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Shire City Herbals, Inc. v. Blue

United States District Court, D. Massachusetts

September 30, 2019

SHIRE CITY HERBALS, INC., Plaintiff,
v.
MARY BLUE d/b/a FARMACY HERBS, et al., Defendants.

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

          MARK G. MASTROIANNI, UNITED STATES DISTRICT JUDGE

         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, coops, 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 Etsy[4] postings selling non-Shire City fire cider. Some postings used Shire City’s Fire Cider logo and label, as though the seller(s) had copied and pasted the logo and label onto their own products.[5] Not knowing what to do, Shire City hired counsel and then contacted Etsy through the website’s process for notifying them of IP infringement. Shire City provided Etsy with a copy of its trademark registration for Fire Cider. Etsy then removed fire cider listings, including from sellers who were not using Plaintiff’s label.

         Shortly thereafter, in early 2014, Shire City, St. Pierre, and the Huebners received a flood of emails and social media posts with concerns and complaints about the Fire Cider trademark and the delisting of products on Etsy. They received emails from people in the herbalist community attacking Shire City’s business and attacking St. Pierre and the Huebners personally. Shire City and Fire Cider previously had positive reviews on Facebook and Amazon, but their ratings plummeted in response to multiple negative reviews. Specifically, people reported that fire cider-a term attributed to herbalist Rosemary Gladstar as early as the 1970s or 1980s-refers to a traditional tonic people have made for years. People sent Shire City photos of books with recipes for fire cider or photos of their own homemade versions. At first, St. Pierre and the Huebners tried responding to people individually, but they were overwhelmed with the volume of emails and social media posts they received. They eventually crafted form responses.

         In January 2014, St. Pierre and the Huebners learned of the Free Fire Cider and the Trademark Not Tradition movements. Amy Huebner described the movements as efforts to flood the market with uses of the “fire cider” term to make it generic. The movements urged people to post Yelp reviews; blog about the tradition of fire cider; share fire cider recipes, particularly those attributing it to Gladstar; make fire cider and label the bottles “Free Fire Cider from Trademark Restriction”; boycott Shire City; and contact retailers that sold Fire Cider and, using talking points provided by Free Fire Cider’s and/or Trademark Not Tradition’s websites, ask them to take it off the shelves. (See, e.g., P. Exs. 22, 35-36, 97, 118, 125.) Shire City subsequently saw an uptick in purportedly infringing products being offered for sale online.

         Defendants Telkes and Blue Hastings co-founded the Free Fire Cider and Tradition Not Trademark movements with Gladstar (or, at the very least, Defendants Telkes and Blue Hastings were involved in the movements’ early days, and both had administrative privileges on the movements’ websites and social media accounts). Defendant Telkes considers herself a Free Fire Cider spokesperson. She and Defendant Blue Hastings edited and posted on the Free Fire Cider website and Facebook account, sent emails from Free Fire Cider’s email address, and promoted the boycott of Plaintiff’s products. Free Fire Cider’s website, Twitter account, and Instagram account remain active. Defendants Telkes, Blue Hastings, and Langelier (who was involved with Free Fire Cider but to a lesser degree than Telkes and Blue Hastings) also set up and circulated a change.org petition to cancel Shire City’s trademark. Defendant Blue Hastings subsequently initiated a proceeding before the United States Patent and Trademark Office (“PTO”) to cancel Plaintiffs registration of the Fire Cider mark. (The cancelation proceeding is discussed in Section II.E. below.)

         In Shire City’s emails to people concerned about its trademark, it made statements like:

