Docket No. 2013-1492
REYNA, WALLACH, TARANTO
June 23, 2014
Brief summary: Nordic Naturals registration of CHILDREN’S DHA for “nutritional supplements containing DHA” denied as being generic and lacking distinctiveness.
Summary: Nordic Naturals appealed Board decision affirming examining attorney’s rejection of CHILDREN’S DHA for “nutritional supplements containing DHA” (docosahexaenoic acid, an omega-3 fatty acid) as “generic or, in the alternative, as merely descriptive and lacking acquired distinctiveness.” During prosecution, Nordic agreed to disclaim the exclusive use of “DHA” apart from its use in the mark as a whole and clarified that the goods in question are “designed for use by children.” The Board affirmed the examiner’s rejection because “‘children’s DHA’ merely described an essential fatty acid for children, without indicating a source” and had not achieved distinctiveness. The FC opinion explained “[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” (Park ‘N Fly, US 1985; H. Marvin Ginn Corp., FC 1986). The evidence against Nordic’s argument included dictionary definitions of “child” and “DHA” and twelve third-party websites as well as nutrition books using the term “children’s DHA”. Thus, the panel found that the “evidence supports the Board’s conclusion that the relevant public primarily uses the phrase as it is defined in the dictionary, i.e., to generally describe DHA products for children.” But Nordic argued that it was the first to use CHILDREN’S DHA in 2000 and invested significant money and time in marketing its products with the use of the phrase. Unlike In re Merrill Lynch (FC 1987) in which the mark CASH MANAGEMENT ACCOUNT was found not to be generic because “multiple third-party references…explicitly recognize Merrill Lynch as the source of the mark”, the FC noted “[h]ere, there is a lack of third-party references recognizing Nordic as the sourse of “children’s DHA”. Declarations from retailers were not persuasive (although footnote 1 explains that such declarations could support distinctiveness in some situations). Thus, the Board decision was affirmed.