Inre: Nordic Naturals, Inc. ( 2014 )

United States Court of Appeals
for the Federal Circuit
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IN RE NORDIC NATURALS, INC.
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2013-1492
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Serial No.
77131419.
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Decided: June 23, 2014
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MEREDITH M. WILKES, Jones Day, of Cleveland, Ohio,
for appellant. With her on the brief was ANGELA R. GOTT.
NATHAN K. KELLEY, Deputy General Counsel for Intel-
lectual Property Law and Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for appel-
lee. With him on the brief were KRISTI L. R. SAWERT and
CHRISTINA J. HIEBER, Associate Solicitors. Of counsel was
THOMAS L. CASAGRANDE, Associate Solicitor.
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Before REYNA, WALLACH, and TARANTO, Circuit Judges.
REYNA, Circuit Judge.
This case is on appeal from the Trademark Trial and
Appeal Board (“Board”) at the United States Patent and
Trademark Office. Appellant Nordic Naturals, Inc.
(“Nordic”) sought to register CHILDREN’S DHA, in
2 IN RE: NORDIC NATURALS, INC.
standard characters, for “nutritional supplements con-
taining DHA.” “DHA” is the abbreviation for docosahex-
aenoic acid, an omega-3 fatty acid that assists in brain
development. The Board affirmed the examining attor-
ney’s rejection of the mark as generic or, in the alterna-
tive, as merely descriptive and lacking acquired
distinctiveness. Because the Board’s conclusion that the
mark is generic is supported by substantial evidence, we
affirm.
BACKGROUND
Nordic filed U.S. Trademark Application Serial No.
77/131,419 seeking registration for CHILDREN’S DHA
for nutritional supplements. During prosecution, Nordic
agreed to disclaim the exclusive use of “DHA” apart from
its use in the mark as a whole. J.A. 1998. It also clarified
that the goods in question are “designed for use by chil-
dren.” J.A. 1989. The examining attorney finally rejected
the mark as generic, or alternatively, as lacking acquired
distinctiveness.
Nordic appealed to the Board. The Board found that
the relevant goods were adequately defined by Nordic’s
description: “nutritional supplements containing DHA.”
The Board then found that the relevant public for these
goods “consists of parents or other adults seeking nutri-
tional supplements containing DHA for children.” J.A. 8.
With these definitions in mind, the Board reviewed the
record evidence. The Board cited dictionary definitions of
“child” and “DHA,” and concluded that “children’s DHA”
merely described an essential fatty acid for children,
without indicating a source. J.A. 10. The record also
included third-party uses of “children’s DHA” both to
describe DHA products for children in general and chil-
dren’s DHA products other than Nordic’s. Based upon
this, the Board concluded that children’s DHA “is the
generic name for nutritional supplements containing
DHA inasmuch as this wording encompasses nutritional
IN RE: NORDIC NATURALS, INC. 3
supplements containing DHA formulated for children.”
J.A. 22.
In the alternative, assuming the mark was not gener-
ic, the Board also considered whether it had acquired
distinctiveness. J.A. 22-23. The Board acknowledged
that Nordic has enjoyed commercial success with its
products bearing the children’s DHA label. Nevertheless,
based upon “all the evidence of record,” the Board con-
cluded that the mark was not acting as a source identifier,
and thus, had not acquired distinctiveness. J.A. 26.
DISCUSSION
A mark is generic if the relevant public primarily uses
or understands the mark to refer to the category or class
of goods in question. See, e.g., Park ‘N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 194 (1985) (“A generic
term is one that refers to the genus of which the particu-
lar product is a species.”). Because a generic term is “the
common descriptive name of a class of goods,” it cannot
acquire distinctiveness and cannot be registered as a
trademark. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986); see also
Park ‘N Fly, 469 U.S. at 194; In re Pennington Seed, Inc.,
466 F.3d 1053, 1058 (Fed. Cir. 2006).
Whether a proposed mark is generic is a question of
fact. In re Hotels.com, L.P., 573 F.3d 1300, 1301 (Fed.
