C.D. Cal. Dismisses "GREEN GOO" Infringement Action Due to Incontestability of Defendant's Right to Use the Mark.

The U.S. District Court for the Central District of California granted Defendant Sierra Sage's motion for summary judgment in this civil action for alleged infringement of Plaintiff Garcoa's trademark BLUE GOO for pain relief products. The court found that because Sierra Sage held the "exclusive right" to use its registered mark GREEN GOO for its pain relief salve by reason of the incontestability provision of Section 15 of the Lanham Act, there could be no infringement. Garcoa, Ic. v. Sierra Sage Herbs LLC CV-21-4672 (PSG)(SPx) (C.D. Cal. October 4, 2022).

It was uncontested that Sierra Sage owns an "incontestable registration" for its mark GREEN GOO for "non-medicated herbal body care products, namely salves." [The term "incontestable registration" used by the court appears nowhere in the Lanham Act. What Sierra Sage owns is a registration for which a Section 15 declaration has been filed, making its right to use the mark "incontestable." The registration is, of course, contestable on various grounds, including abandonment, genericness, and fraud. - ed.].

The Board noted that the "defensive" aspect of incontestability is reflected in Sections 15 and 33(b) of the Lanham Act." Section 33(b) provides a safe harbor for the registrant when its mark is used on the goods and services identified in the registration, unless one of the statutory defenses listed in Section 15 is applicable. "In other words, absent some statutory exception, a defendant cannot be held liable in a trademark infringement action for use of its mark in a manner consistent with its registration if it has an incontestable right to do so." See McCarthy on Trademarks and Unfair Competition, Section 32.141.

Plaintiff Garcoa argued that Sierra Sage was using the incontestable mark on goods - i.e., a pain relief product - outside the scope of of its registration. First, Garcoa pointed out that pain relief products fall in International Class 5, whereas Sierra Sage's registration is for Class 3 goods. Second, it claimed that  pain relief salve is not a non-medicated herbal salve.

The court found Garcoa's first argument to be unsupported by law or facts. The law is clear that classification is merely for administrative purposes and has no legal effect on the "descriptive properties" of a trademark registration. Moreover, Sierra Sage provided examples of Class 3 registrations covering non-medicated herbal care products for pain relief.

As to the second question - whether salves can encompass pain relief - the court looked to definitions of "salve" provided by the parties and found that they all contain the word "soothe." The definitions of "soothe" proffered by Sierra Sage all refer to the relief or ease of pain. "It logically follows then that a salve can provide, among other benefits, pain relief." And it noted that USPTO guidelines allow for the broad identification of goods. Thus, Sierra Sage's registration for "salves" does not inherently preclude pain relief salves.

Finally, Garcoa provided no evidence that any of the ingredients in the GREEN GOO product were non-herbal or medicated. Moreover, the packaging for GREEN GOO clearly describes the product as homeopathic and not FDA-approved - approval being required for a medicated product.

Thus, the Court finds that Defendant has an incontestable right to use its GREEN GOO trademark on its non-medicated herbal body care products, namely salves, including its Pain Relief Salve. As such, because Defendant’s “exclusive right” to use the GREEN GOO mark on its Pain Relief Salve cannot be disturbed, Plaintiff’s action is barred, and Defendant is entitled to judgment as a matter of law. See 15 U.S.C. § 1115.

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TTABlogger comment: The two products have been sold simultaneously nationwide for more than 14 years, through the same vendors. Perhaps Sierra Sage had a few more defenses up its sleeve?

Text Copyright John L. Welch 2022.