The Herbal Community is Fired Up Over Fire Cider

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.

This blog was written by Hank Abromson at Miles & Stockbridge.

Opinions and conclusions in this post are solely those of the author unless otherwise indicated. The information contained in this blog is general in nature and is not offered and cannot be considered as legal advice for any particular situation. Any federal tax advice provided in this communication is not intended or written by the author to be used, and cannot be used by the recipient, for the purpose of avoiding penalties which may be imposed on the recipient by the IRS. Please contact the author if you would like to receive written advice in a format which complies with IRS rules and may be relied upon to avoid penalties.