IP Law Daily, TRADEMARK—C.D. Cal.: Owner of incontestable GREEN GOO mark for skin salve defeats infringement claim by maker of BLUE GOO topical analgesic, (Oct 7, 2022)

By Patricia K. Ruiz, J.D.

The court held that international trademark classifications are not controlling or determinative of the descriptive properties of a given trademark’s registration.

The U.S. District Court for the Central District of California granted summary judgment to Sierra Sage Herbs LLC, holding the company has an incontestable right to use its trademark, GREEN GOO, in connection with non-medicated herbal body care products, namely salves. The court found that Garcoa, Inc., which alleged trademark infringement under the Lanham Act, failed to allege any genuine issue of material fact and only made conclusory statements to support its argument (Garcoa, Inc. v. Sierra Sage Herbs LLC, October 4, 2022, Gutierrez, P.).

Local rules on required filings. Local rules require a party moving for summary judgment to submit a Statement of Undisputed Fact, while the party opposing the motion must file a Statement of Genuine Issue of Material Fact setting forth all the material facts the opposing party contends are in genuine dispute. Failure to file the Statement of Genuine Issue of Material Fact allows the court to find that the material facts as claimed and adequately supported by the moving party are admitted to exist without controversy. In the instant suit, Garcoa, opposing summary judgment, filed a statement of uncontroverted fact, much of which covered the same facts stated in Sierra Sage’s statement of uncontroverted fact. Because of the failure to file the statement of genuine issue of material fact, the court deemed all of the defendant’s undisputed facts supported by admissible evidence as uncontroverted.

Uncontroverted facts. The court found the following material facts to be sufficiently supported by admissible evidence and uncontroverted. Since 2002, Garcoa has been in the business of marketing and selling topical analgesic pain relief products under the trademark BLUE GOO in connection with topical analgesics. Garcoa’s registration for BLUE GOO was issued on March 16, 2010, in International Class 5, canceled in 2016, and registered again in 2018.

In 2008, Sierra Sage began using the trademark GREEN GOO in connection with the manufacturing, advertising, and sales of its all-natural, plant-based salves for relief of pain and other symptoms. Sierra Sage registered the mark for use on “non-medicated herbal body care products, namely salves,” in International Class 3. Sierra Sage filed the necessary affidavit of incontestability in 2018 and acquired an incontestable registration in its GREEN GOO mark.

Both parites’ products have been sold simultaneously nationwide at various commercial retailers and online vendors for about 14 years, and Sierra Sage’s Pain Relief Salve, which is all-natural and contains arnica montana, a paint-relieving ingredient in the homeopathic field, competes with Garcoa’s topical analgesic pain relief products, which contains the animal byproduct of emu oil.

Incontestability. Garcoa filed suit against Sierra Sage in June 2021 alleging: (1) trademark infringement under Section 32 of the Lanham Act and (2) unfair competition under 27 U.S.C. §1338(a) and false designation of origin under Section 43(a) of the Lanham Act. Sierra Sage countersued, seeking declaratory judgment of non-infringement.

It was undisputed that Sierra Sage acquired an incontestable registration in its GREEN GOO mark when used on non-medicated herbal body care products, namely salves. Sierra Save also provided evidence that the mark has been used on pain relief products since its adoption. Thus, Sierra sage argued Garcoa’s action was barred. Under Section 15 of the Lanham Act, a registrant acquires an incontestable right to use its registered trademark in connection with the goods or services provided in the registration after five consecutive years of continuous use and the filing of a timely affidavit with the USPTO. Under Section 33(b), an incontestable registration ensures safe harbor for the mark when it is used on the goods and services listed in the registration unless a statutory defense to incontestability applies.

Defense to incontestability. Garcoa asserted only one defense to incontestability, asserting that the use of GREEN GOO to identify a pain relief product exceeded the scope of the registration and was thus contestable. Garcoa based the defense on two premises: (1) a pain relief product is per se a good designated for International Class 5 and is outside the scope of an International Class 3 registration; and (2) Sierra Sage’s Pain Relief Salve did not constitute a non-medicated herbal salve.

However, the court found Garcoa relied primarily on conclusory arguments to raise a triable issue of fact, which alone was not enough to survive summary judgment. The court determined that the first premise lacked any legal or evidentiary support showing the international classifications are controlling or determinative of the descriptive properties of a given trademark’s registration.

The court similarly found that Garcoa failed to raise a genuine issue of material fact that the ingredients contained in the Pain Relief Salve exceed the scope of registration in non-medicated herbal salves, having only submitting the salve’s product label and ingredient list and failing to provide evidentiary support or even identify a particular ingredient as being medicated or non-herbal. The court further found that the packaging clearly described the product as homeopathic and non-FDA approved, which Garcoa frequently cited as requirements for medicated pain-relieving products.

Thus, the court found Sierra Sage had an incontestable right to use the GREEN GOO trademark on its non-medicated herbal body care products, namely salves, including its Pain Relief Salve, and granted judgment as a matter of law to Sierra Sage.

The Case is No. CV 21-4672 PSG (SPx).

Attorneys: Michael Allen Painter (Isaacman, Kaufman, Painter, Lowy & Zucker, P.C.) for Garcoa, Inc. Amie L. T Jacoby (Alderman & Hilgers, LLP) for Sierra Sage Herbs LLC.

Companies: Garcoa, Inc.; Sierra Sage Herbs LLC

Cases: Trademark CaliforniaNews