Cir. 2009). The PTO must establish this fact with “clear
evidence of generic use.” In re Merrill Lynch, Pierce,
Fenner, & Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir.
1987) (quoting Trademark Manual of Examining Proce-
dure § 1305.04 (1983)). On appeal, we must determine
whether the Board’s factual finding is supported by
substantial evidence, taking into account the clear evi-
dence standard. Hotels.com, 573 F.3d at 1302 (“When a
fact is required to be found by ‘clear evidence’ and not a
mere preponderance, the review for support by substan-
tial evidence must take this heightened burden into
4 IN RE: NORDIC NATURALS, INC.
account.”); On-Line Careline, Inc. v. Am. Online, Inc., 229
F.3d 1080, 1085 (Fed. Cir. 2000) (“The substantial evi-
dence standard requires the reviewing court to ask
whether a reasonable person might find that the eviden-
tiary record supports the agency’s conclusion.”).
Nordic does not argue that the Board misunderstood
either the category of goods at issue or the relevant pub-
lic. Thus, we adopt the Board’s description of the relevant
category of goods (“nutritional supplements containing
DHA”) and the relevant public (“parents or other adults
seeking nutritional supplements containing DHA for
children”). Nordic argues that the Board erred in its
conclusion. We disagree.
The record includes the following evidence: dictionary
definitions of both “child” and “DHA”; twelve third-party
websites using “children’s DHA” in relation to various
DHA products for children; and online articles and book
excerpts about nutrition that use “children’s DHA” in a
general, descriptive sense.
Nordic does not contest the substance of the diction-
ary definition cited by the Board. We agree with the
Board that there is nothing in the definition of “child” and
“DHA” that suggests “children’s DHA” might identify the
source of a product, rather than just describe the product.
Rather, the definitions show that “children’s” merely
describes a category of DHA rather than indicating a
source. The third-party websites relied upon by the Board
further support this conclusion. These include the follow-
ing generic uses of “children’s DHA”:
A website selling Animal Parade’s “DHA for Kids,”
which states “no other children’s DHA supplement
can match the ease and convenience of Animal
Parade DHA.”
J.A. 195.
IN RE: NORDIC NATURALS, INC. 5
An article discussing DHA on wisegeek.com,
which states: “Children’s DHA is a dietary sup-
plement available specifically for children. . . .
There are a number of DHA and omega-3 supple-
ments available of [sic] the market today, includ-
ing children’s DHA and DHA for pregnant women.
. . . Children’s DHA supplements can come in
many forms, such as chewable tablets, gummies,
or liquids. . . . When looking for a children’s DHA
supplement, experts agree that quality and safety
are the most important factors. . . . Some scien-
tists believe that the best children’s DHA supple-
ments are derived from flaxseed oil, or wild
freshwater fish.”
J.A. 1697-98.
A website containing an article discussing DHA
for children titled “Children’s DHA, Supplements
and Brain Development,” which states “children’s
DHA is important in early development.”
J.A. 1700-02.
A website discussing children’s nutrition, which
states “another children’s vitamin product offered
by Shaklee is Mighty Smart, a children’s DHA
supplement.”
J.A. 1785-86.
An excerpt from the book Prescription Alternatives
by Earl Mindell, available on Google Books, which
states “Chewable children’s DHA supplements are
widely available.”
J.A. 1360.
A website selling NSI’s “Omega Fishies for Kids,”
which describes the product as a “chewable chil-
dren’s DHA supplement.”
6 IN RE: NORDIC NATURALS, INC.
J.A. 1346. Thus, the record includes numerous uses of
“children’s DHA” to describe the category of DHA prod-
ucts for children. See, e.g., J.A. 1360, 1697-98, 1700-02.
