Wednesday, September 08, 2021

organic protein is generic, but trade dress comes to the rescue

Orgain, Inc. v. Northern Innovations Holding Corp., 2021 WL 1321653, No. 8:18-cv-01253-JLS-ADS (C.D. Cal. Mar. 22, 2021)

The parties compete in the market for nutritional supplements. Orgain alleged that defendants infringed its trade dress in selling a competing plant-based nutritional supplement adorned with the “organic protein” phrase in black font against a white background, framed by green bands that circumscribe the top and bottom of the packaging, as well as a green leaf motif and colored boxes highlighting the dietary profile of the product. Defendants allegedly altered the packaging of their nutritional supplement on multiple occasions to more closely resemble Orgain’s packaging.

Orgain's claimed trade dress

accused product
First, defendants showed that “organic protein” is generic. Under the Ninth Circuit “who-are-you/what-are-you” test, “organic protein” is a what.  Each word was generic, and the combination didn’t add meaning (citing  And Orgain itself used the phrase generically, e.g., “organic protein is the engine of all Orgain products.” Orgain’s owner stated that “[he] made it [his] mission to formulate a drink that would actually make a difference in [his] health. It had to be ... high in organic protein ....” Orgain’s website says: “Orgain™ provides 255 nutrient-dense calories with a perfect 2:1 ratio of organic carbohydrates to organic protein,” and the FAQ answer to “what’s in Orgain?” is “16 grams of the highest quality Organic Protein to help build lean muscle.”  Orgain argued that these were merely descriptive uses, but didn’t explain why, and Orgain had the burden of proof to show protectability.

Likewise, there was evidence that other companies in the nutritional supplement market use “organic protein” generically in connection with their products. Again, Orgain couldn’t win by arguing that those uses were also descriptive. Indeed, in many of the documented uses, “organic protein” was used as the title of the product, just as Orgain used it; Orgain failed to explain why those uses were descriptive and defendants’ use was allegedly infringing.  

Survey evidence is the “ultimate test” for genericness, (ugh), so Orgain offered a “modified Teflon survey” from Hal Poret that concluded that 74% of respondents believed the term “organic protein” was descriptive. Defendants’ Teflon survey found that 88% of consumers understand “organic protein” to be a category of products rather than a brand name. You will not be surprised to hear that the dueling surveys did not manage to create a genuine issue of material fact.

Poret reasoned that the Teflon format, dealing with a term that started life fanciful, had to be modified when the plaintiff was claiming rights in a descriptive term. Thus, respondents were instructed that “[g]eneric terms identify a type or category of product,” while “[d]escriptive terms describe an ingredient, characteristic, quality, feature, or function of a product.”

The survey listed “automobile,” “ice cream” and “allergy medicine” as examples of generic terms and “hatchback,” “Rocky Road,” and “non-drowsy” as examples of descriptive terms. To advance to the main questionnaire, respondents had to identify “yogurt” and “bottled water” as generic and “lemon lime” and “natural” as descriptive. Respondents who made it through were presented with a list of words or terms to identify as “generic” or “descriptive”: organic protein, creamy chocolate, lactose free, protein drink, and nutritional supplement.

But the survey “side-stepped the key inquiry—namely, whether respondents understood ‘organic protein’ to refer to Orgain’s goods or whether they understood the term to refer to a category of products.”

True, “generic” and “descriptive” are separate legal definitions along the distinctiveness spectrum. But the genericness inquiry is not about where consumers categorize the mark along the distinctiveness spectrum. Rather, the genericness inquiry asks whether consumers perceive the term as identifying a common name for a certain type or class of products.

[I think what this gets at is that surveys can detect secondary meaning, but they’re not going to be great at distinguishing among conceptual categories, and why would they be? But this means that punts to surveys in order to eliminate genericness whenever there is enough secondary meaning. Some people like that result; I do not.] The Poret survey didn’t ask consumers “is this a name of a type of product or is this a source-identifier?” It could have done so. But instead, it provided “no evidence” of whether the consuming public viewed “organic protein” as a mark that identifies Orgain’s products.

Even if this evidence were relevant, the definitions of “generic” and “descriptive” were overlapping and confusing. The supposedly descriptive examples “Hatchback” for vehicle, “Rocky Road” for frozen dessert, and “Non Drowsy” for allergy medication were

likely to confuse survey participants when viewed in light of the definitions provided. For example, “non-drowsy” is a type or category of cold medicine, and “Hatchback” is a type or category of car. By the Poret Survey’s own definition, those terms are therefore generic.

The questions compounded the problem by asking respondents to categorize five terms as descriptive or generic, but didn’t bother to tell them for what.

