MASTROIANNI, U.S.D.J..
Plaintiff Shire City Herbals, Inc. ("Plaintiff" or "Shire City") alleges the following Defendants infringe its registered trademark Fire Cider:
The key issue is whether Fire Cider is generic, which depends on the relevant purchasing public's understanding of the term. A term can be generic in one of two ways: an invented term can become generic through common usage over time, or a term can be generic ab initio, meaning it was commonly used before it became associated with a specific product. Either way, a generic term cannot be a trademark. Defendants contend fire cider is generic because it has always been generic within the herbalist community, which used the term long before Plaintiff. Plaintiff concedes the term was generic in the narrow herbalist community but argues it is not generic within the broader community, the broader community's understanding of the term controls, and Defendants tried to genericize the term to prevent Plaintiff from enforcing its mark. Because Plaintiff registered Fire Cider on the Principal Register, there is a presumption that the mark is valid. As explained in detail in the following findings of fact and conclusions of law, Defendants met their burden of proving that fire cider was generic at the time Plaintiff began selling Fire Cider and applied for registration.
Shire City owns U.S. Trademark No. 4,260,851 for Fire Cider. (P. Ex. 21.) Fire Cider is registered on the Principal Register
Shire City was formed by Dana St. Pierre; his wife, Amy Huebner; and her brother, Brian Huebner.
In the fall of 2009, Amy Huebner tried St. Pierre's Fire Cider to ward off a cold and was impressed with the results. She did not like the flavor and wanted to make it taste better so she could drink it daily. She and St. Pierre revised the recipe several times and made test batches in the winter of 2009 into 2010. They recorded the recipe they liked best and stored batches until the fall of 2010. A friend invited them to sell homemade goods at a holiday fair in Pittsfield, Massachusetts in December 2010. They invested roughly $1,000 into buying materials and ingredients to make Fire Cider for the fair. They handed out samples at the fair and sold all of the roughly 80 bottles they had brought with them. They made just over $2,000 in gross sales of Fire Cider.
Believing they had a hit product, they spent the next several months setting up a business, Shire City, to manufacture and sell Fire Cider. From the holiday fair until September 2011, they sold refills to friends and neighbors out of their home. They also got a wholesale license, insurance, lab testing to create a dietary supplement panel (which is similar to a nutrition facts label but is used on dietary supplements), FDA approval, and a product barcode. By September 2011, Shire City had the necessary licenses and approvals to start selling Fire Cider wholesale. They set up a website through which they could sell Fire Cider directly to consumers. They also created a Facebook page and other social media accounts to promote the product. In setting up Shire City's online presence and during his efforts at search engine optimization, Brian Huebner testified that he did not see any websites offering fire cider commercially. (He did see several alcohol-related websites regarding fire cider products, which he believes were Canadian.)
Shire City's goal was to get anyone and everyone to try Fire Cider, and within approximately four years, Shire City had given out roughly 1 million samples. To do that, St. Pierre and the Huebners contacted retailers and distributors, did in-store demonstrations and samplings, and attended festivals, expos, trade shows, and other events. By the end of 2011, Shire City had approximately two dozen wholesale relationships with cafes, coffee shops, health food stores, co-ops, liquor stores, and bars. In 2012, Shire City got its first account
Shire City targets a broader market than just the herbalist community. This is shown by the variety of types of retailers that sell Fire Cider, the retailers' geographic scope, and that Shire City promotes Fire Cider for many uses, including as a salad dressing, in sauces and marinades, and as a mixer for alcoholic beverages. In addition, as part of its marketing campaign, Shire City educates people about what the product is and how it can be used because stores and consumers often do not know what Fire Cider is, and retailers are unsure of where to display Fire Cider.
In 2012, Shire City was introduced to the idea of trademarking Fire Cider and hired a company to run a trademark conflict search on the term. (D. Ex. 277.) Based on the results, in April 2012, Shire City applied to register Fire Cider on the Principal Register as a dietary supplement. The registration issued on December 18, 2012; the registration lists the date of first use as December 4, 2010 (P. Ex. 21), which was the date of the holiday fair in Pittsfield where Shire City first sold Fire Cider. St. Pierre, Amy Huebner, and Brian Huebner all testified that, at the time they applied for the registration, they were not aware of anyone having superior rights to the term or of anyone else using the name fire cider or making products referred to as fire cider.
In late 2013, Brian Huebner searched for Shire City's Fire Cider on Google and discovered Etsy
Shortly thereafter, in early 2014, Shire City, St. Pierre, and the Huebners received a flood of emails and social media posts with concerns and complaints about the Fire Cider trademark and the delisting of products on Etsy. They received emails from people in the herbalist community attacking Shire City's business and attacking St. Pierre and the Huebners personally. Shire City and Fire Cider previously had positive reviews on Facebook and Amazon, but their ratings plummeted in response to multiple negative reviews. Specifically, people reported that fire cider—a term attributed to herbalist Rosemary Gladstar as early as the 1970s or 1980s—refers to a traditional tonic people have made for years. People sent Shire City photos of books with recipes for fire cider or photos of their own homemade versions. At first, St. Pierre and the Huebners tried responding to people individually, but they were overwhelmed with the volume of emails and social media posts they received. They eventually crafted form responses.
In January 2014, St. Pierre and the Huebners learned of the Free Fire Cider and the Trademark Not Tradition movements. Amy Huebner described the movements as efforts to flood the market with uses of the "fire cider" term to make it generic. The movements urged people to post Yelp reviews; blog about the tradition of fire cider; share fire cider recipes, particularly those attributing it to Gladstar; make fire cider and label the bottles "Free Fire Cider from Trademark Restriction"; boycott Shire City; and contact retailers that sold Fire Cider and, using talking points provided by Free Fire Cider's and/or Trademark Not Tradition's websites, ask them to take it off the shelves. (See, e.g., P. Exs.
