Owning an incontestable trademark registration can provide a defense to infringing the trademark of another. “The ‘defensive' aspect of incontestability is reflected in the language of both § 15 and § 33(b) [of the Lanham Act].” 6 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 32:141.

Under Section 15, a registrant acquires an incontestable right to use its registered trademark in connection with the goods or services provided in the registration, if the registrant files a timely affidavit with the USPTO that alleges five consecutive years of continuous use since the date of registration. 15 U.S.C. § 1065.

Section 33(b) provides that an incontestable registration ensures a safe harbor for the mark when it is used on those goods or services listed in the registration unless a statutory defense to incontestability applies. 15 U.S.C. § 1115 (listing statutory defenses, such as the registration was obtained by fraud, the mark has become generic, or the mark has been abandoned).

Absent a statutory exception, a defendant cannot be held liable for trademark infringement for using its registered mark in a manner consistent with its registration if it has a valid incontestable right to do so. See McCarthy on Trademarks and Unfair Competition § 32:141.

Incontestable GREEN GOO

Garcoa, Inc. sued Sierra Sage Herbs LLC, alleging that Garcoa's BLUE GOO trademark for pain relief products was being infringed by Sierra Sage's GREEN GOO pain relief salve.

The U.S. District Court for the Central District of California, however, granted summary judgment of no infringement because Sierra Sage owned an incontestable trademark registration to use its GREEN GOO mark for its pain relief salve. Garcoa, Inc. v. Sierra Sage Herbs LLC, 21-cv-4672 PSG (SPx) (C.D. Cal. Oct. 4, 2022).

There was no dispute that Sierra Sage owned an “incontestable registration” for its mark GREEN GOO for “non-medicated herbal body care products, namely salves.” A timely Section 15 declaration has been filed in connection with Sierra Sage's GREEN GOO registration, which made its right to use the mark “incontestable.”

Pain Relief Salve, Non-medicated and Herbal

Garcoa argued that Sierra Sage's incontestable registration is for Class 3 goods, but Sierra Sage's pain relief salve was outside the scope of its registration because pain relief products are in Class 5. Garcoa also argued that a pain relief salve is not a non-medicated herbal salve.

The trademark classification system, however, is merely for administrative purposes with no legal effect on the “descriptive properties” of a trademark registration. “The Court considers only what goods and services are defined in the registration—regardless of the assigned classification category.”

In addition, Sierra Sage also submitted examples of other trademark registrations in Class 3 for non-medicated herbal body care products for pain relief.

The Court noted that “incontestability hinges on whether [Sierra Sage's] Pain Relief Salve is a nonmedicated herbal salve.” There was no showing, however, that Sierra Sage's product contained ingredients that are medicated or non-herbal. Indeed, although Garcoa cited Sierra Sage's product label and ingredient list, Garcoa did not identify any particular ingredient of Sierra Sage's pain relief salve that was medicated or non-herbal.

Furthermore, with respect to whether a salve can provide pain relief, the Court, relying on definitions of “salve” that include the word “soothe,” noted that “a salve can provide, among other benefits, pain relief.” The Court found that a “registration in salves does not inherently preclude the possibility of a pain relief salve.”

The Court concluded that Sierra Sage has an incontestable right to use its registered GREEN GOO trademark on its non-medicated herbal body care products, namely salves, including the accused pain relief salve. Thus, because the “exclusive right” to use the GREEN GOO mark on pain relief salves cannot be disturbed, the Court granted judgment as a matter of law of no infringement.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.