445 F.Supp.3d 139
N.D. Cal.2020Background
- Plaintiff Threshold Enterprises (Source Naturals) owns federal registrations for the marks "wellness shot" and "wellness shots" for dietary supplements; the registrations are incontestable.
- Defendant Pressed Juicery sells small concentrated beverage "shots," including a product labeled "wellness shot," at stores and online.
- Threshold sued for federal and state trademark infringement, dilution, and unfair competition; Pressed Juicery answered and counterclaimed for declaratory judgment and cancellation.
- Pressed Juicery moved for judgment on the pleadings under Rule 12(c), submitting USPTO records, media and social‑media evidence, dictionary definitions, and examples of third‑party usage.
- The district court concluded the terms "wellness shot" and "wellness shots" are generic (and alternatively that Pressed Juicery’s use was fair use), granted the motion with prejudice, ordered cancellation of the registrations, and entered judgment for Pressed Juicery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the marks "wellness shot(s)" generic? | Marks are valid, registered, and incontestable and indicate Source Naturals as the source. | Evidence (dictionary, media, USPTO usage, competitor and social‑media use) shows the public understands the term as a product type. | The court held the terms are generic and thus unenforceable. |
| Can an incontestable registration be challenged on genericness grounds? | Incontestability limits some defenses; cancellation requires showing the mark "became" generic. | Incontestability does not shield an always‑generic term; §1065(4) and precedent permit cancelling marks that are generic in fact. | The court treated incontestability as no bar to invalidation for genericness and evaluated primary significance. |
| May the court consider outside materials and judicially noticed evidence on a 12(c) motion? | (Threshold) Cautioned against converting to summary judgment and argued limits on outside evidence. | (Pressed Juicery) Sought judicial notice of USPTO records, websites, and social posts; documents attached to pleadings are properly considered. | Court took judicial notice of USPTO and selected website/dictionary content (for existence/content, not truth) and relied on documents attached to pleadings without converting the motion. |
| Was Pressed Juicery’s use an actionable trademark use or permissible fair use? | Threshold alleged continued use after notice and implied bad faith. | Pressed Juicery used "wellness shot" descriptively beneath a prominent house mark; use was in good faith to describe product type. | Court found Pressed Juicery’s use was fair use as a matter of law (even if marks were protectable). |
Key Cases Cited
- Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778 (9th Cir. 2002) (validity is a threshold issue in trademark disputes)
- Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (Sup. Ct. 1985) (effect of incontestability in trademark law)
- Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143 (9th Cir. 1999) (primary significance test for genericness)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (trademark distinctiveness spectrum)
- Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017) (genericness and primary significance analysis)
- Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (Sup. Ct. 1938) (primary significance—product vs. producer)
- In re Cordua Restaurants, Inc., 823 F.3d 594 (Fed. Cir. 2016) (incontestability does not shield a mark that is generic)
- Gracie v. Gracie, 217 F.3d 1060 (9th Cir. 2000) (court must cancel registration after finding mark unenforceable)
- Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025 (9th Cir. 2010) (assessing whether a term is used as a mark)
- Cosmetically Sealed Indus., Inc. v. Chesebrough‑Pond's USA Co., 125 F.3d 28 (2d Cir. 1997) (non‑trademark use when defendant’s own mark clearly indicates source)