Defendants Telkes and Blue Hastings co-founded the Free Fire Cider and Tradition Not Trademark movements with Gladstar (or, at the very least, Defendants Telkes and Blue Hastings were involved in the movements' early days, and both had administrative privileges on the movements' websites and social media accounts). Defendant Telkes considers herself a Free Fire Cider spokesperson. She and Defendant Blue Hastings edited and posted on the Free Fire Cider website and Facebook account, sent emails from Free Fire Cider's email address, and promoted the boycott of Plaintiff's products. Free Fire Cider's website, Twitter account, and Instagram account remain active. Defendants Telkes, Blue Hastings, and Langelier (who was involved with Free Fire Cider but to a lesser degree than Telkes and Blue Hastings) also set up and circulated a change.org petition to cancel Shire City's trademark. Defendant Blue Hastings subsequently initiated a proceeding before the United States Patent and Trademark Office ("PTO") to cancel Plaintiff's registration of the Fire Cider mark. (The cancelation proceeding is discussed in Section II.E. below.)
In Shire City's emails to people concerned about its trademark, it made statements like:
Defendant Telkes is an herbalist outside of Austin, Texas. She owns Wildflower
Defendant Telkes first heard of fire cider in 1998 in Eugene, Oregon. She learned how to make it while attending an herb school in 2000. She makes fire cider with vinegar, horseradish, ginger, garlic, onion, chili, honey, and sometimes other ingredients. She calls it Texas Fire Cider and currently sells it through Wildflowers & Weeds. She began selling her fire cider in 2003 at community events, including farmers' markets, mostly in central Texas. She also began selling it wholesale, including to a co-op in Austin. And she listed it for sale in her catalogs. (D. Exs. 149, 169-75.) She never obtained a Texas food license, other approvals from Texas, or any FDA approval. She does not have records showing sales of fire cider from before 2004.
According to Defendant Telkes—based on conversations with herbalists, reading herbal literature, and experiences in communities where people make fire cider—fire cider is a well-known remedy in the herbal community. Many people in Austin are familiar with it and make their own.
Defendant Telkes does not want to be associated with Plaintiff or its product. She has never heard of any consumer being confused between her Texas Fire Cider and Plaintiff's Fire Cider, and she does not want customers to confuse them.
Defendant Blue Hastings is an herbalist who first heard of fire cider at an herb class between 1999 and 2003. She also came across fire cider in books and at herbal conferences, classes, Gladstar's herb school, and at a clinic in Tennessee. Defendant Blue Hastings makes her own fire cider with apple cider vinegar, ginger, horseradish, and hot pepper. She is the sole proprietor of Farmacy Herbs in Providence, Rhode Island, which she opened in August 2008. Farmacy Herbs sells fire cider—which is labeled as "fire cider"—in its storefront and at a farmers' market in Providence. Defendant Blue Hastings once posted fire cider for sale on Etsy, but she never sold any through that platform. She recommends fire cider to aid in digestion and soothe upper respiratory issues. Farmacy Herbs' fire cider consumers are people who use natural remedies, herbalists, local farmers, people who support women-owned businesses, and her friends. Farmacy Herbs does not have FDA approval, a Rhode Island food license or other Rhode Island approval, or lab testing for its fire cider. Defendant Blue Hastings contends she began selling fire cider in 2006, but she does not have sales records for the period from 2006 to sometime in 2008. In addition, after the case began, she threw
Farmacy Herbs makes other herbal products, including one called peppermint lip balm. (P. Ex. 111 at BLUE000004.) Defendant Blue Hastings chose that name because it describes what the product is. Fire cider is included in Farmacy Herbs' list of tinctures. (Id. at BLUE00005.) Defendant Blue Hastings testified she does not use that term to refer to a brand; rather, "fire cider" refers to a specific set of ingredients and to what the product is—like peppermint lip balm does. The name fire cider communicates that the product is a traditional herbal blend. In contrast to fire cider and peppermint lip balm, Defendant Blue Hastings has created names for other products, which do not describe what those products are (e.g., teas called Digest the Best, Dream Blend, and Unwind Your Mind; a salve called Belly Bump; and tinctures called Cranium Comfort and Less Stress). (Id. at BLUE000001-5.)
Defendant Blue Hastings does not want her fire cider to be associated with Plaintiff's Fire Cider. She does not know of any consumer who has been confused between hers and Plaintiff's.
Defendant Langelier is an herbalist in Maine. She founded Herbal Revolution Farm & Apothecary LLC in the fall of 2009. Herbal Revolution makes and sells herbal products to 300-400 stores nationwide with a focus on the northeast and mid-Atlantic regions. It has a farm, greenhouse, drying facility, and manufacturing facility. Herbal Revolution also sells products to one distributor and directly to consumers online, but it does not have a storefront.
Defendant Langelier first learned about fire cider from farmers. She began selling fire cider in September 2013, when she debuted a product called Fire Cider No. 9. (D. Ex. 195.) Before she started selling it, she sent the product to a lab for microbial testing to ensure it was safe to sell, purchased bottles, and created a label. She included "No. 9" in the product name to indicate it was Herbal Revolution's version of fire cider and to reference fire stations being identified by numbers.
In the spring of 2014, Defendant Langelier met Brian Huebner at a trade show. They subsequently communicated online, and he asked her to remove "fire cider" from the name of her product. She agreed and changed the name to Fire Tonic No. 9. On the side of the new label, though, she included the following language: "FIRE TONIC NO. 9 (aka Fire Cider) is a traditional recipe passed down by herbalists, farmers and health practitioners and is known to support proper respiratory and digestive health. Today, we are happy to share our version of this timeless recipe with you." (P. Ex. 101; D. Ex. 197.) She included the "(aka Fire Cider)" language because her consumers knew what fire cider was but did not know what fire tonic was, so she had to explain that Fire Tonic No. 9 is simply fire cider. In August 2014, Brian Huebner asked her to remove "(aka Fire Cider)" from the label. (P. Ex. 106.) She agreed, but Plaintiff brought this lawsuit against her before she changed the label, and she kept that language on the
Defendant Langelier began selling Fire Tonic No. 9 to the Portland, Maine Whole Foods in 2014. Since 2017, she has sold it to co-ops, specialty food stores, cafes, juice bars, and national supermarket chains (one Hannaford supermarket in Portland, Whole Foods locations in the north Atlantic region, and MOM's Organic Market), as well as at fairs and farmers' markets. In addition, she has sold two orders of Fire Tonic No. 9 to HomeGoods. She also sells it on Herbal Revolution's website and on Amazon.
