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 Booking.com).  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, Booking.com (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 Booking.com 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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