In Re: TriVita, Inc.


Docket No. 2014-1383

Newman, Moore, Hughes

Decided April 17, 2015

Brief Summary: FC concluded “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”.

Summary: TriVita appealed examiner and Board rejection of its application to register NOPALEA on the Principal Register for dietary and nutritional supplements “containing, in whole or in substantial part, nopal juice” as “descriptive…on the grounds that applicant’s products contain nopal which is derivd from an [ex]tract of the nopalea plant.” TriVita argued to the Board that “nopalea plant” is not a term used in the food industry, and…is not descriptive because [its] products contain extracts from the Opunti genus of nopal cactus, not the Nopalea genus.” But the Board concluded there was “no doubt that a consumer would understand the term ‘nopalea’ used in connection with [TriVita’s] goods as conveying information about them”. The FC opinion explains that a term is not registerable under section 2(e)(1) of the Lanham Act when it “consists of a mark which (1) when used on or in connection with the goods of the application is merely descriptive or deceptively misdescriptive of them”, “merely descriptive” mark being one that “consist[s] merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark” (In re Oppedahl, FC 2004). And “[a] merely descriptive mark qualifies for registration only if the applicant shows that is has acquired secondary meaning” (In re Nett Designs, FC 2001). TriVita argued: 1) the Board did not compare the word “nopalea” to the word “nopal”, the common name for prickly pear cacti of the Nopalea and Opunita genera but the FC agreed with the Board “that consumers are likely to assume that the NOPALEA mark denotes that TriVita’s products contain ingredients from the Nopalea cactus; 2) the Board made no factual findings concerning the level of sophistication of the average consumer likely to encounter TriVita’s goods but the FC agreed with the Board that “there is abundant evidence, scientific and non-scientific, of the words ‘nopalea’ and ‘nopal’ being used interchangeably”; 3) since consumers purchase and obtain information about its products only directly from TriVita or its affiliates”, “TriVita can ‘ensure the Mark is used non-descriptively in conjunction with the goods in question at the point of sale” but FC found the evidence “shows that several of TriVita’s distributors state that the products containg juice from the Nopalea cactus, rather than the non-descriptive use proposed by TriVita”; and, 4) the Board erroneously relied on the Seventh Circuit’s American Aloe (7th Cir. 1970) decision to support the descriptiveness finding (“the trademark applicant ‘cannot appropriate for its own trademark use the generic name of the distinguishing and effective ingredient in its own product’”) but the FC found no error on this point. The FC agreed with the Board’s decision “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”, and affirmed the decision.

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