May 2015
Trademark That Is Descriptive of Nutritional Supplement Ingredients Is Not Registrable
| Judges: Newman (author), Moore, Hughes |
| [Appealed from TTAB] |
In In re TriVita, Inc., No. 14-1383 (Fed. Cir. Apr. 17, 2015), the Federal Circuit affirmed the TTAB’s rejection of the mark NOPALEA as merely descriptive under section 2(e)(1) of the Lanham Act.
TriVita, Inc. (“TriVita”) filed a trademark application to register the mark NOPALEA for dietary and nutritional supplements containing nopal juice, which comes from the Nopalea genus of nopal cactus. The trademark examining attorney rejected the application as merely descriptive of the product. TriVita appealed to the TTAB, arguing that the mark could not be descriptive because its products contained extracts from the Opuntia genus of nopal cactus, not from the Nopalea genus. The TTAB affirmed the examining attorney’s rejection, citing instances where “nopalea” was used interchangeably with “nopal” and concluding that consumers would understand the term “nopalea” to describe an aspect of TriVita’s products. TriVita appealed.
TriVita made four primary arguments on appeal, each of which was rejected by the Federal Circuit. First, the Court considered TriVita’s argument that the TTAB failed to compare the word “nopalea” with “nopal,” the common name for the prickly pear cacti of both the Nopalea genus and Opuntia genus. The Court disagreed with TriVita that the addition of “EA” to the end of “nopal” made the mark NOPALEA substantially different in sight and sound from the common word, explaining that “‘nopalea’ is not a
made-up word obtained by adding arbitrary letters.” Slip op. at 4. The Court explained that, as found by the TTAB, “nopalea” is a genus of cacti from which nopal juice in TriVita’s product is derived.
“The [TTAB] based its finding on evidence that ‘nopalea’ is the name of a genus of cacti used in food and supplements, that the word ‘nopal’ is a common name for prickly pear cacti including cacti in the genus Nopalea, and that the words ‘nopal’ and ‘nopalea’ are used interchangeably to refer to cacti of that genus.” Slip op. at 6.
Second, the Court considered TriVita’s argument that the TTAB did not make any factual findings about the sophistication of the average consumers likely to encounter TriVita’s goods. The Court was not persuaded by TriVita’s argument that the ordinary purchaser “will be of low botanical sophistication,” and therefore would not recognize that the word “nopalea” had any botanical significance. Id. at 5. The Court found that “there is abundant evidence, scientific and non-scientific, of the words ‘nopalea’ and ‘nopal’ being used interchangeably,” and that the interchangeability is largely seen in discussions of the health benefits of this class of cactus. Id.
Third, the Court considered TriVita’s position that its “multi-level direct marketing” structure would “ensure the Mark [NOPALEA] is used non-descriptively in conjunction with the goods in question at the point of sale.” Id. (citation omitted). The Court was not persuaded, observing that several of TriVita’s distributors did not adhere to TriVita’s nondescriptive use promises and that “the record shows that several of TriVita’s distributors state that the products contain juice from the Nopalea cactus, rather than the limited non-descriptive use proposed by TriVita.” Id. at 5-6.
Fourth, the Court rejected TriVita’s argument that the TTAB erroneously relied on American Aloe Corp. v. Aloe Crème Laboratories, Inc., 420 F.2d 1248 (7th Cir. 1970), for the principle that a trademark applicant “cannot appropriate for its own trademark use the generic name of the distinguishing and effective ingredient in its product.” Slip op. at 6 (quoting Am. Aloe, 420 F.2d at 1252). The Court determined that the TTAB found that the relevant consumer would understand the mark NOPALEA to convey that the goods contain ingredients from the Nopalea cactus; that “nopal” is a common name for prickly pear cacti, including cacti of the genus Nopalea; and that the words “nopal” and “nopalea” are used interchangeably to refer to that genus of cacti.
Accordingly, the Federal Circuit affirmed the TTAB’s decision and held that substantial evidence supported the TTAB’s conclusion that NOPALEA is not registrable because “nopalea” is merely descriptive of TriVita’s goods.
