In the case Threshold Enterprises, Ltd. v. Pressed Juicery, Inc., the U.S. District Court for the Northern District of California granted Defendant’s motion to cancel the mark “Wellness Shot” on the basis that it is generic, and therefore unenforceable.
Plaintiff Threshold Enterprise sells vitamins and dietary supplements and holds a registration for the mark "Wellness Shot" for dietary supplements. Defendant Pressed Juicery, Inc. sells products labeled as a nutritional “wellness shot” that purportedly provide health and wellness benefits. Threshold sued Pressed Juicery claiming a likelihood of confusion over use of the term “wellness shot.” Pressed Juicery countered by arguing that Threshold’s “Wellness Shot” mark was generic.
In arguing that the “Wellness Shot” mark was generic, Defendants provided evidence in the form of dictionary definitions, social media posts, media usage, competitor usage, and third party registrations, all showing that the consuming public used “wellness shot" generically, as a type of product rather than as a source identifier for a particular product. The documents Threshold submitted as evidence that the mark is not generic consisted almost entirely of examples of alternate terms for the type of product that the term “wellness shot” encompasses. The court found this information “immaterial” because “what is important is public understanding of the terms at issue.”
In its order, the court noted that both sides “submitted every form of evidence courts analyze when determining whether a mark is generic—every form of evidence, that is, except a survey of relevant consumers.” This is a notable statement for two reasons. First, in determining whether or not a mark has become generic, one of the factors courts typically consider is whether the relevant consuming public’s primary perception of the trademark is a brand name or as a category of product. While evidence related to how the term is used in the marketplace can be compelling, it does not necessarily address relevant consumers’ perceptions – that is, whether they consider the mark at issue to be a brand name or a generic term. A genericness survey, conducted by a qualified trademark survey expert, can be a powerful piece of evidence in such matters to demonstrate how relevant consumers perceive the mark. Second, the court’s statement could be interpreted to mean that they were expecting a genericness survey would be produced in this matter.
Ultimately, the court found that the information provided by Pressed Juicery sufficiently demonstrated that the “Wellness Shot” mark was generic. Therefore, the court granted Pressed Juicery’s motion to cancel the mark. However, one is left to wonder what would have happened if a genericness survey found that relevant consumers perceive the mark to be a brand name? Could survey evidence have helped save Threshold’s mark?
Applied Marketing Science (AMS) has extensive experience conducting genericness surveys in trademark infringement matters. Our surveys have been submitted and accepted as evidence in litigation matters involving a broad range of products and services. To learn more about AMS trademark survey experts and our Litigation Support services, please contact Jason Och at joch@ams-inc.com.
