United States: The Herbal Community Is Fired Up Over Fire Cider

Last Updated: May 23 2017
Article by Henry M. Abromson

The term "fire cider" is well known to herbalists as a term for a spicy, hot, deliciously sweet vinegar tonic, which is thought to have first been concocted in the kitchen of the California School of Herbal Studies in the early 1980's. It comes from a recipe which was created to be a dietary supplement drink with medicinal benefits.

It is estimated that since its inception, hundreds, if not thousands, of individuals have created and enjoyed their own fire cider recipes. Many have even sold versions of the elixir at stores and farmers markets across the country. The recipe, which most often includes a mixture of garlic, onions, horseradish root, ginger root, hot peppers and Echinacea, lies at the core of an herbal revolution that has quickly gained popularity in the United States. As a result, the term "fire cider" has become commonplace as part of the herbal community's vernacular, due to its overwhelming popularity.

Predictably, then, when the United States Patent and Trademark Office ("USPTO") granted registration of the trademark FIRE CIDER to Shire City Herbals, Inc. ("Shire") in December 2012 many in the herbal community were not only confused, but also outraged. Shire registered FIRE CIDER in connection with the sale of a "dietary supplement drink," which many members of the herbal community saw as an attempt to monopolize a well-known name generically used in connection with the sale of a product which had been produced and, in many cases, already sold under that name by others many years and decades prior. Given the circumstances, many in the community collectively wondered if the trademark registration was correctly granted by the USPTO and took action. Shire, a young business, found itself having to defend its use of the mark.

This article will provide an overview of relevant trademark law and analysis in an attempt to determine how the trademark registration granted by the USPTO might fare in the current Shire litigation.

Trademark Law Generally

As background, a trademark is a word, design, sound, smell, color or a combination thereof which serves to identify the origin of a product or a service. One acquires trademark rights in a mark when that mark is used in connection with the sale of a good or service in the marketplace. Generally, the first to acquire such rights in a mark is said to have priority to the rights in and to such mark, even if another has already registered the mark. That is because the trademark system in the United States is a "first to use" rather than a "first to register" system, as some other countries employ.

Not only does the user of a mark have to be the first to use the mark in commerce, generally speaking, but the mark has to be one that is eligible for protection under the law. To be eligible for protection, the mark must be sufficiently distinctive. It cannot be a term which is generically used for the product or service being sold under the mark. For example, the mark EXXON used in connection with the sale of fuel for motor vehicles is very strong because it is very unique. It is a word that does not otherwise exist in the English language. On the other hand, the term ESCALATOR in connection with the sale of people moving equipment is now generic, because that term is widely used for the actual product. Marks like EXXON are considered stronger because, as the theory holds, the more distinctive the mark, the less opportunity there will be for confusion to occur in the marketplace.

Classification of Marks

Fanciful Marks

The strongest marks, like EXXON, are referred to as fanciful marks. These marks generally consist of words that are words not already in the English language, created solely for the purpose of identifying and distinguishing the origin of a product or service. These marks are inherently distinctive.

The mark FIRE CIDER does not appear to be a fanciful mark. It consists of actual words commonly used in the English language. Further, the term "fire cider" is itself commonly used, especially in the herbalist community.

Arbitrary Marks

Arbitrary marks are the next strongest type of marks. These are marks that include real words used with an unrelated good or service. For example, the mark, APPLE, used in connection with the sale of personal computers is an arbitrary mark.

FIRE CIDER does not appear to meet the criteria for an arbitrary mark either. This particular type of dietary supplement drink has been referred to by many, for years, as "fire cider", so the tie between the mark and the product do not seem to be arbitrary.

Suggestive Marks

Suggestive marks are protectable marks with some strength, but are not quite as strong as fanciful or arbitrary marks. Suggestive marks conjure up, in the minds of consumers', feelings, ideas or attributes that can be directly connected to the goods or services being sold in connection with the mark. For example, the mark CHAMPION used in connection with the sale of sports apparel is a suggestive mark.

FIRE CIDER could be deemed to be a suggestive mark. Despite the fact that the apple cider vinegar-based product does not actually emit fire, smoke or flame, the term likely conjures up in the minds of many, consumers the idea that the dietary supplement drink is one which is spicy.

Descriptive Marks

The final two categories consist of marks that are either very difficult or impossible to protect. The first of those groups includes merely descriptive marks. These are marks, as the name suggests, which merely describe a product or a feature of the product or service. For example, TUBELESS for computer monitors or LIGHT for portable computers. These marks are only registerable after a showing of "secondary meaning". Secondary meaning means that although the mark is objectively descriptive of the goods or services, consumers recognize the mark as having a source indicating function. One example of a merely descriptive mark that was shown to have had a secondary meaning in the marketplace is the mark DIGITAL for computers.