According to Defendant Langelier, fire cider is well-known in the herbalist community, and she knows farmers, landscapers, and fishermen who are familiar with it. She uses herbal remedies and medicines as food (and food as medicine), wants people to enjoy herbal remedies, and believes fire cider is delicious, depending on its formulation. People who buy Fire Tonic No. 9 care about health, wellness, and preventative care; they tend to take dietary supplements and vitamins. Fire Tonic No. 9 has multiple uses, including for preventative health benefits, as a salad dressing, in soups, on its own as a shot, and as a cocktail mixer. (P. Ex. 83.)
Defendant Langelier does not want Fire Tonic No. 9 or her business to be associated with Plaintiff or Fire Cider. She has never heard of anyone confusing her product with Plaintiff's.
Rosemary Gladstar is an herbalist who lives and works in Vermont. In 1972, she started an herbal store in California. The next year, she started teaching herb classes, which grew until she started an herb school in California in 1976. Beginning in 1981 and continuing to the present, Gladstar has offered a correspondence course (it is now offered online). In 1987, she moved to Vermont and founded the Sage Mountain Herbal Retreat Center, which offers classes in herbalism.
During the winter session of 1979-1980 at the California herb school, she taught a class to 35-40 students called Herbs for Winter Health in which she taught how to make a spicy, vinegar-based mixture with honey. She cannot remember who named the mixture—it might have been her or a student—but the name fire cider stuck. Fire cider was taught in the winter class every year at the California herb school and then every year at the Vermont school. Gladstar estimates she taught fire cider to 1,000-1,200 students in California and 2,800 students in Vermont. The correspondence course has always included a lesson for fire cider. She estimates 38,000 people have taken the correspondence course. Rosemary's Remedies is an online video series used in the correspondence course; it is currently available for free and includes a section on fire cider. There have been more than 226,000 views of the Rosemary's Remedies fire cider video. Gladstar has also taught people how to make fire cider at conferences, like the International Herb Symposium, attended by hundreds of people.
Gladstar testified that fire cider and a product called cyclone cider are very similar or identical, but she believes her use of fire cider predated cyclone cider. She used a sell a third-party's cyclone cider. She also testified that people have recently started calling it fire tonic, but she believes that it is to avoid Plaintiff's trademark.
She classified fire cider as a tonic for daily use to enhance health but agreed it can be used as a food. One of her books has a recipe for Fire Cider Zest, which is described as "[a] warming, energizing concoction" that "can be added to salad dressings, used to flavor steamed veggies, and sprinkled on steamed grains." (D. Ex. 308.) But, according to Gladstar, this zest is different from fire cider because it contains ginseng and ginger root.
Gladstar was a core member of the Free Fire Cider movement. In 2014, she had meetings with Defendants Blue Hastings and Telkes about the movement, she contributed to and posted on the movement's website, and she drafted materials that were disseminated to the movement's followers.
Monica Rude owns Desert Woman Botanicals in New Mexico. She began selling fire cider in 1999. (D. Ex. 213.) Rude uses the name fire cider for her product because that is the ordinary term to refer to it. She did not invent that name, but she has invented names for other products. She explained that cyclone cider is another name for fire cider, but fire cider is not another name for cyclone cider. According to Rude, fire cider is well-known within the herbalist community, but she has not come across it outside of that community. Initially, Rude's sales were local, either at farmers' markets or to friends. By the end of 1999, she was selling fire cider to stores in New Mexico and Arizona and on her website. In 2000, she sold fire cider in Texas, and she believes she sold it to a store in Massachusetts in 2001. She currently sells fire cider on the Desert Woman Botanicals website and to 20 stores, wholesalers, and practitioners in Florida, Massachusetts (see, e.g., D. Ex. 208 (records showing sales to Massachusetts retailer in 2009 and 2011)), New Mexico, Texas, Washington, and Wisconsin. Rude created the Desert Woman Botanicals website in 1999, and fire cider was one of the first products available on the site. Fire cider is still available on the website. (D. Exs. 217-20, 222 (screen shots of website showing fire cider).) Fire cider was listed on the front page of the Desert Woman Botanicals catalog in 2002. (D. Ex. 212.) The catalog describes it as "A Desert Woman Exclusive!" (Id.) Rude testified she used the word "exclusive" because, as far as she knew, she was the only one selling fire cider in her area. She handed out the catalog in stores where she sold products and included it with shipments. She estimates the catalog reached a few hundred people per year.
Greta De La Montagne is an herbalist in Bayside, California. She first learned about fire cider at a conference in 1994. In 1996, she started making fire cider in large batches and selling it. She sells fire cider at conferences, events, and farmers' markets. Her fire cider sales have been consistent over time. The label on her product says "fire cider." She described the term fire cider as referring to something specific, the way the terms pilsner and stout
Pamela Mitchell is an herbalist in Georgia who owns Karen's Botanicals, which she bought from its previous owner in 2011. Karen's Botanicals makes and sells fire cider; Karen's Botanicals labeled its product "fire cider" both before and after Mitchell bought the business. (D. Exs. 225-28 (showing fire cider listed for sale on Karen's Botanicals' website in 2006 through 2009).) In 2011, Karen's Botanicals sold fire cider on its own website, Etsy, Amazon, and eBay. Brian Huebner contacted Mitchell about her use of the term fire cider, so she took down all of Karen's Botanicals' fire cider listings, except on its own website. Her fire cider sales subsequently dropped. She described fire cider as a spicy and sweet tonic. She uses it as a salad dressing.
