In Re: Trivita, Inc. , 783 F.3d 872 ( 2015 )

United States Court of Appeals
for the Federal Circuit
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IN RE: TRIVITA, INC.,
Appellant
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2014-1383
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
77658158.
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Decided: April 17, 2015
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ADAM STEPHENSON, Adam R. Stephenson, LTD., Tem-
pe, AZ, for appellant.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee. Also represented by THOMAS L. CASAGRANDE,
CHRISTINA HIEBER, THOMAS W. KRAUSE.
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Before NEWMAN, MOORE, and HUGHES, Circuit Judges.
NEWMAN, Circuit Judge.
TriVita filed trademark application Serial No.
77/658,158 to register the mark NOPALEA on the Princi-
pal Register for dietary and nutritional supplements
“containing, in whole or in substantial part, nopal juice.”
The examiner rejected the application under section
2 IN RE: TRIVITA, INC.
2(e)(1) of the Lanham Trademark Act as “descriptive of a
feature of applicant’s goods on the grounds that appli-
cant’s products contain nopal which is derived from an
[ex]tract of the nopalea plant.” TriVita appealed to the
Trademark Trial and Appeal Board, arguing that “no-
palea plant” is not a term used in the food industry, and
that the term is not descriptive because TriVita’s products
contain extracts from the Opunti genus of nopal cactus,
not the Nopalea genus.
The Board affirmed the rejection. The Board cited
various websites showing Nopalea as the name of a genus
of cactus used in food and supplements, noting that some
of the websites were those of TriVita’s affiliates, and that
some explicitly stated that TriVita’s products were de-
rived from the Nopalea cactus. The Board acknowledged
that both Opuntia and Nopalea cacti may be referred to
as nopal cacti, but that TriVita’s registration application
states only that the goods contain “nopal juice,” and does
not state whether the nopal juice is derived from cacti in
either the Opuntia or Nopalea genus. The Board cited
instances of the word “nopal” used interchangeably with
the word “nopalea,” and stated:
The record indicates that nopalea is indeed a ge-
nus of cacti which is used for food and medicine,
and which is commonly referred to as “nopal.”
Consumers may well assume, (as apparently do
some of [TriVita’s] affiliates) that, as a character-
istic of nopal juice, [TriVita’s] goods derive from
genus nopalea.
In re Trivita, Inc., 2013 WL 6858011, at *4 (T.T.A.B. Dec.
17, 2013). The Board concluded that there was “no doubt
that a consumer would understand the term ‘nopalea’
used in connection with [TriVita’s] goods as conveying
information about them,” and affirmed the refusal to
register NOPALEA because it is “merely descriptive”
under section 2(e)(1). Id. at *5.
IN RE: TRIVITA, INC. 3
DISCUSSION
Section 2(e)(1) of the Lanham Act provides that a
term is not a registerable trademark when it “consists of a
mark which (1) when used on or in connection with the
goods of the applicant is merely descriptive or deceptively
misdescriptive of them.” 15 U.S.C. § 1052(e)(1) (2014). A
mark is merely descriptive if it “‘consist[s] merely of
words descriptive of the qualities, ingredients or charac-
teristics of’ the goods or services related to the mark.” In
re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed.
Cir. 2004) (alteration in original) (quoting Estate of P.D.
Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543
(1920)). The Board’s determination that a mark is merely
descriptive is a factual finding that is reviewed for sup-
port by substantial evidence. In re Bayer Aktiengesell-
schaft, 488 F.3d 960, 964 (Fed. Cir. 2007).
Whether a mark is merely descriptive is determined
in relation to the goods or services for which registration
is sought. See 15 U.S.C. §1052(e)(1). The question is
whether someone who is presented with the mark in
connection with the goods or services would understand
that the mark describes the goods or services. See 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §11:16 (4th ed. 2014) (“Descriptiveness
cannot be determined as an abstraction. The possible
descriptiveness of a designation is highly dependent on
the goods or services in connection with which the desig-
nation is used. A term can be descriptive of one product
and nondescriptive of another.”). “A merely descriptive
mark qualifies for registration only if the applicant shows
that it has acquired secondary meaning.” In re Nett
Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001).
