CAFC Affirms TTAB: NOPALEA Merely Descriptive of Supplements Containing Nopal Juice
In an enervating yet precedential ruling, the CAFC affirmed the Board's decision (here) upholding a Section 2(e)(1) mere descriptiveness refusal of the mark NOPALEA as a trademark for dietary and nutritional supplements "containing, in whole or in substantial part, nopal juice." In re TriVita, Inc., 114 USPQ2d 1574 (Fed. Cir. 2015) [precedential].
Appellant TriVita argued that the addition of the letters EA to NOPAL makes the mark NOPALEA substantially different in sight and sound. The CAFC observed, however, that "nopalea" is not a made-up word obtained by adding arbitrary letters. The record showed, and the Board found, that "nopalea" is a genus of cacti from which nopal juice is derived.
TriVita contended that the ordinary purchaser of its products will be of low botanical sophistication and will not immediately recognize the botanical meaning of the word "nopalea." However, the court agreed with the Board that there is "abundant evidence, scientific and non-scientific, of the words 'nopalea' and 'nopal' being used interchangeably," largely in the context of discussions of the health benefits of this class of cactus.
The Board found that the relevant consumer, knowing that the goods are supplements containing nopal cactus juice, would understand the mark NOPALEA to convey information that the goods contain ingredients from the Nopalea cactus. The Board 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. Substantial evidence supports the Board’s findings, and its conclusion that “nopalea” is merely descriptive of TriVita’s goods.
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Text Copyright John L. Welch 2015.
posted by John L. Welch @ 4/20/2015
4 comments
4 Comments:
Court was nopal of the applicant.
what is the applicant's next course of action then ?
Sounds like a WYHA&A
An examining attorney refused registration of the mark “Nopalea” on the grounds that it is merely descriptive of the identified good under 2(e)(1). A potential trademark is said to be merely descriptive of goods or services within the meaning of 2(e)(1) if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose, or use of the goods or services (In re Chamber of Commerce 675 F.3d 1297). In addition, whether “Nopalea” is determined merely descriptive is analyzed in relation to the goods it is seeking to associate to, in the context in which it is being used, and the possible effect the name would have on the average costumer of the goods because of the manner in which the name is being used (In re Bright –Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)).
Trivita argued that adding “ea” to “nopal” makes “nopalea” substantially different in sight and sound. CAFC argued that “nopal” does not become arbitrary by adding arbitrary letters to it. However, nopalea is an existing word meaning a genus of cacti from which nopal juice is derived. In addition, I argue that although adding “ea” to “nopal” makes the name different in sight and sound, when analyzed in relation to the goods it is seeking to associate its name to, which is a liquid puree of nopal cactus fruit, the name conveys an immediate idea of the ingredient and use of the good which makes it merely descriptive under 2(e)(1).
Trivita then admitted that nopal juice may derive from the nopalea cactus (and in essence that nopalea is an existing descriptive word of the good Trivita is selling), but argues that because nopal juice may derive from either the nopalea or the opuntia cactus, and Trivita derives its juice from opuntia cactus, it cannot be considered merely descriptive, but rather suggestive. Because an important portion of the test as to whether or not a name is deceptive is how the majority of purchasers would regard it, and Trivita contends that “the ordinary purchaser of its products will be of low botanical sophistication and will not immediately recognize the botanical meaning of the word “nopalea”, their argument is quite contradictory. As the board responded and the court agreed, there is “abundant evidence” that the words nopalea and nopal are used interchangeably in the context of discussing the health benefits of this type of cactus. The court also makes an assertion that the average consumer of this good is knowledgeable and capable of discussing the health benefits of this type of cactus. I would want to see what type of evidence the examiner has put forward to support this assertion. If this evidence is corroborated and based on the criteria set forth in the statute and relevant case law, I agree with the court’s decision to affirm the decision to reject “Nopalea” from registration.
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