Crystal Davidson is an herbalist in Austin, Texas who first heard of fire cider in roughly 2003 when she went to Defendant Telkes' school. Davidson's knowledge of fire cider came from the herbalist community and herbal literature. In approximately 2006, Davidson began working for Defendant Telkes as an apprentice; she later became a full employee until she left in 2008. As an apprentice and employee for Defendant Telkes, Davidson made fire cider and sold it at farmers' markets, festivals, and events and to a co-op. Davidson now makes a line of herbal retail products and makes private label herbal products. She currently makes and sells fire cider.
In June 2014, Defendant Blue Hastings and others filed petitions with the Trademark Trial and Appeal Board ("TTAB") to cancel Plaintiff's registration of the Fire Cider trademark on the grounds that it is generic or merely descriptive. The TTAB suspended the cancelation proceedings pending the resolution of this lawsuit.
In April 2015, Plaintiff applied to register Fire Cider on the Principal Register as a mark for non-alcoholic beverages. Counsel for Defendants protested the registration. (D. Ex. 349.) A PTO examining attorney issued a non-final office action initially denying Plaintiff's application because the term is merely descriptive and appears to be generic. (D. Ex. 347.) The examining attorney gave Plaintiff the opportunity to submit evidence and arguments to support its application. (Id.) In response, Plaintiff requested the examining attorney suspend action on the application pending resolution of this lawsuit. (D. Ex. 348.) The examining attorney then suspended the application.
Three experts testified at trial regarding genericness: Defendants' expert Dr. Ronald Butters, Plaintiff's expert Robert Wallace, and Defendants' expert Mark Blumenthal, who rebutted Wallace's opinions.
Defendants' expert, Dr. Ronald Butters, is the former chair of the English Department and Linguistics Program at Duke University. He is an expert in linguistics, which he described as the study of historical, contemporary, and social uses of language. He is also an expert in lexicography, which is the creation of dictionaries.
For this case, he examined whether fire cider is generic among speakers of contemporary, American English. He looked at actual usage of the term within that population, which led him to conclude that the term began as a generic term and continued to be used generically. He ran searches for examples of actual usage of the term fire cider in print using online tools like Google Books, subscription-based newspaper archives, and a database called ProQuest. Dr. Butters limited the temporal scope of his search to 1980 to 2017 and limited the geographic scope to the United States. His searches yielded 34 results, and Defendants' counsel provided him with a 35th source referring to fire cider. The earliest use of fire cider that Dr. Butters found was from 1997. (D. Ex. 306.) He described the materials that contained the term as being written by and for people who are particularly interested in herbal remedies and who have a highly specialized vocabulary. A large number of the results referred to fire cider using all lower case letters, which indicates generic usage to Dr. Butters. Some results capitalized the "F" and "C," but he opined those hits also used the term generically like, for example, in the name of a recipe. In addition, some hits used gendered pronouns to describe fire cider—e.g., "her fire cider"—which also indicates generic use.
The 35 uses of fire cider that Dr. Butters examined were in newspapers (small
Of the 23 results showing use of fire cider from after Plaintiff began selling Fire Cider, one is the New York Times article, which spotlights an actor who "[s]wears by" the "Fire Cider shot at Green Symphony, a cafe in midtown Manhattan" (D. Ex. 335); this fire cider shot was not attributed to Plaintiff. The actor also described "a family ginger tea recipe" containing "ginger, cayenne pepper, applecider vinegar, onion, garlic, oranges, lemon, and honey" that he did not identify as a recipe for fire cider (Id.) Most of the other results are newspaper articles about making fire cider at home or newspaper announcements about fire cider classes or demonstrations across the country. (D. Exs. 317 (Tallahassee, Florida), 318 (Danville, Kentucky), 319 (Stanford, Kentucky), 320 (Pittsburgh, Pennsylvania), 321 (Burlington, Vermont), 322 (Greenwood, South Carolina), 323 (Coshocton, Ohio), 324 (Asheville, North Carolina), 325 (Camden, New Jersey), 326 (Frederick, Maryland), 327 (Binghamton, New York), 328 (Hartford, Connecticut), 329 (Tallahassee, Florida), 330 (Cherry Hill, New Jersey), 331 (Cherry Hill, New Jersey), 332 (Binghamton, New York), 333 (Frederick, Maryland), 334 (Asbury Park, New Jersey).) The remaining four results are about Plaintiff's product. (D. Exs. 336-39.) One is a 2015 article in a Philadelphia newspaper about Plaintiff, St. Pierre, the Huebners, and Fire Cider. (D. Ex. 336.) Dr. Butters' report erroneously states the newspaper was local to Plaintiff's business and discounts the article as showing only local recognition of Plaintiff's brand. On cross-examination, Dr. Butters conceded the Philadelphia newspaper was not local to Plaintiff's business but explained the paper was still regional and did not show that Plaintiff's brand is widely known throughout the country.
Dr. Butters did not find fire cider in any dictionary, which he described as a factor relevant to the determination of whether a word is generic. He gave several reasons
Dr. Butters did not search for alternate names for fire cider but agreed there could be alternatives like fire tonic, fire brew, master tonic, and cyclone cider. (P. Exs. 92, 102, 132-135.) He further explained that other generic terms—like tincture or oxymel—could accurately refer to fire cider, but that does not mean that fire cider is not also generic. He used motor vehicles as examples: motor vehicle, automobile, car, and truck are all generic and are broader than sedan, SUV, and sports car, which are also all generic. Applying the analogy to fire cider, tincture and oxymel are generic and are broader than fire cider, which is also generic.
