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Federal Circuit

Name of Cactus Genus Not Registrable for Products Derived from Different Cactuses

April 21, 2015

Federal Circuit

Name of Cactus Genus Not Registrable for Products Derived from Different Cactuses

April 21, 2015

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In re TriVita, Inc., ___F.3d ___ (Fed. Cir. Apr. 17, 2015) (NEWMAN, Moore, Hughes) (P.T.A.B.) (1 of 5 stars)

Federal Circuit affirms rejection of mark as descriptive.

The applied-for mark was NOPALEA, for dietary supplements containing nopal juice.  “Nopalea” is a genus of cacti from which nopal juice is sometimes derived, though TriVita indicated that its product used only juice from other cacti commonly called “nopal cacti.”  Notwithstanding TriVita’s actual ingredients, substantial evidence supported the Board’s finding that customers would assume that the NOPALEA mark denotes products containing ingredients from cacti in the Nopalea genus.  Second, while the Board did not make specific findings as to the level of sophistication of actual consumers likely to encounter TriVita’s goods, there was “abundant” evidence of “nopal” and “nopalea” being used interchangeably.  Third, though TriVita urged that by selling only through direct marketing, it could ensure that its mark would only ever be used non-descriptively, it did not submit any actual factual showing to support that contention, and in fact there was evidence of descriptive use by some TriVita distributors.  Finally, there was no error in the Board’s citation to 1970 law for the proposition that a trademark applicant cannot appropriate, via trademark application, generic names of key ingredients.

Related Tags

CAFC Summary
Federal Circuit
Descriptiveness
Interchangeable Use

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Rob Courtney | Principal

Rob Courtney is a Principal in the Twin Cities office of Fish & Richardson. His practice emphasizes patent litigation in the areas of electrical engineering and information technology. Mr. Courtney’s litigation experience includes numerous matters in federal...

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