• “‘Fire Cider’ is indeed a term from the world of folk medicine that predates our usage of it.” (D. Ex. 244 at ¶ 003875 (Jan. 25, 2014 email).)
• “We all know there have been lots of folks for hundreds of years making their version [of fire cider], including our grammas.” (D. Ex. 258 at ¶ 001942 (Jan. 27, 2014 email).)
• “While I am not an expert in the field, I can tell you that a copyright protects intellectual property, such as a song, computer program, or a book title (Rosemary Gladstar wisely copyrighted her writings starting in 1999). As I understand it, the concept of fire cider has so many varieties and variations that it would most likely not be able to be copyrighted. It is too nebulous and doesn’t fit neatly into any legal ‘box’, and the tradition is too long and broad reaching. . . . A trademark protects a brand name, and in turn the specific recipe associated with that brand. Most importantly, it only protects that brand name within the confines of commerce, so you have to be selling a specific, distinguished commercial product. When we were approached by a legal professional . . . we were the only commercially available Fire Cider on the market, and trademark was the only form of legal protection available to us. That does not mean we were the only people making or selling this product, but web and government searches turned up only a variety of recipes, not a business and a specific product.” (D. Ex. 252 at ¶ 012693 (Jan. 28, 2014 email).)
• “You want ‘fire cider’ available to everyone always and we agree with you! . . . How can we safeguard the traditional use of the phrase fire cider, while at the same time protecting the businesses we have all worked to build?” (D. Ex. 256 at ¶ 001922 (Jan 27, 2014 email); see also D. Ex. 255 at ¶ 001916 (Jan. 28, 2014 email); D. Ex. 257 at ¶ 001920 (Jan. 28, 2014 email).)
• “We did trademark the name knowing that it was in use in the world of herbalists. We’ve never denied this, or attempted to hide this fact.” (D. Ex. 243 at ¶ 003867 (Jan. 29, 2014 email).)
• “While I understand that fire cider is a traditional remedy, prior to our business, there was virtually zero mainstream demand.” (D Ex. 253 at ¶ 012696 (Feb. 19, 2014 email).)
• “Basically our TM restricts the use of the term Fire Cider in a commercial setting. It does not prevent anyone from talking about, teaching, writing about, [making] fire cider at home or selling on a small scale (ie [sic] not commercial, anyone selling without a whole sale [sic] license can sell whatever they want under whatever name they choose.). Sellers on Etsy are in a grey area: they can make what they want in their home kitchen but Etsy is a national] sales platform with national advertising, so we had to let the Etsy legal department know that a few listings were in violation of our TM.” (D. Ex 249 at ¶ 001459 (Mar. 10, 2014 emai; see also D. Ex. 250 at ¶ 003069 (Mar. 14, 2014 email).)
• “The words Fire Cider may be considered generic to a few thousand herbalists but the other 313 million people in this country don’t know what it is. I can tell you this because I have fi[r]st hand experience handing out samples of my Fire Cider to nearly a quarter of a million people-almost all of them think I’m handing out warm apple cider or moonshine. . . . Shire City Herbals . . . is committed to being the best representative of Fire Cider in the national commercial market.” (D. Ex. 249 at ¶ 001458 (Mar. 11, 2014 email); see also D. Ex. 250 at ¶ 003069-70 (Mar. 14, 2014 email).)
• “[W]hile it is a traditional term (which is something we mention in the copy on every bottle), the Fire Cider we make is also a new thing. It is the first time anyone’s sold a product with that name, quality, and ingredients on a commercial scale.” (D. Ex. 254 at ¶ 012661 (May 9, 2014 email).)
• “The general name [fire cider] can still be used, however, if folks want to do this new thing, selling commercially, they just have to use a different name. And there are so many general/historic names: fire tonic, mater tonic, plague/plaque tonic, etc ” (D. Ex. 265 at ¶ 000088 (Mar. 23, 2015 email).)
• “Fire Cider still is a traditional folk remedy, in fact every bottle we have sold says exactly that!” (D. Ex. 248 at ¶ 004132 (Aug. 3, 2015 email).)
• “Our mission is to spread awareness of using food as medicine. I’ve personally told thousands of people how to make Fire Cider. Buy ours, take a class, find a recipe and make your own, we are adding to the tradition! The idea we are taking something away from people is completely unfounded. We were the first to market commercially which further compliments and adds to the centuries old folk tradition of teaching, making, recipe sharing, etc. . . . In our experience, no one knows what we are offering them, most people think Fire Cider is moonshine or sweet cider. Its [sic] not a generic or descriptive term and its [sic] a new thing to the vast majority of people.” (D. Ex. 248 at ¶ 004131 (Aug. 4, 2015 email).)

