IP Law Daily ‘Meth Lab Cleanup’ registered marks declared generic
Thursday, September 1, 2016

‘Meth Lab Cleanup’ registered marks declared generic

By Cheryl Beise, J.D.

The federal district court in Seattle has determined that federal registrations for trademarks containing the phrase METH LAB CLEANUP, held by a company of the same name, must be cancelled because "no reasonable jury could conclude that the phrase ‘meth lab cleanup’ is not generic" for drug lab decontamination services. In light of the "substantial and compelling evidence" of generic use of "meth lab cleanup" presented by competing lab remediation business Bio Clean, the court rescinded a prior interlocutory order granting partial summary judgment to Meth Lab Cleanup and instead, entered summary judgment in favor of Bio Clean (Meth Lab Cleanup, LLC v. Bio Clean, Inc., August 31, 2016, Jones, R.).

Idaho-based Meth Lab Cleanup LLC ("MLC") and Washington-based Bio Clean, Inc., compete in the business of decontaminating properties and are among eight companies certified by the state of Washington to perform drug lab decontamination. MLC obtained six federal trademark registrations containing the phrase METH CLAB CLEANUP (three in 2009 and three in 2012). The USPTO initially refused MLC’s applications on the ground of mere descriptiveness, but reversed course after MLC filed declarations claiming substantial exclusive use for five years.

In 2014, MLC sued Bio Clean for trademark infringement and unfair competition under the Lanham Act and Washington law. Bio Clean asserted defenses, including fair use, and counterclaimed for false advertising and cancellation of all six of MLC’s trademark registrations based on genericness and fraudulent procurement. The court initially granted summary judgment to MLC, finding that Bio Clean failed to offer evidence of fraud or genericness.

Reconsideration warranted. However, after Bio Clean obtained new counsel, the court allowed it to file a motion for summary judgment addressing senior use, fair use, genericness, and secondary meaning. MLC objected to Bio Clean’s new evidence as untimely and argued that trademark validity and Bio Clean’s infringement already had been decided.

Because the court’s prior order was an interlocutory order that addressed only liability and not damages, the court explained that it retained the discretionary authority to reconsider or rescind the order. The court concluded that justice required it to reconsider its original order. The original grant of summary judgment was based largely on the lack of evidence submitted by Bio Clean’s prior counsel, whereas Bio Clean’s new counsel produced substantial and compelling evidence to support Bio Clean’s arguments, the court said. The court also found that MLC was not prejudiced by Bio Clean’s untimely disclosure of evidence because MLC was given two months to respond to the new evidence.

Genericness. In order to overcome the presumption of validity of MLC’s marks, Bio Clean had to offer actual evidence that the term "meth lab cleanup" was used or understood by consumers as a generic term rather than a brand name. Proof of genericness may include: (1) generic use by competitors of the mark that has not been contested by the owner of the mark; (2) generic use of the trademark by the proponent of the trademark; (3) dictionary definitions to determine public usage; (4) generic usage in the media of the trademark, such as in trade journals and newspapers; (5) testimony of persons in the trade; and (6) consumer surveys.

Bio Clean offered evidence in all categories but the last one, the court noted. Bio Clean offered 39 declarations from employees, former employees, and others in the industry, attesting that the term "meth lab cleanup" is used by everyone in the industry generically to name the services they offer. Bio Clean offered documents showing use of the phrase, and similar phrases, on competitors’ websites and numerous examples of the term "meth lab cleanup," or similar terms, used in newspaper articles, in the names of legislation, on governmental agencies’ websites, and in online Yellow Pages. Bio Clean submitted dictionary definitions for "meth," "methamphetamine," "lab," "laboratory," and "cleanup," showing that the services performed matched the dictionary definitions and thus, presumably, consumer expectations. Bio Clean even gave four examples of MLC’s own use of the phrase in a generic manner. The court found Bio Clean’s evidence to be "quite persuasive in showing that the term ‘meth lab cleanup’ is generic."

MLC failed to address genericness specifically. Instead, it offered evidence of secondary meaning. MLC submitted 11 declarations from people in the industry. Four declarations were from two of MLC’s principals stating the term "meth lab cleanup" was not in common use and that the commonly used phrase was "clandestine drug lab assessment and decontamination." The remaining nine declarations were from MLC’s sub-contractors, who testified that they were not aware of anyone in the industry using the term "meth lab cleanup" to describe their services. Not only were these declarations tainted by bias, but over half of the declarants themselves had used the term "meth lab cleanup" in a generic manner, the court observed.

Despite the lack of actual consumer evidence, MLC’s other evidence was sufficient to find that no reasonable jury could conclude that the phrase "meth lab cleanup" was not generic.

Mere descriptiveness. In the alternative, the court held that, even if "meth lab cleanup" was not a generic mark, it would still be a descriptive mark without secondary meaning, and therefore invalid. MLC did not contest the descriptiveness of the phrase "meth lab cleanup," but argued that it had acquired secondary meaning.

The USPTO originally found that the phrase "meth lab cleanup" was descriptive without secondary meaning. Based on MLC’s declaration of substantially exclusive use for at least five years, the PTO registered the marks. However, Bio Clean’s evidence clearly showed that MLC was not the substantially exclusive user of the phrase "meth lab cleanup."

Because Bio Clean rebutted the presumption of validity attached to MLC’s marks, the burden shifted to MLC to prove that consumers associate the phrase "meth lab cleanup" with MLC. MLC failed to do so. MLC offered no evidence from actual consumers. MLC claimed to have spent $92,521 in advertising over the last five years, but did not provide information regarding market context or the degree of consumer exposure to the advertising. In addition, the testimony by MLC’s principals and subcontractors was entitled to little weight. Given the lack of exclusivity, and the lack of evidence from actual consumers, the court found that no reasonable jury could conclude that the phrase "meth lab cleanup" had acquired secondary meaning.

Fair use defense. Although Bio Clean’s fair use defense was moot, the court agreed that Bio Clean had only ever used the phrase "meth lab cleanup" in a descriptive manner, not as a trademark, and that its use has been fair and in good faith. MLC argued that Bio Clean’s use of the phrase "meth lab cleanup" in website metatags and as a label for a tab for services on its website was in bad faith. The court disagreed. Bio Clean’s website made it clear that Bio Clean, Inc. was the source of the services offered, and that "Meth Lab Cleanup" was simply one of those services. The court also found that use of the phrase in metatags was a non-trademark, descriptive use.

Conclusion. The court denied MLC’s motion for summary judgment and granted Bio Clean’s motion for noninfringement and invalidity and cancellation of all six of MLC’s marks. Because the parties did not address Bio Clean’s counterclaim for false advertising under the Lanham Act, that claim remained pending.

The case is No. 2:14-cv-01259-RAJ.

Attorneys: Mark F. Warzecha (Widerman Malek, PL) and Gary Kaitz Marshall (Law Offices of Gary K. Marshall) for Meth Lab Cleanup LLC. David Allen Lowe (Lowe Graham Jones) for Bio Clean, Inc.

Companies: Bio Clean, Inc.; Meth Lab Cleanup LLC

MainStory: TopStory Trademark WashingtonNews

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