Plaintiff retained Robert Wallace, a brand identity strategist. He has previously testified as an expert on genericness and consumer confusion; he has designed and implemented multiple consumer studies, including genericness studies.
Wallace developed and conducted two online consumer surveys (one in 2015 and one in 2017) regarding awareness and understanding of fire cider within the general public. (P. Exs. 217, 218.) The surveys are "Teflon surveys," which are a means for testing genericness.
For the 2015 survey, the participants were 1,000 adults from across the United States. Participants were asked whether they were aware of the following terms: FIRE CIDER, HORNY GOAT WEED, GATORADE, GINKGO, MILK THISTLE, RAW PALMETTO, MAGNOLIA GRANDIFLORA, APPLE JUICE, GINGER ALE, APPLE AND EVE, and BOIRON. (P. Ex. 217.) Participants were then asked whether certain descriptors applied to FIRE CIDER, GATORADE, and MILK THISTLE. (Id.) Wallace testified that the descriptor question asked, "What are you?" Only 100 participants (10%) were aware of fire cider. Among those participants, there was a wide disparity in responses to the "What are you?" question. Wallace testified that there was no consensus of direction and no common awareness of function, and consumers chose contradictory descriptors. The survey also identified a subset of the population that, in Wallace's view, was highly predisposed to be aware of fire cider. Members of the subset were people who have ever used herbal remedies and/or homeopathic recipes; the subset contained 484 survey participants, 77 of whom (15.9% of the subset)
Wallace conducted the 2017 survey to determine if perceptions changed due to the popularity of hard ciders and efforts by advocacy groups, like Free Fire Cider, to use the term generically. He included questions about whether participants believed fire cider was alcoholic and whether they had seen or heard about it online. The participants were 1,001 adults from across the United States. Only 61 participants (6.1%) were aware of fire cider. There were 467 people in the highly predisposed subset,
When assessing the weight to give Wallace's survey results, the court considers whether the correct population was surveyed. Courts give limited weight to genericness surveys that sample the wrong population or exclude them outright. See J & J Snack Foods, Corp. v. Earthgrains Co., 220 F.Supp.2d 358, 371-72 (D.N.J. 2002) (court excluded survey where respondents were not actual or likely buyers of product); Lifeguard Licensing Corp. v. Kozak, No. 15 Civ. 8459 (LGS) (JCF), 2017 WL 908199, at *5 (S.D.N.Y. Mar. 7, 2017) (party challenged consumer survey on ground that its subjects did not mimic relevant public; court found survey admissible and deficiencies went to its weight, but cautioned that relevant public may be smaller than adult American population for product that is not mass-marketed); Int'l Watchman, Inc. v. NATO Strap Co., No. 1:13 CV 1986, 2014 WL 12600471, at *1-*2 (N.D. Ohio Dec. 19, 2014) (court held survey whose respondents were members of general public was admissible, and defendant could challenge the relevant universe through cross-examination).
Defendants' second expert, Mark Blumenthal, is an herbalist, the founder and executive director of the American Botanical Council, and the editor of a periodical called HerbalGram. He is also an editor of The ABC Clinical Guide to Herbs, a multi-edition book of clinical research for medical professionals. Blumenthal was retained to respond to Wallace's consumer surveys. He has no training in conducting surveys and is not an expert in statistics; his expertise is in buying and market trends for herbal supplements. He also conceded he did not review the hard data underlying Wallace's conclusions and had no experience with quantitative market research before this case.
Blumenthal opined that the subject populations of Wallace's surveys were too broad because the herbal products market, especially for products like Fire Cider, is much smaller than the general adult population. Because the court already concluded Wallace's surveys have limited probative value, some of Blumenthal's specific criticisms of the surveys are not relevant. However, his opinions on the size of the herbal dietary supplement market, the relevant channels of trade, and core versus peripheral shoppers are relevant to assessing the scope of the relevant purchasing public.
First, Fire Cider is registered on the Principal Register as a dietary supplement. Blumenthal testified there are many types of dietary supplements, including vitamins, minerals, fish oil, and herbal supplements. Herbal supplements are made from plant materials like roots, leaves, flowers, stems, barks, and their extracts. As of October 2017, approximately 76% of Americans have used a dietary supplement. Approximately 18-19% of that 76% have used herbal dietary supplements, which equals approximately 15% of the
Second, as to channels of trade, herbal supplements are most often sold in health and natural food stores, via mail order, online, to trade professionals (e.g., physicians and acupuncturists), and, to a lesser extent, in the mass market. Most herbal supplements are manufactured by contractors who make products sold under different companies' labels. Many manufacturers make single-dose tablets but very few make liquid supplements. To Blumenthal, this suggests an overwhelming consumer preference for solid dose supplements. On cross-examination, he conceded he assumed Plaintiff's channels of trade are natural food stores, mail order, online, and some mass market stores, but he did not research where Fire Cider is sold other than to look at Plaintiff's website. In addition, as of the time he wrote his report, he did not know where Plaintiff sold Fire Cider.
Third, Blumenthal described core shoppers as people with a strong commitment to natural, organic, and non-GMO products who use herbs as medication and who shop in natural food stores. Peripheral shoppers buy the same products as core shoppers but are less committed to them. Blumenthal critiqued Wallace's surveys for not addressing the distinction between core and peripheral shoppers, and the distinction matters because, according to Blumenthal, core shoppers are the primary consumers of any fire cider. But he acknowledged that mass market stores, like grocery stores, are beginning to stock items core shoppers buy that used to be sold only in natural or health food stores. He further acknowledged that mass market stores reach more people than natural food stores, which means more people are exposed to the products in mass market stores, which in turn increases the scope of the purchasing public.
Blumenthal personally knows Defendant Telkes and Gladstar. Defendant Telkes volunteered for the American Botanical Council before becoming an employee there, and she now rents space from the Council to run her business. Blumenthal first met Gladstar in 1976 when he was an early distributor of her teas. He also created an award for Gladstar for her work in bringing herbalists together. Blumenthal testified he learned about this lawsuit in 2016 and heard it had ruffled herbalists' feathers; he also spoke with Defendant Telkes about Plaintiff's trademark.
