Shammas v. Rea
978 F. Supp. 2d 599
E.D. Va.2013Background
- Milo Shammas (owner of Dr. Earth, Inc.) applied to register the mark PROBIOTIC for fertilizers; PTO Examining Attorney refused registration as generic or, alternatively, merely descriptive without secondary meaning.
- TTAB affirmed the refusal, finding PROBIOTIC generic for fertilizer and, alternatively, lacking acquired distinctiveness (secondary meaning); TTAB relied on third‑party use, media/articles, dictionary definitions, and plaintiff concessions.
- Plaintiff sued in district court under 15 U.S.C. § 1071(b), introducing new evidence (sales figures, advertising expenditures, retailer affidavits) and seeking reversal or a declaration that PROBIOTIC is suggestive or has acquired secondary meaning.
- The district court reviews TTAB fact findings for substantial evidence but reviews de novo any new evidence submitted to the court; plaintiff bears the burden to prove by a preponderance that the mark is protectable.
- The court found the administrative record and newly submitted evidence together overwhelmingly support that PROBIOTIC is generic; plaintiff’s new evidence was insufficient to show secondary meaning.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PROBIOTIC is generic for fertilizer | Shammas: term is not generic; it identifies his product and has become distinctive | PTO/defendant: widespread third‑party use and media/dictionary definitions show the term denotes a genus or characteristic of fertilizer | Held: PROBIOTIC is generic; TTAB decision supported by substantial evidence and affirmed |
| Whether PROBIOTIC has acquired secondary meaning | Shammas: sales, advertising, and retailer affidavits show consumer association with Dr. Earth | PTO/defendant: sales/advertising insufficient and third‑party use contradicts exclusive source association | Held: Plaintiff failed to show secondary meaning; evidence inadequate and irrelevant if term is generic |
| Standard of review and burden in §1071(b) action | Shammas: (implicit) district court should weigh new evidence to overturn TTAB | Defendant: TTAB findings entitled to substantial‑evidence deference; plaintiff must carry burden on new evidence | Held: Court applies substantial evidence review to TTAB and de novo to new evidence; plaintiff must prove by preponderance to overcome TTAB |
| Admissibility/weight of retailer affidavits and sales evidence | Shammas: affidavits and sales prove distinctiveness and lack of third‑party use | PTO/defendant: friendly affidavits of unawareness have little weight; raw sales/ads need context and consumer survey to prove secondary meaning | Held: Retailer affidavits and raw sales/advertising were unpersuasive and insufficient to rebut record of third‑party use or to establish secondary meaning |
Key Cases Cited
- Dickinson v. Zurko, 527 U.S. 150 (1999) (district court must apply the APA "substantial evidence" standard to PTO factual findings)
- On‑Line Careline v. America Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (applying Zurko to TTAB review)
- H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986) (two‑step genericness inquiry: identify genus and determine public perception)
- Sara Lee Corp. v. Kayser‑Roth Corp., 81 F.3d 455 (4th Cir. 1996) (generic terms are unprotectable; descriptive marks require secondary meaning)
- DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012) (agency findings supported by substantial evidence may not be overturned even if record allows alternate conclusions)
- Perini Corp. v. Perini Const., Inc., 915 F.2d 121 (4th Cir. 1990) (discussing evidentiary burden and factors for secondary meaning)