It also includes uses of “children’s DHA” to describe
various different DHA products for children, other than
Nordic’s. See, e.g., J.A. 178-86, 195, 1346. This evidence
supports the Board’s conclusion that the relevant public
primarily uses the phrase as it is defined in the diction-
ary, i.e., to generally describe DHA products formulated
for children.
While Nordic admits that certain uses of “children’s
DHA supplement” on the record may be descriptive, it
maintains that CHILDREN’S DHA by itself is not. Nor-
dic supports this view by asserting that Nordic was the
first to use CHILDREN’S DHA in 2000 and that, since
then, it invested significant money and time in marketing
its products with the use of this phrase. Nordic argues
that its commercial success is based, in part, on its use of
CHILDREN’S DHA to identify its product. For support,
Nordic points to declarations from its retailers, its own
advertising, and use of “children’s DHA” by third parties
to refer to Nordic’s products. Based upon this evidence,
Nordic argues that, as in Merrill Lynch, 828 F.2d at 1571,
the record here includes a “mixture of usages,” which
cannot be clear evidence of genericness.
In Merrill Lynch, the applicant sought to register
CASH MANAGEMENT ACCOUNT but the Board found
it to be generic. This court reversed. Significantly, the
record in Merrill Lynch “showed recognition in a substan-
tial number of publications that the source of the CASH
MANAGEMENT ACCOUNT was the appellant.” Merrill
Lynch, 828 F.2d at 1571. For example, third-party refer-
ences on the record stated: “[t]he Cash-Management
Account (CMA) pioneered by Merrill Lynch . . .”; “pio-
neered by Merrill Lynch’s Cash Management Account and
copied through the industry . . .”; and “with the highly
successful Cash Management Account pioneered by
IN RE: NORDIC NATURALS, INC. 7
Merrill Lynch & Co.” Id. at 1570. Because of the multiple
third-party references that explicitly recognized Merrill
Lynch as the source of the mark, the record lacked sub-
stantial evidence to support the Board’s decision that the
mark was generic. Id. at 1571.
Unlike Merrill Lynch, the record here does not reflect
a mixture of usages for “children’s DHA” among the
relevant public. Here, there is a lack of third-party refer-
ences recognizing Nordic as the source of “children’s
DHA.” Instead, the record contains references that use
this phrase in a generic and descriptive manner. Even
certain references that use “children’s DHA” to refer to
Nordic’s goods also use it to describe those goods in a
generic manner. See, e.g., J.A. 1732-33 (“Nordic Naturals
Children’s DHA is a small, chewable children’s DHA
supplement flavored with strawberry essence.”) (emphasis
added). Nor do the declarations submitted by Nordic
undermine the Board’s conclusion. Nordic obtained the
declarations from retailers of its goods, not members of
the relevant public. The declarations were prepared
primarily by Nordic, with the declarants providing only
personal information. 1 In contrast, the evidence in Mer-
rill Lynch included unsolicited references to Merrill Lynch
as the source of CASH MANAGEMENT ACCOUNT in
news outlets such as Newsweek and Business Week.
Merrill Lynch, 828 F.2d at 1571.
Thus, while Nordic may have been the first to use the
phrase “children’s DHA” in this market, the question
remains, in light of Nordic’s use and all other relevant
uses, what does “children’s DHA” primarily mean to the
1 We are not suggesting that declarations of the
sort submitted by Nordic cannot be used to support dis-
tinctiveness. It is simply that the record here, including
the declarations, does not demonstrate the mixture of
usages that were present in Merrill Lynch.
8 IN RE: NORDIC NATURALS, INC.
relevant public? The evidence relied upon by the Board,
and recited herein, constitutes sufficiently clear evidence
that the relevant public uses “children’s DHA” primarily
to refer to the category of DHA products for children.
Because substantial evidence supports the Board’s
conclusion that “children’s DHA” is generic, we do not
address the parties’ arguments regarding acquired dis-
tinctiveness.
AFFIRMED