Shire City Herbals, Inc. v. Blue

410 F.Supp.3d 270

SHIRE CITY HERBALS, INC., Plaintiff,

v.Mary BLUE d/b/a Farmacy Herbs, et al., Defendants.

Civil Action No. 15-30069-MGM

United States District Court, D. Massachusetts.

Filed September 30, 2019

Christopher M. Hennessey, Sasha N. Kopf, Cohen Kinne Valicenti & Cook, LLP, Pittsfield, MA, Sonya del Peral, Law Office of Sonya del Peral, Chatham, NY, Paul C. Rapp, The Law Office of Paul C. Rapp, Monterey, MA, for Plaintiff.

James G. Goggin, Pro Hac Vice, Martha C. Gaythwaite, Seth S. Coburn, Verrill & Dana, LLP, Portland, ME, for Defendants.

FINDINGS OF FACT AND RULINGS OF LAW FOLLOWING JURY-WAIVED TRIAL

MASTROIANNI, U.S.D.J.

I. INTRODUCTION

Plaintiff Shire City Herbals, Inc. ("Plaintiff" or "Shire City") alleges the following Defendants infringe its registered trademark Fire Cider:¹ Mary Blue (or Mary Blue Hastings) d/b/a Farmacy Herbs, Nicole Telkes d/b/a Wildflower School of Botanical Medicine and/or Wild Spirit Herbs, Wildflowers & Weeds LLC, Katheryn Langelier d/b/a Herbal Revolution, and Herbal Revolution Farm & Apothecary LLC. Defendants brought counterclaims for declaratory judgment and under Mass. Gen. Laws ch. 93A. The following counts were tried in a jury-waived trial on March 25-29, April 1, May 13-14, and July 2, 2019:

Count 1: declaratory judgment that the mark is distinctive and valid (which is related to Counterclaim Count 1),

Counterclaim Count 1: declaratory judgment that the mark is generic or descriptive and without secondary meaning (which is related to Count 1),

Count 2: trademark infringement ( 15 U.S.C. § 1114(1) ),

Count 3: false designation of origin ( 15 U.S.C. § 1125(a) ),

Count 5: common law trademark infringement,

Count 6: common law unfair competition, and

Counterclaim Count 2: Mass. Gen. Laws ch. 93A, § 11.

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.

II. FINDINGS OF FACT

A. Shire City and Its Development of Fire Cider

Shire City owns U.S. Trademark No. 4,260,851 for Fire Cider. (P. Ex. 21.) Fire Cider is registered on the Principal Register as a dietary supplement drink. (Id. ) Throughout the trial, Fire Cider and similar products were referred to as a type of vinegar tonic, tincture, or oxymel.

Shire City was formed by Dana St. Pierre; his wife, Amy Huebner; and her brother, Brian Huebner.² They do not identify as herbalists and have not taken herbalism classes. St. Pierre was exposed to herbal remedies at a young age by his grandmother. In high school, he began making his own remedies. While living in Arizona in the late 1990s, he brought jars of his remedies to a potluck; one was a mixture of vinegar, honey, garlic, and horseradish. A man at the potluck to whom St. Pierre referred as "a hippie" called the mixture "fire cider." St. Pierre liked the name and started using it to refer to his mixture. St. Pierre's former roommate contests this series of events, claiming St. Pierre got the recipe from someone when he was living in Arizona, the recipe was handwritten on an index card, and fire cider was written on the index card. (Dkt. No. 238 at 6:20-7:13, 15:9-16:3.) The former roommate has seen the index card but does not know who gave it to St. Pierre.

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 with a large chain, MOM's Organic Market, which has locations in the mid-Atlantic. Shire City then got a deal with an organic produce distributor that distributed Fire Cider to retailers in New York and New Jersey. Shire City started working with other distributors in New England, New York, Pennsylvania, and the mid-Atlantic. Between 2015 and 2017, Shire City got deals for several large chains to stock Fire Cider, including Big Y (approximately 60-70 stores), Sprouts (approximately 250 stores), and GNC (approximately 4,500 U.S. stores). In 2018, Shire City began wholesale relationships in Canada with conventional grocery stores, natural foods stores, and chains. Currently, Fire Cider is sold in more than 5,000 brick and mortar stores across all 50 states. The types of stores include big chain stores, supermarkets, natural foods stores, health- and nutrition-related stores, liquor stores, cafes, bakeries, restaurants, general stores, co-ops, CrossFit gyms, yoga studios, a rock-climbing gym, chiropractors' offices, and a store in Logan Airport that sells Massachusetts products. Fire Cider is also sold online on Shire City's website, Amazon (from individuals who buy Fire Cider wholesale from Shire City and resell it at retail prices), Walmart's website, GNC's website, Jet.com, LuckyVitamin.com, and elsewhere. Through its own website, Shire City has shipped Fire Cider to buyers in Central and South America, the United Kingdom, Asia, and Australia. Shire City currently sells three versions of Fire Cider: original, unsweetened, and African Bronze, which is made with a dark, smoky honey.

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.

B. Shire City's Process of Trademarking Fire Cider as a Dietary Supplement

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.³

C. Etsy Listings and the Ensuing Controversy, Including the Tradition Not Trademark and the Free Fire Cider Movements

In late 2013, Brian Huebner searched for Shire City's Fire Cider on Google and discovered Etsy⁴ postings selling non-Shire City fire cider. Some postings used Shire City's Fire Cider logo and label, as though the seller(s) had...