Inre: Nordic Naturals, Inc.
755 F.3d 1340
| Fed. Cir. | 2014Background
- Nordic Naturals applied to register CHILDREN’S DHA for "nutritional supplements containing DHA" and disclaimed exclusive rights to "DHA."
- The USPTO examining attorney rejected the mark as generic; Nordic appealed to the Trademark Trial and Appeal Board (Board).
- The Board defined the relevant goods as DHA-containing nutritional supplements for children and the relevant public as parents/other adults buying such supplements.
- The record contained dictionary definitions and multiple third-party uses (websites, articles, book excerpts) using "children’s DHA" generically to describe DHA products formulated for children.
- Nordic submitted evidence of first use, marketing expenditures, sales success, and retailer declarations claiming recognition of Nordic’s use, but the Board found the record showed primary generic usage.
- The Board concluded "children’s DHA" is generic; because substantial evidence supported that finding, the Federal Circuit affirmed without reaching acquired distinctiveness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "CHILDREN’S DHA" is a generic term for nutritional supplements containing DHA for children | Nordic: term identifies Nordic's product through prior use and commercial promotion; record shows some references to Nordic | PTO/Board: public primarily understands phrase as the category name for DHA supplements for children; third-party uses and dictionary definitions show generic usage | Affirmed: term is generic; substantial evidence supports Board's finding |
| If not generic, whether Nordic established acquired distinctiveness (secondary meaning) | Nordic: commercial success, marketing, and retailer declarations show the phrase identifies source | PTO/Board: declarations and evidence insufficient; no substantial unsolicited third-party recognition of Nordic as source | Not reached by court because generic finding was dispositive; Board found no acquired distinctiveness on the record |
Key Cases Cited
- Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (defines generic term as the genus of which the product is a species)
- H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (1986) (generic terms cannot acquire trademark distinctiveness)
- In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (1987) (agency must show clear evidence of generic use; distinguishing record showing third-party recognition of source)
- In re Hotels.com, L.P., 573 F.3d 1300 (2009) (genericness is a factual question reviewed for substantial evidence with heightened clear-evidence consideration)