The threshold issue is whether Fire Cider is generic. Genericism is core to Count 1 and Counterclaim Count 1, which both seek declaratory judgment regarding the mark's validity. If Fire Cider is generic, then the mark is invalid, and Plaintiff's claims in Counts 2 and 5 (Trademark Infringement (15 U.S.C. § 1114(1)) and Massachusetts Common Law Trademark Infringement, respectively
The legal framework for assessing trademark validity is set forth in the court's summary judgment opinion and order. (Dkt. No. 181.) Because that framework is necessary for assessing the trial evidence, the court revisits it here.
"A mark is entitled to trademark protection if it is capable of functioning as a source-identifier of goods." Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008). A proposed mark must be distinctive. See id. at 12 n.9. There is "a spectrum of distinctiveness, based on [a proposed mark's] capacity to serve such a source-identifying function": "(1) generic (least distinctive), (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful (most distinctive)." Id. at 12 (citation omitted). The more distinctive a term is, the more likely it is to receive trademark protection. Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 705 (1st Cir. 2007). Only the two least distinctive categories are relevant here.
Descriptive marks "convey[] an immediate idea of the ingredients, qualities or characteristics of the goods to which they are attached." Boston Duck Tours, 531 F.3d at 13 (internal quotation marks and citation omitted). A descriptive mark is not inherently capable of serving as a source-identifier. Id. A descriptive term can be protected "only if it has acquired `secondary meaning' by which consumers associate it with a particular producer or source." Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir. 1993). A term acquires secondary meaning when "a significant quantity of the consuming public understand [the] name as referring exclusively to the appropriate party." President & Trustees of Colby Coll. v. Colby Coll.-N.H., 508 F.2d 804, 807 (1st Cir. 1975).
A term is generic if it "designates the class, or `genus[,]' of goods." Boston Duck Tours, 531 F.3d at 13-14. A generic term explains "what are you?" but does not answer the question "where do
"Where, as here, the party claiming infringement has registered the term on the Principal Register, the registration establishes a rebuttable presumption that the term is not generic," which "may be overcome where the alleged infringer demonstrates genericness by a preponderance of the evidence." Colt Defense, 486 F.3d at 705 (citations omitted); see also 15 U.S.C. § 1115(a) ("[R]egistration ... on the principal register ... shall be prima facie evidence of the validity of the registered mark ..."). "For a term to be generic... its `primary significance ... to the relevant public' must be to identify the nature of a good, rather than its source." Colt Defense, 486 F.3d at 705 (citations omitted); see also Boston Duck Tours, 531 F.3d at 18 ("The touchstone of the analysis remains the phrase's primary significance to the relevant public."). A term can be generic "in one of two ways. First, an invented name may become genericized; that is, the term began life as a coined term but became generic through common usage. Second, a term may be generic if it was commonly used prior to its association with the specific products at issue." Hasbro, Inc. v. MGA Entm't, Inc., 497 F.Supp.2d 337, 341-42 (D.R.I. 2007) (internal quotation marks and citations omitted).
Because Fire Cider is registered on the Principal Register, Defendants have the burden of rebutting the presumption that Fire Cider is not generic. See Colt Defense, 486 F.3d at 705. The first step in the genericness analysis is determining the scope of the relevant purchasing public. The second step is assessing the primary significance of Fire Cider to that group.
The relevant purchasing public is comprised of "actual or potential purchasers of the goods or services." Magic Wand, 940 F.2d at 641; see also Re v. Smith, No. Civ. A. 04-11385-RGS, 2005 WL 1140769, at *3 (D. Mass. May 11, 2005) (genericness is "determined by consideration of the relevant public who purchases or may purchase the [trademarked] goods in the marketplace") (internal quotation marks and citation omitted). The relevant public includes "`a usual buyer or other relevant members of the public' such as retail consumers in the parties' domestic markets." CG Roxane LLC v. Fiji Water Co. LLC, 569 F.Supp.2d 1019, 1028 (N.D. Cal. 2008) (quoting H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986)). However, "[s]ometimes, the relevant public will not be the potential purchasing public as a whole but rather `a relatively small group of highly trained and knowledgeable customers.'" Colt Defense, 486 F.3d at 709 (quoting Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 406 (6th Cir. 2002) (considering "relevant public" to be "participants in the semiconductor industry including manufacturers, customers, suppliers, vendors and the trade and technical press")).
The scope of the relevant purchasing public is a central and contested issue in this case. The parties presented competing evidence about how to define the relevant purchasing public. To resolve the dispute, it is helpful to examine how other courts have approached the task.
In Colt Defense, the First Circuit considered the relevant purchasing public of a type of firearm. 486 F.3d at 703. The issue was whether the military, which was under contract to purchase the firearm exclusively from the plaintiff, was part of the relevant purchasing public such that its understanding of the name of the firearm should be considered. The court concluded the military was part of the relevant purchasing public, and there was no legal principle precluding consideration of the military's understanding. Id. at 708-09.
Turning to district court cases, Associación de Industriales de Puerto Rico v. MarketNext, Inc. involved the name of a magazine published by a trade association that represented Puerto Rican businesses in the manufacturing and services sectors. No. 09-1122(JAF), 2009 WL 793619 (D.P.R. Mar. 23, 2009). The court determined the relevant public was "potential advertisers and readers interested in doing business in, or engaging in commerce with, Puerto Rico." Id. at *7.