The record contains somewhat conflicting evidence as
to the content of TriVita’s goods. TriVita initially stated
that “the term NOPALEA refers to the nopalea plant in
the relevant industry” and that “the goods contain nopal
4 IN RE: TRIVITA, INC.
which is an extract of the nopalea plant.” TriVita later
stated that its goods contain extracts of a nopal cactus,
but not of a Nopalea cactus. TriVita referred the examin-
er to a Master’s thesis stating that the term “nopal cac-
tus” is used to refer to prickly pear cacti from both the
Opuntia and Nopalea genera. The TriVita labels list as
ingredients of its products “Nopal fruit puree (Opuntia
ficus indica)” and “Nopal powder (Opuntia ficus indica).”
On receiving these arguments, the examiner also re-
jected TriVita’s application under section 2(a) of the
Lanham Act, stating that “[i]f the goods do not contain
Nopalea or ingredients or extracts derived from the
Nopalea plant, then the applied-for mark contains a term
that is misdescriptive of the composition of the goods
marketed thereunder.” U.S. Trademark Appl. Serial No.
77658158, Office Action, at 2 (Jan. 7, 2011). The examin-
er withdrew the misdescriptiveness rejection after TriVita
amended the description of the goods to state that the
goods contained nopal juice.
TriVita makes four primary arguments on appeal.
Although the PTO complains that some arguments were
not presented to the Board, the need for these arguments
did not appear until the Board’s decision. Thus we have
considered all of TriVita’s arguments.
First, TriVita argues that the Board failed to compare
the word “nopalea” to the word “nopal,” the common name
for prickly pear cacti of the Nopalea and Opuntia genera,
and the term used in TriVita’s description of the goods.
TriVita argues that in Bayer, 488 F.3d at 964–65, this
court endorsed comparing the appearance and sound of a
mark with the “common word” for the goods, to determine
if the mark is “sufficiently similar” to the common word.
TriVita argues that the addition of the letters “EA” at the
end of “nopal” makes the mark NOPALEA substantially
different in sight and sound. However, “nopalea” is not a
made-up word obtained by adding arbitrary letters. The
IN RE: TRIVITA, INC. 5
record shows, and the Board found, that “nopalea” is a
genus of cacti from which nopal juice, the product at
issue, is derived. Even if TriVita’s product contains
ingredients derived from the Opuntia and not the Nopalea
cactus, substantial evidence supports the Board’s finding
that consumers are likely to assume that the NOPALEA
mark denotes that TriVita’s products contain ingredients
from the Nopalea cactus.
Second, TriVita argues that the Board made no factu-
al findings concerning the level of sophistication of the
average consumer likely to encounter TriVita’s goods.
TriVita argues that the ordinary purchaser of its products
will be of low botanical sophistication and will not imme-
diately recognize the botanical meaning of the word
“nopalea.” TriVita is correct that descriptiveness is
determined from the viewpoint of the relevant purchasing
public. However, as the Board found, there is abundant
evidence, scientific and non-scientific, of the words “no-
palea” and “nopal” being used interchangeably. This
interchangeability is seen largely in the context of discus-
sion of the health benefits of this class of cactus.
Third, TriVita argues that its products are sold
through “multi-level direct marketing,” and that consum-
ers purchase and obtain information about its products
only directly from TriVita or its affiliates, and thus TriVi-
ta can “ensure the Mark is used non-descriptively in
conjunction with the goods in question at the point of
sale.” Appellant Br. at 23. However, such non-descriptive
use was not established by any factual showing. See Roux
Labs., Inc. v. Clairol Inc., 427 F.2d 823, 828 (CCPA 1970)
(“The mere fact that a combination of words or a slogan is
adopted and used by a manufacturer with the intent
Clairol has manifested here—that it identify its goods and
distinguish them from those of others—does not neces-
sarily mean that the slogan accomplishes that purpose in
reality.”). Further, the record shows that several of
TriVita’s distributors state that the products contain juice
6 IN RE: TRIVITA, INC.
from the Nopalea cactus, rather than the limited non-
descriptive use proposed by TriVita.
Fourth, TriVita argues that the Board erroneously re-
lied on the Seventh Circuit’s decision in American Aloe
Corp. v. Aloe Crème Labs., Inc. 420 F.2d 1248 (7th Cir.
1970), to support the descriptiveness finding. That deci-
sion embodies the principle that the trademark applicant
“cannot appropriate for its own trademark use the generic
name of the distinguishing and effective ingredient in its
product.” 420 F.2d at 1252. The Board did not err in
applying this principle to the facts in the record.
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.
We affirm the Board’s decision that NOPALEA is not
registrable on the Principal Register for TriVita’s nutri-
tional supplements containing nopal juice.
AFFIRMED