Multiple juice companies have received cease and desist letters for using the term “Wellness Shot” in their marketing and packaging. The letter demands that the companies immediately cease using the term, enter into a written agreement, and pay the “costs for resolution, which generally, if the matter is resolved in a straightforward manner and without lengthy discussions, are less than $5,000.”
The letter comes from Threshold Enterprises Ltd., “a wholesale distributor of dietary supplements and health care products to the natural foods industry and health care professionals.” Their brand Source Naturals offers a Wellness Shot as a 2.5oz dietary supplement.
I searched the USPTO database and confirmed that Threshold does, indeed, own registered trademarks for “Wellness Shot” and “Wellness Shots” word marks in International Class 005 for dietary supplements.
I’m not a lawyer, but I do have some experience in dealing with trademark issues through my marketing work. In my (non-lawyer) opinion, Threshold’s demand has a few issues:
- There are many different trademark classes, and Threshold’s trademark is in class 5 which includes pharmaceuticals and dietary supplements, but not juice or beverages. Juice shots would be considered part of class 32, “light beverages.” Therefore, the mark is not automatically protected in juice and other beverage markets. Threshold could probably make a case that there is still “likelihood of confusion” by the consumer since their shots are a similar product to juice shots, but this is not as easy to defend as just owning a mark in the relevant class.
- The mark itself, “Wellness Shot” is descriptive. Descriptive marks cannot be trademarked under the law. Here is language directly from the USPTO: “The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” Since “Wellness Shot” falls into this descriptive category, it may be possible to challenge the mark and have it cancelled.
- The term “Wellness Shot” has arguably become the generic term for a small serving of cold-pressed juice. This is important because if valid trademarks later becomes generic terms they can be challenged and cancelled. Examples of well-known trademarks that have been “genericized” include Aspirin, Thermos, Flip phone, and many more. I imagine the bar for considering something a generic term is pretty high, so this issue may not be as relevant as #2.
For the reasons above, I do not think that Threshold has a strong case here, and they are exposing themselves to the risk of having the trademark invalidated completely if juice companies fight back.
So what should you do if you’re currently using “Wellness Shot” on your juice label?
You have options (Disclaimer: I’m not a lawyer, please do not take my advice. Consult an IP attorney):
- Stop using the term until this issue gets resolved. I do think this will get resolved in the juice industry’s favor, but it might take a while.
- Continue using the term, but plan on complying with their demands if you get a letter. If you’re a small, local juice bar the chances of getting a letter are probably not great. However, one of the companies that confirmed receiving a letter is indeed a local juice bar and not a national brand, so you are definitely at risk no matter how small of a business.
- Continue using the term, and plan on fighting back with an “affirmative defense.” From USPTO: “If you are already a defendant in an infringement lawsuit, you may assert an “affirmative defense” and/or a counterclaim against the plaintiff challenging the validity of the plaintiff’s trademark.” I’m not sure what costs are associated with this, but you will definitely need a qualified IP attorney to help, so plan on spending thousands of dollars, maybe tens of thousands.
- I guess there’s a fourth option of simply ignoring the letter if you get one, but this seems like a bad choice.
Option three is probably best for the juice industry as a whole, however you should do what’s best for you and your situation.
What do you think about all of this? Comment below!
Agreed with Charles 100%. It happened to our company many years ago when I tried to use the name Brain Booster. The name was so generic that we contested... and we won.
Great info thank you!
The company that sent out the C&D, Threshold, has already dropped its claim against another company. No details are available, but I am sure they challenged the validity of their claim. We are doing the same now. It is possible that Threshold knew they did not have a valid infringement claim. If that is true, they have opened themselves open to tort causes of action. Specifically, Abuse of Power, Malicious Prosecution and Extortion.
I've done hundreds of trademarks and, just with your very first finding, the class difference, you nailed it. If I'd receive a letter from this Pharma mafia member I'd reverse sue them for extortion, and win. Obviously, Treshold Enterprise LTD is seeking advantage through the ignorance of others.