Sea-Roy Corp. v. Parts R Parts, Inc. involved construction equipment known as a trench compaction roller. No. 1:94CV00059, 1997 WL 1046282, at *1 (M.D.N.C. Dec. 2, 1997). The court determined the relevant public was actual or potential buyers or renters of trench compaction equipment. Id. at *31. The court explained how defining the relevant public this way facilitates the genericness determination: "[I]f purchasers of trench compaction equipment walk into retail stores or rental establishments and ask for a `RAMMAX' and mean any brand of trench compaction roller (including Bomag, Wacker, Stone, etc.) and not specifically a RAMMAX roller manufactured by Rammax Maschinenbau, then Plaintiffs would meet their burden of showing genericness." Id. at *29.
These cases and the pattern jury instructions demonstrate that the relevant purchasing public must approximate actual or likely users of a product, and for products made for or marketed to specific or specialized consumers, that group is smaller than the entire adult population.
Defendants, substantially relying on Blumenthal, contend the relevant purchasing public is limited to herbalists and people who use liquid, multi-herb dietary supplements. But this group is too narrow.
Determining the scope of the relevant public here is resolved by reviewing the two ways a term can be generic: an invented term may become genericized or a term may be generic if it was commonly used before it was associated with a particular product at issue. See Hasbro, 497 F. Supp. 2d at 341-42. Defendants assert fire cider has always been generic. Plaintiff concedes the term is generic within the herbalist community but asserts that the relevant purchasing public is a broader group, and the term is not generic outside the herbalist community. Plaintiff also argues Defendants have tried to genericize the term within the broader population. The parties' conflicting arguments reflect a dispute with respect to when the relevant purchasing public should be measured. Timing is important because if the term was generic to the relevant public when Plaintiff began selling Fire Cider and registered the mark, then the term cannot become distinctive and cannot be a trademark. See Boston Duck Tours, 531 F.3d at 14 ("Because they serve primarily to describe products rather than identify their sources, generic terms are incapable of becoming trademarks ..."). Defendants have proven that when Plaintiff applied to register its mark in April 2012 (and even when Plaintiff first sold Fire Cider in December 2010), the relevant purchasing public was herbalists, dietary supplement consumers, and the small group of consumers interested in fire ciders for other purposes. The evidence indicates the group of people using or interested in fire ciders for food or other, non-traditional purposes in 2010 to 2012 is small. Plaintiff's subsequent success marketing its product and selling it in mass-market stores does not alter the scope of the relevant purchasing public at the time they first began selling it or applied for registration. The relevant purchasing public's collective understanding of "fire cider" determines whether it is generic.
A term is generic if "its primary significance ... to the relevant public [is] to identify the nature of the good, rather than its source." Colt Defense, 486 F.3d at 705 (internal quotation marks and citations omitted). "[E]vidence of the relevant public's understanding of a term" may be "obtained from any competent source," such as "consumer surveys, the use of the term in media publications, use of the term by competitors in the industry, purchaser testimony concerning the term, and the plaintiff's use of the term." Id. at 706 (internal citations omitted); see also Boston Duck Tours, 531 F.3d at 18-20 (in assessing genericness of "duck tour," district court relied exclusively on dictionary definitions of "duck" and "tour" separately and erred in failing to consider use of "duck tour" in media, use of "duck tour" by other companies around the country, and plaintiff's own generic use of "duck tour").
To rebut the presumption that Fire Cider is distinctive, Defendants presented
First, Dr. Butters located uses of fire cider in the media as early as 1997. His searches yielded a low number of results, but a third of them predated Plaintiff's use of the term. The pre-Shire City uses were mostly found in newspapers in California, New Hampshire, New Mexico, Pennsylvania, Tennessee, Texas, and Vermont, which shows use of the term was not limited to a small, geographic region. Every early use of fire cider was generic, and they appeared in general interest publications that did not specifically target the herbalist community. As a result, people who learned about fire cider from these publications were not necessarily herbalists, and they learned about the term in a generic context. Even the media references from after Plaintiff began making Fire Cider tend to show generic use of the term. In particular, there were 18 generic references to homemade fire cider, recipes, classes, and demonstrations. These too were published in newspapers from across the country. One reference—the New York Times article—described commercial sales of fire cider in Manhattan that were not attributed to Plaintiff's product. And only four of the media references that Dr. Butters found were about Plaintiff's Fire Cider.
Second, Plaintiff's competitors' uses of the term are all generic. The evidence showed commercial uses of fire cider beginning in the late 1990s, all of which described what the product was and did not identify it as a brand. These competitors are herbalists, most of whom learned about fire cider from Gladstar or her students. They sell fire cider at a smaller scale than Plaintiff, but they are nonetheless Plaintiff's competitors. This is especially
Third, the documentary evidence shows consumers used the term generically. For example, in response to a pitch from Shire City in December 2012, a representative from a retailer responded: "I am familiar with Fire Cider, as I make it myself." (D. Ex. 263.)
Fourth, since 2014, Plaintiff has used the term generically and has repeatedly recognized fire cider's tradition. St. Pierre and the Huebners might not have known the extent of fire cider's history when they started selling their product, but their lack of knowledge does not make the term distinctive.
An additional point is worth addressing. Plaintiff argues the existence of adequate alternative names for Fire Cider, like fire tonic or cyclone cider, supports its exclusive trademark right to Fire Cider. Cf. Boston Duck Tours, 531 F.3d at 20-21 (due to lack of adequate alternative names, "duck tours" was generic). However, "[t]here is usually no one, single and exclusive name for a product. Any product may have many generic designations. Any one of those is incapable of trademark significance [and] [a]ll of the generic names for a product belong in the public domain." 2 McCarthy on Trademarks & Unfair Competition § 12:9 (internal quotation marks, citation, and emphasis omitted). Examples include: car and automobile, sofa and couch, dresser and bureau. As a result, the existence of other, generic names does not mean Fire Cider is not generic.
Because fire cider is generic, Defendants are entitled to judgment on Count 1 and Counterclaim Count 1. They are also entitled to judgment on Counts 2 and 5.
