If you want to establish a strong, protectable brand for your product, here’s an easy-to follow trademark tip: don’t use the word for an ingredient in the brand name. A recent case in the Federal Circuit, In re Trivita, Inc., illustrates this point.
The Background
TriVita produces health and wellness products and sells them through multi-level direct marketing. In 2009, they filed a trademark application with the United States Patent and Trademark Office to protect the word NOPALEA for the following goods:
Dietary and nutritional supplements sold exclusively through multi-level direct marketing; Nutritional supplements sold exclusively through multi-level direct marketing; all of the foregoing containing, in whole or in substantial part, nopal juice [italics mine]
Notice the italicized word “nopal?” That’s the issue here.
People who speak Spanish will recognize the word “nopal” as referring to cactus, as will people like me who live near the US-Mexico border and eat tons of Mexican food but shamefully speak very little Spanish. Nopalea is a variety of cactus.
The USPTO initially rejected the application on the grounds that the mark merely described “a feature of applicant’s goods, namely, supplements derived from the plants of Nopalea.”
The Old Merely Descriptive Issue Again
My regular readers will recall that brand names that are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose or use of goods or services can’t be registered on the USPTO’s Principal Register of Trademarks (which is the one you want to be on, if possible…more on that later.)
TriVita fought this ruling hard, first with multiple responses to the USPTO’s Examining Attorney, then through the Trademark Trial and Appeal Board, and finally to the Court of Appeals for the Federal Circuit, which handed down its ruling in April 2015. That’s right, this battle has been going on for 6 years.
TriVita’s Four Arguments
TriVita advanced four arguments for the proposition that NOPALEA is not “merely descriptive”:
1. The common name is “nopal,” not “nopalea,” and their product “contains ingredients derived from the Opuntia and not the Nopalea cactus.”
The Court rejected this argument on the grounds that “consumers are likely to assume that the NOPALEA mark denotes that TriVita’s products contain ingredients from the Nopalea cactus.”
2. Their consumers are unsophisticated when it comes to botany, and will not understand the meaning of “nopalea.”
Oddly enough, this is not an unusual argument in trademark law. Companies often find themselves in a position to claim that their consumers are unsophisticated and won’t know the difference.
The Court cited evidence showing that consumers use “nopal” and “nopalea” interchangeably.
3. Because the products are sold directly to consumers, the company can ensure that the mark is used “non-descriptively.”
This one didn’t fly because, not only did TriVita fail to provide any evidence of such use, there was actually evidence to the contrary – some of TriVita’s distributors had stated that the product contains juice from the Nopalea cactus. Oops.
4. This was a technical argument – that the USPTO’s Trademark Trial and Appeal Board made an error in applying a case that held that a company “cannot appropriate for its own trademark use the generic name of the distinguishing and effective ingredient in its product.”
The Federal Circuit outright rejected this argument and stated that the TTAB did not err in applying that case.
Conclusion
After 6 years and most certainly hundreds of thousands of dollars in legal fees (at least), TriVita is no closer to having its mark NOPALEA placed on the USPTO’s Principal Register.
They can, however, petition to have the mark placed on the Supplemental Register, which provides a more limited set of rights to the registrant. Merely descriptive marks can be placed on the Supplemental Register. Of course, they could have done that back when they received the initial rejection back in 2009.
Or, I guess, they can appeal to the Supreme Court. Good luck with that.
The moral: if you want a strong trademark, choose a brand name that doesn’t include the name of an ingredient.
