Patterson Intellectual Property Law

Firm Update

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Is That Trademark Too Concise?

Generally, an effective trademark is both concise and memorable. But being too concise can backfire on a trademark applicant if the mark is found to be “merely descriptive.” Case in point: In Re: TriVita, Inc.

Prickly situation

TriVita, Inc., filed a trademark application to register the mark NOPALEA for dietary and nutritional supplements containing nopal cactus juice. Nopalea is the name of a genus of cactus used in food and supplements. Both Opuntia and Nopalea cacti may be referred to as nopal cacti, but the application didn’t state whether TriVita’s nopal juice is derived from cacti in either genus.

The application was rejected. The Trademark Trial and Appeal Board (TTAB) subsequently affirmed the refusal, finding that NOPALEA was “merely descriptive” of the related goods.

Relevant points of law

The federal trademark law (the Lanham Act) provides that a term can’t be registered on the Principal Register as a trademark if it consists of a mark that, when used on or in connection with the applicant’s goods, is merely descriptive of them. A mark is “merely descriptive” if it consists of only words descriptive of the qualities, ingredients or characteristics of the related goods or services.

Whether a mark is merely descriptive turns on whether someone who’s presented the mark in connection with the related goods or services would understand that the mark describes the goods or services. A merely descriptive mark can be registered as a trademark only if the applicant shows that the mark has acquired secondary meaning.

For example, before it acquired secondary meaning, ChapStick was a brand that created sticks of lip balm for chapped lips and was “merely descriptive.”

Another stab

On appeal to the Federal Circuit Court of Appeals, TriVita argued that the TTAB failed to compare the word “nopalea” to the word “nopal” — the common name for prickly pear cacti of the Nopalea and Opuntia genuses and the word used in TriVita’s description of its goods. It claimed that the addition of the letters “EA” made the mark substantially different in sight and sound.

But the appeals court pointed out that “nopalea” isn’t just a made-up word obtained by adding arbitrary letters. Nopalea is a genus of cacti from which nopal juice, the product at issue, is derived. It also noted abundant scientific and nonscientific evidence of the words “nopalea” and “nopal” being used interchangeably.

Pithy decision

It took the appellate court only six pages to find substantial evidence supporting the TTAB’s ruling that “nopalea” was merely descriptive of TriVita’s supplements containing nopal juice. The mark, therefore, couldn’t be registered for the products.