In Count 3, Plaintiff asserts a claim for false designation of origin in violation of 15 U.S.C. § 1125(a). That provision of the Lanham Act prohibits the use of "any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin" that "is likely to cause confusion, or to cause mistake, or to deceive as to the ... origin, sponsorship, or approval" of goods by another person. Id. at § 1125(a)(1)(A). However, it is a long-standing principle that "[u]nder no circumstances is a generic term susceptible of de jure protection under s 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) [(prohibiting false designation of origin)] ..." Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5, 7 (1st Cir. 1981). Moreover, any confusion does not make a generic "term any less generic." Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312, 1321 (11th Cir. 2012) (citing Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 801 (11th Cir. 2003) ("[C]onfusion
In Count 6, Plaintiff claims Defendants' promotion, distribution, and/or sales of their fire ciders in connection with Plaintiff's mark constitutes unfair competition under Massachusetts common law. "[U]nder Massachusetts law a plaintiff claiming unfair competition may show either `palming off' or that the features of the product in question have acquired a secondary meaning such that confusion as to its source is likely to arise if defendant is allowed to copy them." Pic Design Corp. v. Bearings Specialty Co., 436 F.2d 804, 807 (1st Cir. 1971).
"Palming off" is "an attempt by one person to induce customers to believe that his products are actually those of another." Kazmaier v. Wooten, 761 F.2d 46, 52 (1st Cir. 1985) (internal quotation marks and citation omitted). Plaintiff has not established any Defendant palmed off her fire cider product for Plaintiff's. None of Defendants' labels look like Plaintiff's, there is no evidence any Defendant attempted to associate with Shire City or its Fire Cider, Defendants testified they do not want to be associated with Shire City, and Defendants engaged in a campaign to distinguish Shire City from traditional herbalists.
The question, then, is whether Fire Cider has acquired secondary meaning such that Defendants' fire ciders are likely to create confusion. See Polo Fashions, Inc. v. Branded Apparel Merchandising, Inc., 592 F.Supp. 648, 652 (D. Mass. 1984) ("[Under Massachusetts law, the] essential element of a claim of unfair competition is thus the same as that for the infringement or false designation of origin claim: the plaintiff must prove the likelihood of consumer confusion.") (citation omitted); see also Santander Consumer USA Inc. v. Walsh, 762 F.Supp.2d 217, 225 (D. Mass. 2010) ("The same likelihood of confusion standard applies to the unfair competition and false designation of origin claims."). Plaintiff cannot succeed on its unfair competition claim for the same reason it cannot succeed its false designation of origin claim: fire cider is generic, and "no amount of secondary meaning will entitle a generic term to protection." Purolator, Inc. v. EFRA Distribs., Inc., 687 F.2d 554, 562 (1st Cir. 1982); see also Miller Brewing, 655 F.2d at 7 ("Under no circumstances is a generic term susceptible of de jure protection ... under the law of unfair competition."); Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., Inc., 997 F.Supp.2d 92, 108 (D. Mass. 2014) (plaintiff must prove mark's distinctiveness to succeed on unfair competition claim). Consequently, Fire Cider cannot acquire secondary meaning such that there is confusion due to Defendants' use of the term.
Defendants also brought a counterclaim against Plaintiff for unfair and deceptive acts or practices in violation of Massachusetts' consumer protection statute, Mass. Gen. Laws ch. 93A. Defendants presented evidence that Plaintiff learned about the history of fire cider before initiating this lawsuit; in an email to a former Shire City customer, Amy Huebner stated, "Our lawsuit is not primarily about the trademark, it's about the unfair and deceptive business practices of the 3 folks named in it." (D. Ex. 268); the PTO initially denied Plaintiff's
Plaintiff's conduct was not unfair or deceptive, especially in the context of ch. 93A, § 11, which is "judged by a standard of unfairness higher than the standard employed where actions are brought by a consumer under § 9 of the statute." Madan v. Royal Indem. Co., 26 Mass.App.Ct. 756, 763 n.7, 532 N.E.2d 1214 (1989). "To be actionable, the challenged misconduct must rise to the level of an `extreme or egregious' business wrong, `commercial extortion,' or similar level of `rascality' that raises `an eyebrow of someone inured to the rough and tumble of the world of commerce.'" Peabody Essex Museum, Inc. v. U.S. Fire Ins. Co., 802 F.3d 39, 54 (1st Cir. 2015) (quoting Baker v. Goldman Sachs & Co., 771 F.3d 37, 49-51 (1st Cir. 2014); Zabin v. Picciotto, 73 Mass.App.Ct. 141, 169, 896 N.E.2d 937 (2008)). Defendants essentially argue that Plaintiff violated ch. 93A by initiating and prosecuting this lawsuit because it knew there were problems with the validity of its mark due the herbalist community's use of fire cider and the PTO's initial rejection and subsequent suspension of Plaintiff's second application. But Plaintiff was entitled to test the validity of its registered mark, and initiating a lawsuit to do so is not unfair or deceptive. See, e.g., Quaker State Oil Refining Corp. v. Garrity Oil Co., 884 F.2d 1510, 1514 (1st Cir. 1989) (regardless of whether claims were ultimately unsuccessful, party had "right to test them through litigation"). Moreover, the PTO's initial rejection of Plaintiff's second trademark application was a non-final office action that invited Plaintiff to submit evidence and arguments supporting its application. And the PTO's subsequent suspension of the application is not an adjudication on the application's merits; it is merely a stay pending the resolution of this litigation. See 37 C.F.R. § 2.67. Accordingly, Defendants do not prevail on their ch. 93A counterclaim, and Plaintiff is entitled to judgment on Counterclaim Count 2.
For the foregoing reasons, the court orders as follows:
It is So Ordered.
In addition, in early December 2012 (after Shire City submitted its trademark application but before the registration issued), Shire City pitched Fire Cider to a retailer over email; a representative from the retailer responded, "I am familiar with Fire Cider, as I make it myself." (D. Ex. 263.)
