Metropolitan News-Enterprise


Thursday, March 18, 2021


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Ninth Circuit:

‘The Herbal Chef’ Is Not Protectible Mark for Caterer

Panel Rejects Argument That the Words Are ‘Suggestive,’ Not Descriptive, Because Company Does Not Only Cook With Cannabis, but Also Provides Event Planning Services and Lectures


By a MetNews Staff Writer


The Ninth U.S. Circuit Court of Appeals has held that the words “The Herbal Chef” are “descriptive,” unworthy, without more, of protection, spurning the argument by a catering company that it does not merely cook with “herbs”—marijuana being the particular ingredient with which it is identified—but also provides event planning and lectures.

A memorandum opinion, issued Tuesday, affirms a summary judgment in an infringement action granted by District Court Judge Andre Birotte Jr. of the Central District of California in favor of defendant AFG Distribution, Inc., a maker of cookware, using the name, “Herbal Chef.” The defendant has a registered federal trademark, while the plaintiff doesn’t, which, Birotte noted, is not determinative, but merely boosts the plaintiff’s burden.

Birotte found that “The Herbal Chef”—an outfit founded by chef Chris Sayegh—failed to show that the words in question are other than a descriptive and that no secondary meaning has been established (such as “Kentucky Fried Chicken” being associated by the public with a particular seller of fried chicken) as to afford protection.

The Ninth Circuit agreed in an opinion signed by its Judges Susan Graber and Eric David Miller, along with Fifth Circuit Judge Stephen A. Higginson, sitting by designation.




Circuit Judges Agree

The opinion says that “THE HERBAL CHEF is at most descriptive,” rather being merely generic (common terms describing goods or services), and does not reach the level of “suggestive,” in describing the plaintiff’s “catering, educational, and advocacy services involving cooking with infused cannabis.” (Terms are “suggestive” which require use of thought or imagination to determine the nature of the goods or services.)

Tuesday’s opinion recites that the parties do not dispute “that the dictionary definitions of ‘herbal’—which include a slang term for marijuana—and ‘chef,’ when combined, directly describe the Herbal Chef’s services, which include cooking with marijuana.”

Contention Rejected

It explains that the plaintiff maintains that the mark is “suggestive” because it provides goods and services other than cooking with marijuana. The “argument fails,” the opinion declares, because a mark can still be merely descriptive though it does not define all functions of the user of the mark.

It notes that the plaintiff in the infringement action, unlike the defendant, did not sell cookware.

The opinion goes on to say:

“Nor does the fact that THE HERBAL CHEF abbreviates to THC, an acronym for one of the psychoactive ingredients in cannabis, mean that an imaginative or mental leap is required to understand the nature of The Herbal Chef’s cannabis-related services.”

The Herbal Chef asserted that the protectibility of its mark is manifest inasmuch as the Patent and Trademark Office registered AFG’s mark, “Herbal Chef.” In response, the opinion says that “The Herbal Chefs catering and educational services are not the same as AFG’s cooking products,” and the nature of a mark, as suggestive or descriptive, can only be gaged “by reference to the goods or services that it identifies.”

Oral argument in the case took place on March 2, using remote technology.

The judges gave a clear indication that the appellant would lose.

Miller remarked that a mark “to be descriptive,” does not “have to describe absolutely everything you’re doing.” He said “The Donut Shop” would not be a protectible mark simply because coffee and newspapers were sold in addition to donuts.

New York attorney Vivek Jayaram, arguing for The Herbal Chef, replied that “if you’ve got a weekly Zoom lesson on how to cook donuts,” there would be “an issue of fact” as to whether “The Donut Shop” is suggestive or descriptive.

Graber commented that even with a cooking program and lectures, it’s “all about cooking, chefing, with cannabis.”

The case is The Herbal Chef, LLC. v. AFG Distribution, Inc., 20-55374.


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