Ninth Circuit Finds “The Herbal Chef” Is Generic and Denies Trademark Protection

Ninth Circuit Finds “The Herbal Chef” Is Generic and Denies Trademark Protection

On Tuesday, the Ninth Circle Court of Appeals settled an appeal from The Herbal Chef, LLC (“THC”), ruling that the words “The Herbal Chef” did not qualify for trademark protection. The brief memorandum upheld the summary judgment of the Central District Court Judge Andre Birotte Jr. in favor of the defendant AFG Distribution, Inc. (“AFG”) in March 2020.

Some background information: THC is a Californian company that has been providing private dining and catering services using cannabis and other herbs since 2014. THC also raises awareness of cannabis education in the food and beverage industry. AFG is a North Carolina company that sells cooking products, some under the Herbal Chef brand. It goes without saying that THC and AFG are two very different types of companies.

Interestingly, AFG was recognized by the USPTO in September 2016 as the “Herbal Chef” brand for certain product classes such as baking molds, pot holders, coasters (class 21) and electric kitchen machines (class 7). A year later, THC filed its own trademark application for the “THE HERBAL CHEF” brand for the preparation of meals, catering services and private meals (Class 43), as the company had started to use THE HERBAL CHEF brand in August 2015 Trade to use. The USPTO denied the plaintiff’s motion. In its rejection, the USPTO wrote: “Registration is refused because the trademark applied for merely describes a feature, characteristic, function, quality, component, purpose or use of the applicant’s services.”

THC filed a lawsuit against AFG alleging that its Herbal Chef line of products violated the Herbal Chef brand. The AGF filed a motion for a summary of the verdict fairly quickly, asking Judge Birotte to dismiss the THC case. She argued that THE HERBAL CHEF brand was “generic” and therefore not eligible for trademark protection. THC filed an objection and argued that the brand was “convincing / suggestive” and therefore automatically entitled to brand protection. Since THC does not have a registered trademark, the burden of proof is higher.

Here’s the overview: Brands are divided into one of five categories of increasing “distinctiveness”: (1) general, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) imaginative. For the purposes of this case, the first three categories are broken down as follows:

  • “Generic” brands are of no particular quality and therefore have no claim to trademark protection.
  • “Descriptive” marks describing the properties or characteristics of a product may “only be registered if the owner of the mark proves that the mark has acquired distinctive character through secondary meaning”. An example of a “secondary meaning” is Apple – people obviously realize that this refers to something other than an apple and that it is specific to a computer brand.
  • “Suggestive” trademarks identify the source of a product and are entitled to automatic protection.

Judge Birotte noted that THC did not show that THE HERBAL CHEF brand was non-descriptive and that no secondary meaning was identified (or at least proven). He also referred to the results of the USPTO when it refused trademark application for THC:

“As permitted by the Ninth Electric Circuit and in the absence of evidence to the contrary from the plaintiff, this court finds the USPTO’s classification decision convincing and also comes to the conclusion that the brand THE HERBAL CHEF ‘only describes a feature, a property, a function, a quality or an ingredient , Purpose or use of the applicant’s services. “The brand THE HERBAL CHEF means that the plaintiff primarily provides its customers with a cook“ who specializes in cooking with infused marijuana ”.

The Ninth Circle agreed, adding that the alleged brand of THC does not become suggestive just because it offers goods and services in addition to cooking with cannabis. At the end of the day, the appellate judges found the dictionary definitions of “herb” (including a slang term for marijuana) and “cook” directly describing the services of THC (cooking with marijuana).

The lesson for our readers is this: Use these decisions to educate your business and marketing strategies, especially about the scope of goods or services that can be protected under a trademark. Here’s a great post on it, which also has relevant links to other posts and cases we’ve covered in the past.