suit against Wag Labs for its continued violation.

The parties entered a Settlement Agreement on June 15, 2016. According to the Agreement, “Wag Labs acknowledged the sufficiency of the consideration for the ‘Settlement’ of WAG’s claims of trademark infringement and unfair competition” and stated it would hold itself accountable to the Agreement. Under the agreement, Wag Labs was allegedly to use its registered trademark and image in connection with its services.

By early 2019, Wag Labs changed its branding without previously notifying Wag Hotels, as required in the Agreement to allow Wag Hotels to approve material changes. Wag Hotels argued in its new suit that Wag Labs’ application for and use of a new trademark without its approval has breached their agreement. Wag Hotels stated that shortly after the Agreement, “Wag Labs applied for and registered, as its trademark…a form of the WAG! Logo or mark without the smartphone graphic and tagline required by section 4 of the Agreement, and otherwise deceptively and confusingly similar to WAG’s Mark.”

Due to the similarities of the two companies’ trademarks, Wag Hotels has again accused Wag Labs of trademark infringement. Wag Hotels has also alleged that Wag Labs’ actions violate California Business and Professional Code, specifically, unfair competition through the use of its trademark. Wag Hotels alleged that Wag Labs “did so intentionally for the purpose of injuring WAG and with the intent to confuse and deceive consumers by creating the false and misleading impression that Wag Labs’ services are provided, endorsed, sponsored, associated with, approved and/or licensed by Wag.”

Wag Hotels has sought declaratory and injunctive relief, as well as compensation for damages.