         D. Defendants, Rosemary Gladstar, and Other Fire Cider Producers

         1. Defendant Telkes

         Defendant Telkes is an herbalist outside of Austin, Texas. She owns Wildflower School of Botanical Medicine, Wildflowers & Weeds LLC, and several subsidiaries of and predecessors to Wildflowers & Weeds. Her business is 90% herbal education and managing the school and 10% selling herbs, herbal products, and CSA shares. She last had a physical storefront in 2012.

         Defendant Telkes first heard of fire cider in 1998 in Eugene, Oregon. She learned how to make it while attending an herb school in 2000. She makes fire cider with vinegar, horseradish, ginger, garlic, onion, chili, honey, and sometimes other ingredients. She calls it Texas Fire Cider and currently sells it through Wildflowers & Weeds. She began selling her fire cider in 2003 at community events, including farmers’ markets, mostly in central Texas. She also began selling it wholesale, including to a co-op in Austin. And she listed it for sale in her catalogs. (D. Exs. 149, 169-75.) She never obtained a Texas food license, other approvals from Texas, or any FDA approval. She does not have records showing sales of fire cider from before 2004.[6] (D. Exs. 150-66.) Wildflowers & Weeds currently has two wholesale customers to which it sells Texas Fire Cider (both are in Austin), and it distributes Texas Fire Cider to its CSA members. The most fire cider Defendant Telkes has ever sold is approximately 20 units per year. For example, in 2010, she sold 22 units of Texas Fire Cider, which amounted to 0.5% of her sales that year. (P. Ex. 124.) She also teaches students how to make fire cider at the Wildflower School of Botanical Medicine and says it is one of the most popular recipes taught at the school.

         According to Defendant Telkes-based on conversations with herbalists, reading herbal literature, and experiences in communities where people make fire cider-fire cider is a well-known remedy in the herbal community. Many people in Austin are familiar with it and make their own.

         Defendant Telkes does not want to be associated with Plaintiff or its product. She has never heard of any consumer being confused between her Texas Fire Cider and Plaintiff’s Fire Cider, and she does not want customers to confuse them.

         2. Defendant Blue Hastings

         Defendant Blue Hastings is an herbalist who first heard of fire cider at an herb class between 1999 and 2003. She also came across fire cider in books and at herbal conferences, classes, Gladstar’s herb school, and at a clinic in Tennessee. Defendant Blue Hastings makes her own fire cider with apple cider vinegar, ginger, horseradish, and hot pepper. She is the sole proprietor of Farmacy Herbs in Providence, Rhode Island, which she opened in August 2008. Farmacy Herbs sells fire cider-which is labeled as “fire cider”-in its storefront and at a farmers’ market in Providence. Defendant Blue Hastings once posted fire cider for sale on Etsy, but she never sold any through that platform. She recommends fire cider to aid in digestion and soothe upper respiratory issues. Farmacy Herbs’ fire cider consumers are people who use natural remedies, herbalists, local farmers, people who support women-owned businesses, and her friends. Farmacy Herbs does not have FDA approval, a Rhode Island food license or other Rhode Island approval, or lab testing for its fire cider. Defendant Blue Hastings contends she began selling fire cider in 2006, but she does not have sales records for the period from 2006 to sometime in 2008. In addition, after the case began, she threw away some sales records from 2008 to 2012. She does have other records from that period, which show some fire cider sales. (See D. Ex. 190 at DEF001535; D. Ex. 192; D. Ex. 193.)[7]

         Farmacy Herbs makes other herbal products, including one called peppermint lip balm. (P. Ex. 111 at BLUE000004.) Defendant Blue Hastings chose that name because it describes what the product is. Fire cider is included in Farmacy Herbs’ list of tinctures. (Id. at BLUE00005.) Defendant Blue Hastings testified she does not use that term to refer to a brand; rather, “fire cider” refers to a specific set of ingredients and to what the product is-like peppermint lip balm does. The name fire cider communicates that the product is a traditional herbal blend. In contrast to fire cider and peppermint lip balm, Defendant Blue Hastings has created names for other products, which do not describe what those products are (e.g., teas called Digest the Best, Dream Blend, and Unwind Your Mind; a salve called Belly Bump; and tinctures called Cranium Comfort and Less Stress). (Id. at BLUE000001-5.)

         Defendant Blue Hastings does not want her fire cider to be associated with Plaintiff’s Fire Cider. She does not know of any consumer who has ...


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