In determining whether a mark is merely descriptive, the question is whether someone who knows what the goods and services are will understand the mark to convey descriptive information about those goods or services. In re Tower Tech, Inc., 64 U.S.P.Q.2d 1314, 1316-1317 (TTAB 2002). As stated by the U.S. Court of Appeals for the Federal Circuit in Duopross Meditech Corp. v. Inviro Medical Devices, "[o]ne articulation of the [merely descriptive] rule is that a mark is merely descriptive if it consists of the qualities, ingredients, or characteristics of the goods or services related to the mark." Duopross Meditech Corp. v. Inviro Medical Devices, 695 F.3d 1247, 1251 (Fed. Cir. 2012). However, it can be difficult to determine whether a mark is suggestive or merely descriptive because a suggestive mark also typically employs terms that relate to the product's characteristics or intended use. It has been determined, however, that a suggestive mark, unlike a merely descriptive mark, "requires the observer or listener to use imagination and perception to determine the nature of the goods." Leelanau Wine Cellars v. Black & Red, 502 F.3d 504, 513, 502, n.3 (6th Cir. 2007).

In the instant case, the mark FIRE CIDER may be viewed more as a suggestive mark than a descriptive mark, because the good does not actually emit fire, smoke, or flame nor is it hot to the touch. Rather, the drink is touted as being spicy, which requires consumers to use their imagination and perception to tie the term "fire" to something that features a spicy taste.

Generic Marks

Generic marks are the final category of trademarks. These marks are incapable of functioning as a trademark because they lack inherent distinctiveness. A generic mark is simply the term which is or becomes the common name of the product being sold under the mark. For example, ROLLERBLADE is now a generic mark, as the entire genus of in-line skates is now known as rollerblades. Another example of a generic mark is the mark LITE BEER for light beer. Frequently, the genericide of a mark - the process by which a trademark owner loses trademark rights because the trademark is so widely used to refer to a type of product or service - is due to the mark owner's very effective marketing of a product. For this reason, mark owners must clearly distinguish the brand name from the product type in their marketing to consumers. It is generally recommended, for example, that mark owners use their respective marks as an adjective (for example, "we sell Kleenex brand facial tissues") rather than a noun (for example, "we sell Kleenex").

As the Third Circuit explained in E.T. Browne Drug Co. v. Cococare Prods, 538 F.3d 185 (3d Cir. 2009):

The jurisprudence of genericness revolves around the 'primary significance test', which inquires whether the primary significance of a term in the minds of the consuming public is the product or the producer. We ask whether consumers think the term represents the generic name of the product or service or a mark indicating merely one source of that product or service. It the term refers to the product (i.e., the genus), the term is generic. If, on the other hand, it refers to one source or producer of that product, the term is not generic (i.e., it is descriptive, suggestive or arbitrary or fanciful). 538 F.3d at 192.

Here, the mark FIRE CIDER could also be determined to be within the class of generic marks. FIRE CIDER is being used as a mark to sell a good which is referred to, and has been known by many for a very long period of time, as "fire cider". In applying the "primary significance test", it seems clear that consumers of the product, which most likely are largely in the herbalist community, would find that the mark refers to the generic name for the product rather than the source of the product, which is Shire.

Interestingly, the FIRE CIDER mark is currently the subject of a cancellation proceeding before the Trademark Trial and Appeal Board ("TTAB"). Although the cancellation proceeding has been temporarily suspended pending the outcome of a civil action regarding the registrability of FIRE CIDER, in the United States District Court of Massachusetts, a formal determination regarding this issue will likely be issued soon. It will be interesting to review how the courts decide this matter and whether they find the mark to be protectable.

As this article makes clear, the field of Trademark Law is full of nuance and subjectivity, which can make it difficult for many individuals and businesses to navigate their way through the processes of trademark registration, trademark protection and enforcement of trademark rights. The best practice for prospective trademark owners is to create a unique mark and then perform thorough trademark clearance searches prior to mark usage and registration to reduce the risk of an infringement claim or an opposition to registration of their mark by the USPTO and/or a potential competitor. For those who wish to protect a mark or commonly used term like "fire cider", it is recommended that such businesses and individuals carefully monitor and police use of similar marks by regularly surveying the Internet, regularly reviewing the USPTO Trademark Official Gazette which features newly published marks and perhaps even hiring a third party trademark monitoring service which will review numerous publications and databases for potentially conflicting marks on their clients' respective behalves.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Klein Moynihan Turco LLP
Wolf, Greenfield & Sacks, P.C.
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Klein Moynihan Turco LLP
Wolf, Greenfield & Sacks, P.C.
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions