In Re: Trivita, Inc.
783 F.3d 872
| Fed. Cir. | 2015Background
- TriVita applied to register the mark NOPALEA for dietary/nutritional supplements described as containing "nopal juice."
- USPTO examiner rejected the mark under Lanham Act §2(e)(1) as merely descriptive of a product ingredient.
- TriVita argued "Nopalea" is not the common term for its goods and that its products derive from Opuntia, not the Nopalea genus.
- The Trademark Trial and Appeal Board relied on web and company-affiliate materials showing "Nopalea" is a cactus genus used for food/medicine and that "nopal" and "nopalea" are used interchangeably.
- The Board concluded consumers would understand NOPALEA to describe goods derived from the Nopalea cactus and affirmed the descriptiveness refusal.
- The Federal Circuit affirmed, holding substantial evidence supported the Board’s finding that NOPALEA is merely descriptive for supplements containing nopal juice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether NOPALEA is merely descriptive of supplements containing nopal juice | NOPALEA differs from the common word "nopal" (added "ea") and is not descriptive | Evidence shows "nopalea" is a genus name and consumers use "nopalea" and "nopal" interchangeably | Mark is merely descriptive; refusal affirmed |
| Whether consumer sophistication undermines descriptiveness | Ordinary purchasers are botanically unsophisticated and won't read botanical meaning into NOPALEA | Record shows widespread interchangeability of the terms in consumer/health contexts | Board reasonably considered the relevant consumer and found descriptiveness supported by evidence |
| Whether TriVita’s distribution method prevents descriptive meaning at point of sale | Direct multi-level marketing lets TriVita control non-descriptive use at sale | No factual showing that use at point of sale was non-descriptive; affiliates used "Nopalea" descriptively | No proof of controlled non-descriptive usage; descriptiveness stands |
| Whether principle barring a trademark that is the generic name of an ingredient applies | N/A (TriVita contested application of the principle) | Trademark law bars appropriation of a generic name of an effective ingredient | Principle applies; applicant cannot appropriate the generic ingredient name as a trademark |
Key Cases Cited
- In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir.) (defines "merely descriptive" standard)
- Estate of P.D. Beckwith, 252 U.S. 538 (U.S.) (early articulation of descriptiveness standard)
- In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir.) (substantiates substantial-evidence review of Board descriptiveness findings)
- In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir.) (secondary meaning requirement for descriptive marks)
- Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823 (CCPA) (applicant’s intent or use does not overcome descriptive effect absent evidence)
- American Aloe Corp. v. Aloe Crème Labs., Inc., 420 F.2d 1248 (7th Cir.) (applicant cannot appropriate generic name of an effective ingredient)