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April 21, 2020

Stroock Special Bulletin

By: Laura Goldbard George, Binni N. Shah

Imagine that you are served with a complaint alleging trademark infringement of an incontestable mark.  However, you have evidence demonstrating that the incontestable trademark is generic, and thus, invalid. Instead of engaging in possibly unnecessary and costly discovery, consider presenting your evidence early in a case via a motion for judgment on the pleadings like Pressed Juicery successfully did in Threshold Enterprises Ltd. v. Pressed Juicery, Inc., 19-cv-03716, 2020 WL 1694361 (N.D. Cal. April 7, 2020) (“Op.”). On the other hand, if you are the trademark owner facing a genericism challenge at the pleading stage, be sure to marshal evidence to demonstrate the source-identifying nature of your mark instead of solely relying on the infringer’s failure to meet its burden of demonstrating genericism.

In Threshold, Pressed Juicery successfully challenged Threshold’s incontestable marks for “wellness shot” and “wellness shots” for  dietary supplements (“the Marks”), prevailing on both genericism grounds as well as its fair use defense at the pleading stage. Threshold claimed that Pressed Juicery’s use of “wellness shot” in connection with its nutritional shots containing ingredients believed to convey certain health benefits was an infringement of its Marks. While acknowledging that the marks are incontestable, the court found that Pressed Juicery submitted ample evidence demonstrating that the term “wellness shot” was generic, and, in the alternative, that Pressed Juicery’s use of the same was fair.[1]

 Evidence Establishing Genericism

Accused infringers may argue that a mark is not valid because the mark is generic in response to a claim of trademark infringement (including for marks that are incontestable). A court determines whether a mark is generic by “(i) identifying the category of goods or services to which the mark is meant to apply, and (ii) analyzing whether the relevant consuming public’s primary perception of the mark is as a source of a product or as a type, category, or kind of product” or the “who are you/what are you test.” Op. at 4.

In support of its genericism challenge, Pressed Juicery submitted every type of evidence that courts consider when determining whether a mark is generic, with the exception of survey evidence.[2] More specifically, Pressed Juicery submitted dictionary definitions of the components of the marks, evidence of social media and traditional media usage, usage by competitors, and office actions and registrations for “wellness shots” and third-party marks incorporating “wellness shots” as part of its trademark or as part of their description of goods and services.

First, courts consider dictionary definitions as “relevant and often persuasive in determining how a term is understood by the consuming public.” Id. at *6. Indeed, a court need not run afoul of the anti-dissection rule[3] by analyzing dictionary definitions of a mark’s components, as it did in Threshold, “to determine whether the resulting mark uses the individual words in a way differing from their common meaning.” Id. If the resulting mark’s meaning is not different from its components and those parts are generic, then, the resulting mark is also generic. Id. In Threshold, Pressed Juicery demonstrated that the components of “wellness” and “shot” retain their individual meanings when combined into “wellness shot.” In response, Threshold unsuccessfully argued that Pressed Juicery’s argument regarding the dictionary definitions is an argument that the Marks are “merely descriptive,” a basis for cancellation that is unavailable for an incontestable mark. Id. at *7. The court acknowledged that the dictionary definitions, by themselves, may not be sufficient to overcome Threshold’s argument, but Pressed Juicery had submitted other numerous examples of generic usage. Id.

Second, media usage is “strong evidence” of the public’s understanding of a term. Id. Pressed Juicery presented numerous articles from industry publications, fitness publications, food and health blogs and publications, newspaper articles and online “print” versions of news television segments, that used the term “wellness shots” to describe a type of beverage and not refer to Threshold’s brand of product. Id.  Pressed Juicery also submitted examples of Instagram ads and from Instagram users, demonstrating that other companies and individuals use “wellness shot”  generically for a type of beverage. Id.

Last, the Trademark Office’s treatment of a term in other applications is material to a court’s genericism analysis. Id. Pressed Juicery submitted evidence from the prosecution history of Threshold’s marks, showing that the Trademark Office required Threshold to disclaim “wellness” in its mark for “wellness shots” and “shot” in its mark for “wellness shot,” and required other companies to disclaim such individual components as well. Id. Moreover, the Trademark Office permitted other applicants to use “wellness shot” in their description of goods and services, even though applicants are not permitted to use another’s trademark in such description. TMEP § 1402.9 Id. However, the court noted that in one instance, the Trademark Office refused registration in part due to Threshold’s “wellness shot” mark. Id. Notwithstanding, the Trademark Office’s inconsistent treatment of “wellness shot,” the court “deduced” that the Trademark Office understood the term “wellness shot” to refer to a beverage product. Id.

In response to Pressed Juicery’s overwhelming evidence, Threshold simply pointed to usage by competitors of alternative terms for like products, and named the competitors who used the term “wellness shot” as infringers. However, the court rejected evidence of alternative terms as immaterial to the question of the public’s understanding of the Marks for purposes of the genericism analysis. Id. Interestingly, Threshold did not point to any affirmative evidence establishing that the public understood “wellness shot” or “wellness shots” to be associated with Threshold beyond its product label. Instead, Threshold unsuccessfully relied on its argument that Pressed Juicery failed to meets its burden to demonstrate the Marks were generic.

Conclusion

When faced with a complaint for trademark infringement, where appropriate, accused infringers should evaluate all available evidence of genericism early in a litigation, including dictionary definitions, competitor usage, media usage and other office actions before the Trademark Office.  Typically, genericism is a question of fact and thus, is not usually resolved at the pleading stage. However, based on the quality of the available evidence, it is possible to successfully bring an early motion to resolve genericism. On the other hand, a trademark owner should be ready to, at a minimum, raise an issue of material fact regarding genericism in the event that such challenge is raised. In fact, to the extent available, a trademark owner should retain evidence of distinctiveness and police its mark against third parties to prevent it from becoming the name of a type of product. Evidence of distinctiveness includes, inter alia, the extent of the use of the mark, revenues generated by the product bearing the mark, examples of advertising and social media, the amount spent on advertising and a survey.

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For More Information:

Laura Goldbard George

Binni N. Shah

[1] The fair use defense applies “where an alleged infringer uses the mark ‘otherwise than as a mark’ and ‘fairly and in good faith’ to describe a user’s goods and services.”  Op. at 10.  The “good faith” requirement asks whether the defendant, in adopting the term, intended to capitalize on the plaintiff’s goodwill. Id.  Here, the court determined that the defendant’s use of “wellness shot” was fair as a matter of law, because

(1) “wellness shot” appeared below Pressed Juicery’s prominent house mark and thus, the house mark communicated the source of the product, and not “wellness shot,”

(2) Pressed Juicery uses “wellness shot” to differentiate it from its other “shots” such as “probiotic shot” or “vitality shot” and thus, only uses “wellness shot” to describe the nature and type of Pressed Juicery’s product, and

(3) because Pressed Juicery’s label was “markedly different” from Threshold’s “wellness shot” product. Id.  at *10-11.

[2] The court took judicial notice of the contents of various screenshots and printouts from third-party websites, social media websites, and information and news websites, trademark registrations and office actions for “wellness shot” and online dictionaries.  Op. at *2-3. Survey evidence is not subject to judicial notice.  Op. at *6.

[3] The anti-dissection rule teaches that a court must analyze a mark in whole, rather than its constituent parts. Op. at *6.

This Stroock publication offers general information and should not be taken or used as legal advice for specific situations, which depend on the evaluation of precise factual circumstances. Please note that Stroock does not undertake to update its publications after their publication date to reflect subsequent developments. This Stroock publication may contain attorney advertising. Prior results do not guarantee a similar outcome.

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