Defendants’ survey, on the other hand, was perfectly persuasive.

Even if the evidence had created a fact issue on descriptiveness, Orgain failed to show secondary meaning. Orgain had a survey that arguably showed secondary meaning of its trade dress (though 36% net recognition is in *gulp* territory, I would think), but it didn’t test “organic protein” separately.

Nonetheless, there were triable issues of material fact on the overall trade dress claim.

Nonfunctionality: Though individual elements like having a term in black font against a white background might be functional, and green and a green leaf might commonly be used to identify “organic” or healthy products, “[the] focus [is] not on the individual elements [of the trade dress], but rather on the overall visual impression that the combination and arrangement of those elements create.” And since Orgain only claimed exclusive rights in the specific combination of elements it listed, it could show nonfunctionality.

The court found that Orgain didn’t show that its trade dress was inherently distinctive; it was not enough to contend that “the specific combination of elements in the [claimed trade dress] has not been adopted by anyone other than [Defendants].” Defendants proffered evidence that Orgain’s competitors use packaging with similar aesthetic elements, including jar-shaped containers; labels using color block; the term “organic protein” on the label; a green leaf to denote “organic” food; and color bands. This showed that the claimed trade dress was “a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods” and not “unique or unusual in [this] particular field.” Even without that, the claimed trade dress featured a “common, basic” package shape and label design.

However, Orgain created a fact issue on secondary meaning. “While some courts have, indeed, found a 36% showing did not raise a factual issue precluding summary judgment and instead weighed against a finding of secondary meaning, other courts have found a 35% showing to be persuasive evidence of secondary meaning.” There was also circumstantial evidence of secondary meaning, including evidence of actual confusion. The evidence: 16 Amazon reviews, 23 social media posts, and 13 direct communications from consumers, some of which tended to show actual confusion, e.g., an Amazon review stating, “DON’T BUY!!! Bought this thinking it was Orgain on accident (which I use daily and absolutely love)”  and others that involved communications with Orgain itself: “Any chance you can look into the similarities of ‘Purely Inspired’ packaging? I bought it on Amazon thinking it was your company’s product and upon getting it realized it wasn’t Orgain!” Also, marketing representatives mistakenly placed Orgain’s shelf talkers—the advertisements that stick out from shelves in stores—on defendants’ products in Walmart stores, or vice versa. This evidence was “substantial, but not overwhelming given the size of the relevant market and the fact that the parties’ products have co-existed on the market since 2015.”

There was also a genuine dispute about copying. Orgain argued that “because Orgain’s name came up in surveys that Defendants conducted in support of rebranding their label, and because the rebranded labels look more like Orgain’s than Defendants’ previous label, it must be inferred that Defendants copied Orgain’s label to trade on its success.” Defendants’ survey indicated that 77% of those surveyed preferred (what became) their new label, and that the new green theme and the colorful display of nutrition facts, which are parts of Orgain’s claimed trade dress, contributed to the new label’s popularity. In another of defendants’ surveys, consumers were asked to write the names of all the plant-based protein brands they knew of, and Orgain was a frequent response. And a revised label used a more prominent “organic protein” mark on this the new label, which Orgain pointed to as proof of intent to copy. Defendants pointed to other evidence that tended to disprove copying and treat Orgain as one of many competitors, including studies that didn’t even include Orgain in their comparisons.

Even without other circumstantial evidence, there was some direct and circumstantial evidence meriting trial.

So too with likely confusion; you can tell how the various factors went. On actual confusion, there were dueling surveys: Defendants’ Eveready survey found 4% net confusion, while Orgain’s Squirt survey found 17% net confusion. A trial should determine which survey was better, the “more suggestive” Squirt survey or the Eveready survey, which arguably didn’t do as much to measure what would happen if the products were encountered together in the marketplace. Query: what happens if the jury concludes that the confusion stemmed primarily or entirely from generic use of “organic protein”?

one entrant in P's Squirt lineup

Another in the Squirt lineup

test image for Squirt lineup

Control image for Squirt lineup

Query: is this a good control image if "organic protein" is generic? Isn't it testing in part for the effect of "organic protein" in the big font at the center?

State law claims: Aside from arguments above, Orgain argued that, “trademark and trade dress rights notwithstanding, Defendants engaged in unfair competition because they copied Orgain’s design.” The court found that “triable issues of fact preclude summary judgment on the issue of actual copying.” [Disturbing insofar as it doesn’t address the core problem with the claim, if not coextensive with the trade dress claim: strong federal policies preclude state laws that purport to bar copying itself, as Sears/Compco/Bonito Boats all teach.]

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