Tuesday, June 24, 2014

CAFC Affirms TTAB: CHILDREN'S DHA Generic for Nutritional Supplements Containing DHA

The CAFC affirmed the TTAB's decision [here] upholding the PTO's refusal to register CHILDREN'S DHA for "nutritional supplements containing DHA" [DHA disclaimed], the appellate court ruling that substantial evidence supported the Board's conclusion that the purported mark is generic for the identified goods. Nordic unsuccessfully argued that the record included a "mixture of usages," and that the required clear evidence of genericness was therefore absent. In re Nordic Naturals, Inc., 111 USPQ2d 1495 (Fed. Cir. 2014) [precedential].

The record included a dictionary definition of DHA (an abbreviation for docosahexaenoic acid, an omega-3 fatty acid that assists in brain development) and evidence of third-party uses of "children's DHA" both to describe DHA products in general and to describe third-party DHA products.

Nordic asserted that it was the first to use the term CHILDREN'S DHA, that it invested significantly in marketing its product, and that its commercial success was based in part on use of CHILDREN'S DHA to identify its product. It pointed to declarations from its retailers, its own advertising, and third-party use of "children's DHA" to refer to its products. Based on this evidence Nordic maintained that, as in In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987), the mixed record of uses could not constitute clear evidence of genericness.

The court, however, pointed out that in Merrill Lynch the evidence included multiple third-party references "that explicity recognized Merill Lynch as the source of the mark." Here, there was a lack of such third-party references. Instead the record included generic and descriptive uses of "children's DHA." Some references that used "children's DHA" to refer to Nordic's goods also used it "to describe those goods in a generic manner." Furthermore, the declarations submitted by Nordic were from its retailers, not members of the relevant public (parents or other adults seeking nutritional supplements containing DHA for children), and they were prepared primarily by Nordic. In Merrill Lynch, the evidence included unsolicited references to Merrill Lynch "as the source of CASH MANAGEMENT ACCOUNT," the mark there at issue.

Even if Nordic were the first to use the phrase "children's DHA," the question remained, "in light of Nordic's use and all other relevant uses, what does 'children's DHA' primarily to the relevant public?" The CAFC concluded that "sufficiently clear evidence" supported the Board's finding that the relevant public primarily uses "children's DHA" to refer to the category of DHA products for children.

And so the appellate court affirmed the TTAB's decision.

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Text Copyright John L. Welch 2014.


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